TURNER GREEN AFRASIABI ARLEDGE LLP · plaintiff randall may international, inc.’s claim...

- - PLAINTIFF RANDALL MAY INTERNATIONAL, INC.’s CLAIM CONSTRUCTION BRIEF REGARDING ‘886

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Peter R. Afrasiabi, Esq. (Bar No. 193336) Christopher W. Arledge, Esq. (Bar No. 200767) TURNER GREEN AFRASIABI & ARLEDGE LLP 535 Anton Boulevard, Suite 850 Costa Mesa, California 92626 Telephone: (714) 434-8750 Facsimile: (714) 434-8756 Attorneys for Plaintiff and Cross-Defendant RANDALL MAY INTERNATIONAL, INC., and Cross-Defendant RANDALL MAY

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION RANDALL MAY INTERNATIONAL, INC., a California corporation,

Plaintiff,

v. DEG MUSIC PRODUCTS, INC., a Wisconsin corporation, and DYNASTY USA, an unknown business entity,

Defendants. DEG MUSIC PRODUCTS, INC., a Wisconsin corporation,

Cross-Complainant,

v. RANDALL MAY INTERNATIONAL, INC., a California corporation and RANDALL MAY, an individual,

Cross-Defendants.

Case No. SACV 05-894 TJH (CFEx) PLAINTIFF’S CLAIM CONSTRUCTION BRIEF REGARDING 6,881,886 PATENT [Declaration of Peter Afrasiabi filed concurrently herewith] Markman Hearing Date: 1/14/08 at 10:00 a.m.


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TABLE OF CONTENTS I. INTRODUCTION..................................................................................................1 II. CLAIM CONSTRUCTION PRINCIPLES............................................................1 A. Claims are construed based upon their ordinary meaning........................... 1 B. Courts must avoid the “danger” of importing limitation from the patent specification’s description of particular documents embodiments into the claims.....................................................................................................2 C. Claim differentiation principles preclude narrowing an independent claim to be coterminous with a dependent claim..................................................3 III. SUMMARY OF THE ISSUE IN DISPUTE.........................................................4 IV. CLAIM CONSTRUCTION OF CLAIMS 17 AND 19 OF THE ‘866 PATENT................................................................................................................5 1. Claim 17 claims a device with three components.......................................5 2. Construction of claim limitation in dispute.................................................6 a. “Shoulder Supporting Members”......................................................6 (i). The parties’ contentions..........................................................6 (ii). Claim construction..................................................................8 (A) The entire welded upper-body section, minus the back member, should be considered “shoulder supporting “members”..............................................................................8 (B) The term “shoulder supporting members” cannot be limited to mere “shoulder straps” that are independently removable or changeable..........................................................................9 (i). The claim language differentiates between shoulder supporting members and shoulder straps................................9 (ii). The specification cannot be imported to narrow the claims as DEG urges........................................................................11 b. “Changeable”..................................................................................13 (i). The specification is clear that the shoulder supporting members can be changed or adjusted even though welded to the back members.................................................................14 (ii). Claim 19 specifically contemplates that the shoulder supporting members are changeable or adjustable along with other parts of the harness assembly......................................15 (iii). Other intrinsic evidence confirms that shoulder straps (or shoulder supporting members) do not need to be independently removable to be considered shoulder straps.....................................................................................16 c. Are the shoulder supporting members “adjustable”?......................19 d. “Securing mechanism locks the orientation of the shoulder supporting members and the back member”...................................21


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3. Claim construction issues not in dispute...................................................23 a. “a shoulder supported carrier structure for supporting percussion instruments”....................................................................................23 b. “...for securing said structure of the shoulders of a user”...............24 c. “a back member that spans across and is secured to each of the shoulder supporting members”.......................................................25 IV. CONCLUSION...................................................................................................25


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TABLE OF AUTHORITIES

Cases

Abbott Labs v. Andrx Phaarms., Inc., 473 F.3d 1196, 1209 (Fed. Cir. 2007)................. 3

Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1327 (Fed. Cir.

2003) ............................................................................................................................. 2

Arminak & Associates, Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1319-20

(Fed. Cir. 2007) .......................................................................................................... 12

Comark Comm., Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) ................ 3

Demand Machine Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1343 (Fed Cir. 2006).. 5

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000.2

Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005) ............ 6

Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d 1362, 1366 (Fed. Cir. 2000) ............... 3

Kumar v. Ovonic Battery Co., Inc.,. 351 F.3d 1364 (Fed. Cir. 2003) ........................... 16

Markman v. Westview Instr., Inc., 52 F.3d 967 (Fed. Cir. 1995) .................................... 1

Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1551 (Fed. Cir. 1996 ...... 2

Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2006).................................. 1

Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).2

Saunders Group, Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1330-31 (Fed. Cir. 2007).... 3

V-Formation V. Bennetton Group SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005)............ 16

Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)........................... 1

Xerox Corp. v. 3Com Corp., 267 F.3d 1361, 1366-67 (Fed. Cir. 2001)........................ 11


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I. INTRODUCTION

Plaintiff Randall May International, Inc. (“RMI”) is a small family owned and

operated business, which invents, makes and sells marching band equipment –

specifically the devices worn by musicians to carry drums while marching. RMI will

not restate the factual background already discussed at length in the previously filed

summary judgment motions. Two of RMI’s patents are at issue in this case, and this

claim construction brief addresses only United States Patent No. 6,881,886 (“the ‘886

patent”).1 See Afrasiabi Decl., Exh. 1 at p.1 (all Exhibits are chronologically

numbered starting with the notation “Page 1” in the lower right hand corner).

II. CLAIM CONSTRUCTION PRINCIPLES

The Federal Circuit’s most recent en banc explanation of the principles

underlying claim construction is Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.

Cir. 2006) (en banc). Phillips reaffirms the basic principles of claim construction

outlined in important Federal Circuit cases from Markman v. Westview Instr., Inc., 52

F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996), to Vitrionics Corp. v.

Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996). Id. at 1312.

A. Claims are construed based upon their ordinary meaning As Phillips explains, in construing claim language the Court begins with the

principle that words of the claims are given their “ordinary and customary meaning”

and that this ordinary and customary meaning “is the meaning that the claim term

would have to a person of ordinary skill in the art in question at the time of the

invention.” Id. at 1312-13. And the person of ordinary skill “is deemed to read the

claim term not only in the context of the particular claim in which the disputed term

appears, but in the context of the entire patent, including the specification.” Id.

Because the claims and the specification are part of “a fully integrated written

1 For ease of reference, all citations to the ‘886 patent shall hereinafter be as follows: “Col. x:y,” where the “x” refers to the column of the ‘886 patent, and the “y” refers to the line in that column of the ‘886 patent.


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instrument,” Markman, 52 F.3d at 978, the specification is the “single best guide to the

meaning of a disputed term.” Vitronics, 90 F.3d at 1582. Indeed, “[u]sually, it is

dispositive.” Id Accordingly, claim language cannot be divorced from the

specification, Phillips, 415 F.3d at 1323-24, because the “claims do not stand alone”

and “must be read in view of the specification, of which they are a part.

B. Courts must avoid the “danger” of importing limitations from the patent specification’s description of particular embodiments into the claims In analyzing the specification, courts must avoid the critical “danger” of reading

limitations from the specification into the claims. Id. at 1323. Thus, 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.” Id. That is, although described embodiments may assist the Court, as a

matter of law they are not the exclusive embodiments of the patented technology. See

Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1327 (Fed. Cir.

2003) (error to import limitations from preferred embodiments to restrict claim terms);

Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998)

(same).

This is particularly true where, as here, the patentee has not defined the

invention to be coterminous with the preferred embodiment. Specifically, if the

patentee specifically defines the invention to be limited to the preferred embodiment,

“then the claims are not necessarily entitled to a broader scope than that embodiment.”

Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1551 (Fed. Cir. 1996

(“when the preferred embodiment is described in the specification as the invention

itself, the claims are not necessarily entitled to a scope broader than that

embodiment”), abrogated on other grounds by Festo Corp. v. Shoketsu Kinzoku Kogyo

Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000. But here, the patentee specifically

defined the invention to not be limited to the disclosed embodiments: “It should be


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apparent however to those skilled in the art that many more modifications besides

those described are possible without departing from the inventive concepts herein.”

Col.8:31-38. This means the few embodiments disclosed cannot be the sum total of

the invention.

C. Claim Differentiation Principles Preclude Narrowing an Independent

Claim to be Coterminous with a Dependent Claim.

“Under the doctrine of claim differentiation, two claims of a patent are

presumptively of different scope.” Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d

1362, 1366 (Fed. Cir. 2000). And the difference between the scope of claims is

“significant.” Comark Comm., Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir.

1998) (“there is presumed to be a difference in meaning and scope when different

words or phrases are used in separate claims . . . the doctrine of claim differentiation

states the presumption that the difference between claims is significant.”).

For these reasons, the Federal Circuit has repeatedly rejected claim constructions

that construe independent claim language to be coterminous with dependent claim

language. See Phillips, 415 F.3d at 1314-15, 1324 (“The inclusion of such a specific

limitation on the term ‘baffles’ in claim 2 makes it likely that the patentee did not

contemplate that the term ‘baffles’ already contained that limitation.”); Saunders

Group, Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1330-31 (Fed. Cir. 2007) (holding that

“pneumatic cylinder” of independent claim could not be construed to be a “pressure

activated seal” because dependent claim 6 specifically called out “pressure activated

seal.”); Abbott Labs v. Andrx Phaarms., Inc., 473 F.3d 1196, 1209 (Fed. Cir. 2007)

(holding that claim differentiation principles preclude construing independent claim

“pharmaceutically acceptable polymer” as being the same as the narrower dependent

claim term “hydrophilic water soluble polymer” and so the independent claim had to

be broader than the dependent one).


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III. SUMMARY OF THE ISSUE IN DISPUTE 1

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This case concerns carriers for percussion instruments—that is, the

devices that a member of a marching band would wear in order to carry a

drum, for example. Plaintiff RMI and Defendant DEG both make such

devices. The DEG devices at issue in this lawsuit are DEG’s P20 welded

products (product numbers P20-DAST, P20-DAB1 and P20-DAQV).

One such welded carrier is pictured to the right. (Afrasiabi Decl., Exh. 2

at p.13.)

RMI owns various patents for drum-carrier devices, including the ‘886 patent at

issue here. The nub of this dispute is RMI’s contention that P20 products infringe

independent claim 17 and dependent claim 19 of the ‘886 patent. Although DEG

denies RMI’s assertions, DEG has conceded that its device satisfies virtually all of the

claim language,2 with the exception of the language highlighted below:

The only matter truly at issue, then, is whether DEG’s P20 products have

“changeable or adjustable shoulder supporting members.”3

2 DEG’s admissions are located in the record as Exhibit 3 to the Declaration of Peter Afrasiabi filed in support of RMI’s MSJ re Infringement of the ‘886 patent (District Court Docket Entry Number 61), which Exhibit 3 is DEG’s Responses to RMI’s RFA’s. 3 Finally, this claim construction brief does not address RMI’s claims that the DEG products at issue also infringe under the doctrine of equivalents, a matter this


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IV. CLAIM CONSTRUCTION OF CLAIMS 17 AND 19 OF THE ‘886

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1. Claim 17 claims a device with three components

The preamble phrase “shoulder supported harness assembly for supporting

percussion instruments, comprising” is a statement of the invention itself and not an

actual claim limitation. In other words, it is an “introduction to the general field of the

claim.” On Demand Machine Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1343 (Fed

Cir. 2006).

That general field of the invention is a “harness assembly” invention comprised

of (at least) the following elements: (1) a vest or other frontal piece; (2) a shoulder

piece; and (3) a back member. Those three pieces of the invention are claimed

structurally in Claim 17: (1) the frontal piece or vest (or other embodiment) is

described as the “shoulder supported carrier structure,” minus the “shoulder

supporting members”; (2) the shoulder piece is described in the first sub-paragraph as

the “shoulder supporting members”; and (3) the “back member” is described using

the same words in the last paragraph of Claim 17:

That those three pieces constitute the scope of the invention is also addressed in

the patent specification which details (1) a vest/frontal piece (2) a shoulder piece, and

(3) a back member. See Col.3:34-37(vest); 5:64-67 (T-bar).

Court has left for a jury to decide in light of the denial of the cross-summary judgment motions, and which issues RMI fully reserves all of its rights under.


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Finally, a claim to a combination “comprising” A + B is infringed by a product

having A + B + C, or any other combination which includes the elements A + B. See

Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005) (a razor

“comprising . . . a group of first, second, and third blades” did not exclude a razor

having four blades because “[t]he word ‘comprising’ transitioning from the preamble

to the body signals that the entire claim is presumptively open-ended. . . . The addition

of elements not recited in the claim cannot defeat infringement.”).

As such, here the use of the word “comprising” means the invention includes at

least the elements claimed after the word “comprising,” specifically: [1] a carrier

structure (shoulder supporting piece and vest/frontal supported piece) and [2] a back

member.

2. Construction of claim limitations in dispute

The crux of the dispute between the parties concerns the meaning of the claim

language “changeable or adjustable shoulder supporting members” as well as the

meaning of dependent claim 19’s “securing mechanism.” The language “changeable

or adjustable shoulder supporting members is addressed in sections a, b and c below

and the dependent claim 19 securing mechanism is addressed in section d below. As

indicated, DEG has conceded that its P20 devices satisfy all of the other claims

limitations of Claims 17 and 19 and those claim limitation for

a full claim construction are provided in Section 3 below.

Pictured to the right is the welded upper-body section

found in DEG’s P20 products. (Afrasiabi Decl. Exh. 3 at

p.14.) There is no dispute that the back member attached to

that section (and indicated by the red arrow) is not a “shoulder

a. “shoulder supporting members”

(i). The parties’ contentions


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supporting member” within the meaning of the ‘886 patent.4 However, there rema

dispute as to what remaining portions constitute “shoulder supporting members.”

According to DEG, this Court should not consider the welded upper-body

section to be “shoulder supporting members.” See DEG’s Motion for Summary

Judgment (“DEG’s MSJ”) at 18-20. Rather, DEG distinguishes between

ins a

the two long

er piece

houlder

embers” as it is performing the “supporting” function

aim

//

metal strips that stretch over the user’s shoulders (which DEG describes as the

“shoulder straps”) and the center piece to which they are welded (which DEG

describes as a V-bar). Id. According to DEG, only the “shoulder straps” can be the

“shoulder supporting members,” id., and because the straps are welded to anoth

(what DEG calls a V-bar), DEG’s P20 products lack changeable or adjustable s

supporting members.

DEG’s argument is flawed for numerous reasons. First, the entire welded upper-

body section is holding the device on the user’s shoulders and therefore must be the

“shoulder supporting m

regardless of welding between the shoulder strap and V-bar. Indeed, DEG’s construct

ignores the word “supporting” as a descriptor of the shoulder piece and DEG’s

construction then runs afoul of basic claim canons that preclude eliminating cl

words from consideration. Second, the ‘886 patent itself treats the term “shoulder

supporting members” more broadly than mere “shoulder straps.”

All these issues are addressed in turn.

//

//

4 As discussed above, the back member cannot be a “shoulder supporting member” because by definition in the ‘886 patent, they are different portions of the “harness assembly.” According to the ‘886 patent, the “harness assembly” is comprised of a “carrier structure” and a “back member.” The “shoulder supporting members” are described as being a part of the “carrier structure” portion of the device – not a part of the “back member” part of the device. This is not disputed.


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(ii). Claim construction

(A) The entire welded upper-body section, minus the

back member, is the “shoulder supporting members”

Struct re a part of the “shoulder

supported carrier structur

the former.

ation.

mbodiment described), and rest on the front of the user. See Col. 7:11-

n

ulder supporting

emb

s.

d

e

urally, “shoulder supporting members” a

e” as evidenced by the latter being defined to have (“having”)

“Shoulder supporting members” are described in the ‘886 patent specific

They include those portions of the invention that hang on the shoulders (shoulder

straps in the e

14. They also rest on the back of the user and connect to the back member at that

point. See Col. 5:34-36. In certain embodiments, the “shoulder supporting members”

can be shoulder straps. However, as discussed above, even illustrations used in a

patent are not the exclusive embodiments of the patented technology. See Arlingto

Industries, Inc., 345 F.3d at 1327; Renishaw PLC, 158 F.3d at 1248.

Most importantly, those “shoulder supporting members” can be identified by

their function; namely, “supporting” the entire invention, and “securing” it on the

shoulders of the user. See Col. 1:19-23; Col. 3:47-50. Thus, the “sho

m ers” for any particular embodiment of harness assembly can be identified

according to that function – holding the rest of the device up on the user’s shoulder

Identifying what part of the carrier device is holding everything else up may be

accomplished by common sense gravity. Specifically, all of the bolts are remove

from a drum carrier being worn by a user. Those portions of the drum carrier that do

not fall to the ground must be holding everything else up (i.e., supporting the rest of

the device). Thus, those portions remaining on the user’s shoulders must be the

“shoulder supporting members,” since they were “supporting” the balance of the

device. Everything that falls to the ground must have been the “supported” part of th

device.


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In this case, the “shoulder supporting members” of

DEG’s P20 products are outlined in red. (Afrasiabi Decl.

orting

members.”

(B)

” that are

be interpreted more broadly than mere “shoulder straps.”

raps

rting members” (exact same claim language in claim 17) as

being “shoulder straps”:

Exh. 4 at p.15). A user need only unscrew the first

available two bolts (identified by blue arrows) for

everything except the portion outlined in red to fall to the

ground. Id. Thus, the portions remaining on the user’s

shoulders must have been “supporting” the rest of the

device. Therefore, they are the “shoulder supp

The term “shoulder supporting members” cannot

be limited to mere “shoulder straps

independently removable or changeable

Two polestar principles of claim construction confirm that the phrase “shoulder

supporting members” must

Each is considered in turn.

(i) The claim language differentiates between

shoulder supporting members and shoulder st

First, the claims of the ‘886 patent uses the phrases “shoulder straps” and

“shoulder supporting members” differently. In particular, dependent claim 2 in the

‘886 patent (Exh. 1 at 13) specifically offers a narrower definition of independent

claim 1’s “shoulder suppo

The Federal Circuit has repeatedly rejected claim constructions that render

claims redundant by way of claim constructions that construe independent claim

language to be coterminous with dependent claim language. See Phillips, 415 F.3d at


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1314-15, 1324 (“The inclusion of such a specific limitation on the term ‘baffles’ in

claim 2 makes it likely that the patentee did not contemplate that the term ‘baffles

already contained that limitation.”); Saunders, 492 F.3d at 1330-31 (holding that

“pneumatic cylinder” of independent claim could not be construed to be a “pressure

activated seal” because dependent claim 6 specifically called out “pressure activated

seal.”); Abbott Labs, 473 F.3d at 1209 (holding that claim differentiation principles

preclude construing independent claim “pharmaceutically acceptable polymer” as

being the same as the narrower dependent claim term “hydrophilic water soluble

’

olym

er

lly

nt claim, the examiner

bviou

traps.

This

hould

p er” and so the independent claim had to be broader than the dependent one).

By definition of the claim language and claim construction principles, although

“shoulder supporting members” can be shoulder straps they are by definition broad

than mere shoulder straps. To hold otherwise would render “shoulder supporting

members” coterminous with “shoulder straps” where shoulder straps are specifica

defined in the dependent claim to be a narrower version of “shoulder supporting

members” as presented to the PTO and considered by the examiner thus allowing the

differentiated claim language. With allowance of the depende

o sly endorsed the broadness of the independent claim.

Moreover, it is critical to note that dependent claim 2 specifically claims rigid

shoulder straps that are removable. As a result, by definition the shoulder supporting

members of the independent claim are not required to be removable shoulder s

Therefore, claim differentiation principles mandate that “shoulder supporting

members” are not required to be independently removable shoulder straps.

demonstrates that DEG’s argument that shoulder supporting members are

independently removable shoulder straps is flat wrong, because DEG’s construct of

s er supporting members is specifically claimed in a narrow dependent claim.

Finally, DEG’s belated response contention (first articulated in response to

RMI’s MSJ’s claim construction, see DEG ‘886 MSJ Opposition at 3:15-27) that

dependent claim 2 in fact equates “shoulder supporting members” with “shoulder


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straps” and only narrows “shoulder supporting members/shoulder straps” to

requirement is facially impossible in light of dependent claims 3 & 4 which

specifically call out the “rigid” requirement but do so for “shoulder supporting

members,” not “shoulder straps.” Were DEG’s nonsensical construct correct, then

dependent claims 3 & 4 are utterly superfluous because, per DEG, dependent claim 2

has already called out shoulder supporting members as rigid shoulder straps (wh

equates shoulder supporting members with shoulder straps). Moreover, DEG’s

argument about its alternative meaning to dependent claim 2 makes no sense becaus

the narrowing focus were only rigidity, then the patentee would have claimed “said

shoulder supporting

a “rigid”

ich

e if

members are rigid,” period, without “shoulder straps” following

.

eed,

us, by

just

traps because dependent claim 2 specifically calls that out as a

t be imported to narrow the

f

the word “rigid.”

Fundamentally, different word usage means the words have different meanings

See Xerox Corp. v. 3Com Corp., 267 F.3d 1361, 1366-67 (Fed. Cir. 2001). And this

principle forecloses DEG’s construction. Accordingly, Claim 17, like claim 1, does

not limit the term “shoulder supporting members” to mere “shoulder straps.” Ind

the law is very clear that where a dependent claim narrows a limitation from the

independent claim, the Court cannot construe that phrase in the independent claim to

be coterminous with the dependent claim. See Phillips, 415 F.3d at 1314-15. Th

definition of the claim language and claim construction law, although “shoulder

supporting members” can be shoulder straps they are by definition broader than

individual shoulder straps and under these claim differentiation principles it is

impossible to construe shoulder supporting members to be just independently

removable shoulder s

dependent claim.

(ii) The specification canno

claims as DEG urges

Second, the fact that the specification and figures disclose one embodiment o

the invention as possessing “shoulder straps” does not mean “shoulder supporting


PATENT (12360.2)

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members” are therefore equated with “shoulder straps.” Indeed, equating the two,

DEG urges, would violate another cardinal claim construction principle, sin

Court would be importing limitations from preferred embodiments and the

specification into Claim 17. See Arlington Industries, Inc., 345 F.3d at 1327;

Renishaw PLC, 158 F.3d at 1248. Therefore, this Court should conclude that should

supporting members, while including shoulder straps, are not necessarily limited to

straps but also includes any combined unitary shou

as

ce the

er

lder structure that sits on the user’s

hould

m total of

the

anguage cannot be deemed to be limited to the embodiments disclosed

t of

gn patents are patents on drawings and the scope

er

s ers and perform the function of supporting.

Related to this point, here the patentee expressly stated in the patent that certain

embodiments had been disclosed but that those embodiments were not the su

the invention. Col. 8:31-28. This is important, because it demonstrates an

unambiguous and clear statement that the embodiments described were in fact not

sum total of embodiments of the invention. As a result, under Modine, 75 F.3d at

1551, the claim l

in the patent.

At the end of the day, DEG seeks to eliminate these canons of claim construction

so as to in effect treat the ‘886 patent not as a utility patent that receives the benefi

these basic canons of claim construction discussed herein, but as a narrow design

patent limited to a drawing depicted in the patent as if the patent only covered that

drawing. See, e.g., Arminak & Associates, Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d

1314, 1319-20 (Fed. Cir. 2007) (desi

of coverage is akin to the drawing).

Accordingly, this Court should construe this claim limitation to be the should

members piece that performs the function of supporting the balance of the carrier

structure on the user and which secures the carrier structure on the user’s shoulders.

This certainly includes shoulder straps, but is not limited to only two parallel straps.

The portion of the device that is supported by the shoulder supporting members piece

is by definition not part of the shoulder supporting members, i.e., the vest/frontal piece


PATENT (12360.2)

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of the assembly. Thus, the shoulder supporting members are by definition supporting

the balance of the carrier device (and the shoulder supporting members do not include

the back member by definition of the claim language and as a matter of practical

since the back member simply connects to the shoulder supporting members and

spreads the load across the back). Therefore, the shoulder supporting members is t

piece of the device that connects on the user’s back to the back member and which

piece then sits on the user’s shoulders and performs the function of supporting the

balance of the device on the front side. Finally, as discussed below, this shoulder

supporting members piece must also have the additio

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fact

he

nal capacity to be changed or

adjusted and se discussed below.

b. “changeable”

tho limitations are

The ordinary and customary meaning of “change” is apparent from a review

the ‘886 patent specification. The ‘886 patent specification literally discusses the

concept of removing the shoulder supporting members and substituting new ones of

different sizes to accommodate different sized users. Col. 1:33-35; Col. 4:42-44; Col.

5:12-15, 34-36. This Court should, therefore, construe the word “changeable” as

in Claim 17 according to its ordinary meaning. Thus, “changeable . . . shoulder

supporting members” refers to the ability to replace, remove or substitute one set of

shoulder supporting members with anothe

of

used

r. Thus, the shoulder supporting members in

G’s P20 products are “changeable.” DE

//

//


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//

Despite DEG’s admission in sworn deposition testimony that its products’

“shoulder supporting members” are “changeable,”

r

ose

rs

e changeable alone under the correct construction of shoulder supporting

members).

(i) r adjusted even though

supporting members only the shoulder supporting members must be changed and that

5 DEG’s attorneys now argue that

the shoulder supporting members in DEG’s P20 products are neither “changeable” no

“adjustable.” DEG’s MSJ at 21-22. According to DEG, Claim 17 is satisfied only if

the shoulder supporting members alone can be changed (and where Deg assumes th

shoulder supporting members are no more than two parallel shoulder straps). See

DEG’s MSJ at 20:3-5, 22:22-25. This claim construction advanced by DEG’s lawye

is wrong as we now address (but even if it were correct, DEG’s shoulder supporting

members ar

The specification is clear that the shoulder supporting

members can be changed o

welded to the back members

Nothing in Claim 17 says that in order to effect a change in the shoulder

Q. Let’s say I bolted this on here? [In video, bolting

the new Silver Shoulder Supporting Members to the original P20 product.]

A. Yes. Q. Have I now changed the shoulder supporting

members? A. It is different from what normally comes with the

carrier, yes. Q. So that’s a yes? A. Yes. . . . Q. When this attaches here [attaching the Silver

Shoulder Supporting Members shown above to the original P20 product], do we have new shoulder-supporting members that have been attached to the rest of the device by virtue of the bolting on this vertical bar here?

A. Yeah. We have a new assembly of parts.

Afrasiabi Decl. Exh. 5 at p.17, internal deposition pages 134:21-135:3 and 136:6-13.


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nothing else maybe changed at the same time. In fact, it simply states that the harness

assembly must have “changeable” (or adjustable) shoulder supporting members.

Notably, the specification specifically discusses the embodiment of the device

that has a welded back member to shoulder straps. Col.5:34-40. There, the

specification discusses how there are “changeable or adjustable” shoulder straps where

the back member is welded to those shoulder straps. Col.34-40. This demonstrates

that the very patent specification understands there to be changeable or adjustable

shoulder supporting members (or straps) even where there is welding of those

members to the back bar such that those members obviously cannot be changed or

adjusted completely independent from any other portion of the device.

Further, the ‘886 patent specifically claims that the shoulder supporting

members described in Claim 17 may be changed along with other portions of the

harness assembly that are permanently affixed to the shoulder supporting members, as

specifically claimed in Dependent Claim 19, to which we now move.

(ii) Claim 19 specifically contemplates that the shoulder

supporting members are changeable or adjustable

along with other parts of the harness assembly

Aside from the Dependent Claim 2 argument above, Dependent Claim 19 in the

-‘886 patent describes a further limitation of Claim 17 which has all the characteristics

found in Claim 17, but where the back member is necessarily locked to the shoulder

supporting members (i.e., welded6):

6 The ‘886 patent specification specifically states that the “[b]ack member may be fixed as by welding or the like.” Col. 3:38-39. See also Col. 5:36-40 (locking of orientation by welding discussed in patent specification).


PATENT (12360.2)

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As a result, any removal, substitution or change of the shoulder supporting members

would necessarily also require removal of other portions of the device that are

specifically not part of the shoulder supporting members – namely the back member

that is welded to them. Nonetheless, under Claim 19, the shoulder supporting

members are still “changeable” or “adjustable,” because the carrier described by

dependent Claim 19 as a matter of law has all of the characteristics of independent

Claim 17 – “changeable or adjustable shoulder supporting members” – upon which it is

based. Id. The patent specification confirms this. Col.5:34-40. In other words, even

though the shoulder supporting members are changed along with something else in the

harness assembly – namely, the welded back member – those shoulder supporting

members are still by definition “changeable” or “adjustable.” Id.

Consequently, if this Court concluded that the “shoulder supporting members”

must be changeable by themselves and not in combination with anything else in the

device, then such an interpretation would nullify the specific language of dependent

Claim 19 that envisions changeable shoulder supporting members that are welded to

another piece and hence not changeable alone. This, of course, would violate basic

claim construction principles. See Phillips, 415 F.3d at 1314-15. Thus, there is no

requirement that the shoulder supporting members be “changeable” or “adjustable” by

themselves alone and independent from every other component of the assembly.

(iii). Other intrinsic evidence confirms that shoulder straps (or

shoulder supporting members) do not need to be

independently removable to be considered shoulder

straps

The prior art cited by the patent specification is also intrinsic evidence that the

Court reviews in the claim construction process. See V-Formation V. Bennetton Group

SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005); Kumar v. Ovonic Battery Co., Inc., 351

F.3d 1364, 1368 (Fed. Cir. 2003) (“When prior art that sheds light on the meaning of a

term is cited by the patentee, it can have particular value as a guide to the proper


PATENT (12360.2)

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construction of the term to persons skilled in the art, but also that the patentee intended

to adopt that meaning.”) (internal quotations omitted).

Here, two of the prior art patents cited in the specification shed light on the fact

that the appropriate claim construction of shoulder supporting members/shoulder straps

does not require that for something to be deemed shoulder straps it must be

independently removable from every other portion of the device. First, patent number

5,973,247 in Figure 1 depicts a vest with “shoulder straps” (number 38) which

shoulder straps are not removable from the body of the vest. (Afrasiabi Decl., Exh 6 at

p.22.) Yet they are still deemed shoulder straps even though they are indivisibly

connected to the vest and with the vest there is one unitary piece. Figure 1 and the text

describing number 38 on Figure 1 are provided below:

‘247, Col. 4:38-41 (Exh. 6)

Second, U.S. Patent Number 6,028, 257, also a Randall May patent cited in the

prior art specification section of the ‘886 patent (as well as being part of the heritage

of the ‘886 patent), teaches a vest with shoulder straps that are not independently

removable from an upper frontal vest portion (279). (Afrasiabi Decl. Exh. 7 at p.30.)

These are still referred to as shoulder straps even though they are indivisibly connected

to the upper vest portion and, if changed would be changed along with the upper vest

portion. Moreover, this very device with the shoulder straps (or shoulder supporting

members) connected to an upper vest portion is specifically referred to as an adjustable

vest. Figure 55 from the ‘257 patent and the accompanying text are shown here:


PATENT (12360.2)

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Col. ‘257, Col. 20:29-31 (Exh. 7)

These cited prior art patents in the ‘886 specification are intrinsic evidence that

further shed light on the claim construction issues raised here, and, specifically, these

references demonstrate that shoulder supporting members or shoulder straps do not

need to be independently removable or changeable apart from all other pieces of the

carrier assembly in order to be considered shoulder supporting members or shoulder

straps that are changeable or adjustable.

Accordingly, “changeable . . . shoulder supporting members” refers to the

ability to replace, remove or substitute one set of shoulder supporting members with

another and there is no requirement that the shoulder supporting members be

“changeable” by themselves alone and independent from every other component of the

harness assembly.

//

//

//


PATENT (12360.2)

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c. Are the shoulder supporting members “adjustable”? 1

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The ‘886 patent specification describes adjustability by way of bolts or screws

that connect the shoulder piece to the front of the device. Col. 4:45-50; Col. 5:26-28.

That adjustability allows the vest or other frontal piece to be moved up or down

relative to the shoulder supporting members and permits adjustment of the straps (23)

relative to vest portion (22). This adjustment improves the user’s comfort, and

improves the utility of the device, to allow multiple users of different sizes to size the

carrier structure for proper fit first, prior to adjusting the drum hardware independent

of the carrier structure to achieve like playing height of the drums through out the

entire drum line. Col. 1:19-30, 34-36; Col. 5:12-15, 34-36. The dictionary is the same.

(Afrasiabi Decl. Exh. 7 [“adjust” as follows: “to bring the parts of to a true or more

effective relative position.”]).

There is no requirement in either the claim language or the specification that the

adjustability occur on the physical shoulder members themselves. First, dependent

claim 19 covers adjustable shoulder supporting members that were locked in

orientation to each other by definition of the welding at the back bar. But they are still

adjustable relative to the rest of the device which is the very point of the invention

while encompassing a back member. Col.5:34-50.

Next, the Randall May ‘257 patent, part of the prior art cited in the ‘886

specification, specifically teaches that adjustability of shoulder straps occurs by virtue

of an adjusting mechanism on the rest of the device, not the shoulders. Specifically,

claims 50 and 51 teach supporting members (such as a T-bar style as in Fig. 27) that


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are designed to adjust the position of the shoulder straps relative to the supporting

member. See Afrasiabi Decl. Exh. 6, ‘257 Patent, Claims 50 & 51. In other words, the

shoulder straps (148) are adjusted by virtue of the supporting member being adjusted

itself (pieces 153 and 154 that slide together, from Figure 27 below) which in turn

necessarily adjusts the relative relationship between the belly plate and the shoulder

straps. And all the adjustment occurs on the supporting member portion, never the

shoulder straps.

Accordingly, given the ordinary use of the word “adjust” in the ‘886 patent

specification and given the prior art cite din the specification, the Court should

conclude that the term “adjustable” as used in Claim 17 refers to the ability to bring

the parts of the carrier structure to different relative positions, in order to

accommodate the user’s comfort, size, weight, or other features, and that the shoulder

members are adjustable even if the adjustment occurs on the vest or other portion so

long as the relative relationship between the shoulder members and the lower portion

is affected, that is, adjusted. There is no requirement that the shoulder supporting

members be “adjustable” by themselves alone and independent from every other

component of the harness assembly.


PATENT (12360.2)

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d. “securing mechanism locks the orientation of the shoulder

supporting members and the back member”

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Claim 19 in the ‘886 patent specifically contemplates “shoulder supporting

members” being welded to the back member (or otherwise permanently affixed such

that the orientation of the two is locked):

That orientation can be locked by welding or the like, as is established in the ‘886

patent specification. Col. 3:38-39 (“[b]ack member may be fixed as by welding or the

like”). See also Col. 5:36-40 (locking of orientation by welding discussed in patent

specification).

That the securing mechanism in claim 19 refers to the “secured” phrase in the

second paragraph of claim 17 is beyond any legitimate question (as the Court knows

form the demonstrative exhibits and the pictures, DEG’s P20 carriers incorporate a

welded back bar to the shoulder supporting members, although DEG has seemingly

asserted that claim 19’s “securing mechanism” may refer to the “securing” phrase in

the first paragraph of claim 17. DEG’s argument is meritless. Claim 19 makes clear

that the securing mechanism is the one that operates as between the back member and

the shoulder supporting members and only the second paragraph of claim 17 involves

both of those pieces of the invention.

In other words, dependent claim 19 modifies claim 17 in that the “shoulder

supporting members” are welded – or otherwise affixed to have a locked orientation –


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into one piece with the “back member.” Any locking of orientation means exactly that:

the orientation of the two (back member and shoulder supporting members) is locked

such that they cannot be adjusted relative to each other but they can be adjusted of

course relative to the carrier structure. Thus, even though the shoulder supporting

members are changed or adjusted along with something else in the harness assembly –

namely the welded back member – those shoulder supporting members are still by

definition considered to be “changeable” or “adjustable.”

Finally, and of importance to the claim construction, dependent claim 19’s

proviso for permanently welding the back bar to the shoulder supporting members

demonstrates that there is by definition the existence of “shoulder supporting

members” even though there is one unitary welded piece. This is important because

DEG has argued that the act of welding the shoulder straps to another piece of the

device causes the device to lack shoulder supporting memberS because there is no

plurality of parts post-welding and because post-welding the parties a unitary one (in

other words a member without the “s”). See DEG’s Opp. To RMI’s ‘886 MSJ at 5:9-

6:13. Obviously, in light of claim 19, the act of welding the distinct parts of the device

together into one unitary piece (exactly what DEG has done in its welded P20) does

not eliminate the existence of the shoulder supporting members any more than the fact

that we have two shoulders even though they are indivisibly connected together.

Likewise, a person wears pair of pants even though it refers to one unitary article of

clothing and a person looks through a pair of eyeglasses even though the glasses are

one unitary piece.

Accordingly, this claim should be construed to mean that a locking mechanism

has been applied to the back member and shoulder supporting members such that they

are affixed together in a manner that precludes any change in orientation, i.e., they are

welded together. Moreover, this then necessarily means that shoulder supporting

members can be permanently welded to distinct, other portions of the device yet they


PATENT (12360.2)

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still exist as and constitute changeable or adjustable shoulder supporting members

from claim 17 by definition.

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3. Claim construction issues not in dispute

DEG does not dispute that its product satisfy these limitations of claim 17 but RMI provides this construction to afford the Court a full construction of the claim.

a. “a shoulder supported carrier structure for supporting

percussion instruments”

As discussed above, the “shoulder supported carrier structure” is by definition

the entire harness assembly minus the

back member.

“Shoulder supported carrier

structure” refers to the fact that the

carrier structure itself (the harness

assembly minus the back member) is

supported on the user by way of the

user’s shoulders – that is, is “shoulder

supported,” Col. 1:16-29; Col. 4:10-15 – and “for supporting percussion instruments”

refers to the fact that the shoulder supported carrier structure performs the function of

supporting or carrying percussion instruments such as drums, cymbals or the like. Col.

1:16-24; 4:12-14; Col. 6:38-39. This function is performed by way of a vest, T-bar, or


PATENT (12360.2)

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other frontal piece. See Col. 3:34-36; Fig. 2 vest embodiment) Col. 5:64-67; Fig. 3 T-

bar embodiment.

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Examples of the “shoulder supported carrier structure” are found in Figures 2

and 3, pictured above, where that portion of the invention is everything in the pictures

less the back member. As explained previously, however, these pictures represent only

illustrative embodiments of potential carriers. Illustrations used in a patent are not the

exclusive embodiments of the patented technology. See Arlington Industries, Inc., 345

F.3d at 1327; Renishaw PLC, 158 F.3d at 1248. This is especially true where the

patentee expressly state in the patent that the embodiments described were not the

exclusive embodiments of the invention. Col.8:31-38.

Accordingly, this claim limitation should be construed to mean that portion of

the shoulder supported harness assembly that (1) does not include the back member,

(2) is supported by the user’s shoulders, and (3) performs the function of supporting

percussion instruments.

b. “. . . for securing said structure on the shoulders of a user”

The phrase “for securing said structure on the shoulders of the user” facially means that the shoulder supporting members performs the function of securing the entire carrier structure on the user’s shoulders. The language is clear and the specification confirms this function. Col. 1:19-23; Col. 3:47-50. Accordingly, the Court should construe this language to mean that the shoulder

supporting members enable or perform a function of securing the carrier structure on

the user’s shoulders.


PATENT (12360.2)

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c. “a back member that spans across and is secured to each of

the shoulder supporting members”

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As discussed above, the back member is that second portion of the assembly

invention that does not include the carrier structure (the supporting and supported

portions in the first paragraph of Claim 17). The specification describes the back

member in various ways: (1) as a “contoured plate that wraps around the back of the

user” as in Figure 1, Col.39-41; (2) as a back bar as in Figures 2 and 3. In any

embodiment, that back member must connect to the shoulder supporting members.

Specifically, the specification teaches it is “secured to” the shoulder supporting

members by being affixed – that is, attached – to the ends of those shoulder supporting

members. Col. 1:33-35; Col. 3:38-39; 5:34-40. Moreover, Claim 17 does not require

that the back member be secured in a permanent manner to the shoulder supporting

members, although Claim 19 discussed below narrows the claimed back member to

one that is so permanently affixed to the shoulder supporting members.

Accordingly, the Court should construe this language to mean a back member or

back bar that is connected to the shoulder supporting members and which back piece

spans across the user’s back to connect to the shoulder supporting members.

IV. CONCLUSION

For all the foregoing reasons, Plaintiff respectfully requests that the Court adopt

the above-described claim construction of Claims 17 and 19 of the ‘886 patent. Dated: December 14, 2007

By:____________________________________ Peter Afrasiabi, counsel for Plaintiff RMI


PATENT (12360.2)

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CERTIFICATE OF SERVICE

I hereby certify that on December 14th, 2007, I caused to be electronically filed

the foregoing PLAINTIFF’S CLAIM CONSTRUCTION BRIEF REGARDING 6,881,886 PATENT with the Clerk of the Court using the CM/ECF system which will send e-mail notification of such filing to the following email addresses of the other counsel in this case, identified below:

Douglas E. Warren, Esq. [email protected] 109 Chesterfield Business Parkway Chesterfield, MO 63005 Attorney for DEG Music Products, Inc. and Dynasty USA

Wilmore F. Holbrow, III [email protected] Blakely, Sokolof, Taylor & Zafman, LLP 12400 Wilshire Boulevard,, 7th Floor Los Angeles, CA 90025 Attorney for DEG Music Products, Inc. and Dynasty USA

Attorneys for Plaintiff and Counter-defendants /s/ Peter Afrasiabi

TURNER GREEN AFRASIABI ARLEDGE LLP · plaintiff randall may international, inc.’s claim...

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