Sua Sponte Claim Construction

Olaf Sööt Design, LLC v. Daktronics, Inc. (Fed. Cir. 2021)

Sööt’s patent covers a winch system used for major theatre productions.  A jury found Daktronics Vortek product infringed under the doctrine of equivalents and awarded $1 million in damages.

On appeal, the Federal Circuit reversed, holding that “Under the proper construction, the Vortek product does not infringe claim 27 either literally or under the doctrine of equivalents.”

The problem with this decision is that neither party appealed claim construction.  Rather, the adjudged infringer appealed on infringement.  Sööt petitioned for rehearing on the issue of waiver, but that quest has now also been denied.

Whether waiver prevents a challenge to claim construction on appeal sua sponte where a party’s waiver is based on the  act that the original claim construction was (i) sponsored by the party during Markman, (ii) accepted by the district court, and applied by the jury in reaching its verdict; and (iii) not challenged on  appeal by either party. If not, what conditions must exist to overcome such waiver on claim construction.

sootEnBancPetition.

This case comes just in time to see my new 6 second video explainer on the two ways to argue patent infringement:

21 thoughts on “Sua Sponte Claim Construction

  1. 2

    Dennis,

    My problem with your six-second video is this…

    First, how do you convert a claim, expressed in language, into a nice, two dimensional, geometric shape such as an ellipse?

    Second, how do you convert an alleged infringement, expressed in the activities of an alleged infringer, into a smaller, two dimensional, geometric shape?

    Claims have many “dimensions” – they cannot easily be “flattened”. And their boundaries are not at all smooth, or sharply defined.

    I have always thought that these geometrical analogies are deeply flawed, and your nifty animation does not convince me otherwise.

  2. 1

    Surprise, surprise – the original decision was by Judge Prost. Seriously, when was the last time she supported the patentee in a decision?

    Looking back at the original decision, the Court characterized the issue as “whether the hub is part of the drum.” The claim language is “said drum having at a first end a hollow hub rotatably journalled at the first end portion of the base member” and “said hollow hub and hollow drum being sized such that the scr ew can move into the hollow hub to allow the hollow drum to receive the scr ew as the cable unwinds from or winds up on the drum as the object moves to its respective down or up position.”

    Before I looked at the rest of the decision (not knowing how the Court construed the language), I construed the hub as being part of the drum. The first portion of the claim language seems pretty straight-forward “said rum having at a first end a hollow hub.” The “at a first end” is a prepositional clause the identifies where the hollow hub is located on the drum. Importantly, the claim language can also be rewritten as “said drum having … a hollow hub [at a first end of the drum].” I don’t see how the hub is not part of the drum. If the language recited “said drum connected to … a hollow hub,” then I could see how they are separate.

    Anyway, it was to little surprise to see Judge Prost disagree. This is appears to be the relevant passage of the Court’s decision:
    This language makes clear that the hollow hub is not part of the hollow drum. The claim language treats the hub and drum as two components, reciting that both “the hollow hub and hollow drum” are sized to receive the scr ew. Furthermore, it would make no sense for the hollow hub to be part of the hollow drum given that the claim says that the scr ew moves into the hollow hub “to allow the hollow drum to receive the scr ew.” That language indicates that the scr ew’s entry into one component, the hollow hub, facilitates entry of the scr ew into another component, the hollow drum, not that entry into the hollow hub is entry into the hollow drum. In sum, the clearest reading of the claim language is that the hollow hub is not a component of the drum.

    This supposedly “clearest reading of the claim language” ignores that the claim recites “said drum having … a hollow hub.” The specification reads “The cable drum 11 is supported from bearing 39 by an elongated hub, part of the cable drum 11 brake end cap 14.” If the hub is part of the cable drum 11 brake end cap 14, then the hub is also part of the cable drum 11 since the end cap 14 is also part of the cable drum 11. This is why it is called the ‘cable drum 11 brake end cap 14.

    As for the “it would make no sense” argument, that is a crock. Let’s use the hypothetical of “a piece of wood having a 1/8″ diameter pilot hole drilled therein to allow the piece of wood to receive a 1/4″ drill bit.” If you don’t like the negative limitation (i.e., a hole), an object having a collar performs the same function. Regardless, both the hole and the collar are the part of the object and are used to guide something (e.g., a drill, a shaft, etc.) into the object so as to be received by the object.

    With regard to the specification, the Court wrote:
    OSD also points to the specification’s explanation that “the grooved cable drum 11 can be constructed of one tubular member 12, one drive end cap 13 and one brake end cap 14, all welded together,” id. at col. 5 ll. 7–9, and that the hub is “part of the cable drum 11 brake end cap 14,” id. at col. 3 ll. 59–61. However, this language is permissive, not mandatory: at most, this passage explains that the hub can be part of the drum, not that the hub is part of the drum.
    While the first cited language from col. 5, ll 7-9 is permissive (i.e., by using “can”), the second cited language from col. 3, ll. 59-61 is not characterized as permissive. Here, the Court ignores both sets of language when only one set of language includes the “permissive” language.

    The Federal Circuit should be embarrassed by this decision. The claim language is clear. The specification is clear. The hub is part of the drum.

    This is the Federal Circuit (and Prost) merely doing what both do best … giving the patentee the shaft.

    1. 1.1

      My house has a lovely green space running behind it. The city might be displeased if I claimed it was part of my house.

      1. 1.1.1

        Non sequitur.

        1. 1.1.1.1

          Not for anyone who reads carefully. My point is simply that the phrase “X has Y at a position relative to X” does not imply that Y is part of X. Thus, a “drum having … a hollow hub [at a first end of the drum]” does not imply that the “drum” contains the hub.

          Here’s another: my room contains a desk having a computer on top of it. Is the computer part of the desk?

          1. 1.1.1.1.1

            Bryan – I am doubting that YOU are the one reading carefully here.

            Both your example about house and green space as well as desk and computer on top of the desk DO NOT TRACK the language of the sample claim.

            That was the point of Wt’s detailed writing.

            1. 1.1.1.1.1.1

              You say my example “DO[ES] NOT TRACK.” How so? The claim says “said drum having at a first end a hollow hub” or, in deference to the OP, a “drum having … a hollow hub [at a first end of the drum].” My example said “a desk having a computer on top of [the desk].” How does this “NOT TRACK”?

              Do you see a difference between X being “on top” of or “behind” Y and X being “at an end” of Y? How about “the road having a park at the road’s north end”? Is the park contained within the road?

              1. 1.1.1.1.1.1.1

                I said it does not track in view of Wt’s post (Wandering thorough).

                Rather than repeat all the details already there, I will just refer you to that post (again).

                1. I’m learning to argue like anon!

                  That skill takes scarcely any time to learn. Still and all, it is not worth the effort (minimal though it might be) to cultivate.

                  Bad habits—once acquired—are notoriously difficult to relinquish. Best never to start in the first place.

                2. Well, technically, you are saying that Wandering through is wrong.

                  But hey, you be you.

                  (and Greg is already Greg – with his diaper load and “he’s mean” whining)

      2. 1.1.2

        Bryan,

        Why?

        Are you confusing “claim as part of property” with your “claim as part of house?”

      3. 1.1.3

        My house has a lovely green space running behind it.
        Nice strawman.

        Something comparable to your clause of “running behind it” is not found in the claim. The claim language is “said drum having at a first end a hollow hub.” This is supported in the specification by the statement of “The cable drum 11 is supported from bearing 39 by an elongated hub, part of the cable drum 11 brake end cap 14.”

        Let’s modify your language at little bit. What about this: “my house has a stoop behind it”? Is the stoop part of the house? My people think that a stoop (e.g., a porch) is part of a house. What about this: “the house has at one end a mudroom”? Part of the house or not?

        Let’s use some different examples. Consider the phrase “a driveway having a car.” To my trained eye, this language is odd. Driveways just don’t have cars — there is a relationship missing between the car and the driveway that needs to be added. As such, a proper way to say this would be: “a driveway having a car parked on the driveway” or better yet “a car parked on the driveway.” This better describes the relationship between the two.

        Let’s apply that to your example and rephrase it by saying “My house has a lovely green space.” What does that mean? The term “green space” is a bit indefinite. Is it a green room? Is it a green house? Is it grass? It is possible to have a house with grass inside of it. If the specification stated “a house having a green space, part of the house’s conservatory” then your “green space” is an integral part of the house.

        Let’s work with a different example that more closely matches the specification — “a house supported from a foundation by a sill plate, a bottom part of a frame of the house.” Let’s add this — “the sill plate having holes configured to receive anchor bolts into the frame.” There is no question that a sill plate is an integral part of the house.

        Here’s another: my room contains a desk having a computer on top of it. Is the computer part of the desk?
        “on top of it” is again language that doesn’t find an analogue in the claims of this case. Consider this language: “my cordless phone having a computer.” This is different than “my cordless phone is connected to a computer” or “my cordless phone is adjacent a computer.” One thing about claim construction properly performed — words matter.

        How does this “NOT TRACK”?
        To pick up where the other posters left off, I’ve explained this above. In both of your examples, you’ve added an extra limitation not analogous to anything found in the claims of this decision.

        1. 1.1.3.1

          Bad habits—once acquired—are notoriously difficult to relinquish.

          I am absolutely certain that Greg misses the irony of his statement, given his defense of an error by Bryan (because p000r widdle Greg’s feelings were hurt by that bad, bad anon).

        2. 1.1.3.2

          One person’s strawman is another’s counterpoint. You say that “[s]omething comparable to your clause of ‘running behind it’ is not found in the claim.” Yes, it is. The claim says “at a first end.” This is positional language that specifies a location of the hub relative to the drum. “Running behind it” is position language that specifies a location of the green space relative to my house. Same with “on top of it.” Directly analogous. (nb: your assertion that this is language “that identifies where the hollow hub is located on the drum” is self serving, because it assumes that the “hub is located on the drum”—the conclusion you are trying to argue.) You might argue that “at an end” of is distinct from “behind” or “on top of” as positional language. That is not true: see my example of a park “at an end” of a road, above, where the same ambiguity lies.

          My point is simple: while “X having Y” alone often implies that Y is part of X, the addition of positional language changes that. You illustrate this very well with your example of a car. “A driveway having a car” is odd; a “driveway having a car parked on it” is perfectly correct language that does not imply the car is part of the driveway. The positional language in the claim makes the relationship between elements ambiguous. Your original statements, in which you elide away the positional language, is a material modification of the claim language to support your argument.

          I perfectly agree with your “stoop” example. “X having Y [in given relative position” can, indeed, indicate Y is part of X. Again, this language is ambiguous. Your “house” example is non-analogous to the claimed language, because it lacks relative positional language.

          I tend to agree with you that the specification’s example pushes toward the hub being part of the drum. At the same time, the claim language pushes back: if the hub were part of the drum, why specify sizing with respect to both “the hollow hub and the hollow drum”?

          My point here is not that you are incorrect in your conclusion. My point is that this is not as clear cut as you seem to make it out to be, and you’ve glossed over important details.

          (To be clear, anon’s assertion that I claimed you were wrong is incorrect: I claimed that anon was wrong in his responses to me, and stand by that.)

          1. 1.1.3.2.1

            (To be clear, anon’s assertion that I claimed you were wrong is incorrect: I claimed that anon was wrong in his responses to me, and stand by that.)

            You stand incorrect.

            Your claim that I was wrong – when I was referencing Wt is certainly transitive.

            My point is that this is not as clear cut as you seem to make it out to be, and you’ve glossed over important details.

            Wrong.
            Again.

            You want to accuse another of glossing over when — in the first instance — it is you that simply did not read closely enough.

            You have proven that you are NO “anon,” (not a good thing for you) and that you STILL are getting things wrong.

            But please, let’s see you protest again so that you can be wrong again.

          2. 1.1.3.2.2

            As to “having” in the context of “hub” and “drum”, I think it might be useful (as it often is) to think instead of body parts. Thus, a body has a “head” and might “have” a “scar” but does it ever “have”, say, a necklace? It strikes me that it might be natural but it is not inevitable that a wheel or a drum has to “have” a hub. However, if the drafter of the claim tells us that the drum and the hub are different entities then so be it. Judge Prost accepted it and, perhaps, so should we. Unless, that is, to do so leads to a result as absurd as that of the Bake America case.

            1. 1.1.3.2.2.1

              However, if the drafter of the claim tells us that the drum and the hub are different entities then so be it.

              MaxDrei, the drafter of the claim said the opposite and it is the officious Judge Prost who is NOT ‘so letting it be.’

              Please pay attention.

          3. 1.1.3.2.3

            The claim says “at a first end.” This is positional language that specifies a location of the hub relative to the drum. “Running behind it” is position language that specifies a location of the green space relative to my house.
            The “at” does not imply separation. The “behind” does. “I met my friend at the grocery store” versus “I met my friend behind the grocery store” or “I met my friend outside the grocery store.”

            That is not true: see my example of a park “at an end” of a road, above, where the same ambiguity lies.
            You wrote “How about ‘the road having a park at the road’s north end’? Is the park contained within the road?” I cannot help it if you use informal and inaccurate terminology. Someone writing a claim should not be as cavalier with the English language as you appear to be. The definition of “at” is “used to indicate the place where someone or something is” (from Merriam-Webster website). Someone who has written claim language before would not use the phrase “at” in your park example. Better prepositions would be “next to,” “adjacent”, “bordering.”

            If your buddy was at the park and you called him while sitting in your car at the end of the road, and told him “I’m at the park, where are you?” and “he responded, I’m at the park, but I cannot see you, where are you?” do you think he would believe that is an accurate statement of your location? After learning where you were, don’t you think your friend would likely say something like “you aren’t AT the park, you are next to the park.”

            “A driveway having a car” is odd; a “driveway having a car parked on it” is perfectly correct language.
            [cringe]

            At the same time, the claim language pushes back: if the hub were part of the drum, why specify sizing with respect to both “the hollow hub and the hollow drum”?
            The claim language matches up with the specification. Regardless, what is meant by “said drum having at a first end a hollow hub”? What does “having” mean? This language could also be written as “said drum having … a hollow hub [at a first end].” The drum haves the hollow hub – how can it not be part of the drum?

            My point here is not that you are incorrect in your conclusion. My point is that this is not as clear cut as you seem to make it out to be, and you’ve glossed over important details.
            We’ll have to disagree on that. If I write “X having Y” then Y is part of X. There is no other reasonable interpretation. The only counter-examples you’ve presented involve language that include additional positional limitations and/or could be more accurately written.

    2. 1.2

      +1

    3. 1.3

      Thanks for the in-depth Wandering.

      Yet another . . . Prost-lead . . . ends justifies the means decision.

      Courtesy of your friendly neighborhood . . . CAFC.

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