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Brandt v. Honnecke

United States District Court, D. Colorado

January 12, 2018

STEVEN LEE BRANDT, an individual, JAMES CLAY WALTERS, an individual, and COLORADO BOX COMPANY, INC., a Colorado corporation, Plaintiffs,
VON HONNECKE, an individual, CHASE HONNECKE, an individual, and S & H SHEET METAL, INC., a Colorado corporation, Defendants.



         This matter is before the Court on the parties' request for construction of certain disputed claim terms contained in United States Patent No. 8, 999, 029 entitled “Furnace Filter Box and Method of Assembly” (the “'029 Patent”). The matter is now ripe for consideration. Based on the record, and the applicable statutes, rules, and case law, the Court construes certain claims in the '029 Patent as set forth below.

         I. BACKGROUND

         The ‘029 Patent concerns a furnace filter box, which is made with various panels (two sides, front, back, and bottom) and other pieces. The filter box may be shipped disassembled and its height can be reduced to fit under a furnace. Plaintiffs Steven Brandt and James Walters are the inventors of the furnace filter box and method of assembly covered by the '029 Patent. They filed their patent application on November 2, 2012, and the '029 Patent was issued April 7, 2015. They are now the former owners of the '029 Patent, having transferred their interest in the patent to the current owner, Plaintiff Colorado Box Company, Inc.

         As stated in the '029 Patent, Plaintiffs' product is “[a] furnace filter box for mounting next to an intake air opening in a furnace.” (Abstract.) According to the '029 Patent, as relevant to this case, a primary object of the invention is to provide a furnace filter box “that is adaptable to various sizes and types of air conditioning and heating furnaces.” (Summary of the Invention (hereafter, “Summary”), col. 1, ll. 33-36.[1]) Another objective is the furnace filter box can be “adapted for holding” different size and width of furnace filters. (Summary, col. 1, ll. 44-46.)

         On December 22, 2015, Plaintiffs filed suit against Defendants. Plaintiffs' Second Amended Complaint (“SAC”) alleges Defendants' “Return air filter box” infringes “at least” claims 1, 3, 5, and 17 of the '029 Patent. (See ECF No. 42.) Plaintiffs assert three claims for relief: direct patent infringement under 35 U.S.C. § 271(a); inducing infringement under 35 U.S.C. § 271(b); and contributory infringement under 35 U.S.C. §271(c). (ECF No. 42.)

         By Scheduling Order in Patent Case entered April 4, 2016 (ECF No. 29), as amended by Order dated June 28, 2016 (ECF No. 56), Plaintiffs' Infringement Contentions were due by July 21, 2016; the parties' Joint Disputed Claim Terms Chart was due by December 8, 2016; and the parties' opening Claim Construction Briefs were due by January 13, 2017. After the parties served or filed such documents, the Court held a claim construction or Markman hearing[2] on April 17, 2017. Thereafter, the Court allowed the parties to submit supplemental briefs. The parties' papers and oral arguments raised not only how disputed claim terms should be construed but also which claim terms in what claims should be construed. In order to address the former, the Court must first address the latter. The Court addresses both below.


         A. Local Patent Rules

         As relevant here, D.C.COLO.LPtR 4(b) provides that a party who serves infringement contentions shall also serve a claim chart for each accused product. That claim chart is required to identify each claim of each patent in suit that is allegedly infringed by the accused product. D.C.COLO.LPtR 4(b)(1). Thereafter, the parties are required to file a Joint Disputed Claims Terms Chart which identifies “the disputed claim terms and phrases and each party's proposed construction.” D.C.COLO.LPtR 14. The deadlines for the parties to comply with these rules are set forth in the Patent Scheduling Order. See D.C.COLO.LPtR 4 & 14.

         B. Claim Construction

         Determining infringement is a two-step process. First, the claims at issue must be properly construed to determine their scope and meaning. Then, second, the claims so construed are compared to the accused device or process. Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1129 (Fed. Cir. 2011). At issue before the Court is the first step, which it determines as a question of law. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996).

         Intrinsic Evidence.

         “It is a ‘bedrock principle' of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.'” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). When construing claim terms, the courts look to, and primarily rely on, intrinsic evidence, which includes the claims themselves, the specification, and the prosecution history of the patent. Sunovion Pharm., Inc. v. Teva Pharm. USA, Inc., 731 F.3d 1271, 1276 (Fed. Cir. 2013). “[T]he words of a claim ‘are generally given their ordinary and customary meaning.'” Phillips, 415 F.3d at 1312 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); see also Sunovion, 731 F.3d at 1276. This is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313.

         That “person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but [also] in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. This is because the claims do not stand alone. Instead, “they are part of a fully integrated written instrument, …consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification, of which they are a part.” Phillips, 415 F.3d at 1315 (citation and quotation marks omitted).

         In addition to the words of the claims themselves and the remainder of the specification, courts should also consider the patent's prosecution history, if it is in evidence, to construe the invention. Phillips, 415 F.3d at 1317. The prosecution history, also called the file wrapper, “consists of the complete record of the proceedings before the PTO [Patent and Trademark Office] and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317. However, as the prosecution history “often lacks the clarity of the specification, ” it is “less useful for claim construction purposes.” Phillips, 415 F.3d at 1317.

         Extrinsic Evidence.

         Courts are also authorized “to rely on extrinsic evidence, which consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Phillips, 415 F.3d at 1317 (citation and quotation marks omitted). Such evidence, however, is less significant than intrinsic evidence in construing disputed claim terms. Phillips, 415 F.3d at 1317.

         III. ANALYSIS

         A. The Claims and Claim Terms at Issue

         The parties dispute which claims as well as which claim terms and phrases (collectively, “terms”) are at issue. Defendants contend that claims not alleged in the SAC are not at issue while Plaintiffs argue that those claim terms disclosed in the Parties' Chart and Tables (as hereafter defined) control and Defendants should not be allowed thereafter to present new terms or modify existing terms. On this record, the Court agrees with Plaintiffs.

         The Court starts first with Defendants' argument that only claims 1, 3, 5, and 17 are at issue as they contend only those claims are alleged in the SAC. Contrary to Defendants' argument, the record shows the SAC alleges that “at least” claims 1, 3, 5, and 17 of the '029 Patent are at issue. Thus, the SAC did not limit the claims to only those claims. Moreover, the record shows the parties agreed that additional claims are at issue.

         Specifically, in accordance with the Patent Local Rules, Plaintiffs served their Initial Infringement Contentions identifying the claims infringed as claims 1-6, 8-9, 17-18, and 20. (ECF No. 69-4.) That was followed by the parties' Joint Disputed Claim Terms Chart (the “Chart”), again in accordance with the Patent Local Rules. The Chart identified nine claims (1-6, 8-9, and 17) involving 20 claim terms which the parties contended require construction.[3](ECF No. 63.) In addition, the parties submitted two tables (collectively, the “Tables”) in which claims 18 and 20 were added as those at issue. (ECF Nos. 63-1, 64.) Thus, based on these papers, the following claims have been jointly identified and agreed as being at issue: claims 1-6, 8-9, 17-18, and 20. Accordingly, as the SAC did not limit the claims at issue to being 1, 3, 5, and 17, and the parties jointly agreed to the additional claims, the Court finds that claims 1-6, 8-9, 17-18, and 20 are at issue.[4]

         Next, the Court addresses which claim terms are at issue. Here, the parties' Chart and Tables identified specific terms[5] for construction. As Plaintiffs contend, Defendants' opening Claim Construction Brief adds at least one new term (“hinged to a top of the front panel” (claim 3)) and modifies existing terms to be construed (e.g., “mounted” instead of “mounted to” (claim 1)). After agreeing to what terms are to be construed, the Court finds Defendants may not thereafter modify or add to such terms.[6] See Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1324-5 (Fed. Cir. 2016) (affirming district court's discretion in applying local rules to preclude party from arguing infringement under the doctrine of equivalents). Accordingly, as necessary, the Court will construe only those claims and terms set forth in the parties' Chart and/or Tables.

         B. The Construction of the Claim Terms at Issue

         Plaintiffs' positions as to the construction of the various disputed terms are generally consistent but Defendants' arguments have substantially vacillated leaving their position sometimes unclear. For example, in the Tables, Defendants changed their proposed construction of “right angle flanges” (claims 6, 8, 9) from “protruding edges to attach the rails” to “protruding edges for fastening the rails.” (Cf. ECF No. 63-1, page 4 with ECF No. 64, page 21.) Similarly, as discussed below, Defendants' proposed constructions changed further during the Markman hearing and, in some instances, Defendants ultimately agreed with Plaintiffs' proposed construction of the disputed term. Regardless, the Court has considered all arguments, and construes the disputed terms as follows.

         1. “adapted for mounting” (Claims 1, 17)

         Plaintiffs propose the term be construed as “modified and placed for use in combination with a furnace, ” to which Defendants agreed during the Markman hearing. Accordingly, the Court accepts such construction.[7] (ECF No. 63-1, page 1; No. 64, page 1.)

         2. “adapted for receiving” (Claims 1, 17)

         Plaintiffs propose the term be construed as “modified to accept, ” to which Defendants agreed during the Markman hearing. Accordingly, the Court accepts such construction. (ECF No. 63-1, page 1; No. 64, page 2.)

         3. “attached to/attaching” (Claims 1, 4, 17)

         Plaintiffs propose the term be construed as “coupled by joining together, ” to which Defendants agreed during the Markman hearing. Accordingly, the Court accepts such construction. (ECF No. 63-1, page 1; No. 64, page 3.)

         4. “mounted to” (Claim 1)

         Claim 1 provides the furnace filter box is comprised of, among other things, “a pair of horizontal furnace filter rails mounted to an inside of an upper portion of the first and second side panels….” (Col. 4, ll. 53-54.) Plaintiffs propose the term “mounted to” be construed as “position on to” or “positioned onto, ”[8] as it is allegedly consistent with the use of mounted/mounting in the specification. Defendants initially proposed the term be construed to mean “securely placed on.”[9] Subsequently, Defendants argued the term to be construed is “mounted, ”[10] the position they also took during the Markman hearing. That term, Defendants assert, should be construed as “set on” or “set upon” - as something other than “attached.”

         As stated, the Court will construe those terms set forth in the Chart or Tables and “mounted” is not such a term. “Mounted to, ” however, is such a term; ...

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