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Fisher-Rosemount Systems, Inc. v. ABB Ltd.

United States District Court, S.D. Texas, Houston Division

December 12, 2019




         Before the Court are the claim construction briefs filed by both parties in this patent infringement suit. On November 6, 2019, the Court held a hearing, in accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), during which the parties presented argument in support of their proposed constructions. After considering the arguments of counsel, the evidence, and the applicable law, the Court finds that the disputed claims of the patents-in-suit should be construed as set forth herein.

         I. BACKGROUND

         Plaintiff Fisher-Rosemount Systems, Inc. is the owner of U.S. Patent No. 8, 332, 567 (the “‘567 patent”); U.S. Patent No. 9, 411, 769[1] (the “‘769 patent”); and U.S. Patent No. 7, 684, 875 (the “‘875 patent”). Fisher-Rosemount Systems, Inc. and Emerson Process Management LLLP (collectively, “Plaintiffs”) brought suit against Defendants ABB, Inc. et al. (the “Defendant”) for infringement of these patents.

         The patents at issue relate generally to process control systems. These systems, which are used in a variety of industries such as chemical, pharmaceutical, and wastewater treatment, oversee devices performing a process that creates or changes something by performing that process; for instance, in oil refining, process control systems oversee the machinery and devices that transform crude oil into gasoline. (Doc. No. 137 at 2). A process control system is generally comprised of three groups of electronic devices: controllers, input/output (“I/O”) devices, and field devices. Field devices (e.g., valves or sensors) send information about process activities to controllers through the I/O system, and the controller in turn sends information to other field devices to make adjustments to process activities.

         The ‘567 and ‘769 patents relate to an apparatus and methods for electronically-rather than physically through wires-marshalling signals from field devices to a process controller within the process control system. This electronic marshalling is accomplished through termination modules, which are removably coupled to a base and housed in a marshalling cabinet. There is a one-to-one correspondence between the number of termination modules and field devices. The ‘875 patent builds on these patents and explains an electronic marshalling process that automatically configures these connections between controllers and field devices using “device tags.” The '567 patent contains 25 claims, the ‘769 patent contains 19 claims, and the ‘875 patent contains 23 claims. Because the disputed terms and phrases occur throughout these claims, the Court will not reproduce each claim containing a disputed term.


         A. Claim construction

         In patent law, “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citation omitted). Claim construction is a matter of law, and thus the task of determining the proper construction of the disputed terms lies with the Court. Markman, 417 U.S. at 385.

         To determine the meaning of claims, courts begin by considering the intrinsic evidence, which includes the claims themselves, the specifications, and the prosecution history. Phillips, 415 F.3d at 1313. Courts look first to the language of the asserted claim itself. Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). It is well established that words of a claim “are generally given their ordinary and customary meaning, ” which is defined as the “meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1312-13 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). A district court is not obligated to construe terms with ordinary meanings, lest trial courts be inundated with requests to parse the meaning of every word in the asserted claims. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008); see also Mentor H/S, Inc. v. Med. Device All., Inc., 244 F.3d 1365, 1380 (Fed. Cir. 2001) (finding no error in the lower court's refusal to construe “irrigating” and “frictional heat”). The exceptions to the ordinary meaning rule are (1) when the patent applicant acts as his own lexicographer and explicitly defines the term, and (2) when the specification “reveal[s] an intentional disclaimer, or disavowal, of claim scope by the inventor.” Phillips, 415 F.3d at 1315-16.

         Claims, however, “must be read in view of the specification of which they are a part.” Phillips, 415 F.3d at 1315 (quoting Markman, 52 F.3d at 979). The specification, which describes and illustrates the invention in detail, “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Id. (quoting Vitronics, 90 F.3d at 1582).

         Courts may also consider the prosecution history, which provides evidence of how the Patent and Trademark Office (the “PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317. However, “because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Phillips, 415 F.3d at 1317. Still, a “patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution.” Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006); see Cordis Corp. v. Bos. Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009). A patentee could do so by, for instance, clearly characterizing the invention in a way to avoid prior art. See, e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004) (limiting the term “transmitting” to require direct transmission over a telephone line because the patentee was found to have disclaimed transmission over a packet-switched network by stating during prosecution that the invention transmits over a standard telephone line). However, “[w]here an applicant's statements are amenable to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).

         In most circumstances, analysis of the intrinsic evidence alone will resolve claim construction disputes. Vitronics, 90 F.3d at 1583. However, if the intrinsic evidence does not resolve ambiguities, a court may also consider extrinsic evidence such as expert witness testimony, dictionary definitions, and legal treatises. Id. While extrinsic evidence “can shed useful light on the relevant art, ” it is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.'” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004).

         B. Indefiniteness

         A patent is presumed to be valid. 35 U.S.C. § 282. A claim is invalid for indefiniteness if it “fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2010). The party challenging the validity of a claim must prove indefiniteness by clear and convincing evidence. Takeda Pharm. Co. v. Zydus Pharms. USA, Inc., 743 F.3d 1359, 1366 (Fed. Cir. 2014); Apotex USA, Inc. v. Merck & Co., 254 F.3d 1031, 1036 (Fed. Cir. 2001); WesternGeco LLC v. ION Geophysical Corp., 876 F.Supp.2d 857, 871 (S.D. Tex. 2012).

         C. Means-plus-function claims

         A claim may also be deemed invalid for indefiniteness if it is deemed to be a means-plus-function claim that insufficiently connotes structure under 35 U.S.C. § 112(f). This Section provides that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. 112(f). Such “means-plus-function” claims allow a patentee to describe an element of the invention by the function it serves, rather than describing the item or element to be used-that is, what it does rather than what it is. Warner-Jenkins Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 (1997).

         If a court determines that the means-plus-function analysis under § 112(f) governs, the court applies a two-step process: it must decide what the claimed function is, and then determine whether a structure corresponding to that function is disclosed in the specification. Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1097 (Fed. Cir. 2008). If the patent does not contain an adequate disclosure of the structure that corresponds to the claim elements, the patentee will have “failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.” Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009). Such a failure results in invalidity for indefiniteness. WesternGeco, 876 F.Supp.2d at 867.

         In determining whether a claim is drafted in means-plus-function format, and thus whether § 112(f) applies, courts have focused on the patent's use of the word “means.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). If the claim does not contain the word “means, ” courts apply a “rebuttable presumption that the term conveys sufficiently definite structure and is not subject to 112[(f)].” MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1341 (Fed. Cir. 2019). This presumption can be rebutted by demonstrating “that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Id. (quoting Williamson, 792 F.3d at 1348). One way to demonstrate that a claim limitation fails to recite sufficiently definite structure is to show that the “claim limitation uses a . . . nonce word that can operate as a substitute for ‘means.'” Id. Courts have held that nonce words include terms like “module, ” “mechanism, ” “element, ” and “device.” Id. (quoting Williamson, 792 F.3d at 1348). Thus, while the presence or absence of “means” is informative, the “essential inquiry is . . . whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id. The ultimate question is whether “the claim language, read in light of the specification, recites sufficiently definite structure to avoid § 112[(f)].” Id. (quoting Media Rights Techs. Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015)).

         III. ANALYSIS


         1. “the input / output device is programmed with the tag by an installer of the process control device”

         The parties agreed at the Markman hearing that the scope of this claim is that the same person that programs the input/output device with the tag is also the installer of the process control device. (Doc. No. 187 at 72:13-18). The Court adopts this construction.


         1. “a base [comprising/having] a first physical interface”

         This term appears in claims 1, 9, and 19 of the ‘567 patent, and claims 1 and 15 of the ‘769 patent. Defendant argues that the term should be construed as “[t]he first physical interface is an integral part of, and not removable from, the base.” Plaintiffs suggest that no construction is necessary for this term, as it carries its plain and ordinary meaning. The Court agrees with Plaintiffs.

         The core dispute is whether the “first physical interface” is removable from the base. Beginning with the claims themselves, the claims are silent on the issue of removability. Defendant contends that “comprising” and “having” are terms that mean essential and thus unremovable. However, a person of ordinary skill in the art would not understand these terms to imply a structural limitation requiring a unitary construction between two elements. See, e.g., Microlinc, LLC v. Int'l Corp., 2013 WL 2471551, at *10 (E.D. Tex. June 7, 2013) (“[A]s a general matter of patent claim construction, ‘includes' and ‘comprising' are open-ended terms which are well understood to mean ‘including but not limited to.'”).

         The Court thus turns to the claims “read in view of the specification.” Phillips, 415 F.3d at 1315. The specification and the embodiment at Figure 4 teach that possible embodiments of a “first physical interface” are a termination screw or a socket. See ‘567 patent at 14:16-20 (“The base 402 is provided with termination screws 406 (e.g., a field device interface) to tie down or secure conductive communication media . . . from the field device 112a.”); id. at 14:27-28 (“[O]ne field device interface (e.g., the termination screws 406).”); id. at 14:23-26 (“In other example implementations, the base 402 may be provided with any other suitable type of field device interface (e.g., a socket) instead of the termination screws 406.”). A person of ordinary skill in the art would know that at least one of the embodiments, a termination screw, is removable from the base and accordingly that the first physical interface may be removable.

         Defendant nonetheless argues that, in the context of the patent, the termination screws cannot alone be the first physical interface because the first physical interface is the mechanism that enables communications from field devices to traverse the base and communicate with the removably attachable module, and a screw alone cannot accomplish such functions. See ‘567 patent at 28:40-41 (“[A] base comprising: a first physical interface to be communicatively coupled to different types of field devices and exchange communications with one or more of the field devices.”). Rather, according to Defendant, the first physical interface must include structures, like an electric contact on the base and wiring within the base that can receive and pass signals through the base. In this way, the first physical interface and the base must be unitary. The Court rejects this construction, which reads a limitation that was not clearly intended by the inventor and indeed contradicts the language of the specification on its face. Cf. Tesco Corp. v. Weatherford Int'l Inc., 722 F.Supp.2d 737, 740 (2010) (explaining that, in cases where the specification reveals an “intentional disclaimer, or disavowal, of claim scope by the inventor . . . the inventor's intention as expressed in the specification, is regarded as dispositive.”). Moreover, contrary to Defendant's contention, the role of the termination screw as taught in the specification is consistent with the claims. See ‘567 patent at 14:20-24 (teaching that the termination screws “are communicatively coupled to one or more of the contacts 404 to enable communicating information between the termination module 124a and the field device 112a”) (emphasis added). The claims read in light of the specification therefore include no limitation that the first physical interface be unremovable from the base.

         The Court further rejects Defendant's separate contention that Plaintiffs disclaimed a first physical interface that is removable from the base during patent prosecution. To prove that a patentee disclaimed specific meanings during prosecution, the party seeking to invoke prosecution history disclaimer “bears the burden of proving the existence of a ‘clear and unmistakable' disclaimer that would have been evidence to one skilled in the art.” Mass. Inst. of Tech. v. Shire Pharm., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). Defendant contends that, during prosecution, Plaintiffs distinguished prior art references to “Odom et al.” and “Rajchel.” Defendant's reliance on this prosecution history is inapposite, however, as it does not address the present dispute: whether or not the first physical interface must be integral. During prosecution, Plaintiffs distinguished their patent by explaining that, whereas in Rajchel the module interfaces with external devices, in Plaintiffs' patent it is the base that interfaces with external devices. (Doc. No. 138-1 at 365) (“Rajchel describes that the interchangeable module . . . can be provided with interfaces to connect to external devices. . . . But Rajchel does not teach or suggest a base having a first field device interface to be communicatively coupled to different types of field devices.”). These prosecution history references do not address whether the first physical interface can be removed from the base. The prosecution history as to the prior art reference, Odom et al., similarly misses the mark. During prosecution, Plaintiffs explained that Odom et al. describes a module connecting directly to sensors and devices rather than a base that is coupled to a field device through a first field device interface. Odom et al. says nothing about whether the first physical interface is unremovable from the base. (Doc. No. 138-1 at 365) (“Odom et al. do not teach or suggest a module comprising a connector to communicatively couple the module to a base, in which the base comprises a first field device interface to be communicatively coupled to different types of field devices. Instead, Odom et al. describe that the measurement module . . . connects directly to sensors and devices through its terminals.”). In sum, the portions of the prosecution history upon which Defendant relies do not constitute clear and unmistakable disavowal.

         The Court thus rejects Defendant's argument and determines that no construction of this term is necessary.

         2. “module”

         This term is used in claims 1, 9, 10, and 19 of the ‘567 patent, and claims 1, 13, and 15 of the ‘769 patent. Defendant proposes the construction, “a component of an assembly.” Plaintiffs argue that the term contemplates a more particular meaning and should be construed as “a unit to electronically marshal information.” While the term “modules” has many meanings in different industries, the Court agrees with Plaintiffs that, in the context of the patents at issue, a person of ordinary skill in the art would understand that the term carries a narrow meaning. Indeed, the ‘567 patent specification teaches that modules, also referred to as “termination modules, ” are units housed within a marshalling cabinet that are “configured to marshal information associated with the field devices 112a-c and 126a-c in the process area 114.” ‘567 patent at 7:17-19; see also Id. at 4:11-15 (“The marshalling cabinet includes a plurality of termination modules used to marshal, organize, or route signals from the field devices to one or more I/O cards communicatively coupled to the controllers.”). A person of ordinary skill in the art would know, based on the specification, that a module electronically marshals information. Defendant counters by arguing that a module does not itself perform the marshaling function; rather, termination modules are arranged in a marshalling cabinet, and it is the cabinet as a whole that electronically marshals information. See ‘567 patent at 7:14-27; id. at 4:9-15. The Court rejects this argument. A skilled artisan would understand that the cabinet only houses the modules; an understanding bolstered by the fact that the specification teaches in multiple instances that each module is individually configured to marshal information. See, e.g., ‘567 patent at 5:29-33 (“Each of the termination modules can then extract or depacketize respective field device information from the packetized communications received from a respective I/O card and communicate the field device information to a respective field device.”); id. at 4:61-5:1 (“The termination modules are configured to receive field device information from the field devices via the field device buses and communicate the field device information to the I/O cards.”).

         In light of the specification's teachings, the Court rejects Defendant's separate contention that its proposed construction is the correct one because Plaintiffs' construction impermissibly reads additional functions into the claim where the claim language is silent. Defendant argues that while the claims explicitly specify elements that a module must have-for instance, it must be “removably attached from the base”-the claims conspicuously do not state that a single module alone must be able to electronically marshal information. However, “claims must be read in view of the specification, of which they are a part.” Phillips, 415 F.3d at 1315. And here, as discussed supra, the specification teaches that modules electronically marshal information.

         Accordingly, the Court adopts the construction, “a unit to electronically marshal information.”

         3. “any of the different types of field devices”

         This term is used in claim 1 of the ‘567 patent, which provides in relevant part that a module includes “a processor to be . . . configured to encode first information from any of the different types of field devices for communication via the bus.” Plaintiffs argue that the term should be construed as “one or more of the different types of field devices.” Defendant argues that the term should be construed as “every different type of field device.” The parties disagree over whether “any” means “one or more” or “every.” At the Markman hearing, Defendant clarified that, under its construction, a module need not in fact be configured to interface with every type of field device simultaneously, but it must be capable of interfacing with every type of field device. Accordingly, the core dispute is whether a module must be capable of interfacing with only “one or more” field devices or with “every” field device. Plaintiffs argue for the former construction, and the Court agrees.

         The plain and ordinary meaning of “any” most readily means “one or more, ” and the intrinsic evidence supports this plain meaning. Namely, the ‘567 patent specification explicitly teaches that certain modules are configured to communicate with specific types of field devices. See ‘567 patent at 7:55-64 (“[An example termination module] may be configured to communicate with a respective one of the field devices 112a-c and 116a-c using a different data type.”). By contrast, the patent nowhere teaches that each module is capable of communicating with every possible field type.

         Defendant concedes that the ‘567 patent describes different modules with different capabilities, including those discussed supra that are specifically assigned to communicate with a specific type of field device. Defendant contends, however, that those embodiments are not the ones covered by claim 1; rather, according to Defendant, claim 1 covers only the embodiment that teaches that termination modules are “configured to be communicatively coupled to a plurality of field devices.” ‘567 patent at 12:51-54 (emphasis added); see also Id. at 7:52-55 (“[A] termination module can be configured to communicate wirelessly with a plurality of field devices using a wireless mesh network.”). The Court rejects this argument. Even assuming that Defendant is correct that claim 1 encompasses only this embodiment, Defendant's argument requires the Court to construe a “plurality” to mean “every.” But this belies the ordinary meaning of the term. Under the ordinary meaning of plurality, that the modules described in this embodiment are coupled to a plurality of field devices does not mean that they are capable of being configured to every type of field device. Moreover, a person of ordinary skill in the art would understand that such capability would be impossible in the context of the ‘567 patent. This is because the patent provides that field devices use different data types, such as analog and digital signals. See ‘567 patent at 7:56-64. However, as one skilled in the art would understand, a module configured to receive an analog signal would not understand a digital signal and thus would be unable to communicate with a field device transmitting a digital signal. See, e.g., (Doc. No. 146-5 at ¶49). While a module configured to encode digital information may be capable of communicating with multiple types of field devices that transmit digital signals, it cannot communicate with devices that transmit analog signals-that is, while it may communicate with a plurality of field devices, it cannot communicate with every type of field device. The Court declines to deviate from the ordinary meaning of the claim term, particularly where the alternate construction “would impermissibly render the claim[] inoperable.” Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 904 F.3d 965, 972 (Fed. Cir. 2018).

         The Court therefore adopts the construction “one or more of the different types of field devices.”

         4. ...

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