Ficep Corporation v. Voortman USA Corp
1:13-cv-00429
D. MarylandJul 16, 2014Background
- Ficep sued Voortman for alleged infringement of U.S. Patent No. 7,974,719, which claims systems/methods using CAD models and a programmable logic controller (PLC) to manufacture multi-component objects with intersecting components.
- The patent describes a PLC receiving an electronic design model, extracting component dimensions and intersection/manufacturing parameters, and transmitting those parameters to manufacturing machines to produce components.
- During prosecution the PTO initially rejected the claims as anticipated by Jones; Ficep distinguished Jones in part by arguing its system eliminated human operator programming and used componentry such as a PLC to extract intersection parameters, after which the PTO allowed the claims.
- Voortman seeks constructions of multiple claim terms (e.g., that preambles are limiting, that actions must occur "at the PLC," that several steps occur "without human intervention," and definitions for "intersection/manufacturing parameters").
- The court conducted claim construction, applying ordinary meaning, the specification, and prosecution history (including prosecution disclaimer), and resolved a set of disputed terms and whether certain phrases are limiting.
Issues
| Issue | Plaintiff's Argument (Ficep) | Defendant's Argument (Voortman) | Held |
|---|---|---|---|
| Are the independent claim preambles ("automatic manufacture of an object") limiting? | Preambles are non‑limiting, state purpose/intended use; plain meaning suffices. | Preambles limit scope and require the entire process be completed without human intervention. | Preambles are not limiting; they state intended use and deleting them does not change claim structure. |
| Does "design model of an object" require being an electronic file and include detailed specs/tolerances? | Plain meaning is sufficient; electronic form is agreed but other detailed limitations are spec‑only. | Should be defined as detailed structural diagram in electronic file including specifications/tolerances to allow assembly. | Constructed as "design model of an object, in the form of an electronic file"; other specification details not imported. |
| Must extraction/identification steps be performed "at the PLC"? | Claims do not mandate a specific order or location; cannot read PLC limitation into steps. | Claim language and specification require those steps occur at the PLC. | No; intrinsic evidence does not compel limiting those steps to occur at the PLC, so court did not add "at the PLC." |
| Should certain PLC‑related steps be limited to occurring "without human intervention"? | Reject reading additional limitations into claims; plain language suffices. | Prosecution history disclaimed human‑intervention systems (Jones) so claims require no human intervention. | For steps involving transmission/receipt via the PLC the court added "without human intervention" based on prosecution disclaimer and specification support; not added to steps not tied to PLC. |
| How to construe "intersection and manufacturing parameters"? | Plain meaning; oppose importing separate narrow definitions. | Define intersection parameter as intersection point and manufacturing parameter as manufacturing to be performed. | Court declined to split the two terms; instead added clarification that parameters also include "the manufacturing to be performed." |
| Are certain terms in claims 7 and 14 indefinite for lack of antecedent basis? | Terms are not insolubly ambiguous; antecedent can be implied; plain meaning. | Lack of explicit antecedent renders terms indefinite. | Not indefinite: usage in specification and claim 1 supplies sufficient basis; court declined indefiniteness challenge. |
Key Cases Cited
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (claim construction is a question of law for the court)
- Phillips v. AWH Corp., 415 F.3d 1303 (claims given ordinary meaning to a person of skill in the art; specification primary guide)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (intrinsic evidence usually resolves claim scope)
- Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243 (patentee can act as lexicographer; definitions must be clear)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (definiteness standard: claims must inform those skilled in the art of scope with reasonable certainty)