Advanced Aerospace Technologies, Inc. v. United States , 122 Fed. Cl. 445 ( 2015 )

In the United States Court of Federal Claims
No. 12-85 C
Filed: July 29, 2015
****************************************
*
ADVANCED AEROSPACE * Claim Construction;
TECHNOLOGIES, INC., * Corresponding Structure;
* Function;
Plaintiff, * Extrinsic Evidence;
* Indefiniteness;
v. * Intrinsic Evidence;
* Patent and Copyright Cases,
THE UNITED STATES, * 28 U.S.C. § 1498(a);
* Patents, 35 U.S.C. § 1 et seq.,
Defendant, * 35 U.S.C. § 100 (“Definitions”),
* 35 U.S.C. § 112, ¶¶ 1–2, 6
and * (“Specification”),
* 35 U.S.C. § 271 (“Infringement of
THE BOEING COMPANY, * patent”),
* 35 U.S.C. § 281 (“Remedy for
and * infringement of patent”),
* 35 U.S.C. § 371 (“National stage:
INSITU, INC., * Commencement”);
* Person of Ordinary Skill in the Art.
Third-Party Defendants. *
*
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Craig S. King, Arent Fox LLP, Washington, D.C., Counsel for Plaintiff.
Benjamin Speake Richards, United States Department of Justice, Civil Division, Washington,
D.C., Counsel for the Government.
Scott Michael McCaleb, Wiley Rein, LLP, Washington, D.C., Counsel for Third-Party
Defendants.
MEMORANDUM OPINION AND ORDER CONSTRUING CERTAIN CLAIMS OF
UNITED STATES PATENT NO. 6,874,729, UNITED STATES PATENT NO. 7,097,137,
UNITED STATES PATENT NO. 8,167,242, UNITED STATES PATENT NO. 8,517,306,
AND UNITED STATES PATENT NO. 8,567,718.
BRADEN, Judge.
To facilitate review of this Memorandum Opinion And Order construing certain claims of
United States Patent Nos. 6,874,729; 7,097,137; 8,167,242; 8,517,306; and 8,567,718, the court
has provided the following outline:
I. THE PATENTS AT ISSUE.
II. PROCEDURAL HISTORY.
III. DISCUSSION.
A. Jurisdiction.
B. Standing.
C. Controlling Precedent Concerning Construction Of Patent Claims.
1. The Court Should First Examine Intrinsic Evidence.
a. The Person Of Ordinary Skill In The Art.
i. AATI’s Proposed Definition Of The POSA.
ii. The Government’s Proposed Definition Of The POSA.
iii. Boeing’s Proposed Definition Of The POSA.
iv. The Court’s Resolution.
b. The Specification.
c. The Prosecution History.
2. The Federal Trial Judge May Examine Extrinsic Evidence, But Only
In Limited Circumstances.
IV. THE COURT’S CONSTRUCTION OF CERTAIN PATENT CLAIMS
REQUESTED BY THE PARTIES.
A. United States Patent No. 6,874,729.
1. Independent Claim 5.
B. United States Patent No. 7,097,137.
1. The Independent Claims.
a. Claim 1.
b. Claim 20.
2
c. Claim 25.
2. The Dependent Claims.
a. Claim 30.
C. United States Patent No. 8,167,242.
1. The Independent Claims.
a. Claim 1.
b. Claim 9.
c. Claim 14.
d. Claim 19.
2. The Dependent Claims.
a. Claim 2.
b. Claim 13.
c. Claim 15.
D. United States Patent No. 8,517,306.
1. The Independent Claims.
a. Claim 21.
2. The Dependent Claims.
a. Claim 13.
b. Claim 17.
c. Claim 19.
E. United States Patent No. 8,567,718.
1. Independent Claim 1.
F. Construction Of Disputed Terms.
1. “Fixed Hook.”
a. The Parties’ Proposed Constructions.
3
b. The Court’s Construction.
2. “Hook Being The Primary Means Of Capturing Said Aircraft.”
a. The Parties’ Proposed Constructions.
b. The Court’s Construction.
3. “Obstruction.”
a. The Parties’ Proposed Constructions.
b. The Court’s Construction.
4. “A Passageway With An Open Entrance And A Closed End.”
a. The Parties’ Proposed Constructions.
b. The Court’s Construction.
5. “Increasing The Force Required . . . .”
a. The Parties’ Proposed Constructions.
b. The Court’s Construction.
6. “Inner Throat” And “Outer Throat.”
a. The Parties’ Proposed Constructions.
b. The Court’s Construction.
7. “Sensor.”
a. The Parties’ Proposed Constructions.
b. The Court’s Construction.
i. The Applicability of 35 U.S.C. 112, ¶ 6.
ii. The Plain And Ordinary Meaning Of “Sensor.”
8. “Being Connected At Its Lower End To The Base.”
a. The Parties’ Proposed Constructions.
b. The Court’s Construction.
9. “Pole.”
4
a. The Parties’ Proposed Constructions.
b. The Court’s Construction.
V. CONCLUSION.
* * *
I. THE PATENTS AT ISSUE.1
On July 23, 1999, William R. McDonnell filed a provisional patent application on a
“Launch and Recovery System for Unmanned Arial Vehicles.” 3rd Am. Compl. ¶ 25. On July
24, 2000, he also filed a Patent Cooperation Treaty (“PCT”) patent application (“PCT No.
US00/20099”), claiming priority of the provisional application filed on July 23, 1999. 3rd Am.
Compl. Ex. A. On January 23, 2002, pursuant to 35 U.S.C. § 371,2 he also filed a national phase
patent application of the PCT application that issued on April 5, 2005 as U.S. Patent No. 6,874,729
(“the ’729 patent”). 3rd Am. Compl. ¶ 25; see also 3rd Am. Compl. Ex. A (’729 patent).
Four additional patents followed from the ’729 patent. On January 9, 2004, Mr. McDonnell
filed a divisional application3 for the ’729 patent, “Launch and Recovery System for Unmanned
Arial Vehicles,” that issued on August 29, 2006 as U.S. Patent No. 7,097,137 (“the ’137 patent”).
3rd Am. Compl. Ex. B (’137 patent). On August 28, 2006, he also filed a divisional application
for the application for the ’137 patent, “Launch and Recovery System for Unmanned Arial
Vehicles,” that issued on August 27, 2013 as U.S. Patent No. 8,517,306 (“the ’306 patent”). 3rd
Am. Compl. Ex. D (’306 patent). As sequential divisional applications of the ’729 patent, the ’137
and ’306 patents disclose and claim only subject matter disclosed in the ’729 patent. See MPEP
§ 201.06.
On September 29, 2010, Mr. McDonnell filed a divisional application for the application
for the ’306 patent that issued on May 1, 2012 as U.S. Patent No. 8,167,242 (“the ’242 patent”).
3rd Am. Compl. Ex. C (’242 patent). On March 4, 2013, he also filed a divisional application for
the application for the ’306 patent that issued on October 29, 2013 as U.S. Patent No. 8,567,718
(“the ’718 patent”). 3rd Am. Compl. Ex. E (’718 patent). Likewise, the ’242, and ’718 patents,
The facts cited and discussed herein were derived from the patents at issue, AATI’s Third
1
Amended Complaint (“3rd Am. Compl.”), the Government’s and Boeing’s Answers to the Third
Amended Complaint (“Gov’t Ans.” and “Boeing Ans.”), and AATI’s Claim Charts And Proposed
Claim Construction Statement (“AATI Claim Charts”).
2
Section 371 governs the commencement of the national stage of processing under the
Patent Cooperation Treaty. See 35 U.S.C. § 371.
3
A divisional application is “[a] later application for an independent or distinct invention,
carved out of a pending application and disclosing and claiming only subject matter disclosed in
the earlier or parent application[.]” MANUAL OF PATENT EXAMINING PROCEDURE § 201.06 (9th
ed. Mar. 2014) (“MPEP”); see also MPEP § 211.05 (explaining that the “parent application” is the
“earlier-filed nonprovisional application or provisional application for which benefit is claimed”).
5
as divisional applications of the ’306 patent, disclose and claim only subject matter disclosed in
the ’306 patent.
Thereafter, on an unspecified date, Mr. McDonnell assigned all “rights, title, and interest”
in these patents to Advanced Aerospace Technologies, Inc. (“AATI” or “Plaintiff”), of which Mr.
McDonnell is the President and sole owner. 3rd Am. Compl. ¶¶ 2, 5.4
The following diagram shows the chronology and relationship among these patents:
’729 (McDonnell/Baker)
Filing Date: 1/23/2002
’137 (McDonnell/Baker)
Filing Date: 1/9/2004
’306 (McDonnell/Baker)
Filing Date: 8/28/2006
’242 (McDonnell) ’718 (McDonnell)
Filing Date: 9/29/2010 Filing Date: 3/4/2013
II. PROCEDURAL HISTORY.
On February 8, 2012, AATI filed a Complaint in the United States Court of Federal Claims,
alleging that Insitu and Boeing infringed, with the Government’s authorization and consent, the
’729 and ’137 patents in performing contracts for the Government.5
4
“[T]he prosecution histories of the ’137 and ’729 patents contain petitions for correction
of inventorship, dated May 15, 2008, and certificates of correction, dated August 24, 2010 and
February 16, 2010, which name Charles H. Baker of Union, Missouri as a co-inventor of the ’137
and ’729 [p]atents.” Boeing Ans. ¶ 5.
5
On February 9, 2012, AATI filed a Complaint for willful patent infringement in the
United States District Court for the Eastern District of Missouri, pursuant to 35 U.S.C. § 1 et seq.,
6
On April 6, 2012, the Government filed a Motion To Notify The Boeing Company
(“Boeing”) as an interested party that the court granted on April 23, 2012. On April 27, 2012, that
Notice was served on Boeing, in its corporate capacity and as the corporate entity that acquired
Insitu, Inc. (“Insitu”) in 2008.6
On May 10, 2012, AATI filed a First Supplemental Complaint (“Supp. Compl.”). In
addition to the four claims alleged in the February 8, 2012 Complaint, the May 10, 2012 First
Supplemental Complaint alleged new claims regarding infringement of the ’242 patent for the
Government and Boeing’s use or manufacture of certain of AATI’s patented systems for and with
the authorization and consent of the Government. Supp. Compl. ¶¶ 61–71, 80–83. On June 8,
2012, the Government filed an Answer. On June 11, 2012, Boeing filed an Answer.
On July 30, 2012, the parties filed a Joint Preliminary Status Report and a Joint Motion For
Protective Order. On August 1, 2012, the court issued a Protective Order. On August 9, 2012, the
court issued a Scheduling Order. On September 20, 2012, the parties filed a Joint Motion For
Protective Order Concerning E-Discovery. The court declined to rule on that Motion as premature.
On October 15, 2012, Boeing filed a Motion To Dismiss, pursuant to Rule 12(b)(1) of the
Rules of the United States Court of Federal Claims (“RCFC”), arguing that the Government’s
waiver of sovereign immunity in patent cases did not extend to acts of indirect infringement under
35 U.S.C. § 271(f)7 and that the court did not have jurisdiction to hear AATI’s claims under Section
including 35 U.S.C. § 271, that was assigned to the Honorable Rodney W. Sippel. That Complaint
included six counts: Count I alleged direct infringement of U.S. Patent No. 6,874,729 by Insitu
and Boeing; Count II alleged inducement of infringement of U.S. Patent No. 6,874,729 by Insitu;
Count III alleged contributory infringement of U.S. Patent No. 6,874,729 by Insitu; Count IV
alleged direct infringement of U.S. Patent No. 7,097,137 by Insitu and Boeing; Count V alleged
inducement of infringement of U.S. Patent No. 7,097,137 by Insitu; and Count VI alleged
contributory infringement of U.S. Patent No. 7,097,137 by Insitu. See Compl., Advanced
Aerospace Techs., Inc. v. Boeing Co. (No. 4:12–cv–226), Dkt. No. 1. On April 18, 2012, Boeing
filed a Motion To Stay. On July 9, 2012, the United States District Court for the Eastern District
of Missouri granted the Motion To Stay.
6
Insitu is a corporation “in the business of making . . . UAVs and guidance, launch and
retrieval systems” in Bingen, Washington. 3rd Am. Compl. ¶ 14. The court will refer to Third-
Party Defendants, Boeing and Insitu, collectively as “Boeing.”
7
Section 271(f) provides:
(1) Whoever without authority supplies or causes to be supplied in or from the
United States all or a substantial portion of the components of a patented
invention, where such components are uncombined in whole or in part, in such
manner as to actively induce the combination of such components outside of
the United States in a manner that would infringe the patent if such combination
occurred within the United States shall be liable as an infringer.
7
271(f). On October 17, 2012, the court held a telephone status conference and asked the
Government to inform the court of its position on the jurisdictional issues presented by Boeing’s
October 15, 2012 Motion To Dismiss. On October 19, 2012, the parties entered a Stipulation
regarding the contracts relevant to this action.
On November 16, 2012, AATI filed an Opposition To Boeing’s October 15, 2012 Motion
To Dismiss. On December 3, 2012, Boeing filed a Reply.
On May 22, 2013, the court convened an oral argument on Boeing’s October 15, 2012
Motion To Dismiss (“5/22/13 TR 1–81”). On June 12, 2013, the Government filed a Supplemental
Brief. On June 26, 2013, both AATI and Boeing filed Responses.
On October 31, 2013, the court granted Boeing’s October 15, 2012 Motion To Dismiss,
pursuant to RCFC 12(b)(1), dismissing ¶¶ 43–44, 47–48, 54–55, 58–59, 65–66, and 69–70 of the
May 10, 2012 Amended Complaint and dismissing Boeing as a Third-Party Defendant. On
November 15, 2013, Boeing filed a Motion To Intervene and an Answer to the First Supplemental
Complaint.
On November 25, 2013, AATI filed a Second Amended Complaint and a Motion For Leave
To File A Third Amended Complaint. On November 26, 2012, the court granted Boeing’s Motion
To Intervene and AATI’s Motion For Leave To File a Third Amended Complaint.
On December 11, 2013, AATI filed a Third Amended Complaint, alleging new claims
regarding infringement of the ’306 and ’718 patents. 3rd Am. Compl. ¶¶ 80–101. The Third
Amended Complaint included ten counts. Counts I, II, III, VII, and VIII allege that Boeing “has
been, and now is, using or manufacturing, without license of AATI or lawful right to use or
manufacture, the invention described in and covered by” the ’729, ’137, ’242, ’306, and ’718
patents “by using or manufacturing Insitu UASs,8 and all like systems and services.” 3rd Am.
Compl. ¶¶ 47–67, 80–93. Counts IV, V, VI, IX and X allege that the Government “has been, and
now is, using or manufacturing, without license of AATI or lawful right to use or manufacture, the
invention described in and covered by” the ’729, ’137, ’242, ’306, and ’718 patents “by using or
(2) Whoever without authority supplies or causes to be supplied in or from the
United States any component of a patented invention that is especially made or
especially adapted for use in the invention and not a staple article or commodity
of commerce suitable for substantial noninfringing use, where such component
is uncombined in whole or in part, knowing that such component is so made or
adapted and intending that such component will be combined outside of the
United States in a manner that would infringe the patent if such combination
occurred within the United States, shall be liable as an infringer.
35 U.S.C. § 271(f).
8
The parties use the terms “Unmanned Aerial Vehicles” (“UAVs”) and “Unmanned Aerial
Systems” (“UASs”) in reference to the patents at issue. For ease of reference, the court will use
UAVs.
8
manufacturing Insitu UASs, and all like systems and services.” 3rd Am. Compl. ¶¶ 68–79, 94–
101.
On December 20, 2013, the Government and Boeing each filed an Answer.
On January 23, 2014, the court held a telephonic status conference.
On March 28, 2014, the parties submitted a Joint Claim Construction Submission (“JBR”).
On April 2, 2014, the court convened a telephonic pretrial conference. On April 7–8, 2014, the
court held a Claim Construction Hearing (“4/7/14 TR 1–330” and “4/8/14 TR 331–421”).
On May 14, 2014, the parties submitted a Joint Statement Regarding Claims Constructions
Tentatively Agreed To At The Markman Hearing (“5/14/14 Jt. Statement”).9
On May 20, 2014 and June 17, 2014, the court held telephonic status conferences.
On September 18, 2014, the court entered a Scheduling Order for claim construction and
indefiniteness briefing.
On October 10, 2014, AATI, the Government, and Boeing each filed Post-Hearing
Markman Briefs (“AATI PHMB,” “Gov’t PHMB,” and “Boeing PHMB”). AATI’s October 10,
2014 Brief addressed claim construction generally, whereas the Government’s and Boeing’s
October 10, 2014 Briefs specifically addressed indefiniteness. On October 24, 2014, the court
held a telephonic status conference and informed the parties that it would address claim
construction generally prior to adjudicating indefiniteness issues. 10/24/14 TR at 9. On October
29, 2014, the court entered an Amended Scheduling Order for claim construction briefing.
On November 21, 2014, AATI, Boeing, and the Government each filed Responses to the
October 10, 2014 Post-Hearing Markman Briefs (“AATI Resp.,” “Gov’t Resp.,” and “Boeing
Resp.”).
On December 5, 2014, AATI, the Government, and Boeing filed Memoranda Regarding
The Qualifications Of A Person Of Ordinary Skill In The Art (“AATI POSA,” “Gov’t POSA,”
and “Boeing POSA”).
On February 6, 2015, in light of the Supreme Court of the United States’ recent opinion in
Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015),10 the court entered an
9
The parties submitted the May 14, 2014 Joint Statement by electronic mail with the
permission of the court.
10
In Teva, the United States Supreme Court held that a trial court’s factual determinations
during claim construction should be reviewed for clear error, but that legal conclusions should be
reviewed de novo. 135 S. Ct. at 835 (“Should the Court of Appeals review the district court’s fact
finding de novo as it would review a question of law? Or, should it review that factfinding as it
would review a trial judge’s factfinding in other cases, namely by taking them as correct ‘unless
clearly erroneous? We hold that the appellate court must apply a ‘clear error’, not a de novo,
standard of review.”) (internal citations omitted); see also id. at 840–41 (“In some cases, however,
9
Order permitting the parties to file expert affidavits in support of their claim construction briefs.
On March 31, 2015, AATI and the Government each filed Expert Affidavits (“AATI Exp. Aff.”
and “Gov’t Exp. Aff.”).11
the district court will need to look beyond the patent’s intrinsic evidence and to consult extrinsic
evidence in order to understand for example, the background science or meaning of a term in the
relevant art during the relevant time period. In cases where those subsidiary facts are in dispute,
courts will need to make subsidiary factual findings about that extrinsic evidence. These are the
‘evidentiary underpinnings’ of claim construction that we discussed in Markman, and this
subsidiary factfinding must be reviewed for clear error on appeal.”). The United States Supreme
Court further explained that the “clear error” standard should be applied to certain testimony by
experts. Id. at 843 (“[T]he [United States Court of Appeals for the] Federal Circuit did not accept
Teva’s expert’s explanation as to how a skilled artisan would expect the peaks of the curves to
shift. And it failed to accept that explanation without finding that the District Court’s contrary
determination was ‘clearly erroneous.’ The [United States Court of Appeals for the] Federal
Circuit should have accepted the District Court’s finding unless it was ‘clearly erroneous.’”).
But, on remand, the United States Court of Appeals for the Federal Circuit held that “Teva
cannot transform legal analysis about the meaning or significance of the intrinsic evidence into a
factual question simply by having an expert testify on it.” Teva Pharmaceuticals USA,
Inc. v. Sandoz, Inc., 2015 WL 3772402, at *5 (Fed. Cir. June 18, 2018). “And whether their
statements or disclaimers impact the meaning of a claim term in a given patent is a legal question,
not a factual one.” Id. But see Lighting Ballast Control LLC v. Philips Elecs. N.A. Corp., 2015
WL 3852932, at *5–*6 (Fed. Cir. June 23, 2015) (quoting Phillips, 415 F.3d at 1324) (holding
that, “it was not legal error for the district court to rely on extrinsic evidence, because the extrinsic
evidence was ‘not used to contradict claim meaning that is unambiguous in light of the intrinsic
evidence’” and specifically referring to expert testimony).
In dissent, Judge Mayer stated:
Teva mandates that the trial court’s factual findings are to be respected, barring
clear error, and that the required legal analysis must be performed in view of those
findings, 135 S. Ct. at 841. Here, however, the court takes the opposite tack, first
embarking on an independent review of the record and then considering, as an
afterthought, the important and carefully considered factual findings made by the
trial court.
Id. at *8 (Mayer, J., dissenting).
11
AATI’s expert, Dr. Duncan C. Cumming, is the Principal in Emmanuel Avionics, Inc.
and has nearly three decades of experience “in the design of systems used in unmanned aerial
vehicles[.]” AATI Exp. Aff. ¶ 2. Dr. Cumming “earned a PH.D, M.A., and B.A. in electrical
engineering from Cambridge University, England in 1979, 1978, and 1974, respectively.” AATI
Exp. Aff. ¶ 3.
10
On June 23, 2015, the Government filed a Notice, attaching the United States Court of
Appeals for the Federal Circuit’s en banc decision in Williamson v. Citrix Online, LCC, 2015 WL
3687459 (Fed. Cir. June 16, 2015).
On July 27, 2015, the court held a hearing on to discuss the reasons the terms required
construction and whether the parties could agree to constructions of any additional terms (“7/27/15
TR 1–42”).
III. DISCUSSION.
A. Jurisdiction.
The United States Court of Federal Claims has jurisdiction to adjudicate claims that allege
“an invention described in and covered by a patent of the United States is used or manufactured
by or for the United States without license of the owner thereof or lawful right to use or
manufacture the same, . . . [seeking] recovery of . . . reasonable and entire compensation for such
use and manufacture.” 28 U.S.C. § 1498(a).
The December 11, 2013 Third Amended Complaint properly invokes the court’s
jurisdiction, pursuant to 28 U.S.C. § 1498(a), authorizing the United States Court of Federal
Claims to adjudicate claims of patent infringement against the Government and to award monetary
damages, where appropriate.
B. Standing.
Federal trial courts have been advised to “decide standing questions at the outset of a case.
That order of decision (first jurisdiction then the merits) helps better to restrict the use of the federal
courts to those adversarial disputes that Article III defines as the federal judiciary’s business.”
Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83, 111 (1998) (Breyer, J., concurring). The party
invoking federal jurisdiction has the burden of proof to satisfy the constitutional requirements of
Article III standing. See FW/PBS, Inc. v. Dallas, 493 U.S. 215, 231 (1990) (holding that the burden
is on the party seeking to exercise jurisdiction to clearly allege facts sufficient to establish
jurisdiction).
“A patentee shall have remedy by civil action for infringement of his patent.” 35
U.S.C. § 281; see also 35 U.S.C. § 100(d) (“The word ‘patentee’ includes not only the patentee to
whom the patent was issued but also the successors in title to the patentee.”); Paradise Creations,
Inc. v. UV Sales, Inc., 315 F.3d 1304, 1308 (Fed. Cir. 2003) (“[T]his court has determined that in
order to assert standing for patent infringement, the plaintiff must demonstrate that it held
The Government’s expert, Professor Eric N. Johnson, is the Lockheed Martin Associate
Professor of Avionics Integration in the Daniel Guggenheim School of Aerospace Engineering at
the Georgia Institute of Technology and “an instrument rated private pilot, model aircraft operator,
and research/developer of Unmanned Aircraft Systems[.]” Gov’t Exp. Aff. ¶ 10. Professor
Johnson “received a B.S. degree from the University of Washington, M.S. degrees from the
Massachusetts Institute of Technology and the George Washington University, and a Ph.D from
Georgia Technical Institute. Gov’t Exp. Aff. ¶ 10.
11
enforceable title to the patent at the inception of the lawsuit.”) (emphasis in original). The standard
set forth by the United States Supreme Court over a century ago in Waterman v. MacKenzie, 138
U.S. 252 (1891) still governs:
There can be no doubt that he is “the party interested, either as patentee, assignee,
or grantee,” and as such entitled to maintain an action at law to recover damages
for an infringement; and it cannot have been the intention of [C]ongress that a suit
in equity against an infringer to obtain an injunction and an account of profits, in
which the court is authorized to award damages, when necessary to fully
compensate the plaintiff, and has the same power to treble the damages as in an
action at law, should not be brought by the same person.
Id. at 260–61 (1891) (internal citations omitted).
The December 11, 2013 Third Amended Complaint alleges that all “rights, title, and
interest” in the ’729 patent, the ’137 patent, the ’306 patent, the ’242 patent, and the ’718 patent
were issued by assignment to AATI. 3rd Am. Compl. ¶¶ 2, 5; see also ’729 patent (listing AATI
as assignee); ’137 patent (same); ’306 patent (same); ’242 patent (same); ’718 patent (same).
Therefore, AATI has standing.
C. Controlling Precedent Concerning Construction Of Patent Claims.
In Markman v. Westview Instruments, Inc. (“Markman III”), 517 U.S. 370 (1996), the
United States Supreme Court unanimously affirmed the en banc decision of the United States
Court of Appeals for the Federal Circuit in Markman v. Westview Instruments, Inc. (“Markman
II”), 52 F.3d 967 (Fed. Cir. 1995) (en banc), holding that the meaning and scope of a patent’s
claims are issues of law to be determined by the federal trial judge. See 517 U.S. at 391; see also
52 F.3d at 978–79. The significance of Markman III, however, was the United States Supreme
Court’s expressed deference to the appellate court’s analysis for conducting claim construction.
See Markman III, 517 U.S. at 390 (“It was just for the sake of such desirable uniformity that
Congress created the [United States] Court of Appeals for the Federal Circuit as an exclusive
appellate court for patent cases, H.R. Rep. No. 97–312, at 20–23 (1981), observing that increased
uniformity would ‘strengthen the United States patent system in such a way as to foster
technological growth and industrial innovation.’ Id. at 20.”). The court now turns to that analysis.
1. The Court Should First Examine Intrinsic Evidence.
The United States Court of Appeals for the Federal Circuit has instructed federal trial
judges first to examine “intrinsic evidence,” because it is the “most significant source of the legally
operative meaning of disputed claim language.” Vitronics Corp. v. Conceptronic Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996). Intrinsic evidence is the “claim language, the written description,
and, if introduced, the prosecution history.” Phonometrics, Inc. v. N. Telecom Inc., 133 F.3d 1459,
1464 (Fed. Cir. 1998). In conducting this examination, the trial judge must determine, as a
threshold matter, whether there is ambiguity in any claim term requiring construction. See
Vitronics, 90 F.3d at 1582 (directing the trial judge to “look to the words of the claims themselves,
both asserted and nonasserted, to define the scope of the patented invention”).
12
a. The Person Of Ordinary Skill In The Art.
The federal trial judge is required to examine patent claim terms and phrases “through the
viewing glass of a person skilled in the art.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334
F.3d 1294, 1298 (Fed. Cir. 2003); see also Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005) (en banc) (“The inquiry into how a person of ordinary skill in the art understands a claim
term provides an objective baseline from which to begin claim construction.”); Hockerson-
Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 955 (Fed. Cir. 2000) (holding that the court
gives claim terms “their ordinary and accustomed meaning as understood by one of ordinary skill
in the art”). In conducting this examination, as a threshold matter, the trial court must determine
whether there is ambiguity in any claim term requiring construction. See Vitronics, 90 F.3d at
1582 (directing the trial judge to “look to the words of the claims themselves, both asserted and
nonasserted, to define the scope of the patented invention”).
Determining the person of ordinary skill in the art (“POSA”) is a “basic factual inquir[y].”
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). And,
Factors that may be considered in determining the ordinary level of skill in the art
include: 1) the types of problems encountered in the art; 2) the prior art solutions to
those problems; 3) the rapidity with which innovations are made; 4) the
sophistication of the technology; and 5) the educational level of active workers in
the field.
Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–67 (Fed. Cir. 2000).
i. AATI’s Proposed Definition Of The POSA.
AATI’s proposed definition of the POSA for the asserted patents is:
A [POSA] at the time of the invention of the asserted patents would have a
bachelor’s degree in engineering or equivalent experience in the aviation or
engineering fields. The [POSA] would also have 3–5 years of experience in the
research, design, and testing of UAVs, including launch and recovery.
AATI POSA at 1.
AATI relies on the asserted patents’ titles, abstracts, and select parts of the specifications
to support its contention that the skilled artisan should have experience with the launch and
recovery of UAVs. AATI POSA at 2–4 (citing ’729 patent, col. 1, ll. 58–60 (“the launch and
recovery of aircraft”), col. 2, l. 64 (“launching and retrieving conventional fixed wing aircraft”),
col. 3, ll. 7–9 (“launch and recovery system that exerts lower loads and inflicts less damage to the
UAV”)).
AATI rejects Boeing and the Government’s definition for a POSA due to lack of specificity
concerning the minimum required amount of experience, as well as the form of aviation
experience. AATI POSA at 4–5. AATI contends that experience in the launch and recovery of
UAVs is necessary. AATI POSA at 5.
13
ii. The Government’s Proposed Definition Of The POSA.
The Government’s proposed definition of a POSA for the asserted patents is:
A [POSA] at the time of the invention, i.e., the effective filing date of the
applications for the asserted patents, would have a bachelor’s degree in engineering
or physics, or equivalent experience in the aviation or engineering fields. The
[POSA] would also have some aviation experience, such as, but not limited to,
designing aircraft or aircraft components, operating or building remote-controlled
aircraft, and operating personal or commercial aircraft.
Gov’t POSA at 2.
In support, the Government cites the five factors identified by the United States Court of
Appeals for the Federal Circuit in Ruiz, 234 F.3d at 666–67, and applies these factors to the asserted
patents. Gov’t POSA at 3. As to the first factor—the types of problems encountered in the art—
the Government points to a variety of problems identified in the patent, including the lack of
retaining devices in some capture apparatuses and flight paths through turbulent air. Ruiz, 234
F.3d at 666–67; Gov’t POSA at 3. As to the second factor—the prior art solutions to the problems
identified in factor one—the solutions come from prior art sources outside the field of UAVs, and,
in some cases, from sources outside aviation generally. Ruiz, 234 F.3d at 666–67; Gov’t POSA at
3. As to the third factor—the rapidity of inventions—innovations in this field have been slow
since 1909. Ruiz, 234 F.3d at 666–67; Gov’t POSA at 3. As to the fourth and fifth factors—the
sophistication of the technology and education of workers in the field—the patent specifications
describe “straightforward mechanical engineering,” and AATI has “already admitted[,] the
technology in this case is not complex.” Gov’t POSA at 3.
Furthermore, the court should adopt only one definition of the POSA and use that definition
for all stages of the proceedings. Gov’t POSA at 4. No party should be permitted to reserve the
right to change its description of POSA at a later stage of the case. Gov’t POSA at 4–5.
iii. Boeing’s Proposed Definition Of The POSA.
Boeing agrees with the Government’s definition of a POSA and emphasizes the “simplicity
and breadth of the technology,” citing AATI’s patents and the prosecution histories in support.
Boeing POSA at 1–3. But, Boeing states that “the current dispute among the parties does not
appear to be dispositive to any claim construction or indefiniteness issue[.]” Boeing POSA at 1.
In addition, “additional evidence may provide more insight about the level of skill in the
art and the definition of an ordinarily skilled artisan.” Boeing POSA at 3. Therefore, the court
may need to revise its definition of POSA in later proceedings. Boeing POSA at 1.
iv. The Court’s Resolution.
Although the parties did not all apply Ruiz, the parties’ arguments can be distilled into three
issues: (1) whether “3–5 years” or just “some” experience is required; (2) whether physics is an
acceptable educational field; and (3) whether the POSA may change at later stages of the
proceedings. The court will address the first issue, i.e., the POSA’s experience level, using the
14
first four Ruiz factors, and the second issue, i.e., the POSA’s education, using the fifth Ruiz factor.
Finally, the third, unrelated issue will be addressed without using the Ruiz factors.
As to the first and second Ruiz factors, i.e., “the types of problems encountered in the art”
and “the prior art solutions to those problems,” these problems are not limited to UAVs. Instead,
many problems are general aeronautical problems, as well as problems encountered in other fields
like mountaineering and commercial parasailing technologies. See, e.g., ’729 patent, col. 1, ll. 26–
54 (discussing problems in the prior art, such as retaining devices, flights in turbulent air, and
piloting skills); ’729 patent, col. 2, ll. 13–16 (discussing commercial parasailing technology); ’729
patent, col. 10, ll. 53–58 (discussing mountain climbing equipment). And, the majority of the
claims and the field of invention of the asserted patents do not limit the invention to UAVs, but
refer to aircraft. See generally ’729 patent, cols. 20–26; ’137 patent, cols. 20–24; ’242 patent, cols.
20–22; ’306 patent, cols. 20–22; ’718 patent, col. 20, ll. 36–58. Therefore, the first and second
Ruiz factors favor finding that the POSA does not require specific UAV experience. Instead, the
POSA may have experience with the research, design, testing, and operation of aircraft, including
launch and recovery.
As to the third factor and fourth Ruiz factors, i.e., “the rapidity with which innovations are
made” and “the sophistication of the technology,” AATI states that a POSA should have between
three and five years of experience, while the Government’s definition requires only “some”
experience. AATI POSA at 1; Gov’t POSA at 2. AATI, however, provides no evidentiary support
that between three and five years’ experience is required to have ordinary skill in the art. In
addition, prior art arrestment techniques date back to 1909, and both parties have stipulated that
the invention here is not complex. See ’718 patent at 1 (citing U.S. Patent No. 965,881 (1909
patent)); see also Gov’t POSA at 3; 4/7/14 TR at 6 (stating that the invention is “pretty simple”);
Dkt. No. 22, at 16 (“AATI does not believe that the technology in this case is particularly difficult
to comprehend”). The generally slow pace of innovation in the field and simplicity of the invention
further support broadening the POSA’s field to experience beyond UAVs to include the research,
design, testing, and operation of aircraft, including launch and recovery.
As to the fifth Ruiz factor, i.e., “the educational level of active workers in the field,” both
AATI and the Government state that a POSA should have a bachelor’s degree in engineering, or
equivalent experience in engineering or aviation. AATI POSA at 1; Gov’t POSA at 2. The
Government contends that a bachelor’s degree, or equivalent experience, in physics is also
acceptable. Gov’t POSA at 2. But, physics is too broad a definition of the relevant art and would
include many unrelated fields, such as particle physics. Therefore, the court has determined that
a POSA should have a bachelor’s degree in engineering or equivalent experience in engineering
or aviation.
Additionally, AATI and Boeing contend that the definition of the POSA may change at a
later point in the proceeding, but the Government counters that the court’s definition of the POSA
should not change. AATI POSA at 1 n.1; Gov’t POSA at 4–5. Although determining the POSA
is a “basic factual inquiry,” AATI presents no evidence as to why the POSA would change at the
later stages of the proceedings. Graham, 383 U.S. at 17. Thus, the court has determined that the
parties may not reserve the right to change the description of the POSA later in the proceedings.
For these reasons, the court has determined that the POSA should have a bachelor’s degree
in engineering, or equivalent experience in engineering or aviation. The POSA should also have
15
some level of experience in the research, design, testing, and operation of aircraft, including launch
and recovery.
b. The Specification.
As a matter of law, “[t]he specification shall contain a written description of the
invention[.]” 35 U.S.C. § 112, ¶ 1. For this reason, claims “must be read in view of the
specification, of which they are a part.” Phillips, 415 F.3d at 1315 (internal citations omitted).
The specification is “always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of the disputed term.” Id. (internal citations
omitted). The specification is accorded deference in claim construction, because it is the patentee’s
statement to the public describing the invention. See Honeywell Int’l, Inc. v. ITT Indus., Inc., 452
F.3d 1312, 1318 (Fed. Cir. 2006) (“[T]he public is entitled to take the patentee at his word[.]”).
The specification is particularly important in two circumstances. The first is where the
specification includes a “special definition given to a claim term by the patentee that differs from
the meaning it would otherwise possess.” Phillips, 415 F.3d at 1316; see also Edwards
Lifesciences LLC v. Cook, Inc., 582 F.3d 1322, 1329 (Fed. Cir. 2009) (stating where two terms are
used interchangeably, it “is akin to a definition equating the two”). As such,
a patentee can act as his own lexicographer to specifically define terms of a claim
contrary to their ordinary meaning[;] the written description in such a case must
clearly redefine a claim term “so as to put a reasonable competitor or one reasonably
skilled in the art on notice that the patentee intended to so redefine that claim term.
Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000)
(quoting Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999)); see
also Vitronics, 90 F.3d at 1582 (holding that, in ascertaining the scope of the patent, deference
should be afforded claims as defined by their “customary meaning,” with the caveat that the law
affords patentees the right to serve as “lexicographers,” if a special or unique definition is clearly
stated in the specifications or prosecution history).
The second circumstance is where the specification “may reveal an internal disclaimer, or
disavowal, of claim scope by the inventor.” Phillips, 415 F.3d at 1316; see also Edwards
Lifesciences, 582 F.3d at 1330 (holding that where a specification uses a term only in a specific
context, that term should not be construed to have a broader scope). The inventor’s intent with
respect to the claims “must be clear” to overcome their customary meaning. Voda v. Cordis Corp.,
536 F.3d 1311, 1320 (Fed. Cir. 2008) (citations omitted).
Where the claim language is ambiguous, the “specification, including the inventors’
statutorily-required written description of the invention[] is the primary source for determining
claim meaning.” Astrazeneca AB v. Mutual Pharm. Co., 384 F.3d 1333, 1336 (Fed. Cir. 2004);
see also id. at 1337 (“[T]he patent is an integrated document, with the claims pointing out and
distinctly claiming . . . the invention described in the rest of the specification and the goal of claim
construction is to determine what an ordinary artisan would deem the invention claimed by the
patent, taking the claims together with the rest of the specification.”) (internal quotation marks and
citations omitted). Of course, the utility of the specification still depends on whether the “written
16
description of the invention [is] . . . clear and complete enough to enable those of ordinary skill in
the art to make and use it.” Vitronics, 90 F.3d at 1582.
Three additional rules of construction must be considered. First, federal trial judges have
been advised not to construe a claim to exclude the preferred and only embodiment disclosed in a
specification, because “[s]uch an interpretation is rarely, if ever, correct.” Vitronics, 90 F.3d at
1583. Second, when more than one embodiment is present, as a matter of law, the court “do[es]
not interpret claim terms in a way that excludes disclosed examples in the specification.” Verizon
Servs. Corp. v. Vonage Holding Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007); see also Phillips,
415 F.3d at 1323 (recognizing that the embodiments in a patent often are examples meant to teach
a person of ordinary skill in the art how to make and use the invention, but should not be construed
to limit the invention only to a specific embodiment). But, where an interpretation of a term
contradictory to its ordinary meaning would be required to cover all of the embodiments, and the
applicant was not acting as his own lexicographer, such language can be interpreted to claim less
than all of the embodiments. See Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379,
1383 (Fed. Cir. 2008) (holding that, even if “totally” would have covered all embodiments,
“partially” could not include “totally,” unless the applicant had acted as his own lexicographer);
see also Baran v. Med. Device Tech., Inc., 616 F.3d 1309, 1315–16 (Fed. Cir. 2010) (holding that,
if a term is used in the specification to differentiate two different embodiments and to describe the
invention, it is proper to construe the claims to cover only one of the two embodiments, because
the differentiation concedes coverage of one of the embodiments).
Third, although the specification is important in discerning the meaning of the claims,
federal trial judges must not “import” or graft limitations from the specification into the claim. See
Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1331 (Fed. Cir. 2011) (reaffirming
that “the role of a [federal trial judge] in construing claims is not to redefine claim recitations or
to read limitations into the claims to obviate factual questions of infringement and validity but
rather to give meaning to the limitations actually contained in the claims, informed by the written
description, the prosecution history[,] if in evidence, and any relevant extrinsic evidence”); see
also Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (“The patentee is
entitled to the full scope of his claims, and we will not limit him to his preferred embodiment or
import a limitation from the specification into the claims.”); Intervet Am., Inc. v. Kee-Vet Labs.,
Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989) (holding that “[federal trial judges] cannot alter what
the patentee has chosen to claim as his invention, that limitations appearing in the specification
will not be read into claims, and that interpreting what is meant by a word in a claim is not to be
confused with adding an extraneous limitation appearing in the specification, which is improper”)
(internal quotation marks omitted) (emphasis omitted).
c. The Prosecution History.
In addition, “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.” Phillips, 415 F.3d at 1317; see also Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335,
1344 (Fed. Cir. 1998) (observing that the prosecution history “may contain contemporaneous
exchanges between the patent applicant and the [United States Patent and Trademark Office] about
what the claims mean”).
17
Under certain circumstances, the prosecution history can even trump the specification. See
Graham, 383 U.S. at 22 (holding that claims narrowed to obtain issuance over prior art during
prosecution may not subsequently be interpreted by the specification to cover what was disclaimed
before the United States Patent and Trademark Office); see also Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., 535 U.S. 722, 733–34 (2002) (“When . . . the patentee originally claimed
the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he
may not argue that the surrendered territory compromised unforeseen subject matter that should
be deemed equivalent to the literal claims of the issued patent.”). Therefore, prosecution history
may preclude “a patentee from regaining, through litigation, coverage of subject matter
relinquished during prosecution of the application of the patent.” Wang Labs., Inc. v. Mitsubishi
Elecs. Am., Inc., 103 F.3d 1571, 1577–78 (Fed. Cir. 1997), cert. denied, 522 U.S. 818 (1997). In
sum, regardless of whether an examiner agreed with an applicant’s statements during prosecution,
any argument made “may lead to a disavowal of the claim scope[.]” Seachange Int’l, Inc. v. C-
Cor Inc., 413 F.3d 1361, 1374 (Fed. Cir. 2005); see also Microsoft Corp. v. Multi-Tech Sys., 357
F.3d 1340, 1350 (Fed. Cir. 2004) (“We have stated on numerous occasions that a patentee’s
statements during prosecution, whether relied on by the examiner or not, are relevant to claim
interpretation.”).
2. The Federal Trial Judge May Examine Extrinsic Evidence, But Only
In Limited Circumstances.
As the United States Supreme Court recently acknowledged, “In some cases . . . the [federal
trial] court will need to look beyond the patent’s intrinsic evidence and to consult extrinsic
evidence in order to understand, for example, the background science or the meaning of a term in
the relevant art during the relevant time period.” Teva, 135 S. Ct. at 841. But, if the court’s
consideration of the intrinsic evidence resolves any ambiguity about the meaning of a patent claim,
as a matter of law, it is improper for the judge to rely on extrinsic evidence, i.e., evidence outside
of the patent record, such as expert and inventor testimony, dictionaries, learned treatises, and
articles. See Vitronics, 90 F.3d at 1584 (allowing extrinsic evidence “to help the court come to the
proper understanding of the claims,” but not to contradict intrinsic evidence or vary the scope of
the claims). The United States Court of Appeals for the Federal Circuit, however, clarified in Key
Pharm. v. Hercon Lab. Corp., 161 F.3d 709 (Fed. Cir. 1998):
This court has made strong cautionary statements on the proper use of extrinsic
evidence, which might be misread by some members of the bar as restricting a trial
court’s ability to hear such evidence. We intend no such thing. To the contrary,
trial courts generally can hear expert testimony for background and education on
the technology implicated by the presented claim construction issues, and trial
courts have broad discretion in this regard.
Furthermore, a trial court is quite correct in hearing and relying on expert testimony
on an ultimate claim construction question in cases in which the intrinsic evidence
(i.e., the patent and its file history—the “patent record”) does not answer the
question.
What is disapproved of is an attempt to use extrinsic evidence to arrive at a claim
construction that is clearly at odds with the claim construction mandated by the
18
claims themselves, the written description, and the prosecution history, in other
words, with the written record of the patent.
Id. at 716 (citations omitted) (emphasis in original); see also Zodiac Pool Care, Inc. v. Hoffinger
Indus., Inc., 206 F.3d 1408, 1414 (Fed. Cir. 2000) (cautioning federal trial judges “to turn[] to
extrinsic evidence only when the intrinsic evidence is insufficient to establish the clear meaning
of the asserted claim”); Advanced Fiber Techs. (AFT) Trust v. J & L Fiber Servs., Inc., 674 F.3d
1365, 1375 (Fed. Cir. 2012) (“[E]xtrinsic evidence may be useful to the court, but it is unlikely to
result in a reliable interpretation of patent claim scope unless considered in the context of the
intrinsic evidence.”) (citation omitted).
IV. THE COURT’S CONSTRUCTION OF CERTAIN PATENT CLAIMS
REQUESTED BY THE PARTIES.
The parties have requested that the court construe certain terms in the following claims:
claim 5 of the ’729 patent; claims 1, 20, 25, and 30 of the ’137 patent; claims 1, 2, 9, 13, 14, 15,
and 19 of the ’242 patent; claims 13, 17, 19, and 21 of the ’306 patent; and claim 1 of the ’718
patent. The following claims are independent12 claims: claim 5 of the ’729 patent; claims 1, 20,
and 25 of the ’137 patent; claims 1, 9, 14, and 19 of the ’242 patent; claim 21 of the ’306 patent;
and claim 1 of the ’718 patent. The following claims are dependent13 claims: claim 30 of the ’137
patent; claims 2, 13, and 15 of the ’242 patent; and claims 13, 17, and 19 of the ’306 patent.
A. United States Patent No. 6,874,729.
1. Independent Claim 5.
Claim 5 of the ’729 patent describes:
An aerial recovery system for an aircraft, said system comprising:
an arrestment line held up at at least one end,
said aircraft containing a device for capturing said line, said aircraft containing
structure suitable for deflecting said line laterally into engagement with said
capturing device, said structure comprising a wing of said aircraft, a sensor being
attached to said recovery system near the point of engagement of said aircraft to
said recovery system, for guidance in maneuvering said aircraft into engagement
with said recovery system.
’729 patent, col. 21, ll. 39–49.
12
An “independent claim” is “a claim that does not refer back to or depend on another
claim.” U.S. PATENT & TRADEMARK OFFICE, Glossary (“PTO Glossary”), http://www.uspto.gov/
main/glossary/index.html (last visited July 29, 2015).
13
A “dependent claim” incorporates by reference a previous claim and includes all of the
limitations of the claims on which they depend. See PTO Glossary.
19
B. United States Patent No. 7,097,137.
1. The Independent Claims.
a. Claim 1.
Claim 1 of the ’137 patent describes:
An aerial recovery system for recovering an aircraft, said system comprising;
the aircraft and
an arrestment line held up at an upper end by support structure supported by a base,
a lower end of the arrestment line also being connected to the base, said arrestment
line not being a support for said support structure in the form of a rigid, straight-
line guy line tension-tie connection between an immovable upper end attached to
the support structure and an immovable lower end,
said aircraft containing a capturing device for capturing said line, said capturing
device comprising a hook positioned laterally of a longitudinal axis of said aircraft,
said hook being adapted to releasably secure said line to said aircraft, said hook
being the primary means of capturing said aircraft,
said aircraft containing structure suitable for deflecting said line laterally into
engagement with said hook, said structure comprising a wing of said aircraft.
’137 patent, col. 20, l. 60–col. 21, l. 12.
b. Claim 20.
Claim 20 of the ’137 patent describes:
In combination, a flying object and an apparatus adapted for capturing the flying
object,
the flying object having a spanwise lifting surface with a capture device positioned
laterally of the centerline of the flying object, the capture device comprising a hook
adapted to releasably secure the flying object to the apparatus, the hook being the
primary means of capturing said flying object, the flying object being adapted for
flying along a flight path,
the apparatus comprising:
an arrestment line positionable in the flight path of the flying object, at least a
portion of the arrestment line being inclined at an angle relative to the spanwise
lifting surface to intersect the leading edge of the spanwise lifting surface, the
arrestment line being positioned to engage the capture device of the flying object
to releasable secure the flying object of the apparatus; and
a support structure coupled to the arrestment line at two spaced-apart positions and
positioned to support a portion of the arrestment line between said positions in the
flight path,
20
said arrestment line not being a support for said support structure in the form of a
rigid, straight-line guy line tension-tie connection between an immovable upper end
attached to the support structure and an immovable lower end.
’137 patent, col. 21, l. 60–col. 22, l. 20.
c. Claim 25.
Claim 25 of the ’137 patent describes:
In combination, a flying object and an apparatus adapted for capturing the flying
object, the combination comprising:
a) a line suspended across the flight path of the object in an orientation which
includes a component normal to the flight path;
b) support structure, with a load path to a base, suspending the line, a lower end of
the line being restrained to prevent the line from blowing freely in the wind, the
arrestment line not being a support for the support structure in the form of a rigid,
straight-line guy line tension-tie connection between an immovable upper end
attached to the support structure and an immovable lower end; and
c) a device located of the centerline of the flying object, the device being adapted
for intercepting the line after the line slides laterally along a leading edge of a
structure comprising a wing of the flying object and holding the flying object to the
line, the device being the primary means of capturing the flying object,
the load path not including the arrestment line below the flying object.
’137 patent, col. 22, ll. 30–51.
2. The Dependent Claims.
a. Claim 30.
Claim 30 of the ’137 patent describes:
The combination of claim 29,14 wherein the device adapted for intercepting the line
comprises a hook on the wing of the flying object and includes an inner throat
smaller than the diameter of the line so as to generate a sufficient amount of braking
force such that after the line is intercepted by the hook, sliding of the line through
the hook is substantially arrested.
’137 patent, col. 22, l. 64–col. 23, l. 3.
14
Claim 29 of the ’137 patent describes, “The combination of claim 25 wherein the leading
edge of the structure comprising a wing swept at least fifteen degrees.” ’137 patent, col. 22, ll.
61–63.
21
C. United States Patent No. 8,167,242.
1. The Independent Claims.
a. Claim 1.
Claim 1 of the ’242 patent describes:
An aircraft and an aircraft recovery system designed to recover said aircraft, said
aircraft recovery system having an arrestment line and an arrestment line support,
said aircraft including a line capturing and retaining device located off centerline
of said aircraft, said line capturing and retaining device having a passageway with
an open entrance and a closed end, said passageway having at least two obstructions
the line passes during recovery, each of said obstructions increasing the force
required to move the line back past the obstruction toward the open entrance of said
passageway relative to the force required to move the line initially past the
obstruction toward the closed end of the passageway, a first of said at least two
obstructions being closer to the open entrance than a second of said at least two
obstructions.
’242 patent, col. 20, ll. 29–42.
b. Claim 9.
Claim 9 of the ’242 patent describes:
An aircraft designed to be recovered by an aircraft recovery system having an
arrestment line and an arrestment line support, said aircraft including a line
capturing and retaining hook mounted to a wing of the aircraft and located off
centerline of said aircraft, said hook having an open entrance forming a smooth
continuation of a leading edge of said wing, a closed end outboard of the open
entrance, and, between the open entrance and closed end, an inner throat, an outer
throat, and a first obstruction which requires less force for the line to enter the outer
throat than to exit the outer throat through the open entrance and a second
obstruction between said inner throat and outer throat which requires less force
during the arrestment for the line to pass from the outer throat to the inner throat
than from the inner throat to the outer throat.
’242 patent, col. 20, l. 64–col. 21, l. 10.
c. Claim 14.
Claim 14 of the ’242 patent describes:
A method of capturing an aircraft with an aircraft recovery system, said aircraft
recovery system having an arrestment line and an arrestment line support, said
aircraft comprising at least one wing, and a capturing and retaining device mounted
on said wing off centerline of the aircraft, the method comprising flying said aircraft
22
into said arrestment line to cause the arrestment line to slide along a leading edge
of said wing into an open entrance of a passageway in said capturing and retaining
device, said passageway having a closed end, said passageway having at least two
obstructions the line passes during recovery, each of said at least two obstructions
increasing the force required to move the line back past the obstruction toward the
open entrance of said passageway relative to the force required to move the line
initially past the obstruction toward the closed end of the passage way, a first of
said at least two obstructions being closer to the open entrance than a second of said
at least two obstructions.
’242 patent, col. 21, l. 20–col 22, l. 3.
d. Claim 19.
Claim 19 of the ’242 patent describes:
A method of capturing an aircraft with an aircraft recovery system, said aircraft
recovery system having an arrestment line and an arrestment line support, said
aircraft comprising at least one wing, and a capturing and retaining device mounted
on said wing and located off centerline of said aircraft, the method comprising
flying said aircraft into said arrestment line to cause the arrestment line to slide
along a leading edge of said wing into an open entrance of said capturing and
retaining device, the open entrance forming a smooth continuation of the leading
edge, past a first obstruction in the capturing and retaining device into an outer
throat of the capturing and retaining device, the first obstruction requiring less force
during arrestment for the line to enter the outer throat than to exit the outer throat
through the open entrance, and past a second obstruction into an inner throat of the
capturing and retaining device, the second obstruction requiring less force during
arrestment for the line to pass from the outer throat to the inner throat than from the
inner throat to the outer throat, the inner throat having a closed end outboard of the
open entrance, the line being retained in the inner throat.
’242 patent, col. 22, ll. 13–34.
2. The Dependent Claims.
a. Claim 2.
Claim 2 of the ’242 patent describes, “The combination of claim 1 wherein the first
obstruction comprises a spring-loaded latch.” ’242 patent, col. 20, ll. 43–44.
b. Claim 13.
Claim 13 of the ’242 patent describes, “The aircraft of claim 9 wherein the inner throat is
smaller than the diameter of the line.” ’242 patent col. 21, ll. 18–19.
23
c. Claim 15.
Claim 15 of the ’242 patent describes, “The method of claim 14 wherein the first
obstruction comprises a spring-loaded latch.” ’242 patent, col. 22, ll. 4–5.
D. United States Patent No. 8,517,306.
1. The Independent Claims.
a. Claim 21.
Claim 21 of the ’306 patent describes:
In combination, an aircraft and a capturing apparatus adapted for capturing the
aircraft,
the aircraft comprising
a) a hook attached to an outboard portion of a wing of said aircraft, said hook
comprising an inboardly-extending forward part defining a forward side of an
outboardly-extending passageway, the passageway having an inboardly-facing
mouth, said hook being constructed and proportioned to intercept an arrestment line
and reliably and releasably attach said aircraft to said arrestment line with a line
retaining mechanism, and
b) lateral deflecting structure constructed and arranged to reliably deflect the
arrestment line laterally into engagement and attachment with the hook, the lateral
deflecting structure comprising a leading edge of the wind of said aircraft,
the capturing apparatus comprising
c) the arrestment line, and
d) an arrestment line support structure supported by a base, the arrestment line
being designed to deflect when contracted by said aircraft, the arrestment line being
suspended at its upper end by said support structure across a flight path of the
aircraft in an orientation which is generally perpendicular to said leading edge of
said wing at an intended point of interception of said aircraft, and being connected
at its lower end to the base,
said support structure being kept clear of the intended flight path of the aircraft and
extending down to said base on only one side of said the intended flight path.
’306 patent, col. 21, l. 63–col. 22, l. 27.
2. The Dependent Claims.
a. Claim 13.
Claim 13 of the ’306 patent describes, “The combination of claim 1 wherein the hook has
an open entrance and a closed end, the line retaining mechanism comprising at least one
obstruction that makes it easier for said line to move toward the closed end of the hook than to
move back toward the open entrance.” ’306 patent, col. 21, ll. 30–34.
24
b. Claim 17.
Claim 17 of the ’306 patent describes, “The combination of claim 1 wherein said flexible
support structure includes a pole.” ’306 patent, col. 21, ll. 44–45.
c. Claim 19.
Claim 19 of the ’306 patent describes:
The combination of claim 1 wherein the passageway is closed at its outboard end,
the open mouth of the passageway is closed at its outboard end, the open mouth of
the passageway lying adjacent the leading edge of the wing, and the line retaining
mechanism comprising at least one obstruction that makes it easier for said line to
move toward the closed end of the hook than to move back toward the open
entrance.
’306 patent, col. 21, ll. 49–54.
E. United States Patent No. 8,567,718.
1. Independent Claim 1.
Claim 1 of the ’718 patent describes:
An unmanned aircraft comprising a fixed hook located more than half way outboard
on a main wing of said aircraft, said hook including a portion that extends outboard
relative to the aircraft then forward relative to the aircraft and then extends inboard
relative to the aircraft to form an inboardly-facing mouth of a passageway adjacent
a leading edge of the wing, said hook being positioned such that a portion of the
hook that extends inboard relative to the aircraft is in front of a line described by
the forward edge of the wing just inboard of the mouth of the hook.
’718 patent, col. 20, ll. 37–46.
F. Construction Of Disputed Terms.
This Memorandum Opinion And Order construes nine disputed terms in the five asserted
parents.15
15
In the March 28, 2014 Joint Claim Construction Submission, the parties listed ten
“Agreed Constructions” and forty-four “Disputed Constructions.” See JBR at i–ii. Of the original
forty-four disputed constructions, the parties subsequently have agreed to constructions of sixteen
terms, see Ct. App’x at B, and, the court previously determined that one term, “throat,” does not
require construction, see 4/7/14 TR at 194 (“Okay, so I’m not construing that one.”). This
Memorandum Opinion And Order construes the nine terms whose constructions are disputed for
reasons other than indefiniteness.
25
All of the patents asserted by AATI are related as divisional applications. A divisional
application is “a later application for an independent or distinct invention, carved out of a pending
application and disclosing and claiming only subject matter disclosed in the earlier or parent
application.” MPEP § 201.06 (defining divisional application); see also MPEP § 201.04 (defining
“parent” application).
In this case, the parties have asked the court to construe terms that are used in different
patents, where they may have different meanings because of different context, different
dependency considerations, and different prosecution histories. The parties’ constructions and
briefs generally do not account for this, so the court has attempted to reconcile the differences in
usage between different patents, because as a matter of law, each patent is a document unto itself,
and the claims of that patent are construed in light of the relevant specifications and the prosecution
histories. See Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1078 (Fed. Cir. 2005)
(“[T]he prosecution of one claim term in a parent application will generally not limit different
claim language in a continuation application.”); see also Biogen, Inc. v. Berlex Labs., Inc., 318
F.3d 1132, 1141 (Fed. Cir. 2003) (“In prosecuting a related application the applicant is not barred
from raising new arguments or correcting past errors. When the applicant is seeking different
claims in a divisional application, estoppel generally does not arise from the prosecution of the
parent.”). But see Gemalto S.A. v. HTC Corp., 754 F.3d 1364, 1368–71 (Fed. Cir. 2014) (holding
that “memory” should be construed across multiple patents derived from the same initial
application); Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999) (“When multiple
patents derive from the same initial application, the prosecution history regarding a claim
limitation in any patent that has issued applies with equal force to subsequently issued patents that
contain the same claim limitation.”).
1. “Fixed Hook.”
The parties propose the following competing constructions of “fixed hook” for the court’s
consideration:
“fixed hook”
Asserted Patent/Claim(s): 718/1
AATI Government Boeing
A hook that is securely Agrees with Boeing. A curved or bent device for catching,
placed or fastened. holding, or pulling that is permanently
attached to the aircraft or flying object.
Either the Government, Boeing, or both challenged the remaining eighteen “Disputed
Constructions” on indefiniteness grounds, so the court will construe the remaining terms in its
opinion on indefiniteness. See Gov’t PHMB at 13–35; Boeing PHMB at 15–44; see also 10/24/14
TR at 9 (stating that there were approximately twenty terms disputed on indefiniteness grounds).
During the October 24, 2014 status conference, the court stated that it would first construe terms
before addressing indefiniteness, and directed the parties to forego further indefiniteness briefing
until directed otherwise by the court. 10/24/14 TR at 9–10. And, during the July 27, 2015 hearing,
the parties agreed to discuss the potential for reduction of the terms disputed on indefiniteness
grounds. 7/27/15 TR at 34–41.
26
The parties agree that “hook” means “a device for catching, holding, or pulling an
arrestment line that is either permanently or non-permanently attached to the aircraft or flying
object.” AATI PHMB at 10; JBR at 27. The parties disagree as to the meaning of “fixed.” AATI
PHMB at 10; JBR at 27.
a. The Parties’ Proposed Constructions.
AATI argues that, because the applicant did not act as its own lexicographer and define
“fixed hook” in the specification, it should be construed according to the plain and ordinary
meaning, citing the dictionary definition as “securely placed or fastened.” JBR at 26 (citing
MERRIAM-WEBSTER ONLINE DICTIONARY, http://www.merriam-webster.com/dictionary/fixed)
(last visited July 29, 2015)); AATI PHMB at 10 (same). AATI points to several lines where
“fixed” is used in the specification, but does not require permanence of the “fixed” component.
AATI PHMB at 11 (citing ’729 patent, col. 10, ll. 59–61, col. 13, ll. 19–21). As such, the court
should adopt an interpretation of “fixed” limiting the degree to which the object is free to move
without requiring permanence. AATI PHMB at 11–12; see also AATI Exp. Aff. ¶ 50 (“Whether
the hook is fixed merely refers to whether it is securely placed on or fastened to the wing.
Therefore, a POSA would understand a hook that is attached to the wing with fasteners as being
fixed.”). In contrast, the Government’s proposed construction is not supported by the specification
and imports limitations from the ’729 patent, col. 8, ll. 2021 that references a “[h]ook [that] may
be permanently attached.” AATI PHMB at 11; AATI Exp. Aff. ¶ 52. And, the Government’s
construction is confusing, because the meaning of “permanently” is unclear. AATI PHMB at 13;
AATI Exp. Aff. ¶ 52.
The Government argues that “fixed hook” should be interpreted to be consistent with the
specification’s disclosure of permanently and non-permanently attached hooks. JBR at 27; see
also Gov’t Exp. Aff. ¶ 16 (“It is my opinion that a [POSA] . . . would understand the term ‘fixed
hook,’ to mean that the design engineer intends for the hook to remain both permanent and securely
placed and fastened during normal flight operations. This is distinct from and different than a
hook intended to tear off during a normal landing or capture.”); Gov’t Resp. at 6 (AATI’s
“proposed construction . . . fail[s] to give appropriate deference to the context in which claim terms
are used in the patent.”). The specification of the ’718 patent, however, does not refer to “fixed
hook,” but does discloses “permanent hook.” JBR at 27; see also Gov’t Resp. at 6 (citing ’729
patent, col. 8, ll. 20–23 (describing a “[h]ook” that is either “permanently attached at the wingtip”
of an aircraft or “retained with tape 270 that is designed to tear under the load of an engagement”)).
27
The Government warns that if the court does not interpret “fixed hook” as a permanent hook, then
“fixed hook” will “lack the written description required by 35 U.S.C. § 112, ¶ 1.”16 JBR at 27.
Boeing argues that “fixed hook” describes one that is “fixed in place,” necessarily requiring
that the hook be “permanently attached.” JBR at 28 (citing ’718 patent, figs. 3–4). Moreover,
AATI does not explain how “fixed” means “non-permanent,” instead of “permanent.” Boeing
Resp. at 3. In addition, AATI relies on the “taped hook” as an example that “is the epitome of a
‘nonpermanent hook,’ and thus the antithesis of a ‘fixed hook.’” Boeing Resp. at 4.
b. The Court’s Construction.
The parties agree on the definition of “hook.” 5/14/14 Jt. Statement at 2; Gov’t Resp. at 4;
AATI PHMB at 9–10. Therefore, the court must construe the adjective “fixed,” as used in claim
1 of the ’718 patent.
As an initial matter, an object cannot be “fixed” in the abstract; it must be fixed in relation
to some other object. In claim 1, the structures recited are the “aircraft,” “fixed hook,” and “wing.”
’718 patent col. 20, ll. 37–46. Claim 1 states that the hook is “located more than half way outboard
on a main wing.” ’718 patent, col. 20, ll. 3738. The parties do not dispute these facts. Instead,
the dispute is the degree or permanence of the fixing. AATI argues that the fixing must be
“secure,” whereas the Government argues that the fixing must be “permanent.” JBR at 26.
It is well-established that patent claims should be viewed in light of the claim language,
the specification, and the prosecution history. See Phillips, 415 F.3d at 1314–17 (explaining the
sources comprising the intrinsic evidence). As a general rule, the specification “is the single best
guide to the meaning of a disputed term.” Vitronics, 90 F.3d at 1582. The ’718 patent specification
makes no reference to a “fixed hook,” but it uses “fixed” in six different contexts. See, e.g., ’718
patent, col. 3, l. 5 (“fixed wing aircraft”), col. 10, l. 49 (“fixed stop”), col. 10, ll. 50–51 (“fixed
grappling hook”), col. 13, l. 6 (“fixed or sliding stop”), col. 13, ll. 9–10 (“fixed amount of clamping
or braking force”), col. 15, l. 3 (“fixed geometry parasails”).
Examination of the specification’s use of “fixed” in “fixed wing aircraft” and in “fixed
geometry parasails” is helpful in construing the meaning of “fixed hook.” For example, “fixed
wing aircraft” have wings that do not adjust in position during flight. See DAVID CROCKER,
DICTIONARY OF AVIATION 96 (2d ed. 2007) (“AVIATION”) (defining “fixed-wing” as “referring to
an aircraft that has wings that do not move, rather than rotor blades”). The other two categories of
aircraft are defined as having either variable-geometry wings or rotary wings. See AVIATION at
16
Section 112, ¶ 1 provides:
The specification shall 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, and shall set forth the best
mode contemplated by the inventor of carrying out his invention.
35 U.S.C. § 112, ¶ 1.
28
244–45 (defining “variable-geometry” as “referring to an aircraft with hinged wings that can move
backwards or forwards during flight”); AVIATION at 198 (defining “rotary wing aircraft” as “an
aircraft with a rotor which provides lift, such as a helicopter”). A subset of “fixed wing aircraft”
has folding wings that allow for storing the aircraft. See AIRTRONICS, INC., THE DIFFERENCE
BETWEEN FIXED-WING & ROTARY WING AIRCRAFT, http://airtronicsinc.com/airtronics-
blog/difference-fixed-wing-rotary-wing-aircraft/ (last visited July 29, 2015) (“AIRTRONICS”)
(explaining that “fixed-wing aircraft” include aircraft with wings that are stationary during flight,
but may move when stored); see also NEW WORLD ENCYCLOPEDIA, AIRPLANE,
http://newworldencyclopedia.org/entry/airplane (last visited July 29, 2015) (“AIRPLANE”)
(explaining that “fixed-wing aircraft” “embraces aircraft with folding wings that are intended to
fold when on the ground”). Fixed wing aircraft’s wings do not change position during flight;
variable-geometry aircraft are capable of adjusting their position during flight. Compare
AVIATION at 96, with AVIATION at 244–45. Therefore, “fixed” in “fixed wing aircraft” does not
indicate that the wings never move. Instead, an aircraft with folding wings is a “fixed wing
aircraft,” but these wings can be folded to accommodate airplane storage. See AIRTRONINCS; see
also AIRPLANE. Therefore, “fixed” indicates that the wings are stationary when the aircraft is in
flight.
Another example found in the specification is “fixed geometry parasails” that describe
parasails that remain in a constant shape during flight. ’729 patent col. 15, l. 23. But, parasails
are made of a flexible fabric that can be folded or stuffed into a bag when placed in storage. ’729
patent col. 2, ll. 57–59 (explaining the storage process). In fact, due to their flexible nature, fixed-
geometry parasails are unable to maintain their in-flight geometry if not in use. ’729 patent col. 2,
ll. 49–59 (describing parasail deployment by holding the mouth of the parachute part open or by
running it up risers to fill it with air). In contrast, a distinguishing feature of variable geometry
parasails is their ability to be cinched down or opened wide while in flight. ’718 patent, figs. 25A,
25B, col. 15, ll. 24–60 (describing the use and advantages of a variable geometry parasail as shown
in Figures 25A and 25B). Thus, the use of “fixed” in “fixed geometry parasails” does not indicate
that the parasails’ geometry never changes, as it changes when the parasails are folded or stuffed
in a bag for storage.
The Government’s proposed construction creates ambiguity, i.e., what is permanent? But
AATI’s proposed construction also creates ambiguity by using “securely.” More importantly,
AATI’s use of a general dictionary to define the “plain and ordinary meaning” of the claim term
in the abstract—i.e., divorced from the patent—is contrary to Phillips, 415 F.3d at 1320 (Fed. Cir.
2005) (“Although the concern expressed by the court . . . was valid, . . . it. . . placed too much
reliance on extrinsic sources such as dictionaries, treatises, and encyclopedias and too little on
intrinsic sources, in particular the specification and prosecution history.”).
Therefore, “fixed” signifies that a structure is held constant during the aircraft’s and fixed
geometry parasails’ ordinary and intended operation, i.e., flight. AATI Exp. Aff. ¶¶ 51–52 (stating
the “basic engineering concern of wanting the hook to remain in place during normal use,” but
also being able to remove the hook “to replac[e] a worn component without damage”).
For these reasons, the court has determined that, after reading the entire specification,
prosecution history, and claim 1 of the ’718 patent, a POSA would understand “fixed hook” to
29
ordinary meaning of “primary” excludes systems that have another “more important” approach,
such as the “net enveloping approach” referenced in the ’729 patent. AATI PHMB at 16.
“Primary” imposes an alternative relationship on the claim and does not require that both a primary
and a secondary mechanism be present. AATI PHMB at 16–17; see also AATI Exp. Aff. ¶¶ 57–
58 (stating that the different approaches, including approaches using hooks, “are described as
alternatives—not as primary or secondary means of capturing the same UAV”).
The Government counters that “primary means” requires the presence of a secondary
means. JBR at 32; Gov’t Resp. at 8. The specification “uses ‘primary’ to indicate a comparison
between more than one element.” Gov’t Resp. at 8 (citing ’729 patent, col. 13, l. 65–col. 14, l. 5);
see also JBR at 32. In support, the Government references Figures 17 and 18 that show a net used
to capture an aircraft, and Figures 3, 4, 15, and 16 that “disclose embodiments . . . that make use
of a variety of hook configurations.” JBR at 32 (citing ’729 patent, col. 14, l. 21–col. 15, l. 7).
The aircraft also must have a secondary capture means, because otherwise, “primary” has no
meaning. JBR at 32. Therefore, “primary means” necessarily requires that there be some other
means for capturing an aircraft. JBR at 32; see also Gov’t Exp. Aff. ¶ 18 (“It is my opinion that a
[POSA], after reading the patent, would understand this term to mean that the hook would be the
design/normal method for aircraft recovery, and that all other methods would be less desirable
contingencies.”).
Although “Boeing submits that there is no meaningful differen[ce] between the proposed
constructions,” it agrees with the Government’s proposed construction and argues that if there is
a primary means, necessarily there must be a secondary means. JBR at 32–33. “[T]he patent’s
use of ‘primary difference’ explicitly acknowledges the existence of another (i.e., secondary)
difference.” Boeing Resp. at 7 (citing ’729 patent, col. 13, l. 65–col. 14, l. 5 (explaining two
differences in the configurations of the arrestment lines); ’729 patent col. 20, ll. 32–36 (listing
another “primary source of lift and drag” when the UAV itself is the secondary means)). AATI,
however, “ignores the [dictionary] entries defining ‘primary’ that establish the existence of
secondary or additional elements,” as well as United States Supreme Court and United States Court
of Appeals for the Federal Circuit precedent. Boeing Resp. at 5–6, 6 n.2 (citing Blonder-Tongue
Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 336 n.28 (1971) (stating that “the President’s
Commission identified as one of its primary objectives ‘reduc[ing] the expense of obtaining and
litigating a patent,’” demonstrating that other objectives existed); Dealertrack, Inc. v. Huber, 674
F.3d 1315, 1333–34 (Fed. Cir. 2012) (addressing the plaintiff’s “primary argument” before
addressing the plaintiff’s other arguments)); see also Boeing Resp. at 6 (stating that AATI’s
proposed construction would “lead to a guessing game, with the factfinder having to make an
arbitrary decision about which capturing mechanism is the ‘most important,’” violating 35
U.S.C. § 112, ¶ 2).18 Moreover, “primary” does not mean “sole.” Boeing Resp. at 8 (citing Loctite
Corp. v. Ultraseal Ltd., 781 F.2d 861, 877 (Fed. Cir. 1985) (differentiating “primary” from “sole”),
overruled by Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059 (Fed. Cir. 1998)).
18
Section 112 provides, “The specification 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.
31
b. The Court’s Construction.
“Primary” is an adjective that differentiates the claimed hook or device from other means
of capturing the aircraft. “Primary” indicates that the hook or device described is the preferred
means of capturing the aircraft. Gov’t Exp. Aff. ¶ 18 (“It is my opinion that a [POSA], after
reading the patent, would understand this term to mean that the hook would be the design/normal
method for aircraft recovery, and that all other methods would be less desirable contingencies.”);
AATI Exp. Aff. ¶ 59 (“It is my opinion that the reference to a ‘primary’ means of retrieval signifies
importance, not an implicit requirement for a secondary means of retrieval on the same UAV.”).
But, the parties disagree about whether “primary” requires that a secondary “means” be attached
to the aircraft.
The Government argues that “primary” requires multiple objects or elements. Gov’t Resp.
at 8 (“between two or more objects”; “comparison between more than one element”; “a comparison
between two or more elements”). But, the claim language reads “primary means of capturing,”
wherein the adjective “primary” modifies “means.” ’137 patent, col. 21, ll. 8–9, col. 21, l. 66–col.
22, l. 1, col. 22, l. 49. This indicates that other “means of capturing” the aircraft may exist, but
that the hook is the “primary means.” The specification describes several arrestment “means” for
capturing an aircraft, some of which involve attachments to the aircraft, some of which do not.
Compare ’137 patent col. 8, ll. 8–29 (describing a wing-mounted hook), col. 10, ll. 7–12
(describing Figure 15 that shows four hooks on an aircraft, any one of which could arrest the
aircraft), and col. 19, ll. 3–22 (describing Figure 23 that shows one latching hook attached to the
mid-line of the wing), with col. 14, ll. 18–42 (describing the net enveloping approach without
hooks). The Government’s additional limitation—“a secondary means on the aircraft or flying
object,” JBR at 32 (emphasis added)—is not supported in the claim language.
For these reasons, the court has determined that, after reading the entire specification,
prosecution history, and claims 1, 20, and 25 of the ’137 patent, a POSA would understand “hook
being the primary means of capturing said aircraft” to mean “the hook is the most important means
of capturing said aircraft.”
32
3. “Obstruction.”
The parties propose the following competing constructions of “obstruction” for the court’s
consideration:
“obstruction”
Asserted Patent/Claim(s): 242/1, 2, 9, 14, 15, 19; 306/13, 19
AATI Government Boeing
Something that blocks Any element between the open entrance and Something that blocks
something else and makes closed end of a passageway or hook that is something else and
it difficult (and even passed by the arrestment line during recovery makes it difficult, but
impossible) for things to and that increases the force required to move the not, impossible for
move through; at least two line from the closed end of the passageway to another object, such as
obstructions: more than its open entrance, as compared to the force a line, to move
one obstruction. required to move the line from the open through.
entrance of the passageway to its closed end.
An obstruction does not completely prevent
entrance or exit from the passageway. Where
more than one obstruction is recited, the
obstructions must be separate and distinct
elements.
a. The Parties’ Proposed Constructions.
AATI argues that the applicant did not act as his own lexicographer for “obstruction,” so
that the plain and ordinary meaning controls. AATI PHMB at 19. The plain and ordinary meaning
should be determined based on the dictionary definition of “obstruction,” i.e., “something that
blocks something else and makes it difficult for things to move through.” AATI PHMB at 19; see
also AATI Exp. Aff. ¶ 71 (“The plain and ordinary meaning of obstruction . . . is ‘something that
blocks something else and makes it difficult (and even impossible) for things to move through.’”);
AATI Exp. Aff. ¶¶ 66–67 (“A POSA would understand that trapping the line would mean that the
line enters, but does not exit the hook during arrestment,” and “that an obstruction in the hook is
meant to increase reliability of UAV retrievals using an arrestment line.”). AATI’s ’242 and ’306
patents disclose alternative configurations to prevent the line from exiting the hook during
arrestment, so “a POSA would understand that the latch is the preferred ‘obstruction,’ which makes
it impossible for the line to escape the hook during arrestment.” AATI Exp. Aff. ¶¶ 69–70 (citing
’729 patent, col. 8, ll. 34–41, 46–48, 53–55). This construction also is supported by the
specification referencing the “spring-loaded latch” elsewhere in the claim. ’242 patent, col. 20, ll.
43–44; see also AATI Exp. Aff. ¶ 66 (“Based on the claims where ‘obstruction’ appears, . . . it is
clear that the term can refer to the ‘spring-loaded latch’ described in the patents-in-suit.”). Finally,
impossibility is integral to the construction, because it furthers the goal of “retaining” the UAV
with an arrestment line. AATI Exp. Aff. ¶ 72. Therefore, “obstruction” means “designed to allow
one-way access for the line to enter the hook without exiting during arrestment.” AATI PHMB at
19.
In addition, AATI argues that the Government’s construction seeks to use other concepts
from the claims to “burden the term ‘obstruction.’” AATI PHMB at 20. The Government’s
33
argument as to the disavowal of claim scope during prosecution of the ’242 patent is also incorrect,
because there is no evidence showing “a clear disavowal or intention to modify the meaning of the
term.” AATI PHMB at 21. In addition, Boeing’s construction is improper, because the inclusion
of “but not impossible for another object . . . to move through” is not supported by the plain and
ordinary meaning of “obstruction,” and “obstruction” should encompass both partial and complete
blockages. JBR at 39–40; AATI PHMB at 21.
The Government counters that “obstruction” should be construed in light of the claim
language, defining “obstruction” in terms of how much force is required to move the line. JBR at
40; see also Gov’t Resp. at 9 (“[T]he claim language clearly contemplates that an arrestment line
can move in both directions past the obstruction.”); Gov’t Exp. Aff. ¶ 19 (A POSA “would
understand ‘obstruction’ in the context of the patent to mean a one-way latch in some instances,
and a device where the force required is different for entry versus exit in other instances.”)
(emphasis in original) (citing ’242 patent, col. 20, ll. 29–44). Significantly, the claims were
amended during prosecution to: remove text describing the “obstruction” as “making it easier for
said line to move initially toward the closed end . . . ”; and add language that requires “each of said
obstructions [to] increas[e] the force required to move the line back past the obstruction toward
the open entrance of said passageway[.]” JBR at 40. As such, “obstruction” does not completely
prevent entrance or exit from the passageway. JBR at 41.
Boeing adds that “obstruction” should not be construed as impossible to move through,
because AATI’s specification only discloses structures that allow the line to pass in both directions.
JBR at 41–42. And, “[t]he patent’s explicit recognition that the arrestment line may pass back out
‘through the throat 24’ if ‘a significant load [is] applied’ completely undercuts AATI’s argument.”
Boeing Resp. at 8 (quoting ’729 patent, col. 8, ll. 47–48).
b. The Court’s Construction.
The term “obstruction” is a noun that appears in claims 1, 2, 9, 14, 15, at 19 of the ’242
patent and in claims 13 and 19 of the ’306 patent. Therein, the aircraft is described as having a
line capturing and retaining device with a passageway with at least two obstructions. During
prosecution, the following modifying phrase was added: “increasing the force required to move
the line past the obstruction.” JBR App’x 3, at A3-129. The Examiner Remarks indicate that this
additional phrase was added to distinguish the claimed invention from prior art and defeated
obviousness concerns (JBR App’x 3, at A3-129–30), and is consistent with one of the “object[s]
of the invention to provide a recovery system that exerts lower loads and inflicts less damage to
the UAV and arrestment system.” ’729 patent, col. 3, ll. 79.
“Obstruction” is not defined in the specification of the asserted patents. Therefore, the
court must construe it according to its plain and ordinary meaning in light of the surrounding claim
language. See Phillips, 415 F.3d at 1314 (citing Vitronics, 90 F.3d at 1582) (“Quite apart from the
written description and the prosecution history, the claims themselves provide substantial guidance
as to the meaning of particular claim terms.”); see also ACTV, Inc. v. Walt Disney Co., 346 F.3d
1082, 1088 (Fed. Cir. 2003) (“[T]he context of the surrounding words of the claim also must be
considered in determining the ordinary and customary meaning of those terms.”).
34
The parties agree that “passageway” means “a way that allows passage.” JBR at 5; 5/14/14
Jt. Statement at 1. The parties disagree as to whether “open entrance” requires the passageway
entrance actually to be “open,” or if it means the entrance is capable of being opened and whether
“a closed end” requires the end always to be closed. JBR at 43–45.
a. The Parties’ Proposed Constructions.
AATI argues that the applicant did not act as their own lexicographer; therefore, no
construction is necessary, and the plain and ordinary meaning should control. AATI PHMB at
22–23.
The Government responds that this term should be interpreted to mean that the “open
entrance” and “closed end” must structurally be open and closed. JBR at 45; see also Gov’t Exp.
Aff. ¶ 22 (“It is my opinion that a [POSA] would understand ‘open entrance,’ as used in the patents,
to mean that passageway would be normally open (not blocked) during aircraft recovery.”). The
Government also cites dictionary definitions in support of its construction. JBR at 45–46 (citing
MERRIAM-WEBSTER ONLINE DICTIONARY, http://www.merriam-webster.com/dictionary/open)
(last visited July 29, 2015)).
Boeing agrees with the Government’s claim construction. JBR at 43, 46 (adding that “the
specification of the AATI patents does not define. . . . [or] use the term ‘passageway’”); see also
Boeing Resp. at 10. And, “AATI has changed its proposed construction of the term ‘a passageway
with an open entrance and closed end,’” thereby waiving its previous claim construction argument.
Boeing Resp. at 10 (citing Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1352 (Fed.
Cir. 2003) (holding that the plaintiff waived its claim construction argument “by agreeing to that
portion of the adopted construction”)).
b. The Court’s Construction.
Because the parties agree that “passageway” means “a way that allows passage” (JBR at
5; 5/14/14 Jt. Statement at 1), the court only must construe “open entrance” and “closed end.”
The claims use “open entrance” and “closed end” as structural limitations. For example,
claim 13 of the ’306 patent states that “the hook has an open entrance and a closed end, the line
retaining mechanism comprising at least one obstruction that makes it easier for said line to move
toward the closed end of the hook than to move back toward the open entrance.” ’306 patent, col.
21, ll. 30–34. And, claim 9 of the ’242 patent states that the “hook ha[s] an open entrance . . . , a
closed end outboard of the open entrance, and, between the open entrance and closed end, an inner
throat, and outer throat, and a first obstruction[.]” ’242 patent, col. 21, ll. 1–5. In other words, the
that there was nothing to construe, the Government understood that statement to be an
acknowledgement that [AATI]’s construction was a drastic and unsupported departure from the
plain and ordinary meaning of ‘open.’” Gov’t Resp. at 12 (citing 4/7/14 TR at 166–67 (“Open
means open.”)). Therefore, the court should “affirmatively rule that the Government’s construction
is correct and that ‘open’ does not merely mean ‘capable of being opened.’”
36
The parties agree that this term specifies the “relative magnitude of forces necessary to
move the line past the obstruction . . . in different directions[.]” AATI PHMB at 23. But, the
parties disagree as to “whether an obstruction must allow an arrestment line to move past it in
either direction, albeit while requiring different amounts of force, or whether an obstruction can
allow movement in one direction, while completely preventing it in the other.” JBR at 48.
a. The Parties’ Proposed Constructions.
AATI argues that it did not act as its own lexicographer, so the plain and ordinary meaning
controls. AATI PHMB at 23; AATI Exp. Aff. ¶ 75. The claim language indicates relative degrees
of force and excludes the possibility that the line can both enter and exit the hook. AATI PHMB
at 24; see also AATI Exp. Aff. ¶¶ 76 (“A POSA would understand that this term describes the
relative magnitude of the force required for the line to enter the hook during arrestment compared
to the force required for the line to exit the hook during arrestment. The patents-in-suit explain
that the force to ‘enter’ is less than the force to ‘exit’ the hook during arrestment.”) (citing ’729
patent, col. 8, ll. 12–14, 46–55; JBR App’x 3, at A3-129–31). And, contrary to Boeing’s proposed
construction, the applicant put no upper limit on the force required, so such a requirement would
improperly limit the claim. AATI PHMB at 24–25; see also AATI Exp. Aff. ¶¶ 76, 78. The
language at the beginning of the claim terms, as well as the agreed constructions of other terms,
supports AATI’s construction. AATI Exp. Aff. ¶¶ 79–80. Moreover, Boeing’s proposed
construction that the line can move through the passageway “in either direction” runs counter to
function of capturing and retaining the arrestment line and conflicts with the construction of the
term “line capturing and retaining device.” AATI PHMB at 24–25; see also Court App’x B.11
(explaining that all of the terms in “line capturing and retaining device” have been construed and
that “line capturing and retaining device” thus requires no further construction).
Boeing argues that there is no support in the specification for the assumption that “the
hooks and obstructions are configured so that the arrestment lines are impossible to pull out of the
hooks.” Boeing Resp. at 9. AATI’s proposed construction only relates to “the forces necessary to
move the line through ‘the passageway,’ whereas the claims recite the forces necessary to move
the lines past ‘an obstruction.’” JBR at 49; see also Boeing Resp. at 9 (“AATI again ignores the
express language of the patent, which recognizes that the arrestment line may pass back through
the throat 24 if a significant load [is] applied.”) (internal quotations omitted) (alterations in
original). For example, the ’729 patent specification supports the interpretation that “the line can
be pulled through the passageway in either direction.” JBR at 49 (citing ’729 patent, col. 8, ll. 41–
55). And, AATI’s position “make[s] little sense,” because it would “require[] the destruction of
some component of the system every time it is used.” Boeing Resp. at 9.
The Government agrees with Boeing. JBR at 48. And, the Government submits that the
dispute over “increasing the force required” is identical to the dispute regarding “obstruction.”
Gov’t Resp. at 12–13. Therefore, the construction of “obstruction” also will resolve the dispute
over this term. Gov’t Resp. at 12–13.
b. The Court’s Construction.
The court has construed “obstruction” to mean “an object requiring added force to be
moved.” See supra Section IV.F.3.b. For this reason, the court has determined that, after reading
38
Boeing’s reliance on hook 33 in Figure 3 is misplaced, because hook 33 is placed on the propeller
guard and not on the wing. AATI PHMB at 31.
The Government argues that each throat must be distinguishable. JBR at 54–55; see also
Gov’t Exp. Aff. ¶ 23 (“It is my opinion that a [POSA] would interpret the border between the
‘inner throat’ and ‘outer throat’ to be where the nature of the passageway has changed
substantially. . . . If there is no such substantial change in the passageway, then this border is not
precisely defined[.]”). The ’729 specification discloses that the “inner throat” corresponds to
reference numeral 24, and that the “outer throat” corresponds to reference numeral 23. JBR at 55;
see also Gov’t Resp. at 14 (same). And, in light of Figure 3 of the ’137 patent, each throat must
be distinguishable in some manner, e.g., by size or by the presence of barbs on the outer throat that
are not present on the inner throat. JBR at 55; Gov’t Exp. Aff. ¶ 23. The Government warns that
AATI’s construction would “amount to an arbitrary division of a single passageway into an inner
and an outer portion.” JBR at 55; see also Gov’t Resp. at 14–15 (“Because every throat can be
divided into inner and outer portions, [AATI]’s construction would expand the reach of its claims
to include all devices including any throat. That interpretation impermissibly renders the ‘inner
throat’ and ‘outer throat’ limitations superfluous.”).
Boeing adds that “AATI has changed its proposed construction of the term ‘throat,’”
thereby waiving its prior arguments. Boeing Resp. at 10. As to the distinction between the “inner”
and “outer” throat, the AATI patents do not expressly define “inner throat” or “outer throat,” and
those terms are not accepted terms of art. JBR at 55. Therefore, these terms should be construed
to require a “distinct section” to remain consistent with Figure 3 of the ’729 patent, illustrating the
relationship between the “inner throat 23” and the “outer throat 24.” JBR at 53, 56. AATI’s
proposed construction “blurs the distinction between these two discrete claim elements.” JBR at
56; see also Boeing Resp. at 11 (AATI’s “proposed construction offers no way for a [POSA] to
know where the inner throat ends and the outer throat begins.”). But, Boeing’s proposed
construction permits the POSA to distinguish between the “inner throat” and “outer throat.”
Boeing Resp. at 11.
b. The Court’s Construction.
Although the terms “inner throat” and “outer throat” appear in four claims, the court finds
claims 9 and 19 of the ’242 patent particularly helpful.
Claim 9 of the ’242 patent describes:
An aircraft designed to be recovered by an aircraft recovery system having an
arrestment line and an arrestment line support, said aircraft including a line
capturing and retaining hook mounted to a wing of the aircraft and located off
centerline of said aircraft, said hook having an open entrance forming a smooth
continuation of a leading edge of said wing, a closed end outboard of the open
entrance, and, between the open entrance and closed end, an inner throat, an outer
throat, and a first obstruction which requires less force for the line to enter the outer
throat than to exit the outer throat through the open entrance and a second
obstruction between said inner throat and outer throat which requires less force
40
during the arrestment for the line to pass from the outer throat to the inner throat
than from the inner throat to the outer throat.
’242 patent, col. 20, l. 64–col. 21, l. 10 (emphases added).
Claim 19 of the ’242 patent describes:
A method of capturing an aircraft with an aircraft recovery system, said aircraft
recovery system having an arrestment line and an arrestment line support, said
aircraft comprising at least one wing, and a capturing and retaining device mounted
on said wing and located off centerline of said aircraft, the method comprising
flying said aircraft into said arrestment line to cause the arrestment line to slide
along a leading edge of said wing into an open entrance of said capturing and
retaining device, the open entrance forming a smooth continuation of the leading
edge, past a first obstruction in the capturing and retaining device into an outer
throat of the capturing and retaining device, the first obstruction requiring less force
during arrestment for the line to enter the outer throat than to exit the outer throat
through the open entrance, and past a second obstruction into an inner throat of the
capturing and retaining device, the second obstruction requiring less force during
arrestment for the line to pass from the outer throat to the inner throat than from
the inner throat to the outer throat, the inner throat having a closed end outboard
of the open entrance, the line being retained in the inner throat.
’242 patent, col. 22, ll. 14–34 (emphases added).
The ’242 patent describes the terms “inner throat” and “outer throat” as being located
between the “open entrance” and “closed end.” ’242 patent, col. 21, ll. 3–4. And, the “inner
throat” is the area between a “closed end outboard of the open entrance” and a second obstruction.
’242 patent, col. 22, ll. 32–33; see also ’242 patent col. 21, ll. 7–8 (stating that there is “a second
obstruction between said inner throat and outer throat”). This is distinct from the “outer throat”
that is an area “past a first obstruction” and with a “second obstruction between said inner throat
and outer throat.” ’242 patent, col. 22, ll. 23–24, col. 21, ll. 7–8.
For these reasons, the court has determined that, after reading the entire specification,
prosecution history, claim 30 of the ’137 patent, and claims 9, 13, and 19 of the ’242 patent, a
POSA would understand “inner throat” and “outer throat” as “a throat located between the open
entrance and closed end, separated by a second obstruction.”
41
7. “Sensor.”
The parties propose the following competing constructions of “sensor” for the court’s
consideration:
“sensor”
Asserted Patent/Claim(s): 729/5
AATI Government Boeing
A device that responds to a stimulus (such as A video camera. Agrees with Government.
heat, light, sound, pressure, signals,
magnetism, or a particular motion) and
transmits a resulting impulse.
The parties disagree as to whether “sensor” is a structural term or a functional term that
should be interpreted under 35 U.S.C. § 112, ¶ 6.21 JBR 66–68.
a. The Parties’ Proposed Constructions.
AATI argues that, because it did not act as its own lexicographer, the plain and ordinary
meaning controls. AATI PHMB at 33; see also AATI Resp. at 8–9 (stating that “[t]his is not the
first time ‘sensor’ has been construed by a federal court as having its plain and ordinary meaning”
and that “[n]o court has construed the term ‘sensor’ as proposed by the Government and Boeing”)
(citing Research In Motion Ltd. v. Dataquill BVI, Ltd., 2008 WL 4977370, at *3 (N.D. Tex. Aug.
14, 2008) (finding that a POSA “would understand ‘sensor’ to mean a device that can sense/detect
and report the presence of some stimulus”); Harmonic Design, Inc. v. Hunter Douglas, Inc., 88 F.
Supp. 2d 1102, 1108 (C.D. Cal. 2000) (finding that a POSA “would understand the term ‘sensor’
to mean a ‘device designed to respond to a physical stimulus (as heat or cold, light, a particular
motion) and transmit a resulting impulse for interpretation or measurement or for operating a
control’”)); AATI Exp. Aff. ¶ 95 (“The plain and ordinary meaning of ‘sensor’ must account for
the possibility that the sensor could be camera or some other type of sensor[.]”). In support, AATI
cites several dictionary definitions that define “sensor” as “a device that responds to a
stimulus . . . and transmits a resulting impulse.” AATI PHMB at 33 (quoting MERRIAM-WEBSTER
ONLINE DICTIONARY, http://www.merriam-webster.com/dictionary/sensor) (last visited July 29,
2015); ACAD. PRESS DICTIONARY OF SCI. & TECH. 1957 (1992) (“[T]he component of an
instrument that converts an input signal into a quantity that is measured by another part of the
instrument[.]”); DICTIONARY OF AERONAUTICAL ENGLISH 202 (1999) (“[D]evice which receives
and responds to a signal or stimulus[.]”)). Although a “camera” is one example of a sensor
21
Section 112, ¶ 6 provides:
An element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.
35 U.S.C. § 112, ¶ 6.
42
disclosed in the specification, there is no evidence that “sensor” was limited to this example. JBR
at 69; see also AATI Exp. Aff. ¶ 92 (“A POSA would understand the use of ‘such as’ and ‘or’
means that ‘sensor’ is not limited to one particular type.”); Gov’t Exp. Aff. ¶ 94 (“[T]here is no
indication that the applicant intended a camera to be the only type of sensor that could be used for
guidance.”).
In response to the Government’s arguments, AATI contends that the term is not written in
the “means-plus-function” format, and therefore, does not raise the 35 U.S.C. § 112, ¶ 6
presumption. AATI PHMB at 34–35; see also AATI Resp. at 7–8 (“35 U.S.C. § 112, ¶ 6 is not
invoked without reciting means-plus-function language . . . . [which] supports a rejection of 35
U.S.C. § 112, ¶ 6 where, as here, other claims in the same patent explicitly invoke ¶ 6.”) (emphasis
in original). Nor is there any evidence in the claim nor intrinsic record to overcome the “strong22
presumption against means-plus-function construction.” AATI PHMB at 35. In fact, other courts
have considered and rejected the exact same argument” that “‘sensor’ is a functional limitation.”
AATI Resp. at 9 (citing Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d
696, 704 (Fed. Cir. 1998) (“‘Detector’ is not a generic structural term such as ‘means,’ ‘element,’
or ‘device’; nor is it a coined term lacking a clear meaning, such as ‘widget’ or ‘ram-a-fram.’”)).
The Government responds that “sensor” is a functional term that should be interpreted
under 35 U.S.C. § 112, ¶ 6. JBR at 67; see also Gov’t Resp. at 15 (“[W]hile it is true that the
absence of the phrase ‘means for’ raises a presumption that § 112, ¶ 6 does not apply, that
presumption is overcome if ‘the claim term fails to recite sufficiently definite structure or else
recites function without reciting sufficient structure for performing that function.’”) (quoting
Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014)). Therefore, “sensor”
should be restricted to the only corresponding structure, i.e., a “video camera.” JBR at 67; see also
Gov’t Resp. at 15–16 (“Here, because ‘sensor’ refers only to a general category of devices that can
perform the function of sensing, § 112, ¶ 6 requires ‘sensor’ to be construed according to the
clearly-linked corresponding structure in the specification,” i.e., a video camera.); ’729 patent, col.
7, l. 45–col. 8, l. 5 (describing the use of cameras 201 and 205 in Figure 6 when maneuvering into
arrestment); ’729 patent, col. 21, ll. 47–49 (indicating that the “sensor” is “for guidance in
maneuvering said aircraft into engagement with said recovery system”); Gov’t Exp. Aff. ¶¶ 24–25
(“In the context of UAV launch and recovery, . . . . a [POSA] would not be able to determine which
particular combination of sensor choices this refers to. . . . [But,] it is my opinion that a [POSA]
would understand the ‘sensor’ of claim 5 to mean a camera.”). Moreover, the prosecution history
of the ’729 patent supports the “equivalence” between “sensor” and “video camera.” JBR at 67
(citing JBR App’x 3, at A3-9–10 (changing “camera” to “sensor”)).
Boeing adds that “sensor” should not be construed separately from its surrounding context,
because “it seems likely that a video camera is the only device in the specification that could
22
AATI’s November 21, 2014 Response was submitted before the United States Court of
Appeals for the Federal Circuit’s decision in Williamson that “abandon[ed] characterizing as
‘strong’ the presumption that a limitation lacking the word ‘means’ is not subject to § 112, para.
6.” 2015 WL 3687459, at *7.
43
feasibly accomplish the function[.]” Boeing Resp. at 12; see also JBR at 68.23 When considered
in context, the only sensor disclosed is the “video camera.” JBR at 69. If “sensor” is construed
broadly, “a substantial question of validity will be raised,” because AATI’s patents do not support
the inclusion of radar, TV, and infrared sensors. Boeing Resp. at 12. And, “AATI’s proposed
construction includes many sensors that would likely not work[.]” Boeing Resp. at 12.
b. The Court’s Construction.
i. The Applicability of 35 U.S.C. 112, ¶ 6.
Section 112, ¶ 6 applies when “[a]n element in a claim for a combination [is] expressed as
a means or step for performing a specified function without the recital of structure, material, or
acts in support thereof.” 35 U.S.C. § 112, ¶ 6. Claim terms that fall under 35 U.S.C. 112, ¶ 6 are
limited to cover only “corresponding structure, material, or acts described in the specification and
equivalents thereof.” 35 U.S.C. § 112, ¶ 6.
A claim limitation is presumed to invoke 35 U.S.C. 112, ¶ 6 when it expressly includes
“means for” or “step for” and functional language. See York Prods., Inc. v. Centr. Tractor Farm
& Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996) (“In determining whether to apply the statutory
procedures of section 112, ¶ 6, the use of the word ‘means’ triggers a presumption that the inventor
used this term advisedly to invoke the statutory mandates for means-plus-function clauses.”). But,
this presumption may be overcome, if the claim includes sufficient structure for performing the
recited function. See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008)
(“Sufficient structure exists when the claim language specifies the exact structure that performs
the function in question without need to resort to other portions of the specification or extrinsic
evidence for an adequate understanding of the structure.”).
Conversely, if a claim limitation does not use “means for” or “step for,” it is presumed that
35 U.S.C. 112, ¶ 6 does not apply. See Personalized Media, 161 F.3d at 703–04 (“[T]he failure to
use the word ‘means’ creates a presumption that § 112, ¶ 6 does not apply[.]”); DePuy Spine,
Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1023 (Fed. Cir. 2006) (“[A] claim term
that does not use ‘means’ will trigger the rebuttable presumption that § 112, ¶ 6 does not apply.”)
(alterations omitted). But see Apple, 757 F.3d at 1299 (“Even if a patentee elects to use a ‘generic’
claim term, such a nonce word or a verbal construct, properly construing that term (in view of the
specification, prosecution history, etc.) may still provide sufficient structure such that the
presumption against mean-plus-function claiming remains intact.”) (quotations omitted). The
United States Court of Appeals for the Federal Circuit previously characterized this presumption
as “a strong one that is not readily overcome.” Lighting World, Inc. v. Birchwood Lighting, Inc.,
382 F.3d 1354, 1358 (Fed. Cir. 2004). But, the en banc United States Court of Appeals for the
23
Boeing’s November 21, 2014 Response did not address “sensor.” But, Boeing’s
arguments as to “a sensor being attached . . .” discussed only whether “sensor” means “video
camera.” See Boeing Resp. at 12.
44
Federal Circuit recently overruled Lighting World in Williamson v. Citrix Online, LCC, 2015 WL
3687459 (Fed. Cir. June 16, 2015):
Our consideration of this case has led us to conclude that such a heightened burden
is unjustified and that we should abandon characterizing as “strong” the
presumption that a limitation lacking the word “means” is not subject to § 112, para.
6.
* * *
Henceforth, we will apply the presumption as we have done prior to Lighting
World, without requiring any heightened evidentiary showing and expressly
overrule the characterization of that presumption as “strong.” We also overrule the
strict requirement of “a showing that the limitation essentially is devoid of anything
that can be construed as structure.”
The standard is whether the words of the claim are understood by persons of
ordinary skill in the art to have a sufficiently definite meaning as the name for
structure. Greenberg [v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir.
1996)]. When a claim term lacks the word “means,” the presumption can be
overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim
term fails to “recite sufficiently definite structure” or else recites “function without
reciting sufficient structure for performing that function.” Watts [v. XL Sys., Inc.],
232 F.3d [877,] 880 [(Fed. Cir. 2000)]. The converse presumption remains
unaffected: “the use of the word ‘means’ creates a presumption that § 112, ¶ 6
applies.” Personalized Media, 161 F.3d at 703.
Id., 2015 WL 3687459, at *7.
Claim 5 of the ’729 patent does not does not use “means for” or “step for.” See ’729 patent,
col. 21, ll. 38–48. Therefore, the court presumes that 35 U.S.C. 112, ¶ 6 does not apply. See
Personalized Media, 161 F.3d at 703–04 (“[T]he failure to use the word ‘means’ creates a
presumption that § 112, ¶ 6 does not apply.”). The fact that “sensor” in claim 5 is described in
functional terms—“a sensor . . . for guidance in maneuvering said aircraft into engagement with
said recovery system” (’729 patent, col. 21, ll. 45–49)—does not “demonstrate[] that the claim
term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting
sufficient structure for performing that function.” Williamson, 2015 WL 3687459, at *7.
At this point, the court looks to the United States Court of Appeals for the Federal Circuit’s
endorsement of dictionaries “to determine if a disputed term has achieved recognition as a term
denoting structure.” Williamson v. Citrix Online, LLC, 770 F.3d 1371, 1379 (Fed. Cir. 2014) (“The
district court, in characterizing the word ‘module’ as a mere nonce word, failed to appreciate that
the word ‘module’ has understood dictionary meanings as connoting either hardware or software
structure to those skilled in the computer arts.”), vacated on other grounds, Williamson, 2015 WL
3687459; see also Personalized Media, 161 F.3d at 704–05 (“Instead, as noted by the ALJ by
reference to dictionary definitions, ‘detector’ had a well-known meaning to those skilled in the
electrical arts connotative of structure[.]”); Phillips, 415 F.3d at 1322–23 (quoting Vitronics, 90
45
F.3d at 1584 n.6) (“[J]udges are free to consult dictionaries and technical treatises ‘at any time in
order to better understand the underlying technology and may also rely on dictionary definitions
when construing claim terms, so long as the dictionary definition does not contradict any definition
found in or ascertained by a reading of the patent documents.’”).
Here, dictionary definitions reflect that “sensor” has a reasonably well-understood meaning
that connotes a structure. The Merriam-Webster Dictionary defines “sensor” as “a device that
responds to a physical stimulus (as heat, light, sound, pressure, magnetism, or a particular motion)
and transmits a resulting impulse (as for measurement or operating a control).” MERRIAM-
WEBSTER ONLINE DICTIONARY, http://www.merriam-webster.com/dictionary/sensor (last visited
July 29, 2015) (emphasis added); see also ACAD. PRESS DICTIONARY OF SCI. & TECH. 1957 (1992)
(defining “sensor” as “the component of an instrument that converts an input signal to a quantity
that is measured by another part of the instrument and changed into a useful signal for an
information-gathering system”) (emphasis added); DICTIONARY OF AERONAUTICAL ENGLISH 202
(1999) (defining “sensor” as a “device which receives and responds to a signal or stimulus”)
(emphasis added). In addition, nothing in the ’729 specification rebuts the presumption against
using 35 U.S.C. 112, ¶ 6.
Therefore, the court has determined that 35 U.S.C. 112, ¶ 6 does not apply to “sensor” in
claim 5 of the ’729 patent.
ii. The Plain And Ordinary Meaning Of “Sensor.”
Because 35 U.S.C. 112, ¶ 6 does not apply, “sensor” should not be limited only to the
structure recited in the specification, i.e., a “camera.” See ’729 patent col. 7, l. 32–col. 8, l. 5
(explaining the use of a camera during arrestment). Instead, “sensor” should be construed by its
plain and ordinary meaning, unless one of two exceptions applies: lexicography or disavowal. See
Greenberg, 91 F.3d at 1583 (applying the standard of whether persons of ordinary skill in the art
would understand the term to have a sufficiently definite meaning); see also Hill-Rom Servs.,
Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (“There are only two exceptions to
th[e] general rule [that the term is given its plain and ordinary meaning to one of skill in the art]:
1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee
disavows the full scope of the claim term either in the specification or during prosecution.”)
(internal quotations omitted). Nowhere in the specification does the patentee “clearly set forth a
definition of the disputed claim term.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
(Fed. Cir. 2002). The sentence in the specification that comes the closest to defining “sensor”—
albeit in a different application than claim 5—lists types of sensors that can be attached to the
parasail. ’729 patent col. 17, ll. 11–12 (“The parasail can also carry its own sensors such as radar,
TV or infrared sensors[.]”) (emphasis added). But, this sentence falls short of “clearly set[ting]
forth a definition of the disputed claim term” to redefine the term that is required for lexicography
to apply. CCS Fitness, Inc., 288 F.3d at 1366. Therefore, the patentee did not act as his own
lexicographer, and the first exception does not apply. Similarly, the specification and prosecution
history do not include any “expressions of manifest exclusion or restriction, representing a clear
disavowal of claim scope,” so the second exception does not apply. Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).
46
The Government seeks to limit “sensor” to the “only structure in the specification that
corresponds to [the sensor’s] function,” i.e., the “camera” disclosed in an embodiment in the
specification. Gov’t Resp. at 16 (citing ’729 patent, col. 7, l. 45–col. 8, l. 5, col. 18, ll. 27–29).
But, the United States Court of Appeals for 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). Accordingly, it would be improper for the court to limit “sensor” in
claim 5 to the camera described in the specification. Furthermore, “a specification need not
disclose what is well-known in the art” for a claim term to cover known embodiments. Streck,
Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012). Many types of
“sensors” are known in the aeronautical engineering art, and some are explicitly listed in the
specification, namely radar, TV, and infrared. ’729 patent col. 17, ll. 11–12. The patentee need
not list in the specification every type of sensor known in the art to convey plain and ordinary
meaning. See Streck, 665 F.3d at 1288.
Here, the interpretation of “sensor” does not vitiate the other limitations of claim 5, i.e.,
that the sensor is used “for guidance in maneuvering said aircraft into engagement with said
recovery system.” ’729 patent col. 21, ll. 47–49. Of course, not all sensors known in the art will
fulfill this additional claim limitation, but this does not justify excluding of other types of sensors
from the plain and ordinary meaning.
The prosecution history also does not require a different construction. The Government
emphasizes the patentee’s decision during prosecution to change the word “camera” to “sensor.”
JBR App’x 3, at A3-9–10. This change, however, shows the patentee’s intent that the claim
include more than a camera, not to equate “sensor” with “camera.” JBR App’x 3, at A3-31
(examiner remarking that the claim “has been broadened” by replacing “camera” with “sensor”)
(emphasis added). Moreover, this is far from a clear and unmistakable disclaimer of all other
sensors, as required for a prosecution history disavowal to apply. Omega Eng’g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003) (“[F]or prosecution disclaimer to attach . . . the
alleged disavowing actions or statements made during prosecution [must] be both clear and
unmistakable.”).
For these reasons, the court has determined that, after reading the entire specification,
prosecution history, and claim 5 of the ’729 patent, a POSA would understand “sensor” to mean
“a device that responds to a stimulus (such as heat, light, sound, pressure, signals, magnetism, or
a particular motion) and transmits a resulting impulse.”
47
8. “Being Connected At Its Lower End To The Base.”
The parties propose the following competing constructions of “being connected at its lower
end to the base” for the court’s consideration:
“being connected at its lower end to the base”
Asserted Patent/Claim(s): 306/21
AATI Government Boeing
Being joined or linked at its Agrees with Boeing. The arrestment line is attached directly
lower end to the base. to the base at the end of the arrestment
line closest to the ground.
The focus of this dispute is over the meaning of “connected,” and whether it requires “direct
connection” or also includes “indirect connection.” JBR at 122.
a. The Parties’ Proposed Constructions.
AATI argues that the applicant did not act as its own lexicographer, and therefore, the plain
and ordinary meaning controls. AATI PHMB at 50; see also AATI Exp. Aff. ¶ 113. The dictionary
definition of “connected” is “joined or linked together.” AATI PHMB at 50 (citing MERRIAM-
WEBSTER ONLINE DICTIONARY, http://www.merriam-webster.com/dictionary/connected (last
visited July 29, 2015)). Therefore, “connected” allows connection through other elements. AATI
PHMB at 50–51; see also AATI Exp. Aff. ¶ 114 (“A POSA would understand [‘being connected
at its lower end to the base’] to allow for both direct and indirect connections.”); AATI Exp. Aff.
¶ 115 (providing examples of “other types of indirect connections used in the aviation context”
with which a POSA would be familiar). And, the intrinsic evidence supports this construction.
AATI PHMB at 51 (“For example, claim 24 of the ʼ306 patent recites, . . . ‘said arrestment line is
connected to the base through said support structure.’”) (emphasis in original); see also AATI
Exp. Aff. ¶ 114 (citing ’306 patent, fig. 21) (providing an example of an indirect connection where
“the lines . . . connect indirectly to the posts . . . via horizontal lines”). Moreover, Boeing’s
construction narrows the plain and ordinary meaning by requiring the arrestment line to be attached
directly to the base. AATI PHMB at 52.
The Government contends that “being connected at its lower end to the base” should
“encompass only arrestment lines that are actually connected to the base,” because that is the
construction that “comports with the plain and ordinary meaning of the term to a [POSA.]” Gov’t
Resp. at 18; see also Gov’t Exp. Aff. ¶ 27 (“It is my opinion that a [POSA] would understand
‘being connected at its lower end to the base’ to mean that it is directly connected to the base
itself.”). AATI’s construction would render the term meaningless, because the claim requires that
the lower end of the arrestment line be linked to the arrestment line support structure and that the
arrestment line support structure be linked to the base. Gov’t Resp. at 18–19; see also Gov’t Exp.
Aff. ¶ 27 (“If ‘being connected at its lower end to the base’ merely required being able to trace a
path through any number of connected elements to the base, then this term would have no limiting
effect.”).
Boeing and the Government agree on the construction of “being connected at its lower end
to the base.” Boeing Resp. at 15. Boeing adds that AATI’s proposed construction is “fatally
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flawed[,] because it places no limits on the number of elements that would ‘connect’ the arrestment
line to the base . . . [and] AATI’s view [of] ‘connected’ covers indirect attachment.” Boeing Resp.
at 15.
b. The Court’s Construction.
Figures 27 and 28 are the preferred embodiments of claim 21 described in the specification.
’306 patent, col. 17, ll. 41–63; ’306 patent, figs. 27–28; see also AATI Exp. Aff. ¶ 114 (citing ’306
patent, fig. 21 as another example of an indirect connection in the specification). These
embodiments illustrate an arrestment line indirectly connected to the base. ’306 patent, col. 17, ll.
41–63; ’306 patent, figs. 27–28. Therefore, the construction of “connected”24 should not exclude
the embodiments of Figures 27 and 28. See Accent Packaging, Inc. v. Leggett & Platt, Inc., 707
F.3d 1318, 1326 (Fed. Cir. 2013) (“[A] claim interpretation that excludes the preferred
embodiment from the scope of the claim is rarely, if ever, correct.”); On-Line
Tech. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004) (same).
Moreover, the United States Court of Appeals for the Federal Circuit has stated that “[c]onnected”
is broad, and it is not restricted to “direct” connections. See Douglas Dynamics, LLC v. Buyers
Prods. Co., 717 F.3d 1336, 1343 (Fed. Cir. 2013) (“In sum, the correct construction of the term
‘connected to’ . . . is not limited to direct connections.”).
For these reasons, the court has determined that, after reading the entire specification,
prosecution history, and claim 21 of the ’306 patent, a POSA would understand “being connected
at its lower end to the base” to mean “being attached at its lower end to the base.”
9. “Pole.”
The parties propose the following competing constructions of “pole” for the court’s
consideration:
“pole”
Asserted Patent/Claim(s): 306/17
AATI Government Boeing
A long slender object. A long, slender, rounded object with A long slender usually
one end planted in the ground and used cylindrical object (as a length
as a support for something else; not a of wood).
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beam, boom, or mast.
24
During the April 7–8, 2014 Markman hearing, there was extensive debate over whether
“connected” includes both “direct” and “indirect” connections. Therein, the court determined that
the critical term for construction is “connected” and construed the term to mean “attached.” 4/8/14
TR at 359–60.
25
The Government’s expert, Professor Johnson, proposes that “pole” be construed to mean
“a long, slender, rounded piece of wood or metal—possibly with its lower end placed in the
ground.” Gov’t Exp. Aff. ¶ 28.
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On July 27, 2015, AATI and Boeing agreed that “pole” does not require construction, but
the Government continued to contest the term’s construction. 7/27/15 TR at 6–7.
a. The Parties’ Proposed Constructions.
AATI states that it “agrees to the construction proposed by Boeing,” except for the optional
examples included in the definition, i.e., “usually cylindrical” and “(as a length of wood).” AATI
PHMB at 53. “Pole” is “a broad, generic word” with a “plain and ordinary meaning with no special
definitions,” such as requirements that it be mounted in the ground, cylindrical, or made of specific
materials like wood. AATI Exp. Aff. ¶¶ 120–22. And, “a POSA would understand that the plain
and ordinary meaning of pole would not exclude beams, booms, or masts[,] because there is
nothing in the patents-in-suit that clearly points to such a special meaning.” AATI Exp. Aff. ¶ 123
(citing ’306 patent, figs. 27–28). Therefore, pole should be construed to mean “‘a long slender
object’—that is, an elongate object.” AATI Resp. at 11.
The Government states that the dispute is whether “pole” includes elements that are not
“poles,” including “beams and booms on a ship or articulated telescoping mechanical arms.”
Gov’t Resp. at 19. The patent uses “pole” and “post” interchangeably, but a “post” must be set in
the ground, while a “pole” may be set in the ground. Gov’t Exp. Aff. ¶ 28 (citing ’729 patent, fig.
21). And, “a [POSA] would understand a ‘pole’ or ‘post’ to describe different structures from a
‘beam’ or ‘boom.’” Gov’t Exp. Aff. ¶ 28 (stating that “pole” and “post” refer to vertical elements,
while “beam” and “boom” refer to horizontal elements) (citing ’729 patent, figs. 21, 28). Thus,
the court’s construction of “pole” should exclude a mechanical telescoping boom. Gov’t Resp. at
20.
b. The Court’s Construction.
The court declines to construe “pole,” because a POSA would understand the term to have
a plain and ordinary meaning, and nothing in the specification indicates that the term has any other
meaning. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (stating
that the Markman decisions require claim construction where there is a “dispute[ in] meanings and
technical scope” rather than an “obligatory exercise in redundancy”); see also EON Corp. IP
Holdings, LLC v. Sensus USA Inc., 741 F. Supp. 2d 783, 795 (E.D. Tex. 2010) (“As an initial
matter, the Court declines to construe ‘stationary.’”).
V. CONCLUSION.
For the reasons discussed herein, the court has determined that the disputed claims are to
be construed, pursuant to this Memorandum Opinion And Order Construing Certain Claims of
United States Patent No. 6,874,729, United States Patent No. 7,097,137, United States Patent No.
8,167,242, United States Patent No. 8,517,306, And United States Patent No. 8,567,718.
IT IS SO ORDERED.
s/Susan G. Braden
SUSAN G. BRADEN
Judge
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