ULTRA-MEK, INC. v. UNITED FURNITURE INDUSTRIES, INC.

IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF NORTH CAROLINA

ULTRA-MEK, INC., )

)

Plaintiff and )

Counter Defendant, )

)

v. ) 1:18CV281

)

UNITED FURNITURE INDUSTRIES, )

INC., OISEYS INTERNATIONAL, )

INC., MAN WAH HOLDINGS LTD., )

JIANGSU YULONG SMART )

TECHNOLOGY CO., LTD., )

REMACRO MACHINERY )

TECHNOLOGY CO., LTD., )

TAIZHOU CHENGUANG VEHICLE CO., )

LTD., and MAN WAH (USA), INC., )

)

Defendants and )

Counter Claimants. )

MEMORANDUM OPINION AND ORDER

OSTEEN, JR., District Judge

Presently before this court is the disputed construction of

the patent claim limitation “opposed first and second ends.” This

court will begin by summarizing the case’s background and then

proceed to analyze the disputed claim limitation. This court

concludes that the limitation should be construed as “the

lengthwise extremities of the [power actuating unit/actuating

unit/linear actuating unit], wherein length is defined by the

axis in which the [power actuating unit/actuating unit/linear

actuating unit] moves forwardly and rearwardly.”

I. FACTUAL AND PROCEDURAL BACKGROUND

Plaintiff Ultra-Mek, Inc. is the owner of two patents that

each describe a reclining chair. (First Am. Compl. (Doc. 31)

¶¶ 22–25.) The patents are U.S. Patent Number 8,016,348 (the

“‘348 patent”) and U.S. Patent Number 8,297,693 (the “‘693

patent”). (Ex. A (“‘348 patent”) (Doc. 31-1); Ex. B (“‘693

patent”) (Doc. 31-2).)

Plaintiff sued Defendants United Furniture Industries, Inc.,

Oiseys International, Inc., Man Wah Holdings Ltd., Jiangsu Yulong

Smart Technology Co., Ltd.,1 Remacro Machinery Technology Co.,

Ltd., Taizhou Chenguang Vehicle Co., Ltd., and Man Wash (USA),

Inc. (together, “Defendants”), alleging they had infringed these

patents. (First Am. Compl. (Doc. 31) ¶¶ 73–88.) The case

proceeded to claim construction, and this court construed

disputed claim terms. (Doc. 124.) This court did not construe the

phrase “opposed first and second ends,” as used in claims 7 and

13 of the ‘348 patent and claim 1 of the ‘693 patent. (See id.)

The case progressed to the summary judgment stage, and this

court denied the parties’ summary judgment motions. (Doc. 174 at

1 Ultra-Mek’s First Amended Complaint named “New Man Wah

Vehicle Co.” as a defendant, but that entity was later

substituted for Jiangsu Yulong Smart Technology Co., Ltd.

(Doc. 81.)

40.)2 However, the summary judgment opinion included language

that was dismissive of Plaintiff’s literal infringement theory

because the allegedly infringing mechanism “does not have literal

opposed ends in the format envisioned by the patent.” (Id. at

25.) Based on this language, Defendants filed a motion in limine

to exclude any trial “testimony asserting that claims 7, 13, and

14 of the ’348 patent and claims 1, 2, and 4-7 of the ’693 patent

are literally infringed.” (Doc. 180 at 3.)

This court denied that motion as unripe, (Doc. 214 at 15),

and the parties agreed to file supplemental claim construction

briefs regarding the phrase “opposed first and second ends,”

(Doc. 211 at 32). Those briefs were filed, (Pl.’s Suppl. Claim

Construction Br. (“Pl.’s Br.”) (Doc. 215); Defs.’ Claim

Construction Br. Regarding “Opposed First and Second Ends”

(“Defs.’ Br.”) (Doc. 219)), as were briefs responding to the

opposing party’s proposed construction, (Docs. 223, 224). After

reviewing the briefing, this court shared with the parties the

construction it was considering and gave the parties an

opportunity to comment. (Doc. 230.) Both parties availed

themselves of that opportunity. (Docs. 231, 232.)

2 All citations in this Memorandum Opinion and Order to

documents filed with the court refer to the page numbers located

at the bottom right-hand corner of the documents as they appear

on CM/ECF.

II. CLAIM CONSTRUCTION

The Federal Circuit has emphasized “that a district court

may (and sometimes must) . . . supplement its claim

constructions . . . to the extent necessary to ensure that final

constructions serve their purpose of genuinely clarifying the

scope of claims for the finder of fact.” In re Papst Licensing

Digit. Camera Pat. Litig., 778 F.3d 1255, 1261 (Fed. Cir. 2015).

Such supplemental construction of the phrase “opposed first and

second ends,” as used in claims 7 and 13 of the ‘348 patent and

claim 1 of the ‘693 patent is appropriate here. The parties agree

that the phrase should be construed consistently across the three

claims despite minor differences in claim language, (compare

Pl.’s Br. (Doc. 215) at 1 n.1, with Defs.’ Br. (Doc. 219) at 2),

reflected in the bracketed language below:

wherein the [power actuating unit/actuating unit/linear

actuating unit] includes opposed first and second ends,

and wherein the first end of the [power actuating

unit/actuating unit/linear actuating unit] moves

forwardly as the seating unit moves from the upright

position to the TV position, and wherein the second end

of the [power actuating unit/actuating unit/linear

actuating unit]3 moves rearwardly when the seating unit

moves from the TV position to the fully reclined

position.

3 For ease of reference, this court will hereinafter use the

term “actuating unit” as shorthand to collectively refer to the

power actuating unit, actuating unit, and linear actuating unit.

(‘348 patent (Doc. 31-1) at 10:9–15, 11:14–12:3 (emphasis added);

‘693 patent (Doc. 31-2) at 9:45–51 (emphasis added)).

The following chart sets forth each party’s preferred

construction of “opposed first and second ends”:

Plaintiff’s Construction Defendants’ Construction

opposed first and second points Plain and ordinary meaning;

on the [power actuating wherein an “end” is one of

unit/actuating unit/linear the lengthwise extremities of

actuating unit] that are the [power actuating

connected to the unit/actuating unit/linear

[reclining/actuating] mechanism actuating unit]

(Pl.’s Br. (Doc. 215) at 1; Defs.’ Br. (Doc. 219) at 2.)

The Federal Circuit instructs courts construing patent

claims to give claim language its “ordinary and customary

meaning” as understood by “a person of ordinary skill in the art

in question at the time of the invention.” Phillips v. AWH Corp.,

415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Although “[i]n

some cases, the ordinary meaning of claim language as understood

by a person of skill in the art may be readily apparent even to

lay judges, and claim construction in such cases involves little

more than the application of the widely accepted meaning of

commonly understood words,” id. at 1314, that is not the case

here. As an example of such commonly understood language, the

Federal Circuit cites a case where the word “or” did “not require

elaborate interpretation” because it was not a “technical term[]

of art” and thus was construed in accordance with its plain and

ordinary meaning. Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir.

2001). In contrast, the phrase “first and second opposed ends” is

less widely utilized language with a much less readily apparent

common understanding and consequently may have a particular

meaning to a person of ordinary skill in the art. See Phillips,

415 F.3d at 1314. Therefore, this court rejects the opening

language from Defendants’ proposed construction that calls for

the phrase to be construed pursuant to its “[p]lain and ordinary

meaning.” (Defs.’ Br. (Doc. 219) at 2.) This court will instead

consult evidentiary “sources available to the public that show

what a person of skill in the art would have understood [the]

disputed claim language to mean.” Innova/Pure Water, Inc. v.

Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed.

Cir. 2004).

The court begins with the intrinsic evidence because “[t]he

intrinsic record in a patent case is the primary tool to supply

the context for interpretation of disputed claim terms.” V-

Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1310 (Fed.

Cir. 2005). The first category of intrinsic evidence that will be

addressed is “the claims themselves [which] provide substantial

guidance as to the meaning of particular claim terms.” Phillips,

415 F.3d at 1314.

Plaintiff maintains that the claims containing the disputed

language are referring to “the functional ends of the actuator—

not its physical extremities—which translate the linear force

created by the actuator into the movement of the seating unit.”

(Pl.’s Br. (Doc. 215) at 3.) Plaintiff asserts its construction

explains how the opposed first and second ends provide this

functionality and will aid the jury “by explaining how those

functional ends are configured.” (Id.) Defendants disagree and

argue that “within the claims, ‘opposed’ modifies ‘ends,’ which

makes sense when an end is understood as a lengthwise extremity,

but conversely makes little sense if ends are merely points

anywhere on the actuating unit.” (Defs.’ Br. (Doc. 219) at 4.)

This court is unpersuaded by both parties’ arguments. Courts

are to consider “the words of the claims themselves” when

examining claim language. Vitronics Corp. v. Conceptronic, Inc.,

90 F.3d 1576, 1582 (Fed. Cir. 1996). Here, the claim limitation

in which the phrase “opposed first and second ends” appears only

explains what direction the ends move (forwardly and rearwardly)

and when that movement occurs (in two stages as the seating unit

reclines). (‘348 patent (Doc. 31-1) at 10:9–15, 11:14–12:3; ‘693

patent (Doc. 31-2) at 9:45–51.)

Contrary to Plaintiff’s argument, nothing in the express

language of the claims—or even their readily apparent purpose—

conclusively dictates that the opposed first and second ends are

the actuating unit’s functional ends. Defendants’ argument is

equally unavailing because the mere use of the word “opposed”

does not require that the ends be understood as “lengthwise

extremities.” Even if the ends were understood as “points”

elsewhere on the actuating unit (as Plaintiff wishes), those ends

could still conceivably and fairly be described as “opposed.” No

evidence has been presented that a person of ordinary skill in

the art would readily understand the word “opposed” to inherently

require that the ends be any certain distance or stand in any

particular positional relationship with one another.

Because the claims themselves do not resolve the ambiguity

of the disputed term, this court will examine the patents’

specification as “[c]laims must be read in view of the

specification, of which they are a part.” Markman v. Westview

Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc),

aff’d, 517 U.S. 370 (1996). Patents’ specifications “contain[] a

written description of the invention that . . . enable[s] one of

ordinary skill in the art to make and use the invention.” Id. at

978. “[T]he specification ‘is always highly relevant to the claim

construction analysis. Usually, it is dispositive; it is the

single best guide to the meaning of a disputed term.’” Phillips,

415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582).

Nevertheless, “particular embodiments appearing in a

specification will not be read into the claims when the claim

language is broader than such embodiments.” Electro Med. Sys.,

S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir.

1994).

While both parties insist the patents shared

specification’s4 use of the word “end” supports their proposed

construction, Defendants have the better argument. Plaintiff

cites language from the specification in which the phrases “rear

end” and “front end” are used; Plaintiff insists that this “shows

that the patentee knew how to restrict an ‘end’ to the front or

back, i.e. to a ‘lengthwise extremity’—and deliberately chose not

to do so” in the claim limitations at issue. (Pl.’s Br.

(Doc. 215) at 5.) But Defendants point to half a dozen instances

where “the specification uses end to refer to a lengthwise

extremity of a component,” one of which does so without using the

modifiers “front” and “rear,” or any other adjective, before the

word “end.” (Defs.’ Br. (Doc. 219) at 4–5 (describing, inter

alia, a “link 31, which is attached at either end . . . at pivots

22, 27,” where figure 4 shows those pivots at the lengthwise

4 The two patents’ specifications appear identical. (Compare

‘348 patent (Doc. 31-1) at 4–17, with ‘693 patent (Doc. 31-2) at

4–17.)

extremities of link 31 (internal quotation marks omitted)

(emphasis added)) .)

The specification offers further support for Defendants’

proposed construction. Defendants explain that the specification

shows an “‘end’ of the linear actuator, which is the end of the

‘rod 118,’ attaches to the ‘projecting bracket 46’ at ‘pivot

122,’ which is at one lengthwise extremity of the actuating unit,

whereas the other ‘end’ is at pivot 120 at the other lengthwise

extremity of the actuating unit.” (Id. at 3 (quoting ’348 patent

at 6:50-58).) This is visible in figures from the patents that

Defendants have cropped and annotated:

99 SS SS EPS TD 10

ee 4S _

at PN ep i KO mt:

_ ptt =~) WAR eS

(Id. (excerpting and annotating figs.2A, 5).) Because “claims are

not to be interpreted by adding limitations appearing only in the

specification,” Electro Med. Sys., 34 F.3d at 1054, this

embodiment does not by itself suffice to conclude that the

“opposed first and second ends” claim limitation should be

construed pursuant to Defendants’ proposed “lengthwise extremity”

construction. Nonetheless, it lends support to Defendants’

construction because the patents’ specification serves as the

=_ 10 =_

“best guide to the meaning of” the disputed claim language.

Vitronics, 90 F.3d at 1582.

That the specification supports the “lengthwise extremity”

construction differentiates this case from Presidio Components,

Inc. v. AVX Corporation, 825 F. App’x 909 (Fed. Cir. 2020), an

unpublished Federal Circuit decision on which Plaintiff relies,

(Pl.’s Br. (Doc. 215) at 2, 4). Presidio found no error in a

construction of “end” that was broader than a “lengthwise

extremity” because, inter alia, there was “nothing in the

specification to” support the “lengthwise extremity”

construction. See 825 F. App’x at 917. In contrast, the patents’

specification here supports a narrower construction because of

its use of the word “end” and an embodiment it describes. Thus,

this case is more similar to Advanced Steel Recovery, LLC v. X-

Body Equipment, a published Federal Circuit decision affirming

the construction of “proximate end” as “the extreme or last part

lengthwise” because, inter alia, that construction was supported

by the patent’s specification. 808 F.3d 1313, 1317–18 (Fed. Cir.

2015).

Plaintiff raises one more intrinsic evidence source: prior

art cited in the patents. (Pl.’s Br. (Doc. 215) at 6.) “[P]rior

art cited in a patent . . . constitutes intrinsic evidence.”

Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed. Cir.

2003). Prior art citations can be examined to see how a disputed

patent claim term was previously used. Id. (explaining that a

claim term may be construed based on “its usage in the prior art

that was cited in the patent”). But here the language Plaintiff

proffers from a prior art citation does not include any terms

that are in the disputed claim limitation at issue. (Pl.’s Br.

(Doc. 215) at 6 (“[O]ne prior art reference cited on the face of

the patents at issue explains with respect to linear actuators

that ‘its ultimate embodiment is a matter of choice, the

requirement being simply that the two relative pivots 9 and 15

can be drawn together and spread apart.’” (quoting Doc. 216-2 at

3:20-24)).) Thus, the probative value of this evidence is

limited and outweighed by the specification evidence supporting

Defendants’ proposed construction.

To summarize, three sources of intrinsic evidence have been

put forward by the parties: the claim language, the

specification, and a prior art citation from the patents. The

claim language is ambiguous, and the prior art citation is of

limited probative value; consequently, the specification tips the

scale decisively in favor of Defendants’ “lengthwise extremity”

construction.5 The Federal Circuit has held that when construing

claims the specification usually “is dispositive,” Phillips, 415

F.3d at 1315, and it is in this case. However, this court

stresses that the adoption of the “lengthwise extremity”

construction does not limit the claimed actuating unit to solely

the rod-style actuator disclosed in the specification.

To provide greater clarity and to orient the direction of

“lengthwise,” this court will add language to the construction

defining “length” as “the axis in which the [power actuating

5 The parties also proffer various extrinsic evidence

sources. But because extrinsic evidence is inherently less

reliable, it should only be consulted when the intrinsic

evidence fails to resolve a disputed term’s ambiguity. See

Vitronics, 90 F.3d at 1583 (“In most situations, an analysis of

the intrinsic evidence alone will resolve any ambiguity in a

disputed claim term. In such circumstances, it is improper to

rely on extrinsic evidence.”).

Here, the intrinsic evidence itself conclusively resolves

the disputed term’s ambiguity so there is no need to examine any

extrinsic evidence. Indeed, the extrinsic evidence advanced by

the parties exemplifies the inherent weaknesses in such

evidence. Defendants offer three dictionary definitions that

define “end” in accordance with their proposed construction.

(Defs.’ Br. (Doc. 219) at 3–4.) But “claims are construed as they

would be understood by a hypothetical person of skill in the

art,” and these definitions are from general purpose dictionaries

which are not “written by or for skilled artisans and therefore

may not reflect the understanding of a skilled artisan in the

field of the patent.” Phillips, 415 F.3d at 1318. The extrinsic

evidence Plaintiff marshals—testimony from its expert and one of

the patents’ inventors, (Pl.’s Br. (Doc. 215) at 5–6)—is even

less reliable, Vitronics, 90 F.3d at 1585 (Because dictionaries

“are accessible to the public in advance of litigation . . .

[t]hey are to be preferred over” “testimony, whether it be of .

. . a technical expert, or the inventor, on the proper

construction of a disputed claim term.”).

unit/actuating unit/linear actuating unit] moves forwardly and

rearwardly.” This language prevents a party from attempting to

describe a different direction for “length”—such as laterally

across the actuating unit—and claiming the extremities according

to that direction are the “lengthwise extremities” of the

actuating unit. That would be inconsistent with the patent and is

foreclosed by this clarifying language.

III. CONCLUSION

For the reasons set forth herein, this court construes the

“opposed first and second ends” claim limitation as “the

lengthwise extremities of the [power actuating unit/actuating

unit/linear actuating unit], wherein length is defined by the

axis in which the [power actuating unit/actuating unit/linear

actuating unit] moves forwardly and rearwardly.”

Within five days of the issuance of this Order, the parties

shall meet and confer to discuss whether in light of this adopted

construction there is a need for additional expert reports,

expert disclosures, and summary judgment briefing. If so, the

parties shall set deadlines to complete this work, including any

responsive briefing, by July 11, 2022.

IT IS SO ORDERED.

This the 2nd day of June, 2022.

*,

Wim L. Khe, ~

United States District Jfidge

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