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The Toro Co. v. Ingersoll-Rand Co. Ltd.: US District Court : PATENT - Markman claim construction (utility loaders)1
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
THE TORO COMPANY,
a Delaware corporation,
v. MEMORANDUM OF LAW & ORDER
Civil File No. 06‐3073 (MJD/AJB)
INGERSOLL‐RAND COMPANY LIMITED,
a Bermuda company,
and CLARK EQUIPMENT COMPANY, a
Delaware corporation and a subsidiary of
Ingersoll‐Rand Company Limited,
Patrick S. Williams, John B. Lunseth, Michael M. Lafeber, and Gerald E. Helget,
Briggs and Morgan, P.A., Counsel for Plaintiff.
Michael E. Husmann, S. Edward Sarskas, J. Donald Best, and Angela J. Kujak,
Michael Best & Friedrich LLP, Counsel for Defendants.
This matter is before the Court on the Parties’ joint request for claim
construction pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370
(1996). Plaintiff is The Toro Company (“Toro”). Defendant Clark Equipment
Company is a subsidiary of Defendant Ingersoll‐Rand Company Limited
(collectively, “Bobcat”). The patent at issue is U.S. Patent No. 6,709,223 (“‘223
Patent”). Toro is the owner of the ‘223 Patent. In the instant lawsuit, Toro alleges
that Bobcat loaders infringe claim 3 of the ‘223 Patent.
The Court held a Markman hearing on October 10, 2007.
A. Factual Background
The Patent and Trademark Office (“PTO”) issued the ‘223 Patent to Toro
on March 23, 2004, covering a “Tracked Compact Utility Loader”—a compact
utility loader capable of being controlled by a walk‐behind operator in outdoor
On July 20, 2006, Toro filed a Complaint in this Court alleging that Bobcat
infringed on the ‘223 Patent. It claims that Bobcat’s MT50, MT52 and MT55
include all the elements of claim 3 of the ‘223 Patent. The accused products
allegedly, therefore, literally infringe Toro’s patent.
Claim 3 consists of elements (a)‐(h). Bobcat admits that elements (a)‐(f) of
claim 3 are present in the accused products. However, Bobcat denies that
element (g), requiring “at least one actuator extending between the loader arms
and the attachment for pivoting the attachment relative to the loader arms,” is
present on the accused loaders. With respect to element (h), Bobcat argues that is
vague and ambiguous and causes claim 3 to be invalid.
Bobcat counterclaims, seeking a declaratory judgment that the ‘223 Patent
is invalid, that it did not infringe the ‘223 Patent, and that the ‘223 Patent is
unenforceable. As one basis for invalidity, Bobcat alleges that Toro committed
inequitable conduct before the PTO by failing to disclose relevant prior art. As a
second basis for invalidity, Bobcat alleges that Toro executed a pre‐critical date
sale of a prototype to a company called New Holland North America, Inc., in
violation of 35 U.S.C. § 102(b) (providing that a person is not entitled to a patent
if the invention was on sale in the United States “more than one year prior to the
date of the application for patent in the United States”). Allegedly, Toro also
neglected to disclose the sale to the PTO.
On September 28, 2007, the Court entered an Order barring admission of
extrinsic evidence, including expert witnesses, at the Markman hearing. The
Markman hearing was held on October 10, 2007.
B. Claim 3 and Terms at Issue
Toro asserts that Bobcat infringes claim 3 of the ‘223 Patent. The five
disputed terms are “walk‐behind loader,” “left and right endless drive tracks,”
“the open space between the loader arms providing substantially unobstructed
viewing,” “an actuator extending between the loader arms and the attachment,”
The text of the claim at issue is
3. A walk‐behind loader, which comprises:
(a) a frame having a front and a rear and a pair of laterally spaced
uprights at the rear of the frame;
(b) an internal combustion engine carried on the frame enclosed
beneath a hood or shroud;
(c) left and right endless drive tracks carried on the frame for
propelling the frame in forward and reverse directions, the drive
tracks being powered by the internal combustion engine;
(d) left and right loader arms pivotally connected to upper ends of
the left and right uprights, respectively, wherein the loader arms
extend forwardly and downwardly from the pivotal connections of
the loader arms to the uprights to terminate in front ends that extend
over the front of the frame, the loader arms having a lowermost
position in which the front ends of the loader arms are generally
adjacent the ground with the loader arms capable of being raised
into elevated positions in which the front ends of the loader arms are
spaced further above the ground than in the lowermost position of
the loader arms, and wherein the loader arms are configured with an
open space between the loader arms which open space is large
enough to permit the loader arms to fit down around and receive
therebetween at least an upper portion of the hood or shroud of the
internal combustion engine when the loader arms are in their
lowermost position, the open space between the loader arms
providing substantially unobstructed viewing towards the front in
elevated positions of the loader arms when the open space is raised
in front of an operator’s face;
(e) a ground grooming or working attachment pivotally connected to
the front ends of the loader arms;
(f) at least one actuator extending between the loader arms and the
frame for pivoting the loader arms upwardly and downwardly
relative to the frame about the pivotal connection of the loader arms
to the frame;
(g) at least one actuator extending between the loader arms and the
attachment for pivoting the attachment relative to the loader arms;
and (h) a control system positioned at the rear of the frame and
comprising a control handle configured to be gripped and
manipulated by a standing operator walking behind the frame
during operation of the loader, wherein the control system is located
sufficiently close to the rear of the frame and the rear of the frame is
configured to permit the standing operator walking behind the
frame to comfortably reach and operate the control system with the
operator’s arms being bent at the elbow.
A. Legal Framework
1. Standard for Claim Construction
Interpretation of the terms used in a patent is a matter of law to be decided
by the Court. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 391
(1996). The Markman hearing is held to construe the meaning of claim language
as a matter of law, not to make factual findings. The Court need only construe
the disputed claim language “to the extent necessary to resolve the controversy.”
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
“[T]he words of a claim are generally given their ordinary and customary
meaning. . . . [T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312‐13 (Fed. Cir.
2005) (en banc) (citations omitted). “[T]he person of ordinary skill in the art 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. at 1313.
“In some cases, the ordinary meaning of claim language as understood by
a person of skill in the art may be readily apparent even to lay judges, and claim
construction in such cases involves little more than the application of the widely
accepted meaning of commonly understood words. In such circumstances,
general purpose dictionaries may be helpful.” Id. at 1314 (citation omitted).
the meaning of a claim term as understood by persons of skill in the
art is often not immediately apparent, and because patentees
frequently use terms idiosyncratically, the court looks to those
sources available to the public that show what a person of skill in the
art would have understood disputed claim language to mean. Those
sources include the words of the claims themselves, the remainder of
the specification, the prosecution history, and extrinsic evidence
concerning relevant scientific principles, the meaning of technical
terms, and the state of the art.
Id. (citations omitted).
2. Intrinsic Evidence of Meaning
“Quite apart from the written description and the prosecution history, the
claims themselves provide substantial guidance as to the meaning of particular
claim terms.” Phillips, 415 F.3d at 1314 (citation omitted).
Other claims of the patent in question, both asserted and unasserted,
can also be valuable sources of enlightenment as to the meaning of a
claim term. Because claim terms are normally used consistently
throughout the patent, the usage of a term in one claim can often
illuminate the meaning of the same term in other claims.
Id. at 1314 (citations omitted).
“[C]laims must be read in view of the specification, of which they are a
part. . . . [T]he specification 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. at 1315 (citations omitted).
[T]he specification may reveal a special definition given to a
claim term by the patentee that differs from the meaning it would
otherwise possess. In such cases, the inventor’s lexicography
governs. In other cases, the specification may reveal an intentional
disclaimer, or disavowal, of claim scope by the inventor. In that
instance as well, the inventor has dictated the correct claim scope,
and the inventor’s intention, as expressed in the specification, is
regarded as dispositive.
Id. at 1316 (citations omitted).
[A] court should also consider the patent’s prosecution history, if it
is in evidence. The prosecution history . . . consists of the complete
record of the proceedings before the PTO and includes the prior art
cited during the examination of the patent. Like the specification,
the prosecution history provides evidence of how the PTO and the
inventor understood the patent. Furthermore, like the specification,
the prosecution history was created by the patentee in attempting to
explain and obtain the patent. Yet 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
Id. at 1317 (citations omitted).
3. Admission of Extrinsic Evidence
“Resort to extrinsic evidence is appropriate only when an ambiguity
remains after consulting the intrinsic evidence of record.” Storage Tech. Corp. v.
Cisco Sys., Inc., 329 F.3d 823, 832 (Fed. Cir. 2003) (citation omitted). Also, “[t]he
testimony of an inventor and his attorney concerning claim construction is . . .
entitled to little or no consideration. The testimony of an inventor often is a
self‐serving, after‐the‐fact attempt to state what should have been part of his or
her patent application . . .” Bell & Howell Document Mgmt. Prods. Co. v. Altek
Sys., 132 F.3d 701, 706 (Fed. Cir. 1997) (citation omitted). Finally, it is also
improper to construe the claims with reference to the accused device. Neomagic
Corp. v. Trident Microsys., Inc., 287 F.3d 1062, 1074 (Fed. Cir. 2002).
In this case, the Court did not rely upon extrinsic evidence. See, e.g., Inpro
II Licensing, S.A.R.L. v. T‐Mobile USA, Inc., 450 F.3d 1350, 1357 (Fed. Cir. 2006)
(noting that “[t]he decision as to the need for and use of experts is within the
sound discretion of the district court” and holding “no abuse of discretion in the
court’s decision to exclude expert testimony on the issues presented in the
B. Claims To Be Construed
The parties identify five claim limitations that require the Court’s
interpretation. As a preliminary matter, Toro argues that Bobcat has identified
three irrelevant claim terms for construction, two of which were also untimely
disclosed to Toro.
The Court’s Pretrial Scheduling Order provides, in pertinent part: “On or
before April 15, 2007, the parties shall simultaneously exchange a list of claim
terms, phrases, or clauses which each party contends should be construed by the
Court.” [Docket No. 20] The Order also required the parties to conduct a
conference on claim construction issues, including a mutual exchange of
proposed constructions and the supporting intrinsic or extrinsic evidence, no
later than April 29, 2007.
First, Toro notes that, in Bobcat’s List of Claim Terms that Should Be
Construed by the Court, Bobcat identified element (d)—“open space . . . large
enough to permit the loader arms to fit down around and receive therebetween at
least an upper portion of the hood or shroud of the internal combustion engine
when the loader arms are in the lowermost position”—as requiring construction.
Because Bobcat previously admitted that element (d) is present on the accused
loaders, Toro argues that this term is not in dispute and that no construction by
the Court is required. The parties have not listed this term in their Joint Claim
Construction Statement or presented any proposed interpretation of its language.
This limitation is no longer in dispute; therefore, Toro’s argument is moot.
Second, Toro complains that Bobcat first identified two claim terms
requiring construction on the morning of the claim construction conference
ordered by the Court. Toro alleges that on the day of the conference, Bobcat
identified (1) the term “left and right endless drive tracks” described in element
(c); and (2) the term “substantially unobstructed viewing” described in element
(d). Because Bobcat previously admitted that both claim elements (c) and (d) are
present on the accused loaders, and because Bobcat failed to identify either of the
terms in its pre‐conference list of claim terms to be construed by the Court, Toro
objects to their inclusion in the Joint Claim Construction Statements.
Bobcat asserts that it was unaware of any dispute regarding the meaning of
the two terms until after it deposed Joseph Walto, Toro’s lead inventor, four days
before the scheduled claim construction conference. When concerns about the
meaning of the terms were raised at the deposition, Bobcat claims it identified the
potential dispute to Toro’s counsel within three business days. Subsequently, the
parties exchanged a series of proposed Joint Claim Construction Statements and
conferred about the meaning of “endless drive tracks.” According to Bobcat, the
parties were unable to agree on a construction for the two terms in dispute.
The purpose of the Court’s Order is to ensure the parties identify disputed
claim terms and meet and confer so that a finalized list of disputed terms can be
presented to the Court before the Markman hearing. The Order did not preclude
a party from deviating from its initial list of disputed terms. In addition, Toro
presents no evidence that Bobcat acted in bad faith when it first identified the
two terms on the morning of the claim construction conference. Any prejudice to
Toro was cured during subsequent discussions over the contents of the parties’
Joint Claim Construction Statement. Therefore, the disputed terms in the parties’
Joint Claim Construction Statement are addressed in their entirety below.
C. Disputed Term 1: “Walk‐Behind Loader”
The preamble to claim 3 identifies the invention as a “walk‐behind loader.”
Toro proposes that the Court does not need to construe this term because it is
clear. In the alternative, Toro proposes that the Court construe the term “walkbehind
loader” as follows: “A loader the operator can walk behind during
operation in a manner similar to that of a walk‐behind lawn mower, without
riding on or being carried by the loader.” Bobcat proposes that the Court
construe the term as follows: “A loader that is configured to permit an operator
to reach and operate the loader’s control system while in a position walking
behind the loader as at least one position from which an operator can reach and
operate the controls.”
1. Whether the Preamble Limits the Claim
Bobcat first argues that, because it is part of the preamble, the term “walkbehind
loader” is not a claim limitation and does not require construction. Toro
responds that the specification, prosecution history, and the drafter’s intention all
demonstrate that the term “walk‐behind loader” is a claim limitation, essential to
confer meaning to the patent claim.
“In considering whether a preamble limits a claim, the preamble is
analyzed to ascertain whether it states a necessary and defining aspect of the
invention, or is simply an introduction to the general field of the claim.” On
Demand Mach. Corp. v. Ingram Indus., 442 F.3d 1331, 1343 (Fed. Cir. 2006). The
question is “whether the preamble is necessary to give life, meaning and vitality
to the claims or counts.” Id. (citations omitted). The Federal Circuit has
While it is true that preamble language is often treated as
nonlimiting in nature, it is not unusual for this court to treat
preamble language as limiting . . . . Preamble language that merely
states the purpose or intended use of an invention is generally not
treated as limiting the scope of the claim. However, we have stated
that there is no ‘litmus test’ for determining whether preamble
language is limiting. To the contrary, we have stated that whether to
treat a preamble as a claim limitation is determined on the facts of
each case in light of the claim as a whole and the invention described
in the patent.
If the body of the claim sets out the complete invention, the
preamble is not ordinarily treated as limiting the scope of the claim.
However, the preamble is regarded as limiting if it recites essential
structure that is important to the invention or necessary to give
meaning to the claim. That is, if the claim drafter chooses to use both
the preamble and the body to define the subject matter of the
claimed invention, the invention so defined, and not some other, is
the one the patent protects. Moreover, when the limitations in the
body of the claim rely upon and derive antecedent basis from the
preamble, then the preamble may act as a necessary component of
the claimed invention.
Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006) (citations omitted).
Moreover, clear reliance on the preamble during prosecution
to distinguish the claimed invention from the prior art transforms
the preamble into a claim limitation because such reliance indicates
use of the preamble to define, in part, the claimed invention.
Without such reliance, however, a preamble generally is not limiting
when the claim body describes a structurally complete invention
such that deletion of the preamble phrase does not affect the
structure or steps of the claimed invention. Thus, preamble
language merely extolling benefits or features of the claimed
invention does not limit the claim scope without clear reliance on
those benefits or features as patentably significant.
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808‐09 (Fed. Cir.
2002) (citations omitted).
Bobcat asserts that claim 3 defines a structurally complete machine and the
preamble term “walk‐behind loader” does not provide antecedent basis for any
term in the body of the claim. Instead, Bobcat claims that the preamble merely
states a purpose or intended use for the invention.
Toro cites several references to the “walk‐behind” feature of the invention
in the specification and the prosecution history. (‘223 Patent, Col. 1, ll. 7‐9; id.,
Col. 1, ll. 66‐67; id., Col. 2, ll. 35‐39; id., Col. 4, ll. 26‐29; id., Col. 5, ll. 58‐61; ‘223
Patent, File History, T000260‐61, Ex. L to Lafeber Decl.) The evidence shows that
Toro cited and relied upon the “walk‐behind” feature to distinguish the
invention over prior art.
Claim 10 of the ‘223 Patent’s parent application was the predecessor to
current claim 3. (See U.S. Patent App. Serial No. 09/560,308, Ex. M to Lafeber
Decl.) Claim 10 was initially rejected by the examiner as being anticipated by
U.S. Patent No. 359,497 (“Rayner Patent”). (Sept. 18, 2001 Office Action, Parent
U.S. Patent App. Serial No. 09/560,308, T000376, Ex. M to Lafeber Decl.) To
overcome this rejection, the inventor distinguished the subject invention on the
grounds that “[t]he patent to Rayner does not show a loader which the operator
can easily walk behind. (Feb. 19, 2002 Response to Office Action, T000386, Ex. M
to Lafeber Decl.) During prosecution of the ‘223 Patent, the same issue was
raised and the same argument was made to distinguish the Rayner Patent. (Aug.
21, 2003 Response to Office Action, T000261, Ex. L to Lafeber Decl. (“As pointed
out in the parent application, Rayner is not directed to a tracked loader or a
loader in which the operator walks behind the loader. Clearly, Rayner is a ride
Bobcat argues that Toro could not have relied on the walk‐behind loader
distinction during prosecution to distinguish the Rayner Patent, because the PTO
viewed the Rayner Patent as encompassing a loader that a tall operator could
operate while walking behind the invention. This statement by the PTO was
made during the prosecution of the ‘850 Patent, which is a continuation‐in‐part of
the ‘223 Patent. (See U.S. Patent App. Serial No. 10/804,850, filed Mar. 19, 2004,
Ex. H, N to Kujak Decl.) A patent’s prosecution history consists of the “entire
record of the proceedings in the Patent Office from the first application papers to
the issued patent.” Autogiro Co. of Am. v. United States, 384 F.2d 391, 398 (Ct.
Cl. 1967). Therefore, this portion of the prosecution history of the ‘850 Patent,
generated in 2006, is extrinsic to the ‘223 Patent, issued on March 23, 2004. The
statement in question was made by the PTO after Toro used the disputed term to
distinguish its patent from the Rayner Patent; nothing prevented Toro from
relying on the term “walk‐behind loader” during the prosecution of its ‘223
The Federal Circuit’s general rule that the preamble is not limiting does not
apply here. Toro relied on the walk‐behind distinction during prosecution to
distinguish prior art and the preamble is necessary to give meaning to claim 3.
See In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347‐48 (Fed. Cir. 2002)
(holding the preamble term “rich in glucosinolates” was limiting, because the
patentee relied on the preamble to distinguish the prior art in prosecution). The
term “walk‐behind loader” is a claim limitation and, thus, requires construction
by the Court.
2. Proper Construction of the Term “Walk‐Behind Loader”
Toro claims that language of the specification supports its interpretation of
“walk‐behind loader.” The patentee defined the walk‐behind feature as follows:
“As is clearly illustrated in Fig. 1, the operator is not carried by and does not ride
on loader 2 itself. Instead, the operator walks behind loader 2 during operation
in a manner similar to that of a walk‐behind lawn mower.” (‘223 Patent, Col. 4, ll.
Bobcat argues that Toro’s construction is ambiguous and does not resolve
the issue of whether walking behind is the only mode of operation. Bobcat
argues that the specification explicitly states that the loader is not limited to this
mode of operation. Bobcat notes the following statement: “Alternatively, if so
desired, the operator could be carried on loader 2 in a seated or standing
position.” (‘223 Patent, Col. 4, ll. 39‐40.) Bobcat is correct that other forms of
operation are clearly contemplated in the specification.
Bobcat also points to the rejection of claim 3 as anticipated by the Rayner
Patent. Toro responded to the PTO’s rejection by arguing that the operator only
rides on the Rayner loader, in order to distinguish it from Toro’s invention. Toro
also argued that the Rayner Patent would not anticipate claim 3 even if Rayner
were configured to allow the operator to walk behind the loader. (T000261, Ex. L
to Lafeber Decl.) According to Bobcat, this argument clarifies that Toro
understood that operating the loader while walking behind it was not the
exclusive method of operation for its invention.
Bobcat and Toro agree that claim 3 is not limited to embodiments for
which the sole mode of operation is to walk behind the device. Both proposed
constructions allow for the possibility of other embodiments. However, the
Court will adopt Toro’s construction. Toro’s construction is derived from the
language in the specification and clearly and simply explains the concept of the
term at issue. Despite Bobcat’s protests, Toro’s construction does not improperly
limit the term to a loader that the operator must walk behind to operate.
Therefore, the Court concludes that the correct interpretation of the term “walkbehind
A loader the operator can walk behind during operation in a manner
similar to that of a walk‐behind lawn mower, without riding on or
being carried by the loader.
D. Disputed Term 2: “Endless Drive Tracks”
Element (c) of claim 3 designates “left and right endless drive tracks” as a
limiting feature of the claimed invention. Element (c) states: “left and right
endless drive tracks carried on the frame for propelling the frame in forward and
reverse directions, the drive tracks being powered by the internal combustion
engine.” Toro asserts that no construction is required for this term. Bobcat
asserts that the correct construction is that “Tracks are at least one method of
propelling the loader, but does not exclude the presence of other modes of
propulsion such as wheels. The endless tracks need not meet any durability
Bobcat identifies two main issues concerning the claim term “left and right
endless drive tracks.” First, Bobcat questions whether this claim term means that
the loader has dedicated tracks—that is, that tracks are the only method for
propelling the loader frame in forward and reverse directions. Second, Bobcat
questions whether the tracks referred to are “durable” tracks. If the phrase “left
and right endless drive tracks” means that the tracks are “durable,” Bobcat
asserts that the term durable is ambiguous and incapable of interpretation as a
Toro proposes no construction of its own. Instead, Toro argues that
Bobcat’s justifications for identification of this issue lack merit. According to
Toro, Bobcat gives two reasons why construction is necessary: (1) to establish this
limitation’s presence on prior art “rubber over tire tracks” machines; and (2) due
to Toro’s contention that its experimental use and testing included testing
durability for use in outdoor, relatively hostile, debris‐laden environments. In
regard to the first justification, Toro argues that the prior art statement admits
that such element is present on the subject “rubber over tire tracks” prior art.
(Toro Prior Art Statement, Ex. I of Lafeber Decl.) In regard to the second
justification, Toro asserts that it only made the durability claim in response to
Bobcat’s contention that the use and testing of prototypes gave rise to an on‐sale
bar under 35 U.S.C. § 102(b). See EZ Dock v. Shafer Sys., Inc., 276 F.3d 1347, 1351
(Fed. Cir. 2002) (stating the on‐sale bar applies when the claimed invention is the
subject of a commercial sale and ready for patenting prior to the critical date).
“[E]vidence that the public use or sale of the patented device was primarily
experimental may negate an assertion of invalidity.” Monon Corp. v. Stoughton
Trailers, Inc., 239 F.3d 1253, 1258 (Fed. Cir. 2001) (citation omitted). Toro argues
that durability experimentation does not constitute a commercial sale, and testing
of features inherent to the claimed invention does not create claim limitations
requiring construction by the Court.
2. Dedicated Tracks
First, Bobcat notes that claim 3 recites a walk‐behind loader that
“comprises . . . left and right endless tracks carried on the frame for propelling
the frame in forward and reverse directions.” Because the word “comprise” in a
patent claim “means that the named elements are essential, but other elements
may be added and still form a construct within the scope of the claim,”
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997), Bobcat claims
that endless tracks are not limited to dedicated tracks. In addition, Bobcat cites
the following language from the specification: “Various modifications of this
invention will be apparent to those skilled in the art. For example, control system
24 is effective for controlling traction systems 27 having independent left and
right drive motors regardless of whether the ground engaging, traction members
comprise tracks 28 or wheels.” (‘223 Patent, Col. 12, ll.47‐52.) Thus, Bobcat
argues that the specification itself expressly indicates that the inventors
contemplated a method of propulsion other than by the endless tracks, such as
Bobcat also cites evidence from the prosecution history to support its
construction. Both the parent and continuation applications included a claim
dependent on claim 3, which recited: “The walk behind loader of claim ,
wherein the traction system comprises left and right endless drive tracks carried
on the frame.” (T000335, Ex. J to Kujak Decl.; T000221, Ex. K to Kujak Decl.)
Although the dependent claim was eventually incorporated into claim 3, Bobcat
argues that Toro did not modify the dependent claim to make tracks the
exclusive mode of propelling the loader. (T00256‐263, Ex. K to Kujak Decl.)
Finally, Bobcat offers deposition testimony from Walto, who agreed that a
loader with non‐dedicated tracks has “left and right endless tracks” as that term
is used in claim 3 of the ‘223 patent.
Toro does not dispute that “left and right endless tracks” are present on the
“rubber over tire tracks” prior art. Toro argues, rather, that Bobcat’s construction
is an attempt to encompass loaders that use wheels alone for propulsion within
the meaning of the claim term. Toro is correct that such an interpretation is
without merit, because it would render the term “tracks” meaningless. See
Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)
(“A claim construction that gives meaning to all the terms of the claim is
preferred over one that does not do so.”) (citations omitted).
Toro also argues that there is no support in the intrinsic evidence for
including “wheels” in the definition of endless drive tracks.
The construction of this term must clarify that the invention contemplates
“rubber over tire tracks,” but does not contemplate wheel‐only loaders. The
Court concludes that Bobcat’s proposed construction that “tracks are at least one
method of propelling the loader, but does not exclude the presence of other
modes of propulsion, such as wheels,” communicates this concept. The Court
concludes that this proposed construction would not mislead the jury into
thinking that use of either tracks or wheels (without tracks) are encompassed by
the invention, because it clearly indicates that the tracks are, at a minimum,
present as a method of propelling the loader but that it is possible that additional
modes of propulsion could also be included.
The durability issue arises because Bobcat raises an on‐sale bar defense.
Toro contends that it was merely conducting testing and experimentation of
certain prototypes, including durability testing related to the invention’s drive
Testing features inherent to the claimed invention, including durability in
the product’s natural environment, does not constitute a commercial sale. EZ
Dock, 276 F.3d at 1353. Therefore, in order to support its future on‐bar sale
argument, Bobcat seeks to have the Court hold that the endless drive tracks do
not need to meet any durability standard.
Bobcat argues that there is nothing in the intrinsic evidence to support a
claim that the term “left and right endless drive tracks” implies a durability
requirement and asks, in its claim construction brief, that the Court construe the
claim term with corresponding language.
Toro argues that “durability” is an inherent feature of the claimed
invention and, therefore, is not a claim limitation requiring construction by the
Court. Toro cites multiple cases in which courts examined the issue of durability
in connection with the on‐sale bar defense, not as part of claim construction. See,
e.g., EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1353‐54 (Fed. Cir. 2002);
Seal‐Flex, Inc. v. Athletic Track & Court Constr., 98 F.3d 1318, 1322‐24 (Fed. Cir.
The issue of whether testing related to the features inherent to the claimed
invention, including durability, is a question to be addressed on the full record,
not as part of a Markman hearing. It is not an appropriate inquiry for claim
construction. Therefore, although the Court adopts the first sentence of Bobcat’s
proposed construction of “endless drive tracks,” it will not include the final
sentence regarding durability.
Therefore, the Court concludes that the correct interpretation of the term
“endless drive tracks” is that
Tracks are at least one method of propelling the loader but does not
exclude the presence of other modes of propulsion, such as wheels.
E. Disputed Term 3: “Providing Substantially Unobstructed
The parties disagree about the meaning of claim 3’s requirement, in
element (d), of “the open space between the loader arms providing substantially
unobstructed viewing towards the front in elevated positions of the loader arms
when the open space is raised in front of an operator’s face.” They do agree that
the term “open space between the loader arms” is clear, so the dispute focuses on
the meaning of the term “substantially unobstructed viewing.” Toro proposes
that the Court find that the language is unambiguous and no construction is
needed or, in the alternative adopt the following construction: “providing the
operator with good sight lines to view the front of the loader when the loader
arms are in an elevated position and the open space is raised in front of an
operator’s face.” Bobcat proposes the following construction: “providing a view
that is either entirely unobstructed or largely but not wholly unobstructed.”
Toro argues that its proposed construction requiring good sight lines is
bolstered by the specification and prosecution history. The specification states:
Another problem with the Rohrbaugh loader is the use of an
extensible and retractable boom to mount the ground engaging
attachment. This boom is so large and is so positioned on the loader
that it substantially obstructs the view of the operator if the operator
is attempting to work the ground immediately in advance of the
loader. The operator simply cannot see what he is doing with
attachment when using the Rohrbaugh loader. . . . Thus, there is
also a need in the art for a tracked, walk‐behind loader that provides
the operator with good sight lines to the attachment secured to the
loader and which is as simple and durable as possible.
(‘223 Patent, Col. 1, ll. 55– Col. 2, ll. 1‐2 (emphasis added).) To distinguish the
invention from another loader, Toro made a similar argument: “When the
[Maximan] loader arms are pivoted upwardly, the connecting panel would block
the operator’s view to the front.” (Aug. 21, 2003 Response to Office Action, ‘223
Patent, File History, T000261, Ex. L to Lafeber Decl.)
Bobcat responds that Toro’s construction should be rejected, because the
modifier “good” is an indefinite and subjective term that is incapable of further
definition. The intrinsic evidence is devoid of an objective standard for
determining the meaning of the phrase “good sight lines.” Bobcat argues that
such a construction would be interpreted differently by those of skill in the art, as
they attempted to guess how “good” is enough to satisfy the claim limitation.
See 35 U.S.C. § 112 (requiring that patent claims be definite); Datamize, LLC v.
Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“The scope of claim
language cannot depend solely on the unrestrained, subjective opinion of a
particular individual purportedly practicing the invention.”) (citation omitted).
In addition, Bobcat argues that such ambiguity would prevent the public, and
Toro’s competitors, from ascertaining the scope of the claim and the subject
matter of the patent.
Bobcat relies on the ordinary sense of the term “substantially” for its
construction, that is, “being largely but not wholly that which is specified.” This
definition is found in the dictionary. Merriam Webster’s Collegiate Dictionary
1174 (10th ed. 1995). Additionally, the Federal Circuit has previously applied
such a definition to the word “substantially” on at least two other occasions. See
LNP Eng’g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1354‐55 (Fed.
Cir. 2001) (construing term “substantially completely wetted” to mean “[l]argely,
but not necessarily wholly, surrounded by resin”); Ecolab, Inc., v. Envirochem,
Inc., 264 F.3d 1358, 1369 (Fed. Cir. 2001) (construing term “substantially uniform”
to mean “largely, but not wholly the same in form”).
The Court concludes that, based on the evidence currently before the
Court, the term “good” in “good sight lines” is overly vague. Bobcat’s proposed
construction conforms to the ordinary meaning of the term “substantially” and
has been previously adopted by the Federal Circuit at least twice. It fits within
the context of the ‘223 Patent. Therefore, the Court adopts Bobcat’s construction.
The Court concludes that the correct interpretation of the term “providing
substantially unobstructed viewing” is
Providing a view that is either entirely unobstructed or largely but
not wholly unobstructed.
F. Disputed Claim 4: “Actuator Extending Between the Loader Arms”
1. Parties’ Proposed Constructions
Element (g) of claim 3 requires “at least one actuator extending between
the loader arms and the attachment for pivoting the attachment relative to the
loader arms.” Toro proposes that no construction of this term is necessary or, in
the alternative, that the correct interpretation of this term is “at least one
mechanical device for moving or controlling something connecting directly or
indirectly the loader arms and the attachment for pivoting the attachment
relative to the loader arms.”
Bobcat asserts that the correct interpretation of the term is “at least one
actuator stretching or reaching between the loader arms and the attachment for
pivoting the attachment relative to the loader arms without any intervening
2. Definition of “Actuator”
Element (g) has two components at issue. First, it requires the presence of
an “actuator” that pivots the attachment. Second, the actuator relates to the
loader arms and the attachment by “extending between” the two structures. In
the Joint Claim Construction Statement, Toro and Bobcat offer similar definitions
of the term “actuator.” According to Toro, an actuator is “a mechanical device
for moving or controlling something.” Bobcat does not dispute that Toro’s
definition is accurate, but asserts that simply leaving the word “actuator” in the
definition is less confusing. The Court concludes that Toro’s accurate definition
of “actuator” is not confusing and will adopt it.
It is the construction of the phrase “extending between” that lies at the
heart of the parties’ dispute over this limitation.
3. Dictionary Definition
Bobcat contends that its proposed construction of “extending between” is
derived from the ordinary meaning of the claim language. In fact, the parties
agree that the word “extend” is a non‐technical term and means “to stretch out in
distance, space, or time.” See Merriam‐Webster’s Collegiate Dictionary 411 (10th
ed. 1995). The parties differ, however, regarding whether the meaning precludes
the existence of an intervening structure, such as a cross member.
Bobcat also asserts that the plain and ordinary meanings of the terms
“extending” and “connecting” are different. To “connect” is “to join or fasten
together usually by something intervening.” Merriam‐Webster’s Collegiate
Dictionary 244 (10th ed. 1993). In contrast, to “extend” is “to stretch out in
distance, space or time.” Id. 411. However, the ordinary definition of “extend”
does not address one way or the other the question of whether intervening
structure is permitted.
4. Two Actuators Required in Claim 3
Claim 3 requires two actuators – the loader arm actuator, found in element
(f), and the attachment actuator, found in element (g). (‘223 Patent, Col. 14, ll. 26‐
32.) The loader arm actuator extends “between the loader arms and the frame,”
while the attachment actuator extends “between the loader arms and the
5. Loader Arm Actuator in Figure 1
Bobcat argues that the proper construction of this claim term requires there
to be an actuator directly extending between the loader arms and the attachment,
with no “intervening structures” between them. Bobcat notes that the
description of the preferred embodiment depicted in Figure 1 of the ‘223 Patent
describes two claimed actuators: one to pivot the loader arms (limitation 3(f)) and
one to pivot the ground grooming or working attachment (limitation 3(g)). (‘223
Patent, Col. 2, ll. 29‐35.) According to Bobcat, the loader arm actuator reaches or
stretches between the frame and the loader arms, occupying the space between
those two structures without any intervening structures. Bobcat claims that the
depiction of the loader arm actuator, from claim limitation 3(f) in Figure 1
supports it proposed construction of “extending between.”
Figure 1 reveals that the loader arm actuator is connected to the loader arm
by a plate and pin assembly that is welded to the loader arm. Bobcat baldly
asserts that the plate and pin assembly is part of the loader arm and the crossmember,
in Figure 1, is not part of the loader arm. However, the Court finds no
reason to adopt this conclusion. Because the plate and pin assembly is an
“intervening structure,” similar to the crossbar that connects the actuator with
the loader, the Court rejects Bobcat’s proposed construction. Moreover, element
(f) is not at issue here; the relevant element is element (g). Figure 1 depicts the
limitation 3(g) as an actuator extending between the loader arms and the
attachment via a cross‐member spanning the loader arms.
6. Attachment Actuator in Figure 1
Bobcat further argues that description of the attachment actuator in Figure
1 is a “second embodiment” of claim limitation 3(g), which shows the utilization
of a cross‐member to connect the attachment actuator with the loader arms.
Bobcat locates two distinct embodiments in the ‘223 patent’s specification. First,
in Column 2, at lines 34‐36, the specification describes: “At least one actuator
extends between the loader arms and the attachment for pivoting the attachment
relative to the loader arms.” Later, in Column 4, at lines 6‐9, the specification
states: “A hydraulic tilt cylinder 18 extends between attachment 16 and a
cross‐member 19 extending between the loader arms 12 to vary the angle of
inclination of attachment 16 relative to loader arms 12.” Thus, Bobcat claims that
its proposed construction is correct and includes at least one embodiment of the
invention described in the patent’s specification. Bobcat acknowledges that,
generally, a claim construction must “encompass at least one disclosed
embodiment.” Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1355 (Fed.
Cir. 1998) (citation omitted). However, it claims that its proposed construction
does include at least one embodiment described in the specification.
The Court concludes that the ‘223 Patent contains only one preferred
embodiment. One of the alleged embodiments is in column 2, at lines 34‐36 of
the specification, which describes the attachment actuator with essentially the
same language used in claim 3(g). This language appears in the section of the
patent entitled “Summary of the Invention.” The other alleged embodiment (Col.
4, ll. 6‐9) is merely a more detailed description of the attachment actuator.
Additionally, this different claim element still depicts “intervening structure.”
The sole preferred embodiment depicted in Figure 1 in the patent shows an
actuator that stretches or reaches between the loader arms and the attachment,
with an intervening crossbar.
Courts “normally do not interpret claim terms in a way that excludes
embodiments disclosed in the specification.” Oatey Co. v. IPS Corp., 514 F.3d
1271, 1276 (Fed. Cir. 2008) (citations omitted). In this case, Bobcat’s proposed
construction would exclude the sole preferred embodiment depicted in the
specification, a result which the Federal Circuit has held “is rarely, if ever,
correct.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
7. Claim Differentiation
Bobcat also contends that Toro’s inclusion of the word “connecting” in its
proposed definition renders dependent claim 7 meaningless. Dependent claim 7
The walk‐behind loader of claim 3, wherein the at least one actuator
extending between the loader arms and the frame is pivotally
connected at one end to one of the uprights and at an opposite end
to one of the loader arms.
(‘223 Patent, Col. 14, ll. 53‐56). Therefore, claim 7 requires the presence of a
loader arm actuator that not only extends between the loader arms and the frame,
but also is “connected” to the frame and the loader arms. If Toro intended the
words “extending” and “connecting” to be interchangeable, Bobcat argues,
dependent claim 7 would be meaningless. Bobcat also asserts that the narrower
claim language in Toro’s pending continuation‐in‐part application demonstrates
that claim 3 of the ‘223 Patent does not cover an embodiment using a cross
The Court rejects Bobcat’s argument. “That, under the doctrine of claim
differentiation, limitations of one claim are not read into unlimited claims does
not conversely mean that those limitations are read out of those unlimited claims.
Cf. Tandon Corp. v. U.S. Intern. Trade Com’n, 831 F.2d 1017, 1021‐24 (Fed. Cir.
1987) (where claims 1 and 12 described a ‘first transducer’ and claim 5 a ‘first
non‐gimballed transducer,’ Commission, in finding no infringement, correctly
rejected plaintiff’s argument that ‘first transducer’ in claims 1 and 12 had to be
gimballed).” Gen. Elec. Co. v. Hoechst Celanese Corp., 698 F. Supp. 1181, 1185
(D. Del. 1988).
8. Definiteness of Term “Directly or Indirectly”
Bobcat also argues that Toro’s proposed construction eliminates a
limitation because, no matter where the actuator is located on the loader, it is
“directly or indirectly” connected to both the attachment and the loader arms.
Bobcat concludes that all components of the loader are connected “directly or
indirectly” to all other components.
Bobcat rejects Toro’s use of the phrase “directly or indirectly” as an
improper claim interpretation, citing Ethicon Endo‐Surgery, Inc. v. United States
Surgical Corp., 93 F.3d 1572 (Fed. Cir. 1996). In Ethicon, the Federal Circuit held
that the term “connected to” should not “be read broadly to include two distant
elements which are ‘connected’ by intervening elements” and could not “include
elements which are connected directly or indirectly.” Id. at 1578. However,
Ethicon does not apply in this case. In Ethicon, the court “acknowledge[d] that
the term ‘connected to’ could, in other contexts, be broadly construed.” Id.
However, it noted that in the case before it, the broad definition sought to include
two “distant elements” connected only by way of multiple intervening structures;
and there was no support in the intrinsic evidence for such an interpretation. Id.
In the particular invention at issue, the term “connected to” joined a restraining
member with longitudinal slots, so that it would only make sense for the two
items to be related so that the restraining member locked the longitudinal slots.
Subsequent district courts have declined to apply Ethicon’s ruling where the
intrinsic evidence supports a “direct or indirect” connection. See, e.g.,
Sulfur‐Tech Water Sys., Inc. v. Kohlenberg, 162 F. Supp. 2d 743, 747 (N.D. Ohio
2001) (“Although ‘connected to’ in Ethicon was interpreted to mean proximate, or
in direct contact with, the court made clear that the phrase ‘connected to’ did not
always convey such a limited meaning. . . . This is such a case.”); Silicon
Graphics, Inc. v. n Vidia Corp., 58 F. Supp. 2d 331, 346 (D. Del. 1999) (interpreting
“coupled” to mean “directly or indirectly connected” partially because preferred
embodiment revealed intervening structure).
In this case, Toro’s definition seeks to include close and integral
components that are in close proximity. In addition, Bobcat’s proposed
interpretation is inconsistent with the only preferred embodiment depicted in the
patent and should not be adopted.
Bobcat’s proposed interpretation excludes the sole preferred embodiment
depicted in the specification and cannot be used to construe the disputed claim
term. In addition, the commonly understood meaning of the phrase “extending
between” neither requires nor precludes the existence of any intervening
structure, and Bobcat has presented no evidence of such dictionary definition.
Here, Toro’s definition does not seek to include two distant elements connected
by multiple structures. The definition is logical and clear in light of the intrinsic
evidence and the invention disclosed. Therefore, the Court adopts Toro’s
The Court concludes that the correct interpretation of the phrase “at least
one actuator extending between the loader arms and the attachment for pivoting
the attachment relative to the loader arms” is
At least one mechanical device for moving or controlling something
connecting directly or indirectly the loader arms and the attachment
for pivoting the attachment relative to the loader arms.
G. Disputed Term 5: “Comfortably”
Element (h) of claim 3 requires:
(h) a control system positioned at the rear of the frame and
comprising a control handle configured to be gripped and
manipulated by a standing operator walking behind the frame
during operation of the loader, wherein the control system is located
sufficiently close to the rear of the frame and the rear of the frame is
configured to permit the standing operator walking behind the
frame to comfortably reach and operate the control system with the
operator’s arms being bent at the elbow.
(emphasis added.) The parties disagree on whether the term “comfortably” is
capable of construction as a patent claim limitation.
Toro asserts that the term is clear and no further construction is required.
Bobcat asserts that the term “comfortably” is indefinite and incapable of
construction. Bobcat argues that the term is indefinite because it is inherently
subjective and fails adequately to notify the public of the scope of claim 3.
The claims of a patent define the scope of the invention. The second
paragraph of 35 U.S.C. § 112 requires that claims particularly point out and
distinctly claim the subject matter of the invention. “[T]he purpose of the
definiteness requirement is to ensure that the claims delineate the scope of the
invention using language that adequately notifies the public of the patentee’s
right to exclude.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005) (citation omitted). “The definiteness requirement, however, does
not compel absolute clarity. Only claims not amenable to construction or
insolubly ambiguous are indefinite.” Id. (citations omitted). “[C]lose questions
of indefiniteness in litigation involving issued patents are properly resolved in
favor of the patentee.” Exxon Research & Eng’g Co. v. United States, 265 F.3d
1371, 1380 (Fed. Cir. 2001).
Bobcat also relies on extrinsic evidence—the deposition testimony
Walto—to make its case for indefiniteness. However, “testimony of an inventor
and his attorney concerning claim construction is . . . entitled to little or no
consideration.” Bell & Howell Document Mgmt. Prods. Co. v. Altek Sys., 132
F.3d 701, 704 (Fed. Cir. 1997).
Here, the claim language in element (h), the specification, and the
prosecution history explain how the comfort is achieved—by allowing the
operator’s arms to remain “bent at the elbow” during operation. The Court
concludes that the term “comfortably” is clear and definite within the context of
claim element (h) and requires no construction by the Court. Cf. Smartdisk Corp.
v. Archos, S.A., Civil Action No. 2‐05‐CV‐101 (TJW), 2006 WL 3448645, at *7 (E.D.
Tex. Nov. 28, 2006) (holding that the phrase “housing which can be comfortably
held in a user’s palm . . . as written and in the context of the whole patent, can be
understood by one of ordinary skill in the art” and was not indefinite, so no
construction was required).
In this case, the surrounding claim language describes the benefit of
positioning the control system to allow a walking operator to keep his arms bent
at the elbows, preventing discomfort, stress, or tension. The prosecution history
further supports a finding that the term is not indefinite. The original draft of
element (h) did not require that the control system be positioned to allow
operation with arms “bent at the elbow” in a “comfortable” manner. The
patentee added these terms to overcome obviousness and anticipation rejections
in light of the Rayner Patent. (Parent U.S. Patent App. Serial No. 09/560,308,
Amended Original Claim 10(h), T000389‐T000390, Ex. M to Lafeber Decl.) To
support this change and distinguish the Rayner Patent, the patentee explained:
“An operator walking behind the Rayner loader could reach the controls, if at all,
only by extending his arms straight out from his shoulders in an attempt to
stretch and reach the controls. This would be cumbersome and tiring.” (Id. at
The term “comfortably” requires no construction, and the Court rejects
Bobcat’s indefiniteness argument.
For the reasons stated, IT IS HEREBY ORDERED:
The claim of the patent at issue in this case should be construed in a
manner consistent with the definitions set forth by the Court in this
Memorandum of Law & Order.
Dated: April 20, 2008 s / Michael J. Davis
Judge Michael J. Davis
United States District Court
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