Utex Industries Inc v. Gardner Denver Inc
4:18-cv-01254
| S.D. Tex. | Feb 7, 2019Background
- Utex sued Gardner Denver and Troy Wiegand for patent infringement and trade-secret misappropriation involving U.S. Patent No. 9,534,691 (the '691 Patent).
- The parties disputed claim construction for Claim 10, specifically the terms "layer" and "covering," and whether Claim 10's introductory language (the preamble) limits the claim.
- Both contested terms are ordinary English words; neither side contended a specialized technical meaning in the art.
- Utex urged plain-and-ordinary-meaning constructions; Gardner Denver sought narrower definitions ("layer" as a discrete thickness/stratum; "covering" as "laid over or atop") to guide the jury.
- The court analyzed intrinsic sources (claim language, specification, figures, prosecution history) and considered extrinsic dictionary evidence but declined to rely on it over intrinsic context.
- The court held the disputed words require no further construction and found the Claim 10 preamble describes the intended environment (a pump) but does not limit the claimed header ring.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Construction of "layer" | "Layer" needs no construction; plain and ordinary meaning | "Layer" means a discrete thickness or stratum | "Layer" given plain and ordinary meaning; not limited to a discrete element |
| Construction of "covering" | "Covering" needs no construction; plain and ordinary meaning; defendant's wording imports improper process limitation | "Covering" means "laid over or atop" (emphasizing physical overlay) | "Covering" given plain and ordinary meaning; court refused to import "laid over or atop" language |
| Role of Claim 10 preamble | Preamble describes use/environment, not a claim limitation | Language is not a true preamble and should be treated as claim elements | Preamble is non‑limiting; it describes the environment (pump) and does not add elements to Claim 10 |
| Use of specification/embodiments to narrow claims | Specification supports plain meaning; commercial embodiments not limiting | Preferred embodiments show a discrete layer within the resilient body and should narrow claim | Court held preferred embodiments do not limit claim; specification cannot confine claim to embodiments shown |
Key Cases Cited
- Markman v. Westview Instruments, 517 U.S. 370 (claim construction is a question of law for the court)
- Phillips v. AWH Corp., 415 F.3d 1303 (en banc) (ordinary and customary meaning, focus on intrinsic evidence)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (intrinsic vs. extrinsic evidence guidance)
- CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (patentee as lexicographer; limiting by disavowal)
- Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243 (avoid importing narrowing modifiers absent clear intent)
- Dow Chem. Co. v. United States, 226 F.3d 1334 (claims not limited to preferred embodiment)
- In re Stencel, 828 F.2d 751 (statements of intended use may appear anywhere; limitation determination is fact-specific)
- Merrill v. Yeomans, 94 U.S. 568 (importance of claim language in defining what is patented)