Free Supplement/Amendment - District Court of Colorado - Colorado

Case 1:00-cv-02229-JLK-KLM

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Civil Action No. 00-K-2229 CAUGHT FISH ENTERPRISES, LLC, a Colorado Limited Liability Company, and METAL ROOF INNOVATIONS, LTD., a Colorado Corporation, Plaintiffs, vs. CONTEK, INC., d/b/a SNOW MANAGEMENT SYSTEMS, a Vermont Corporation, Defendant.

C ONTEK ' S S TATUS R EPORT R EGARDING I NTERPRETATION OF THE P LAINTIFFS ' P ATENTS
Pursuant to the Court's Order dated April 13, 2006, Defendant Contek, Inc. respectfully submits this brief Status Report to update the Court on any claim construction issues since the time of the parties' prior briefing. A. Introduction

There has been no change in Contek's position since the time of the prior claim construction briefing. Regarding the law of claim construction, the Court should take notice of the recent Federal Circuit decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). The Phillips case addresses, clarifies, and resolves certain inconsistencies in prior Federal Circuit decisions on the issues involved in claim construction, some of which come into play in this case. As such, the Phillips case is now the most current controlling authority on claim construction.

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B.

Summary Of Parties' Positions ­ "Blunt-Nosed Screw."

The bulk of the parties' respective arguments revolves around the meaning of a "blunt-nosed screw," a term used in the `248 and `588 patents. Plaintiffs argue that "blunt-nosed screw" is a term that can include screws that are the opposite of "bluntnosed," that is, screws that have a dished out or concave nose, which (not coincidentally) is the type of screw used by Contek's devices. In other words, according to Plaintiff, "blunt-nosed screw" means both (1) screws that are blunt nosed (as described and pictured in the `248 and `588 patents) and (2) screws that are the opposite of blunt-nosed, but instead have a "carved out" or concave nose. The concaved-nosed screw used by Contek is depicted below, whereby 102 is the screw and 104 marks the concave nose of the screw:

Depiction of Contek's Concave-Nosed Screw Plaintiffs' attempt to argue that the concave-nosed screw depicted above is "blunt-nosed" defies the plain and ordinary meaning of "blunt-nosed," and also is contradicted by the specification of the `248 and `588 patents, which repeatedly and exclusively equate "blunt-nosed" with the plain and ordinary meaning of the term, that is, having a rounded or convex-shaped end. Moreover, during prosecution the patentee was forced to amend his claims to add "blunt-nosed" as an express limitation in order to

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overcome prior art and obtain issuance of the patents-in-suit. Consequently, and apart from the plain meaning of "blunt-nosed screw," Plaintiffs cannot argue for a definition in this litigation that includes screws that are not blunt-nosed. See Contek's Opening Brief at 20-23; Alpex Computer Corp. v. Nintendo Co. Ltd., 102 F.3d 1214, 1221 (Fed. Cir. 1996) ("Positions taken before the PTO may bar an inconsistent position on claim construction."). Faced with the fact that Contek's screws are the polar opposite of "blunt-nosed," Plaintiffs are forced to argue that "blunt-nosed screw" includes not only the screw itself, but also an array of different, separate hardware parts that are not screws, are not affixed or attached to the screw in any way, but merely lie adjacent to the concavednosed screw in the snow guard apparatus, such as spherical ball-bearings (depicted as item 100 below), rectangular pads with rounded knobs on them (Figs. 7B and 10C below), and "modified ball bearing" pieces known as "circle-loks" (Figs. 6D and 11D below):

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Depiction of Contek's Separate, Adjacent Hardware Devices It is undisputed that the items depicted above are not cylindrical, they have no threads, and they are incapable of fastening or being "screwed" into anything. Contek's concave-nosed screw/separate hardware combination, for which Contek has received its own patents, work fundamentally different (and better) than Plaintiffs' blunt-nosed screw. In Contek's snow guards, the concave-nosed screw turns against the separate hardware piece, and not the roof seam, which prevents tearing or galling of the seam. Moreover, under heavy snow loads, Contek's snow guards are designed to "fail" at the point between the screw and the separate hardware piece, e.g., the ball bearing is forced out of the concaved-nose, allowing the snowguard to release without serious damage to the roof. Plaintiffs' blunt-nosed screw possesses no such capabilities or functionality. Plaintiffs have not identified any support in the patents-in-suit or the prosecution history in which the inventor (Robert Haddock) defined, referenced, or even mentioned that his "screws" included items such as those depicted above. Moreover, Plaintiffs have not identified any objective extrinsic evidence, such as dictionaries, treatises, hardware store catalogs, etc., from which the Court could conclude that these other pieces of hardware depicted above can be properly defined as a "screw" or part of a screw. Instead, Plaintiffs rely solely on their own, self-serving Declaration from Robert Haddock, the Plaintiffs' principal and the named inventor of the patents-in-suit, who now suggests that "blunt-nosed screw" means the opposite--concave-nosed screws. Mr. Haddock further states that items that are plainly not screws at all, such as the various

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items depicted above, should be defined screws, or at least, as part of a "screw." Not only is such a conclusory, unsupported assertion not credible on its face, but the Federal Circuit has repeatedly stated that post hoc statements from the inventor, submitted for purposes of improving his position in litigation, is entitled to no weight. Markman v. Westview Instruments, Inc., 52 F.3d 967, 983 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996); Bell & Howell Document Management Products Co. v. Altek Systems, 132 F.3d 701, 706 (Fed. Cir. 1997). At bottom, the issue is not whether a screw can be a "unitary" or "multi-part" structure. Plaintiffs' extended argument on this point is a red herring, since a "bluntnosed screw" could be a screw with a rounded end that was made from two pieces, so long as the item as a whole is properly recognized and known as a blunt-nosed screw. In this case, the issue properly framed is whether a concave-nosed screw falls within the definition of a blunt-nosed screw, or whether a concave-nosed screw together with a separate hardware piece that has nothing to do with a screw, such as a ball bearing or a rectangular metal pad, constitutes a "blunt-nosed screw" as this term is commonly known. On this issue, Plaintiffs have submitted no evidence whatsoever to support their definition that separate pieces of hardware, whose only relation to the screw is the fact that they sit adjacent to it in the snow guard device, become part of the screw. Moreover, if Plaintiffs' definition were correct, then logically all the myriad pieces of the entire snow guard device (e.g., the clamp body, metal poles, roof seam, etc.), which are all interconnected and work together, would also become part of the screw.

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Plainly, a "screw" means a shaft or cylinder with a continuous thread--nothing more, nothing less. "Blunt-nosed" is an adjective that is attached to and modifies "screw"--it does not modify or refer to something other than the screw. Consequently, a "blunt-nosed screw" means a screw whereby the screw (and not some other piece) possesses a rounded or convexly shaped end. As Contek's screws are not blunt-nosed, this should end the inquiry. Plaintiffs cannot capture Conteks' screws within their patents by re-defining "screw" to include other pieces of hardware that have no threads, are not affixed to the screw, and do not look like or function as screws at all. C. The Phillips Case.

The Federal Circuit in Phillips clarified several aspects on the law of claim construction that bear on this case. First, and contrary to some prior decisions, Phillips held that "extrinsic evidence may be helpful to the court, . . . [and] it is permissible for the district court in its sound discretion to admit and use such evidence." Phillips, 415 F.3d at 1319. However, the court emphasized several cautions regarding the use of extrinsic evidence, including the statement that "conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to the court." Id. at 1318. Ultimately, Phillips advises that extrinsic evidence "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1319. Phillips confirms, therefore, that the conclusory declaration of Plaintiffs' "expert" Robert Haddock is "not useful."

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Second, Phillips spends several pages discussing reliance on dictionaries, encyclopedias, and treatises, which in a previous decision (Texas Digital v. Telegenix) had been elevated to a prominent, primary role in claim construction. At bottom, after noting several potential concerns with excessive reliance on dictionaries, Phillips reiterates the position articulated in Vitronics Corp. v. Conceptronics, 90 F.3d 1576, 1585 (Fed. Cir. 1996): A dictionary definition has the value of being an unbiased source `accessible to the public in advance of litigation.' [citation omitted.] As we said in Vitronics, judges 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 defintions 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. Phillips, 415 F.3d at 1322-23. Here, Contek has submitted dictionary definitions for the term "blunt-nosed screw," as objective evidence of the commonly accepted meaning of these words. In the context of this patent, for a term that is relatively non-technical and not a special "term of art" in the field, reliance on a dictionary is entirely appropriate and, moreover, does not implicate any of the concerns raised in Phillips regarding use of dictionaries. 1 See Phillips, 415 F.3d at 1321-22.

Plaintiffs' criticism that Contek's edition of the Merriam Webster dictionary was 1995, as opposed to 1992 when the patent issued, is specious. There is no indication that the standard, non-controversial definitions for "screw" or "blunt-nosed" have changed during that time, nor has Plaintiff submitted any competing dictionary definition that would cast doubt on the commonly-accepted meaning of this term. 7

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In their brief, Plaintiffs cite Phillips for the proposition that the inventor's testimony is an "objective baseline from which to begin claim interpretation," in an attempt to bolster the reliability of Robert Haddock's litigation declaration. This is a blatant misreading of Phillips. The passage cited by Plaintiffs refers to an inventor's statements made in the patent itself, which obviously may define and explicitly provide meaning and context to claim terms. This passage does not refer to after-the-fact declarations by an inventor, made for the first time in litigation, which has been unequivocally renounced by the Federal Circuit. D. Plaintiffs' New Cited Case Law.

Plaintiffs have cited three Federal Circuit opinions that have issued since 2001, which they argue support their definition for a "multi-part screw" that can include other, non-screw items such as ball bearings or rectangular pads. However, none of Plaintiffs' cases concern the issue of whether a specific claim limitation can be defined as including its opposite, i.e., blunt-nosed screw means its opposite, a concave-nosed screw. Moreover, none of these cases concerned the issue of whether a separately identifiable piece, which is not affixed or attached to the patented item in any way, constitutes part of the item so as to satisfy an express claim limitation regarding the nature or shape of the item. Instead, these cases simply considered whether a general term such as "flight bars," "filter," or "tool holder" could be made from two pieces joined together. While the answer to the question posed in these cases was "yes," this result does nothing to support Plaintiffs' position in this case.

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In Riverwood Int'l Corp. v. R.A. Jones & Co., Inc., 324 F.3d 1346 (Fed. Cir. 2003), the term "flight bars" was a term of art in the industry but had no dictionary definition. As there was nothing in the patent, its history, or the known meaning in the industry limiting "flight bars" to a unitary structure, the court properly concluded that flight bars could be made of a multi-piece structure. Id. at 1358. There was no issue, however, regarding whether the multiple pieces used by defendants constituted the "flight bar"; the defendant simply argued that the patent was limited to "flight bars" made from a single, unitary piece. The same, inapplicable issue was addressed in Utica Enter., Inc. v. Broach and Machine Co., 2004 WL 1946489 (Fed. Cir. 2004) (unpublished opinion) and Atlantic Construction Fabrics, Inc. v. Dandy Products, Inc., 2003 WL 1949582 (Fed. Cir. 2003) (unpublished opinion). 2 In these cases, there was no issue whether the multi-structure item was and constituted, as a conceptual matter, the "tool holder" (Utica) or the "filter" (Dandy Prod.). Instead, the defendants in these cases merely argued that because their "tool holder" or "filter" was not a unitary structure, they fell outside the patent, even though the patent had no limitation to unitary versus multi-structure tool holders or filters. These results are non-controversial and have no bearing on the case at bar, which concerns whether Plaintiffs can point to other pieces in Contek's snow guard device,

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which are plainly not screws nor part of a screw, and label it all "the screw" for purposes of satisfying the "blunt-nosed screw" limitation. As discussed above, because the items in question do not function as or look like screws, are not attached or affixed to the screw, and have never, in the patents or in any objective evidence of record, been considered by anyone to be part of a screw, they cannot be considered part and parcel of Plaintiffs' novel "multi-part screw" concept. E. Remaining Claim Elements ­ "Member Positionable Within A Hole And Being Extendable Within A Slot Or Cavity."

Plaintiffs also argue that the term "member," as used in claims 20, 43, and 48 of the `588 patent, has the same breadth and scope as Plaintiffs' definition of "blunt-nosed screw," that is, it can include a concave-nosed (the opposite of blunt-nosed) screw used together with separate items such as ball bearings, etc. In their Report, Plaintiffs apparently concede that in the prosecution history, Plaintiffs limited and defined the term "member" as being a "blunt-nosed screw" in order to overcome prior art. Plaintiffs' Report at 9. Contek agrees with this position, as the prosecution history (as well as the specification) makes clear that any broader definition of "member" was disclaimed in order to overcome prior art. See Contek's Opening Brief at 32-35. In fact, Plaintiffs' citation to CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) confirms this point. Plaintiffs rely on CCS Fitness to support its argument that "member" can be a unitary or a multi-component item. In considering the issue, the CCS Fitness reiterated the well-settled rule:

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[A] claim term [i.e., "member"] will not carry its ordinary meaning if the intrinsic evidence shows that the patentee distinguished that term from prior art on the basis of a particular embodiment, . . . . Id. at 1366-67. In CCS Fitness, the patentee made no statements during prosecution to distinguish his specific "member" from other members found in the prior art, and consequently was entitled to the full breadth of the ordinary meaning of "member." Here, in contrast, the patent claims that use "member" were rejected based on prior art that disclosed "members" in the form of flat-headed screws, and the patentee Haddock distinguished the flat-headed screw members in the prior art from his bluntnosed screw members, in order to overcome this rejection. See Contek's Opening Brief at 32-35; Contek's Reply Brief at 3-5. By doing so, Haddock expressly disclaimed any meaning of "member" that is broader than blunt-nosed screw and, as such, "blunt-nosed screw" and "member" have the exact same scope and meaning in the `588 patent. Accordingly, the Court's interpretation of the former will necessarily constitute the interpretation of the latter. F. Conclusion

In accordance with the analysis set forth above and in Contek's opening Brief and Reply, Contek requests that the Court interpret the disputed claim phrases as follows: "Blunt Nose Screw" and "Screw" means A continuously threaded cylinder or shaft having a rounded forward end. This term does not include screws with other shaped ends (such as flat or concave nose), nor does it include other elements that are adjacent to the screw but are not screws themselves. 11

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"Extendable Into Said Slot to Engage/Deform"

means The screw itself (and not some other component adjacent to the screw) breaks the plane of the body to enter the slot in the clamp and then continue to the raised portion to physically contact and alter the shape of the roof seam. means Using a screw threaded through the mounting body to engage and secure the cross-member to the clamp.

"A Cross-Member Interconnectable With Said Clamp Means" and "Securing a Member" "Member" "Positionable Within Said First and Second Holes to Secure Said Raised Portion Within Said Slot By Engaging"

means Blunt nose screw, as defined above. means The screw (and not some other component adjacent to the screw) must be both positionable in the hole and extendible into the slot to physically contact and deform the roof seam.

Dated: May 1, 2006 Respectfully submitted,

s/ Donald A. Degnan Timothy P. Getzoff Donald A. Degnan H OLLAND & H ART LLP 1800 Broadway, Suite 300 Boulder, Colorado 80302 Telephone: (303) 473-2700 Facsimile: (303) 473-2720 [email protected] [email protected] A TTORNEYS FOR D EFENDANT C ONTEK , I NC .

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CERTIFICATE OF SERVICE I hereby certify that on May 1, 2006, I electronically filed the foregoing with the Clerk of Court using the CM/ECF system which will send notification of such filing to the following e-mail address(es): Robert R. Brunelli Sheridan Ross P.C. [email protected]

s/ Donald A. Degnan Donald A. Degnan Attorney for Defendant Contek, Inc. H OLLAND & H ART LLP 1800 Broadway, Suite 300 Boulder, Colorado 80302 Telephone: (303) 473-2700 Facsimile: (303) 473-2720 [email protected]

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