002152706 Ontario Limited v. Changer & Dresser Inc.

UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ALABAMA

EASTERN DIVISION

COPPERHEAD INDUSTRIAL, Inc., }

}

Plaintiff/Counter Defendant, }

v. } Case No.: 1:18-cv-01228-ACA

}

CHANGER & DRESSER, Inc. }

}

Defendant/Counter Claimant. }

MEMORANDUM OPINION

This case is before the court on the parties’ proposed claim constructions

with respect to disputed terms in four United States patents.

Plaintiff Copperhead Industrial, Inc. (“Copperhead”) alleges that Defendant

Changer & Dresser (“C&D”) has infringed United States Patent Numbers

8,742,281 (“the ‘281 patent”); 9,168,609 (“the ‘609 patent”); 9,393,639 (“the ‘639

patent”); and 9,757,814 (“the ‘814 patent).

The court conducted a Markman hearing on October 29, 2019 regarding

patent claims in the four patents-in-suit. After consideration of the parties’ written

and oral arguments regarding the claims in dispute, the court has construed several

claim terms, as discussed below.

I. FACTUAL AND PROCEDURAL BACKGROUND

This matter concerns four patents related to spot welding machines.1 (Doc.

78 at 5). Spot welding is used to fuse sheets of metal together. (Id.). A spot

welding machine generally has two elongated electrodes that are positioned

opposite each other along the same axis. (Id.) Protective caps made of a rigid

metal like copper are affixed to the ends of the electrodes. (Doc. 78 at 6).

During the welding process, the sheets of metal are positioned between the

caps of the two electrodes, and the caps provide a clamping force to hold the sheets

of metal together before the weld is formed. (Id.). Electrical current is applied to

form the weld. (Id.). The current generates heat which causes the sheets of metal

to fuse together at the point where the electrode caps apply the clamping force.

After repeated use, the caps wear out and must be replaced. (Doc. 78 at 7). To

replace the caps, the worn cap must be detached, and a new cap affixed to the

electrode. (Id.).

The patents-in-suit address spot welding cap changers which supply

protective caps that can be automatically accessed and replaced on the end of spot

welding electrodes. The patents-in-suit are part of the same patent family. The

‘814 patent is a continuation of the ‘639 patent, which is a continuation of the ‘609

1 The technical background that follows is adapted from Copperhead’s opening claim

construction brief. (Doc. 78 at 5–7). Changer & Dresser “generally agrees with the technical

background and overview of the patent-in-suit” that Copperhead provided in its brief. (Doc. 83

at 6). Therefore, the court adopts those representations for purposes of this opinion.

patent, which is a continuation of the ‘281 patent. (See Doc. 100-2 at 2; Doc. 100-

3 at 2; Doc. 100-4 at 2). All of the patents have the same specification. (Doc. 100-

1; Doc. 100-2; Doc. 100-3; Doc. 100-4).

In the operative complaint, Copperhead alleges that C&D has infringed the

four patents-in-suit and has induced others to infringe one of the patents. (Doc.

100 at 4–9). C&D filed counterclaims seeking a declaratory judgment that it has

not infringed any valid, enforceable claim of the patents-in-suit; that the patents-in-

suit are invalid; and that the patents-in-suit are unenforceable. (Doc. 140 at 22–

43). The parties now ask the court to construe disputed claim terms recited in the

patents-in-suit.

II. LEGAL STANDARD

“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) (quotation marks omitted).

The purpose of claim construction is to determine the meaning and scope of a

patent claim, and the exercise is a matter of law for the court. O2 Micro Intern.

Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008)

(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.

1995) (en banc), aff’d, 517 U.S. 370 (1996)).

“Claim construction begins with the language of the claims.” Kaneka Corp.

v. Xiamen Kingdomway Group Co., 790 F.3d 1298, 1304 (Fed. Cir. 2015) (citing

Phillips, 415 F.3d at 1312–14). Courts generally should give the words of a claim

their “ordinary and customary meaning,” which 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.” Phillips, 415 F.3d at 1312–13. To make that determination, the court

considers intrinsic evidence, which consists of the patent claims themselves, the

specification, and the patent’s prosecution history. Phillips, 415 F.3d at 1314–17.

“The specification contains a written description of the invention which

must be clear and complete enough to enable those of ordinary skill in the art to

make and use it.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.

Cir. 1996). The specification is “the single best guide to the meaning of a disputed

term.” Id. For example, “the specification may reveal a special definition given to

a claim term by the patentee that differs from the meaning it would otherwise

possess,” in which case “the inventor’s lexicography governs.” Phillips, 415 F.3d

at 1316 (Fed. Cir. 2005). Or “the specification may reveal an intentional

disclaimer, or disavowal, of claim scope by the inventor,” in which case “the

inventor has dictated the correct claim scope, and the inventor’s intention, as

expressed in the specification, is regarded as dispositive.” Id.

In addition to the specification, the court “should also consider the patent’s

prosecution history, if it is in evidence,” when construing a patent claim. Id. at

1317 (quotation marks omitted). The prosecution history “consists of the complete

record of the proceedings before the [Patent and Trademark Office] and includes

the prior art cited during the examination of the patent.” Phillips, 415 F.3d at

1317. The Federal Circuit has cautioned that “because the prosecution history

represents an ongoing negotiation between the PTO and the applicant, rather than

the final product of that negotiation, it often lacks the clarity of the specification

and thus is less useful for claim construction purposes.” Id. However, “the

prosecution history can often inform the meaning of the claim language by

demonstrating how the inventor understood the invention and whether the inventor

limited the invention in the course of prosecution, making the claim scope

narrower than it would otherwise be.” Id.

Although less significant than intrinsic evidence, the court also may rely on

extrinsic evidence, which consists of “expert and inventor testimony, dictionaries,

and learned treatises.” Phillips, 415 F.3d at 1317 (quotation marks omitted).

When “considered in the context of the intrinsic evidence,” extrinsic evidence “can

help the court determine what a person of ordinary skill in the art would

understand claim terms to mean.” Id. at 1319.

III. DISCUSSION

The parties originally disputed the construction of over two dozen claim

terms or phrases with respect to the four patents-in-suit. (Doc. 75 at 5-8; Doc. 143-

1 at 1-4). The parties have agreed upon the construction of five terms. (Doc. 170).

At the court’s instruction, the parties narrowed the remaining disputed claim terms

or phrases to those most significant to resolution of this action. (Doc. 167). The

court addresses each term below.2

1. “spring box”

The parties disagree on the construction of “spring box” as used in claim 21

of the ‘281 patent; claims 1, 12, and 13 of the ‘609 patent; and claims 16, 32, and

50 in the ‘639 patent.

Copperhead’s proposed construction is “a container distinct from the cap

carrier that includes a spring-like element providing a torsion force to advance the

welding caps contained within the cap carrier.” (Doc. 75 at 5).3 C&D’s proposed

construction is “a container, which is a separate, independent and distinct structural

component from the cap carrier, that holds a spring.” (Doc. 75 at 5). C&D argues

that the claim language, the specification, and the prosecution history all support

2 The court will construe any remaining disputed claims, if necessary, at a later date.

3 In the parties’ joint statement regarding disputed terms, Copperhead proposed an

alternative construction of “an enclosure within which a spring is anchored.” (Doc. 75 at 5). But

Copperhead advanced no argument with respect to this proposed construction in its briefs or

during the Markman hearing. (See Doc. 78 at 24–25; Doc. 88 at 17–20). Therefore, the court

does not consider Copperhead’s proposed alternative construction.

its construction of “spring box” which requires a structural separation. The court

agrees.

Starting with the claim language itself, claim 21 of the ‘281 patent states that

the cap magazine is comprised of two components: a cap carrier and a spring box.

(Doc. 100-1 at 10). Because claim 21 of the ‘281 patent lists the cap carrier and

spring box as separate elements, “the clear implication of the claim language” is

that those elements are “distinct component[s]” of the patented invention. Gaus v.

Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v.

Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996) (when a claim provides

for two separate elements, a “second portion” and a “return portion,” these two

elements “logically cannot be one and the same”).

In addition to listing the cap carrier and spring box as two separate

components, claim 21 of the ‘281 patent identifies the function of the spring box:

“a spring box for driving the spot welding caps within the cap carrier. . .the spring

box providing an advancing force to advance the caps one by one so that the caps

bear against a stop in the cap magazine in an access position.” (Doc. 100-1 at 10).

If the spring box drives the cap carrier, then the two structures must be separate.

Otherwise, the spring box “has no role in the claim” and “is entirely superfluous.”

Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006); see also

Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111,

1119 (Fed. Cir. 2004) (“If, as Safari proposes, the claim refers in the abstract to the

creation of a filter assembly structure, without any grounding to an intended use,

the term ‘operatively’ is unnecessary and superfluous as the patentee could have as

easily used the term ‘connected’ alone.”).

Other claim language is instructive. For instance, claim 22 of the ‘281

patent and claim 1 of the ‘609 patent state that the spring box “includes a spring,

one end of which is fixed at the spring box, and the other end of which is fixed at

the cap carrier.” (Id.; see also Doc. 100-2 at 11). These claims demonstrate a

physical separation between the spring box and the cap carrier because the claims

recite that each end of the spring is attached to two separate components. See CAE

Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed.

Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that

the use of . . . different terms in the claims connotes different meanings.”).

In addition to the claim language, the specification supports C&D’s

proposed construction. The specification states that “each cap magazine contains a

cap carrier, which, driven by a spring box, presses by way of its advancing force

one of the caps respectively against the stop.” (Doc. 100-1 at 8). Like the nearly

identical claim language discussed above, this language from the specification

reinforces that the spring box must be an independent structure from the cap carrier

because the spring box has a function relative to the cap carrier. The specification

also states a “preloaded spindle or spiral spring is arranged centrally in the spring

box [], one end of the spring being fixed to the spring box [], the other to the cap

carrier.” (Doc. 100-1 at 9). This language also demonstrates that the spring box

must be an independent structure from the cap carrier because one end of the

spring is attached to some component (i.e. the spring box) other than the cap

carrier itself. The specification further explains that the spring box “carr[ies] the

bracket [] so that it can be radially moved.” (Doc. 100-1 at 9). Thus, one function

of the spring box as identified in the specification is to hold the bracket, and

without some structure independent from the cap carrier, there would be nothing to

support the bracket.

In addition, the specification contains an embodiment of the spring box in

Figure 5 and notes that the figure shows the spring box “in the centre of the cap

carrier.” (Doc. 100-1 at 9). The court agrees with C&D that the specification

discloses only one embodiment which shows the spring box as a separate and

independent container. (See Doc. 83 at 16). The court is mindful that the Federal

Circuit has “expressly rejected the contention that if a patent describes only a

single embodiment, the claims of the patent must be construed as being limited to

that embodiment.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed.

Cir. 2004) (emphasis added). However, it is entirely appropriate to construe claims

consistent with a single embodiment where, as here, other intrinsic evidence

reveals the limiting nature of the claims. Id. at 907 (courts may construe claims as

limited to the sole embodiment when “specific reasons” exist “dictating a narrow

claim construction beyond the mere fact that the specification disclosed only a

single embodiment or a particular structure”).

Finally, the prosecution history reinforces that there must be a structural

separation between the cap carrier and the spring box. In its preliminary response

before the Patent and Trademark Office during the prosecution of the ‘281 patent,4

Copperhead made numerous arguments indicating that the spring box and the cap

carrier must be construed as independent or separate structures. For example,

Copperhead stated that “under the proper interpretation of claims 21 and 22, the

spring box must be a structure independent and distinct from the cap carrier.”

(Doc. 84-9 at 32). Copperhead also explained that claim 1 of the ‘281 patent

indicates that that spring box drives the cap carrier which “plainly contemplates a

structural separation between the two components.” (Doc. 84-9 at 33) (emphasis

added). In addition, Copperhead noted that “the spring box described in claim 21

must be separate and distinct from the cap carrier if the spring as described in

claim 22 has one end fixed to the spring box and the other end fixed to the cap

4 JEC’s preliminary response addressed the “spring box” limitation in the context of

claims 21 and 22 of the ‘281 patent, but “the prosecution history of one patent is relevant to an

understanding of the scope of a common term in a second patent stemming from the same parent

application.” Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004).

Therefore, Copperhead’s statements with respect to “spring box” in claims 21 and 22 of the ‘281

patent apply equally to all other claims in the ‘609 and ‘639 patent that recite “spring box.”

carrier.” (Doc. 84-9 at 34). Copperhead also stated that the “written description

and drawings further confirm that the spring box is a component distinct and

separate from the cap carrier.” (Doc. 84-9 at 34). Copperhead summarized its

argument this way: “In short, the specification supports the conclusion that the

spring box is a separate structural component of the cap magazine distinct from the

cap carrier.” (Doc. 84-9 at 34).

Moreover, in distinguishing its patent from prior art, Copperhead again

reiterated that the ‘281 patent requires that the cap carrier and the spring box be

separate components. First, as to the Koch patent, Copperhead explained that the

“spring box must be a separate and distinct element from the cap carrier, which

magazine chambers 5a and 5b (of the Koch patent) are not.” (Doc. 84-9 at 40).

Second, with respect to the Takaba patent, Copperhead noted that C&D failed to

“identify a component in Takaba that corresponds to a ‘cap carrier’ and a separate

and distinct component in Takaba that corresponds to a ‘spring box’” (doc. 84-9 at

48) because “cylinder 61 [of Takaba] cannot be both the cap carrier that receives

the caps and the box of spring 62 [of Takaba]” (doc. 84-9 at 50–51).

Copperhead claims that its proposed construction of “spring box” is identical

to the construction it advanced during the prosecution history of the ‘281 patent.

(Doc. 88 at 20). As a technical matter that may be true. The claim construction

section of Copperhead’s preliminary response urged the Patent Trial and Appeal

Board to construe the term “spring box” as “a container distinct from the cap

carrier that includes a spring-like element providing a torsion force to advance the

welding caps contained within the cap carrier.” (Doc. 84-9 at 36). This

construction mirrors the construction that Copperhead proposes here. But

Copperhead overlooks the numerous limiting statements outlined above in which

Copperhead repeatedly argued that the spring box must be a separate or

independent structure from the cap carrier—not merely distinct from the cap

carrier. The court will not construe the scope of “spring box” more broadly than

Copperhead envisioned.

In sum, based on the intrinsic evidence, the court finds that “spring box” is

“a container, which is a separate, independent and distinct structural component

from the cap carrier, that holds a spring.”

2. “spring advancing caps”

The parties group four different claim phrases under the heading “spring

advancing caps.” (See Doc. 144 at 10-13; Doc. 145 at 14). These terms include:

(1) “a spring for driving a cap carrier, the spring providing an advancing force to

advance the caps” as used in claims 58 and 67 of the ‘814 patent; (2) “driving

rotation of the cap carrier with a spring” as used in claim 10 of the ‘814 patent; (3)

“a spring for rotating the cap carrier to advance the caps one by one” as used in

claims 20 and 77 in the ‘814 patent; and (4) “a spring for advancing the caps one

by one” as used in claims 29, 39, 48, 68, and 86 in the ‘814 patent. (Id.). Each of

these phrases relates to the spring advancing or driving the cap carrier or caps

within the carrier. (Doc. 144 at 11; Doc. 145 at 15).

The parties’ dispute over the construction of these phrases is whether the

spring must be located within a spring box. (Doc. 144 at 10-13; Doc. 145 at 14).

Copperhead contends that these claims should not be construed as requiring a

spring box. (Doc. 144 at 10-11). C&D argues that when read in light of the

specification and prosecution history, the claims should be construed as requiring a

spring box. (Doc. 145 at 14-23).

The claim language itself appears to support Copperhead’s position because

the relevant claims in the ‘814 patent do not use the phrase “spring box.” But

some context is helpful. The ‘281 patent claims recite a “spring box” for driving

or advancing the cap carrier. (See Doc. 100-1 at 10). The original claims in the

‘609 patent recited an “actuator” instead of a “spring box.” (Doc. 84-4 at 3–7).

During prosecution of the ‘609 patent, Copperhead amended the claims to state

that that “actuator” includes a “spring box that includes a spring.” (Doc. 84-4 at

18–10; see Doc. 100-2 at 10–11). The ‘639 and ‘814 patent claims only recite a

“spring.” (Doc. 100-3 at 10–11; Doc. 100-4 at 10–11).

C&D argues that the only embodiment disclosed in the specification does

not contemplate a cap magazine without a spring box. (Doc. 145 at 15). The court

agrees, but this issue alone is not dispositive because “[e]ven when the

specification describes only a single embodiment, the claims of the patent will not

be read restrictively unless the patentee has demonstrated a clear intention to limit

the claim scope using words or expressions of manifest exclusion or restriction.”

Liebel-Flarsheim Co., 358 F.3d at 906 (quotations omitted). The specification and

the prosecution history contain limiting language that Copperhead cannot now

disavow.

The specification states that the spring box is part of the “solution” for the

stated object of the invention which is “to provide for an automatic faster and safer

exchange of the spot welding caps both at mobile and stationary spot welding

installations with a short access distance.” (Doc. 100-4 at 9). See SciMed Life

Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir.

2001) (“[T]he characterization of the coaxial configuration as part of the ‘present

invention’ is strong evidence that the claims should not be read to encompass the

opposite structure.”); Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1301

(Fed. Cir. 1999) (limiting a claim to what was disclosed in the specification

because the specification described the particular component “as important to the

invention”). Moreover, the specification discloses only one structure for driving

the cap carrier or advancing the caps within the carrier: a spring box. (See Doc.

100-4 at 9). Therefore, the court finds that the claim language, as read in light of

the specification, limits “spring advancing caps” to a spring within a spring box

The prosecution history confirms this limitation. As Copperhead expressly

acknowledged in its preliminary response during the Inter Partes Review of the

‘281 patent, “[t]he only element disclosed in the specification for driving the

welding caps in the cap carrier to the access position is the spring box.” (Doc. 84-

9 at 34).

Contrary to Copperhead’s argument with respect to this claim (see Doc. 144

at 15), the court is not limiting the claim to a preferred (and in this case, only)

embodiment. Rather, the court finds no basis in the written description or the

prosecution history for construing “spring advancing caps” to mean anything other

than including a spring box. Accordingly, “spring advancing caps” means “a

spring, within a spring box, for driving the cap carrier, the spring exerting a force

to advance the caps.”

3. “actuator” and “the actuator providing an advancing force to

advance the caps”

The parties disagree on the construction of “actuator” and “the actuator

providing an advancing force to advance the caps” as used in claims 1 and 6 of the

‘609 patent.

a. “actuator”

Copperhead’s proposed construction of “actuator” is “a mechanical device

for moving something.” (Doc. 75 at 6). C&D argues that the term “actuator” is

indefinite. (Id.). Alternatively, C&D proposes that “actuator” must be construed

as a “spring box” to maintain the relevant claims’ validity. (Id.; see also Doc. 83 at

28–29).

The court rejects C&D’s indefiniteness challenge at this stage in the

proceedings. The Patent Act mandates that a patent specification, which is the

written portion of a patent, “shall conclude with one or more claims particularly

pointing out and distinctly claiming the subject matter which the applicant regards

as his invention. 35 U.S.C. § 112, ¶ 2 (2006).5 A patent claim is invalid for

indefiniteness when “viewed in light of the specification and prosecution history,”

the claims fails to “inform those skilled in the art about the scope of the invention

with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.

898, 910 (2014). The court may find a claim is indefinite only “where an accused

5 “Congress amended 35 U.S.C. § 112 when it passed the Leahy-Smith America Invents

Act (“AIA”), and the amendments took effect on September 16, 2012.” Advanced Ground

Information Systems, Inc. v. Life360, Inc., 830 F.3d 1341, 1343 n.1 (Fed. Cir. 2016) (citing Pub.

L. No. 112-29, § 4 125 Stat. 284, 296-97 (2011)). Section 112 now states that “[t]he

specification shall conclude with one or more claims particularly pointing out and distinctly

claiming the subject matter which the inventor or a joint inventor regards as the invention.” 35

U.S.C. § 112(b). The patents-in-suit claim priority to an application filed before September 16,

2012. (See Doc. 100-1 at 2). Therefore, the pre-AIA version of § 112 governs interpretation of

the patent-in-suit. See Life360, Inc., 830 F.3d at 1343 n.1.

infringer shows by clear and convincing evidence that a skilled artisan could not

discern the boundaries of the claim based on the claim language, the specification,

and the prosecution history, as well as her knowledge of the relevant art area.”

Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249–50 (Fed. Cir.

2008).

C&D argues that the term “actuator” is indefinite because the term does not

appear anywhere in the specification, and the specification does not reference a

structure that might correspond to an “actuator” that is separate from a “spring

box”. (Doc. 83 at 27; see also Doc. 100-2 at 2–10). Copperhead contends that the

term actuator is well-known and readily understood by a personal of ordinary skill

in the art as evidenced by the dictionary definition: “a mechanical device for

moving something.” (Doc. 88 at 24; see also Doc. 79-5 at 3). C&D responds that

simply because a term can be found in a dictionary does not mean that the claims

inform with reasonable certainty those skilled in the art about the scope of the

invention. (Doc. 89 at 17). However, C&D offers no evidence—much less clear

and convincing evidence—that a person of ordinary skill in the art would not

understand the term actuator. (See generally Doc. 83 at 27–29; Doc. 89 at 17–19).

Therefore, C&D has not met its burden of establishing that “actuator” is indefinite.

C&D alternatively urges the court to adopt its construction of “actuator” as

meaning “spring box” to preserve the validity of the relevant claims under the first

paragraph of Section 112 of the Patent Act. (Doc. 83 at 28–29; Doc. 89 at 18).

This section states that the specification must “contain a written description of the

invention, and of the manner and process of making and using it, in such full, clear,

concise, and exact terms as to enable any person skilled in the art to which it

pertains, or with which it is most nearly connected, to make and use the same.” 35

U.S.C. § 112(a). Known as the “written description” clause, this section “has been

construed to mandate that the specification satisfy two closely related

requirements.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336,

1344 (Fed. Cir. 2005). “First, it must describe the manner and process of making

and using the invention so as to enable a person of skill in the art to make and use

the full scope of the invention without undue experimentation.” Id. at 1344–45.

“Second, it must describe the invention sufficiently to convey to a person of skill in

the art that the patentee had possession of the claimed invention at the time of the

application, i.e., that the patentee invented what is claimed.” Id. at 1345. An

alleged infringer must show “by clear and convincing evidence that the written

description requirement has not been satisfied.” Invitrogen Corp. v. Clontech

Labs., Inc., 429 F.3d 1052, 1072 (Fed. Cir. 2005).

C&D contends that the patents-in-suit disclose a “single, very specific

embodiment that uses a spring box to rotate the cap carrier,” and this specification

“would not convey to those skilled in the art that, at the time of invention, the

inventor of the patents-in-suit had invented any other kind of ‘actuator’ that rotates

the cap carrier, nor would the specification enable those skilled in the art to make a

magazine with an actuator that was separate from the spring box.” (Doc. 83 at 28).

Therefore, according to C&D, “[i]f not limited to ‘spring box,’ the claims reciting

an ‘actuator’ would be invalid for lack of enablement and written description.”

(Doc. 83 at 28). But “the failure of the specification to specifically mention a

limitation that later appears in the claims is not a fatal one when one skilled in the

art would recognize upon reading the specification that the new language reflects

what the specification shows has been invented.” All Dental Prodx, LLC v.

Advantage Dental Prods., Inc., 309 F.3d 774, 779 (Fed. Cir. 2002). C&D cites no

evidence from which the court could conclude that this is not the case.

Accordingly, the court finds that C&D has not satisfied its burden of showing by

clear and convincing evidence that the claims reciting an “actuator” are invalid for

lack of a written description.

Because C&D has presented no evidence to support its indefiniteness and

invalidity challenges, the court will reconsider those issues on a more fully

developed record. The additional evidence on those issues will inform the court’s

analysis with respect to construction of the term “actuator.” Therefore, the court

defers construction of the term.

b. “the actuator providing an advancing force to advance the caps”

Copperhead contends that no construction is necessary with respect to “the

actuator providing an advancing force to advance the caps,” and the court should

give the term its ordinary and customary meaning. (Doc. 75 at 6). Alternatively,

Copperhead proposes the following construction: “the actuator (as defined herein)

provides a force to advance or transport the spot welding caps toward a stop (as

defined herein).” (Id.).

C&D argues that the term “the actuator providing an advancing force to

advance the caps” is indefinite. (Doc. 75 at 6). Alternatively, C&D proposes that

the term means “the spring box exerting a force to advance the caps” (Doc. 75 at

6).

With the exception of the meaning of “actuator,” there is no dispute about

“the actuator providing an advancing force to advance the caps.” (See generally

Doc. 78 at 30-31; Doc. 83 at 27-29; Doc. 88 at 24-26; Doc. 89 at 17-19). For the

same reasons explained above with respect to “actuator,” the court defers

construing “the actuator providing an advancing force to advance the caps,” at this

stage in the proceedings.

4. “a gripper which in response to a turning and axial extraction

movement detaches a spot welding cap of a pincer spot welding head”

and “a gripper which in response to an extraction movement detaches

a spot welding cap of a pincer spot welding head”

The parties disagree on the construction of “a gripper which in response to a

turning and axial extraction movement detaches a spot welding cap of a pincer spot

welding head” as used in claim 6 of the ‘609 patent, and “a gripper which in

response to an extraction movement detaches a spot welding cap of a pincer spot

welding head” as used in claim 17 of the 639 patent.

a. “a gripper which in response to a turning and axial extraction

movement detaches a spot welding cap of a pincer spot welding

head”

Copperhead’s proposed construction of “a gripper which in response to a

turning and axial extraction movement detaches a spot welding cap of a pincer spot

welding head” is “a component in the robotic system that grasps an object detaches

from a spot welding cap of a pincer spot welding head in response to relative

rotational movement and axial pulling-off movement.” (Doc. 75 at 5).

C&D’s proposed construction of the phrase is “a component, which in

response to a single rotational and axial movement of the pincer spot welding head,

detaches a spot welding cap of a pincer spot welding head.” (Id.).

There are three central disputes with respect to this term. First, the parties

disagree about the construction of “gripper” as used in the term. Second, the

parties dispute whether the gripper performs the turning and axial extraction

movement or whether the gripper clamps the cap tightly and detaches the cap in

response to a turning and axial movement performed by the welding head. Third,

the parties dispute whether the extraction movement is one movement that is both

rotational and axial or whether the claim covers two separate extraction

movements—one axial and one rotational.

Regarding “gripper,” Copperhead proposes to incorporate the scientific and

technical definition of the term “gripper” which is “a component of a robot that

grasps an object.” (Doc. 78 at 32). The court rejects this construction for the same

reasons explained below with respect to term 6. See infra pp. 28–29. For its part,

C&D proposes to use a generic term “component” to describe the “gripper.” (Doc.

83 at 22; Doc. 89 at 11). The court rejects this construction as well and adopts the

construction of “gripper” proposed by C&D and adopted by the court below

concerning term 6 because “gripper” should retain a consistent construction

throughout related claim terms. Research Plastics, Inc. v. Federal Packaging

Corp., 421 F.3d 1290, 1295 (Fed. Cir. 2005) (“[C]laim terms are presumed to be

used consistently throughout the patent, such that the usage of a term in one claim

can often illuminate the meaning of the same term in other claims.”). Therefore,

for purposes of this term, “gripper” means “a device that grips a spot welding cap

to remove it from a pincer spot welding head.” See infra pp. 28–29.

With respect to the second and third areas of dispute regarding whether the

gripper can perform the extraction movement and whether that movement is one

single movement, the intrinsic evidence supports C&D’s proposed construction on

both issues.

Claim 6 of the ‘609 patent states that the cap changer is comprised of a cap

extractor having “a gripper which in response to a turning and axial extraction

movement detaches a spot welding cap of a pincer spot welding head.” (Doc. 100-

2 at 11). Because the gripper detaches a spot welding cap “in response to” some

movement, a component other than the gripper must perform the extraction

movement. The claim makes little sense if the gripper performs the extraction

movement because the gripper’s purpose is to prevent the spot welding head from

twisting or rotating. Therefore, the gripper cannot both turn the caps and

simultaneously prevent the caps from twisting. The specification confirms this

interpretation. The specification includes an embodiment of the gripper which

shows one fixed jaw and one movable jaw that pivots to clamp a spot welding cap.

(Doc. 100-2 at 5, 9–10). The specification discloses no mechanism by which the

jaws of the gripper also could extract the spot welding cap.

Regarding the nature of the turning and axial movement, the court finds that

that the claim contemplates one single movement that is simultaneously turning

and axial. The claim language refers to “a turning and axial extraction movement.”

(Doc. 100-2 at 11). In construing patent terms, there is not “a hard and fast rule

that ‘a’ always means one or more than one.” Harari v. Lee, 656 F.3d 1331, 1341

(Fed. Cir. 2011). Rather, the court reads “the limitation in light of the claim and

specification to discern its meaning.” Id.

Here, the claim indicates that a single movement provides the impetus for

the gripper to detach the spot welding cap. As an initial matter, the claim refers to

one “movement,” not movements and not both a turning movement and an axial

movement. Moreover, basic grammar suggests that “turning and axial” modify

and describe the type of single movement. There is nothing in the claim language

to suggest that the patentee contemplated that multiple movements would provide

the impetus for detaching the spot welding heads. The patentee’s use of plural

forms of various phrases elsewhere in the same claim and in other claims further

demonstrates the point. For example, claim 6 of the ‘609 patent recites “at least

one cap magazine” that receives “a plurality of spot welding caps.” (Doc. 100-2 at

11). Thus, the patentee knew how to draft claims that would encompass one or

more elements, but the patentee did not use similar language when drafting “a

turning and axial movement.”

The specification likewise refers to “a turning and axial pulling-off

movement,” not movements, and not both a turning movement and an axial

movement. (Doc. 100-2 at 2, 9).

Accordingly, “a gripper which in response to a turning and axial extraction

movement detaches a spot welding cap of a pincer spot welding head” means “a

device that grips, which in response to a single rotational and axial movement of

the pincer spot welding head, detaches a spot welding cap of a pincer spot welding

head.”

b. “a gripper which in response to an extraction movement

detaches a spot welding cap of a pincer spot welding head”

Copperhead’s proposed construction of “a gripper which in response to an

extraction movement detaches a spot welding cap of a pincer spot welding head” is

“a component in a robotic system that grasps an object detaches a pincer spot

welding head in response to a pulling movement.” (Doc. 75 at 6).

C&D’s proposed construction of the term is “device that removes a spot

welding cap of a pincer spot welding head in response to an extraction movement

performed by a device that is different than the device that removes the cap.” (Id.).

This term is nearly identical to term 4.a., except that this term does not state

that the extraction movement is “turning and axial.” Therefore, for the reasons

explained above, see supra pp. 21–25, the court finds that “a gripper which in

response to an extraction movement detaches a spot welding cap of a pincer spot

welding head” is “a device that grips removes a spot welding cap of a pincer spot

welding head in response to an extraction movement performed by a device that is

different than the device that removes the cap.”

5. “the spot welding cap is clamped by the gripper to prevent the spot

welding cap from twisting”

The parties disagree on the meaning of the “the spot welding cap is clamped

by the gripper to prevent the spot welding cap from twisting” as used in claim 6 of

the ‘609 patent.

Copperhead’s proposed construction is “a component in a robotic system

that grasps an object clamps a spot welding cap introduced into the gripper from

the shaft of a pincer welding head in such a way as to prevent twisting of the spot

welding cap.” (Doc. 75 at 5).6

C&D’s proposed construction is “the spot welding cap is [clamped]7 by the

gripper so that the spot welding cap does not twist while it is detached from the

pincer spot welding head.” (Doc. 75 at 5).

The primary dispute over this term is whether the claim contains a temporal

limitation such that the spot welding cap is prevented from twisting “while it is

detached from the pincer spot welding head.” (Doc. 89 at 10). The claim language

and the specification support such a limitation.

6 In its reply brief, Copperhead offers a proposed alternative construction of “a

component in a robotic system that grasps an object clamps a spot welding cap to prevent the

spot welding cap from twisting.” (Doc. 88 at 29). Generally, parties cannot raise new arguments

in a reply brief, and Copperhead made no argument concerning this alternative construction

during the Markman hearing. Therefore, the court does not consider the proposed alternative

construction.

7 C&D originally proposed the word “held” for “clamped.” (Doc. 75 at 5). C&D now is

“agreeable to using the term ‘clamped.’” (Doc. 83 at 21).

Claim 6 of the ‘609 patent states that the spot welding cap changer is

comprised of “a cap extractor having a gripper which in response to a turning and

axial extraction movement detaches a spot welding cap of a pincer spot welding

head inserted into the gripper from a shaft of the pincer spot welding head in such

a way that the spot welding cap is clamped by the gripper to prevent the spot

welding cap from twisting.” (Doc. 100-2 at 11) (emphasis added). Similarly, the

specification states that the cap changer’s puller has a gripper “with spring-loaded

pivotable jaws [] which in response to a turning and axial pulling-off movement

detaches a spot welding cap [] of a pincer spot welding head introduced into it

from a shaft of the pincer welding head in such a way that it is clamped to prevent

it twisting.” (Doc. 100-2 at 2) (emphasis added).

The plain language of the claim and the specification demonstrate a temporal

constraint whereby the prevention of twisting is connected to the detaching. In

other words, preventing the spot welding cap from twisting must take place while

the cap is being detached. Otherwise, the cap would not be removed.

Copperhead claims that C&D’s introduction of the word “detached” is

superfluous because the word is included in two other terms which are part of the

same limitation (see claims 4.a. and 4.b. above). The court disagrees. The court

finds that because the cap is already detached, then the addition of the temporal

limitation simply clarifies the point and makes the term easier to understand.

Copperhead also challenges C&D’s failure to define “gripper.” (Doc. 78 at

34). C&D submits that “gripper” needs no construction and would be understood

by a person of ordinary skill in the art as a component that grips an object. (Doc.

83 at 21). The court agrees. But to the extent gripper needs definition, then

“gripper” is defined as explained with respect to claim 6 below. See infra pp. 28–

29.

Therefore, “the spot welding cap is clamped by the gripper to prevent the

spot welding cap from twisting” means “the spot welding cap is clamped by the

gripper [as defined herein] so that the spot welding cap does not twist while it is

detached from the pincer spot welding head.”

6. “a gripper for removing a spot welding cap from a pincer spot

welding head”

The parties disagree on the meaning of “a gripper for removing a spot

welding cap from a pincer spot welding head” as used in claims 77 and 86 of the

‘814 patent.

Copperhead’s proposed construction is “a component in a robotic system

that grasps an object for removing a spot welding cap from a pincer spot welding

head.” (Doc. 143-1 at 3).

C&D’s proposed construction is “a device that grips a spot welding cap to

remove it from a pincer spot welding head.” (Id.).

Copperhead’s proposed construction adopts the scientific and technical

dictionary definition of “gripper.” (Doc. 78 at 32; Doc. 79-6 at 3). This proposed

construction is confusing and unsupported by the intrinsic evidence because there

is no basis in the claim language or the specification for the requirement that the

gripper be a component for a “robotic system.” The court finds that “gripper”

needs no additional construction other than that proposed by C&D which plainly

and clearly states that the gripper is a device that “grips” the spot welding caps to

remove them from the spot welding head.

Accordingly, “a gripper for removing a spot welding cap from a pincer spot

welding head” means “a device that grips a spot welding cap to remove it from a

pincer spot welding head.”

7. “wherein one end of the spring is firmly mounted in the center of the

cap carrier”

The parties disagree on the meaning of “wherein one end of the spring is

firmly mounted in the center of the cap carrier” as used in claim 1 of the ‘814

patent.8

8 The parties’ proposed constructions with respect to this term also apply to the following

‘814 patent terms: “wherein the spring is located in the central cavity and is attached at one end

to the spindle and at the other end to the cap carrier” as used in claims 58 and 67 of the ‘814

patent; “spindle or spiral spring that is arranged centrally in the cap carrier” as used in claim 1 of

the ‘814 patent; “the spring is compartmentalized in the cap carrier” as used in claim 34 of the

‘814 patent; and “wherein the spring is arranged centrally in the cap carrier and the plurality of

holes are positioned around the spring” as used in claim 26 in the ‘814 patent. (Doc. 144 at 13–

14; Doc. 145 at 24 n.9).

Copperhead proposes that “cap carrier” should be construed as the parties

have agreed9 and that no further construction is necessary. (Doc. 143-1 at 1).

C&D’s proposed construction is “wherein one end of the spring is fixed to a spring

box, said spring box is firmly mounted in the center of the cap carrier.” (Id.). The

parties’ central dispute is whether the phrase must be limited to include a spring

box.

Claim 1 of the ‘814 patent states that “one end of the spring is firmly

mounted in the center of the cap carrier.” (Doc. 100-4 at 11). The claim language

itself tends to support Copperhead’s proposed construction because the claim does

not recite a “spring box.” But the analysis does not end there.

Regarding the only embodiment of the open round magazine, the

specification states that “[a] firmly mounted spring box [], schematically depicted,

is in the centre of the cap carrier[], said spring box carrying the bracket [] so that it

can be radially moved” and that “[a] preloaded spindle or spiral spring is arranged

centrally in the spring box [], one end of the bring being fixed to the spring box [],

the other to the cap carrier.” (Doc. 100-4 at 10).

The specification does not contemplate a spring that is mounted in the center

of the cap carrier, but not within a spring box. See Merck & Co., Inc. v. Teva

Pharms. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003) (“[C]laims must be

9 The parties agree “cap carrier” should be construed as “a mechanism that holds and

carries spot welding caps.” (Doc. 144 at 20)

construed so as to be consistent with the specification, of which they are a part.”).

And the prosecution history confirms this limitation. During prosecution of the

‘281 patent, Copperhead distinguished its invention from the Japanese Takaba

patent by arguing that the Takaba patent did not disclose a spring box that was

separate from the cap carrier as required by the ‘281 patent claims. (Doc. 84-9 at

25–26). Copperhead’s efforts to differentiate its invention from the Takaba patent

is evidence that Copperhead understood its invention to require a spring box,

making this claim scope narrower than it appears on its face. Thus, the prosecution

history demonstrates that Copperhead disclaimed an invention that does not

contain a spring box within the cap carrier.

Accordingly, “wherein one end of the spring is firmly mounted in the center

of the cap carrier” means “wherein one end of the spring is fixed to a spring box,

said spring box is firmly mounted in the center of the cap carrier.”

8. “spindle”

The parties disagree on the meaning of “spindle” as used in claims 77 and 86

of the ‘814 patent.

Copperhead contends that no construction is necessary, and the court should

give the term its ordinary and customary meaning. (Doc. 143-1 at 3).

Alternatively, Copperhead argues that “spindle” means “a rod or pin serving as an

axis around which something else rotates.” (Id.).

C&D argues that the term “spindle” is invalid. (Id.). Alternatively, C&D

submits that spindle means “spring box.” (Doc. 143-1 at 3).

Claims 58 and 67 of the ‘814 patent recite a “spindle located in the central

cavity about which the cap carrier rotates.” (Doc. 100-4 at 13). C&D contends

that these claims are invalid for lack of a written description under the first

paragraph of 35 U.S.C. § 112 because the specification contains no disclosure that

would indicate that the inventor had possession of a spindle about which the cap

carrier rotates. (Doc. 145 at 29).

The specification states that “[a] preloaded spindle or spiral spring is

arranged centrally in the spring box[], one end of the spring being fixed to the

spring box[], the other to the cap carrier[].” (Doc. 100-4 at 10). Copperhead

claims that based on this language, the specification discloses a spindle even

though the spindle is not reflected in the drawings. (Doc. 144 at 17–18). C&D

counters that the only portion of the specification that references a “spindle spring”

indicates that it does not include a “spindle” and is instead a “spring box.” (Doc.

145 at 29). But again, [i]n order to comply with the written description

requirement, the specification ‘need not describe the claimed subject matter in

exactly the same terms as used in the claims; it must simply indicate to persons

skilled in the art that as of the [filing] date the applicant had invented what is now

claimed.’” All Dental Prodx, 309 F.3d at 779 (quoting Eiselstein v. Frank, 52 F.3d

1035, 1038 (Fed. Cir. 1995)).

Because C&D cites no evidence in support of its invalidity argument, the

court finds that C&D has not met its burden of showing by clear and convincing

evidence that a person of ordinary skill in the art would not understand that the

inventor possessed the claimed invention as of the filing date. The court will

revisit C&D’s invalidity contention should C&D present evidence to the court.

That evidence will bear on the court’s claim construction analysis. Therefore, the

court will not construe the term “spindle” until it can do so in light of consideration

of the validity issue on a more fully developed record.

9. “elastic cap carrier”

The parties dispute the meaning of “elastic cap carrier” as used in claims 9,

38, 47, 57, and 76 of the ‘814 patent.

Copperhead’s proposed construction is “a cap carrier that holds welding

caps via elasticity.” (Doc. 143-1 at 1). C&D’s proposed construction is “a cap

carrier made of elastic material.” (Id.).10

The court finds nothing in the claim language, the specification, or the

prosecution history to support Copperhead’s proposed construction. The court

10 The parties agree that “cap carrier” should be construed as “a mechanism that holds

and carries spot welding caps.” (Doc. 144 at 20; Doc. 170 at 1).

agrees with C&D that because “elastic” precedes “cap carrier,” the claim language

and basic grammar suggest that “elastic” modifies cap carrier and describes a cap

carrier made of elastic material.

Accordingly, “elastic cap carrier’ means “a cap carrier made of elastic

material.”

IV. CONCLUSION

The court orders that the disputed claims discussed above be construed as set

forth in this memorandum opinion.

Consistent with the operative scheduling order, the parties SHALL conduct

another mediation session within 45 days of entry of this opinion. (Doc. 87 at ¥ 1).

DONE and ORDERED this January 28, 2020.

Lo

UNITED STATES DISTRICT JUDGE

34