MINNEAPOLIS PERSONAL INJURY ATTORNEY  
attorney Michael E. Douglas Attorney at Law
  Personal Injury Attorney
  St. Paul Workers Compensation Lawyer work comp attorney
 > About Me
   :: My Commitment
   :: Our Community
   
 > Legal Practice Areas
  twin cities comsumer lawPersonal Injury
   :: Traffic Accidents
   :: Medical Malpractice
   :: Social Security Disability
   :: Premises Liability
   :: Wrongful Death
   :: Dog Bite
   :: Back/Spinal/Neck Injuries
   :: Whiplash
   :: Defective Medical Devices
   :: Defective Drugs
  Minnesota Personal InjuryWorkers Compensation
  St. Paul personal injuryConsumer Law
   :: Debt Collection
   :: Repossessions
   :: Foreclosures
   :: Loan, Credit, Banking
   :: Arbitration Agreements
   :: Deception and Fraud
   :: Auto Fraud / Lemon Law
   :: Warranties
   :: Predatory Lending
   
 > Contact Us
   :: Contact Us
 

Law Offices of Michael E. Douglas
P.O. Box 251551
Woodbury, Minnesota 55125-6551
   

 Saint Paul Lawyer
 
 mdouglas@injurylawtwincities.com

 

MTS Systems Corp. v. Hysitron, Inc.: US District Court : PATENT - "base" meaning foundation, not reference datum

1
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
________________________________________________________________
MTS SYSTEMS CORPORATION,
a Minnesota corporation,
Plaintiff,
v. MEMORANDUM OF LAW & ORDER
Civil File No. 06‐3853 (MJD/AJB)
HYSITRON, INCORPORATED,
a Minnesota corporation,
Defendant.
________________________________________________________________
Brent A. Lorentz, Daniel J. Kelly, David P. Pearson, and Karen A. Brennan,
Winthrop & Weinstine, PA, Counsel for Plaintiff.
Allen W. Hinderaker, Brian N. Platt, Tong Wu, and Joshua P. Graham, Merchant
& Gould, P.C., Counsel for Defendant.
_________________________________________________________________
I. INTRODUCTION
This matter is before the Court on the parties request for a claim
construction hearing, found in their Joint Claim Construction Statement. [Docket
No. 134] The Court heard oral argument on March 13, 2008.
2
II. BACKGROUND
A. Factual Background
1. The Parties
Plaintiff MTS Systems Corporation (MTS) is a Minnesota corporation
with its principal place of business in Minnesota. It is in the business of
manufacturing precision measurement devices.
Defendant Hysitron, Incorporated, (Hysitron) is a Minnesota corporation
that sells nanotensile measuring devices.
2. The Patent
The case involves United States Patent No. 6,679,124 B2 (the 124 Patent),
issued January 20, 2004. This utility patent describes a tensile testing device.
In 1998, Dr. Warren Oliver, General Manager of MTSs Nano Instruments
division and Ph.D. in materials science, discovered that his work on indentation
devices could be adapted to the field of tensile testing devices. (Pearson Decl. Ex.
4, Oliver Dep. 71‐72; Oliver Decl. 1‐2, 4.) According to MTS, before this,
tensile testing devices were limited in their ability to measure the tensile
properties of fine fibers. (Oliver Decl. 4.)
Oliver patented his invention and it was issued as the 124 Patent, titled
3
Statistically Rigid and Dynamically Compliant Material Testing System. The
device holds a specimen in tension through the use of specimen holders which
attach at each end of the material, and the instrument measures the materials
response as multiple force components are applied to the specimen.
3. Claims at Issue
MTS asserts that Hysitron infringes claims 1, 2, 6, 7, 8, 15, and 16 of the 124
Patent. The three disputed terms, base, coupled to, and fixedly coupled to,
appear in claims 1, 2, 6, 7, and 8.
The text of the claims at issue in this Markman hearing provides:
1. A material testing system comprising:
a base;
a first specimen holder;
a second specimen holder, the first specimen holder and the second
specimen holder being adapted to hold a specimen in tension;
a first displacement sensor measuring displacement of the first
specimen holder relative to the base along a common axis between
the first and second specimen holders; and
a second displacement sensor measuring displacement of the second
specimen holder relative to the base along the common axis.
2. A material testing system comprising:
4
a base;
a first specimen holder;
a second specimen holder, the first specimen holder and the second
specimen holder being adapted to hold a specimen in tension;
a first displacement sensor measuring displacement of the first
specimen holder relative to the base along a common axis between
the first and second specimen holders;
a second displacement sensor measuring displacement of the second
specimen holder relative to the base along the common axis; and
an actuator assembly fixedly coupled to the second specimen holder
and operated as a function of the second displacement sensor to
dispose the second specimen holder in a known position.
* * *
6. A material testing system comprising:
a base;
a first specimen holder;
a second specimen holder;
a first displacement sensor measuring displacement of the first
specimen holder relative to the base along a common axis between
the first and second specimen holders; and
a second displacement sensor measuring displacement of the second
specimen holder relative to the base along the common axis, wherein
the second displacement sensor is a capacitive sensor.
5
7. A material testing system comprising:
a first specimen holder;
a second specimen holder aligned with the first specimen holder
along a common axis;
a first actuator coupled to the first specimen holder;
a second actuator coupled to the second specimen holder; and
a controller coupled to the first actuator and the second actuator, the
controller operating the first actuator to cause displacement of the
first specimen holder away from the second specimen holder along
the common axis, the controller further operating the second
actuator to dispose the second specimen holder in a known position.
8. The material testing system of claim 7 wherein the second actuator
includes a displacement sensor having a pair of fixed plates and a
movable plate coupled to the second specimen holder.
B. Procedural Background
On May 11, 2006, MTS sued Hysitron in the Northern District of California.
MTS alleged Count One, direct infringement of the 124 Patent; and Count Two,
induced infringement of the 124 Patent. On June 28, 2006, Hysitron filed a
Motion to Transfer Venue to the District of Minnesota. On September 1, 2006, the
Court granted the Motion to Transfer.
On September 26, 2006, the case was transferred to this Court.
6
On October 1, 2007, the parties filed their Joint Claim Construction
Statement. [Docket No 134] The three disputed terms are base, coupled to,
and fixedly coupled to.
III. DISCUSSION
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 (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. & Engg, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
(citation omitted).
[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.
7
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).
However,
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
8
claims themselves provide substantial guidance as to the meaning of particular
claim terms. Phillips, 415 F.3d at 1314 (citation 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 inventors 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 inventors intention, as expressed in the specification, is
regarded as dispositive.
Id. at 1316 (citations omitted).
[A] court should also consider the patents 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
construction purposes.
9
Id. at 1317 (citations omitted).
The public notice function of a patent and its prosecution history requires
that a patentee be held to what he declares during the prosecution of his patent.
A patentee may not state during prosecution that the claims do not cover a
particular device and then change position and later sue a party who makes that
same device for infringement. Springs Window Fashions LP v. Novo Indus.,
L.P., 323 F.3d 989, 995 (Fed. Cir. 2003).
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).
B. Base
1. Parties Proposed Constructions
The disputed term base appears in claims 1, 2, and 6 of the 124 Patent.
MTS asserts that the term base means a frame of reference or a reference
location that provides a datum from which or in relation to which measurements
are made. Hysitron asserts that the term means a platform that supports the
entire apparatus.
10
2. Intrinsic Evidence of Meaning Within the Patent
a. Abstract and Summary
MTS asserts that the 124 Patent itself demonstrates that the term base is
a reference from which measurements are made. It notes that the abstract states:
A material testing system includes a base and first and second
specimen holders. A first displacement sensor measures
displacement of the first specimen holder relative to the base. In
addition, a second displacement sensor measures displacement of
the second specimen holder relative to the base.
(124 Patent at abstract.) Similar language is repeated in the summary of the
invention. (Id. at 1:47‐54.) MTS concludes that this language shows that the 124
Patent uses base as a reference point from which measurements are made.
MTS claims that one practicing the invention would understand that the device
requires a base point from which measurements are made, and the device
measures displacement of the specimen holders relative to that base to determine
the effect of forces applied to the specimen.
b. Preferred Embodiment
MTS admits that the foundation of the device is also the point of reference
in the preferred embodiment, but argues that this does not mean that the point of
reference is always the foundation. The illustrative embodiment references a
11
base, element 22 of Figure 1, which is both the foundation or bottom of the
material testing system and the reference point for measurement. MTS asserts
that the scope of the invention is based upon the claim terms and is not limited to
the illustrative embodiment unless specifically stated. MBO Labs., Inc. v. Becton,
Dickinson & Co., 474 F.3d 1323, 1334 (Fed. Cir. 2007) (Limiting claims from the
specification is generally not permitted absent a clear disclosure that the patentee
intended the claims to be limited as shown.) (citation omitted).
MTS notes that, in the preferred embodiment, the upper specimen holder is
fixed on a crosshead that moves relative to the instruments foundation and the
lower specimen holder is also moveable relative to the specimens foundation.
MTS concludes that, therefore, a point on the instruments foundation is its most
logical reference point: the movement of each specimen holder can be measured
relative to a chosen point on the foundation. MTS asserts that it is simply a
fortuity that, in the preferred embodiment, the most logical reference point is
located on the instruments foundation.
MTS argues that the 124 Patent states that its claims are broader than the
illustrative embodiments: Although the present invention has been described
with reference to preferred embodiments, workers skilled in the art will
12
recognize that changes may be made in form and detail without departing from
the spirit and scope of the invention. (124 Patent at 5:14‐19.)
MTS continues that the illustrative embodiment in the 124 Patents
specification contradicts Hysitrons proposal to limit base to the instruments
foundation. In describing the material testing system and Figure 1, the patentee
disclosed that the patented invention may be configured in ways other than that
depicted in the illustrative embodiment, stating that [a]lthough illustrated as a
vertical testing system, the system 10 may be oriented horizontally or at other
angles convenient for the test specimen 12. (124 Patent at 2:25‐28.) MTS states
that the 124 Patent thus discloses that the system depicted in Figure 1 may be
turned on its side, at an angle, or upside down. MTS argues that, in such
configurations of the system, the bottom or foundation the instrument would not
be the base because it would not be in alignment with the axis upon which the
specimen holders are displaced and a more logical reference point for such
measurements would be used. (Oliver Decl. 7.) Moreover, the 124 Patent
discloses other possible reference points for measurements, such as the frame or
the crosshead. (124 Patent at 2:56‐3:1.) Thus, it concludes that the specification is
consistent with its proposed construction.
13
As MTS points out, the 124 Patent discloses other possible reference points
for measurements, such as the frame or the crosshead, for example, when it states
that the first displacement sensor 35 measures displacement of the crosshead 30
relative to the frame 20 (i.e., the base 22 or the cross beam 26). (124 Patent at
2:56‐58.) However, the Court concludes that this language supports Hysitrons
construction. If base simply meant any point of reference then it would make
no sense to state that the first displacement sensor measures displacement of the
crosshead relative to the frame (i.e. the point of reference or the cross beam).
After all, according the MTS, the cross beam is, in this embodiment, itself a point
of reference. The language in the specification supports a definition of base that
is narrower than any point of reference.
Hysitron asserts that the Court should rely only on intrinsic evidence to
define base because the 124 Patent leaves no ambiguity regarding the meaning
of the term. The Court agrees that the specification clearly uses the term base
to refer to the foundation of the device which supports the entire apparatus. (See
124 Patent 2:30 (frame 20 having a base 22), 2:31‐32 (threaded rods 28 extend
upward from the base 22 to a crossbeam 26), 2:47‐48 (The LCDS assembly 16
includes a permanent magnet 36 mounted in the base 22 . . .), 2:56‐58 (the first
14
displacement sensor 35 measures displacement of the crosshead 30 relative to the
frame 20 (i.e., the base 22 or the crossbeam 26)), 5:1‐3 (a specimen holder is
displaced relative to base 92 along support frame 87).)
The specification specifically defines the base as being a physical object
upon which a magnet can be mounted and as being a part of the frame,
confirming that the base is a structural component of the device. Threaded rods
cannot extend from an abstract mathematical construct or frame of reference, and
a magnet cannot be mounted in an abstract mathematical construct or frame of
reference. MTSs expert, Dr. Krishnaswamy Ravi‐Chandar, supported this
assertion when he agreed that in the aforementioned instances, the patent is
using the word base to describe that physical structure which is the support of
the device. (Ravi‐Chandar Dep. 68.)
In the second embodiment, found in Figure 2, the specification again uses
the term base to refer to the structural foundation of the device: [a] drive
motor 31 displaces the upper specimen holder relative to base 92 along support
frame 87. (124 Patent at 5:1‐3, Fig. 2.)
c. Alternative Embodiment
MTS asserts that the Patent describes an alternative embodiment in which
15
the most logical reference point from which to make measurements would not be
a point on the foundation. (124 Patent at 4:58‐61.) MTS argues that in this
alternative embodiment, the most logical reference point for measuring the
relative movement of the two specimen holders is the crosshead. MTS concludes
that because the most logical reference point for measurements in each
embodiment will differ depending on the devices configuration, its definition of
base must apply.
This other embodiment is not a preferred embodiment, so the fact that
case law generally counsels against interpreting a claim term in a way that
excludes the preferred embodiment from the scope of the invention does not
necessarily govern. Helmsderfer v. Bobrick Washroom Equip., Inc., F.3d ,
2008 WL 2262435, at *3 (Fed. Cir. June 4, 2008). This yet another embodiment is
only mentioned in a single sentence in the 124 Patent. (124 Patent at 4:58‐61.) It
involves a lower specimen holder attached to the frame. Oliver attempts to fit the
embodiment into the claims by opining that the crosshead of the alternative
embodiment is the most logical reference point. However, the specification
does not identify a frame of reference for this embodiment, whether that is the
crosshead or anything else. (Hinderaker Decl Ex. 2 , Oliver Dep 49 ([T]here is
16
not a definition of base or a point of reference in [the alterative embodiment].)
In fact, Ravi‐Chandar testified that the 124 Patent states that the foundation
(base) serves as the frame of reference in this alternative embodiment.
(Hinderaker Decl. Ex. 1, Ravi‐Chandar Dep. 85‐86.) Ravi‐Chandar was asked:
In the patent, to your knowledge, is there any description or example
given where the frame of reference is not the support for the device
(22), or in Figure 2, the support for the device (92)?
A. No.
Q. So its fair to say that in the body of the patent as it describes the
invention, the frame of reference is always the support for the device
being, in Figure 1, 22, and in Figure 2, 92?
A. Correct.
(Id. 86.)
Moreover, a construction should not be rejected just because it excludes an
alternative embodiment. See, e.g., Helmsderfer v. Bobrick Washroom Equip.,
Inc., F.3d , 2008 WL 2262435, at *3 (Fed. Cir. June 4, 2008) (While we
recognize that the district courts construction of partially hidden from view
does not encompass these embodiments for the claims at issue, we disagree with
Brocar that the district courts construction is for that reason necessarily
erroneous.).
17
d. Claim Language
MTS asserts that nothing in the claim language suggests that base means
only a structural component. It argues that, instead, language within the claims
discloses a relative relationship between the claim elements ‐ a relationship based
on measurement. It concludes that its construction of the term base is known
in the art and is consistent with the patentees use of the term in the patent.
MTS claims that the novel aspect of this invention is not that it has a
foundation, but that it can measure the application of one or more forces on the
specimen by measuring the displacement of the first and second specimen holder
relative to a reference point, known as the base.
There is no dispute that the other claim elements, such as first specimen
holder, second specimen holder, first displacement sensor, and second
displacement sensor all refer to structural components of the claimed device.
(Werner Decl. Ex. 8, Pl.s Second Amended Claim Chart at 2‐3; Ravi‐Chandar
Dep. 77; Oliver Dep. 40‐41.) The base is included in descriptions along with
this indisputably structural elements in Abstract, the Summary of the Invention,
the preferred embodiment, and the claims; it is logical to conclude that the base
is also a structural component of the claimed device.
18
The fact that MTS chose to require the foundation to serve as the reference
point does not transform the base into an abstract mathematical construct or
frame of reference. Hysitron provides this example: A judge takes three steps
from a desk; distance can be measured relative to the desk. Measurement from
the desk does not transform the desk into an abstract concept or frame of
reference. The desk is the object from which distance is measured, not a
mathematical construction or frame of reference. It is still a desk.
3. Evidence of Meaning Within the Prosecution History
a. Use of Prosecution History in Claim Construction
Hysitron asserts that, throughout the prosecution, Oliver used the term
base to refer to structure the foundation of the device. The best source for
understanding a technical term is the specification from which it arose, informed,
as needed, by the prosecution history. Phillips, 415 F.3d at 1315 (citations
omitted).
b. The Hartman Prior Art Rejection
In the first Office Action during prosecution of the 124 Patent, the
Examiner rejected the pending claims as obvious based on Hartman in view of
other references. (Werner Decl. Ex. 9.) The Examiner stated that Hartman
19
disclosed a testing device with a first and a second specimen holder which are
actuated to move relative to each other upon application of an associated force
and means to measure the applied force. (Id. at 3.)
To overcome the Examiners rejection of the claims as obvious based on
Hartman, Oliver argued:
The Office Action notes col. 5, ll. 21‐31 of Hartman et al. in order to
describe that the specimen holders may be adjusted relative to one
another to accommodate elongation of a specimen during loading.
However, this section simply does not teach or suggest using
displacement sensors measuring displacement of each specimen
holders relative to the base.
(Werner Decl. Ex. 10 at 2‐3 (emphasis in original).)
Both Oliver and Ravi‐Chandar testified that under the frame of reference
construction, anything, including a point on a specimen holder, could serve as
the base. (Oliver Dep. 65‐66; Ravi‐Chandar Dep. 16‐17, 26.) Under the frame of
reference definition, the 124 claims would cover measuring displacement of the
specimen holders relative to each other, a point on one of the specimen holders
being the frame of reference.
Oliver argued to the Examiner that Hartman did not teach the invention
because the 124 Patent measures displacement relative to the base i.e., its
20
foundation. Oliver asserted that the base was a structural component of the
device in order to gain allowance of the claims so MTS cannot now change its
position during litigation. Springs Window, 323 F.3d at 995.
c. The Schmidt Prior Art Rejection
The Examiner summarized the teachings of Schmidt, a reference that the
Examiner believed anticipated the claimed invention, as follows:
Schmidt discloses a resiliency testing device with features of the
claimed invention including a base (element 102), a first and, a
second specimen holder (for example, elements 11, see figures 2‐3), a
first displacement sensor (element 8) for measuring the displacement
of the holder (col. 3, lines 50‐60), and a second displacement sensor
to measure the displacement of the second specimen holder.
(Werner Decl. Ex.11 at 2.)
Oliver used the term base to refer to the bottom of the device when
addressing the Examiners rejection based on Schmidt. Schmidt disclosed a
tensile testing device having a base that was a structural component. (See
Werner Decl. Ex. 12 at 5:23‐30 (describing apparatus with two screw‐threaded
elements 120 rigidly affixed to base 102), 5:61‐65 (stating that the base can be
made out of aluminum).) In response to this rejection, Oliver used the term
base to refer to a supporting structure the bottom (102) of the apparatus
21
depicted in Figure 1 of the Schmidt Patent, not merely the abstract concept of a
frame of reference. (Werner Decl. Ex. 13; Werner Decl. Ex. 12, Schmidt Patent at
1:19‐23, Fig. 1.) Oliver stated:
With respect to figure 1 of Schmidt, a cylindrical sample 104 is held
on the base 102 by elements 103, 117. . . . The frame 105 and sensing
means 119 are thus entirely supported by the sample itself and not
by elements 103, 117 or base 102.
(Werner Decl. Ex. 13, at 7‐8.) Oliver used the term base to refer to a supporting
structure in Schmidt, not an arbitrary frame of reference.
Schmidt himself used the term base to refer to the foundation of the
apparatus and also disclosed that the base could serve as a frame of reference.
(Schmidt at 5:23‐50 (describing Figure 4 and explaining how to adjustably fix the
position of the movable support relative to the base.)
MTS notes that, unlike the 124 Patent, Schmidt used delimiting words and
phrases in connection with the term base to convey that this was a specific
structural element of the claimed invention. (See, e.g., Schmidt Claim 9, Werner
Decl. Ex. 12, 10:3‐11 (claiming a stationary base and a movable support
adjustably connected to said stationary base to move toward and away from said
stationary base).) While MTS is correct that, in isolation, the claims in the 124
22
Patent do not so obviously describe the base as structural, the 124 Patent, as a
whole, defines the base as structure and, as previously explained, the claims
themselves do indicate that the base is a structural component. At a minimum,
the evidence related to the Schmidt prior art rejection adds some support to
Hysitrons construction.
d. Cited Prior Art
Cited prior art is also intrinsic evidence concerning the meaning of the
term base. See V‐Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1311
(Fed. Cir. 2005) ([P]rior art cited in a patent or cited in the prosecution history of
the patent constitutes intrinsic evidence.) (citations omitted). In this case, the
prior art references considered by the Examiner further support the definition of
the term base as the foundation of the apparatus, not merely to an abstract
frame of reference.
The cited prior art includes two MTS patents: U.S. Patent Nos. 4,475,403
(the 403 Patent) and 4,478,086 (the 086 Patent). Those patents also used the
term base to refer to the structural foundation of these tensile testing devices.
(403 Patent at 2:4‐6 and Fig. 1 (In FIG. 1, a load test frame indicated generally at
10 is shown schematically and includes a base 11, and columns 12 that will
23
support an upper crosshead (not shown).); 086 Patent at 2:66‐68, and Fig. 1
(The frame 10 includes a base 12, a pair of upwardly extending support columns
14 and 16, and a crosshead 18..) Other references by the Examiner also used the
term base to refer to the foundation of device, such as the Holmes patent.
(Werner Decl. Ex. 16 at 2:60‐64 (Fixed grip 24 is rigidly mounted to a base 28
fixed between side members of supporting frame 12.)
4. Extrinsic Evidence
a. Propriety of Consideration of Extrinsic Evidence
MTS asserts that the Court should consider extrinsic evidence to determine
the meaning of the term base. Consulting extrinsic evidence is particularly
appropriate to ensure that the Courts understanding of the technical aspects of
the patent is not entirely at variance with the understanding of one skilled in the
art. Pitney Bowes, Inc. v. Hewlett‐Packard Co., 182 F.3d 1298, 1309 (Fed. Cir.
1999) (citations omitted).
Hysitron argues that consideration of extrinsic evidence regarding the
meaning of the term base is improper because the intrinsic record
unambiguously defines base as the foundation of the device.
The Court agrees that the intrinsic evidence requires that Hysitrons
24
construction of the term base be adopted. However, because the Court
concludes that the extrinsic evidence in this case further supports Hysitrons
construction, the Court will analyze that evidence as well.
b. Inventor and Expert Testimony
i. Inventor Testimony: Oliver
Oliver has sworn that he used the term base in the 124 Patent to mean a
frame of reference or a reference location that provides a datum from which or in
relation to which measurements are made. (Oliver Decl. 9; Oliver Dep. 31.)
Oliver explained that measurements must be made from points, not from
structures. (Oliver Dep. 30.) This invention tests and measures the tensile
properties of very thin fibers with extreme precision. MTS argues that it would
be imprecise to measure displacement of the specimen holders from a structure
such as an instruments foundation.
The 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). In this case, Olivers
25
declaration and testimony are conclusory. Oliver does not cite any references to
support his opinion that base means a frame of reference. Instead, he simply
states how one can use any frame of reference to make the measurements
necessary to perform tensile testing. (Oliver Decl. 7.) The fact that scientific
principles allow measurements to be made using a frame of reference other
than the foundation of the device does no dictate the meaning of the term base
in this patent.
Moreover, according to Oliver, a frame of reference is a concept; it has
zero volume, so by definition it cannot be a real object. . . . It is a mathematical
point in space. (Oliver Dep. 29‐30.) When Oliver was asked to reconcile his
intended construction of base with the statement in the specification that a
permanent magnet 36 can be mounted in the base 22 (124 Patent at 2:47‐48), he
conceded that the 124 Patent was not clearly written and stated that he did not
know if it is physically possible to mount a magnet in a point of reference.
(Oliver Dep. at 39‐40.)
Additionally, despite Olivers testimony regarding his interpretation of the
term base, the intrinsic evidence, such as the cited prior art, demonstrates that
those of skill in the art of materials testing use the term base to refer to the
26
foundation of the device. For example, as discussed earlier, Schmidt states that
the base can be made of aluminum, as so is obviously a structural component,
and, in Schmidt, that structural component also serves as a frame of reference.
The Court concludes that Olivers interpretation of the term base is
entitled to little weight, and notes that other testimony by Oliver supports
Hysitrons construction.
ii. Expert Testimony: Ravi‐Chandar
MTSs expert, Ravi‐Chandar, a professor of aerospace engineering and
engineering mechanics, opined the term base in the 124 Patent has the same
meaning Oliver intended. (Ravi‐Chandar Decl. 8‐10.) He claimed that this
construction was clear given the common usage of the term base in the art and
the Patents use of the term with respect to making measurements. (Id. 10.)
Ravi‐Chandars declaration is conclusory and unsupported. He admits
that his construction was simply made . . . up. (Second Hinderaker Decl., Ex. 1,
Ravi‐Chandar Dep. 12.) Ravi‐Chandar relies upon a single textbook reference,
James W. Dally, et al., Instrumentation for Engineering Measurements (1984), to
support his opinion that those of skill in the art would have understood base to
mean a frame of reference, but that reference does not support his definition.
27
In fact, it repeatedly uses the term base to refer to the structural foundation of a
device.
The definition of base advanced by MTS cannot be found anywhere in
the Dally text. Moreover, the text lends support to Hysitrons construction. The
subchapter on Motion Measurement Without a Fixed Reference discusses
situations in which there is no fixed reference for measurements, such as in an
earthquake. (Id. at 329.) In that case, seismic instruments are used which detect
relative motion between a base, which is attached to a structure of interest, and a
seismic mass. (Id.)) The chapter goes on to discuss making measurements of
the relative motion between the seismic mass and the base. (Id. at 331.)
The text, therefore, refers to a base as something that is attached to a
structure of interest. This section also teaches that a transducer can be bolted to a
structure of interest, and that [t]he bolt force required to attach the transducer
base to the structure can be expressed as [a mathematical expression.] (Id. at
331.) While the base of the transducer discussed in this section is the frame of
reference, the term base also has structural form it is used to refer to a
particular part of the transducer: its foundation.
In any case, this chapter simply explains scientific concepts that can be
28
used to analyze moving objects. While scientific theory may support the use of
an arbitrary frame of reference, such as a line on the wall, to perform
measurements, this does not dictate the meaning of the term base is used in the
124 Patent.
Therefore, the Court does not find Ravi‐Chandars opinion regarding the
construction of the term base to be helpful. See Phillips, 415 F.3d at 1318
([C]onclusory, unsupported assertions by experts as to the definition of a claim
term are not useful to a court.)
Additionally, while Ravi‐Chandar contends that base is used by those in
the field of mechanical physics to refer to a frame of reference, he also
acknowledges that base means a foundation for something. (See Ravi‐Chandar
Decl 5 (Though laypeople think of a base as being a foundation for
something, those in the field of physics know the term base to also mean a
frame of reference . . .) (emphasis added).) Moreover, during his deposition,
Ravi‐Chandar admitted that the 124 Patent uses the word base to describe the
physical structure that supports the device. (Ravi‐Chandar Dep. 66, 68.)
c. Dictionary Definitions of the Term
MTS asserts that the ordinary dictionary definition of the term base
29
supports its construction: it notes that the fifteenth definition of base in the
American Heritage Dictionary is [a] line used as a reference for measurement or
computations. American Heritage Dictionary (4th ed. 2000.)
The Court acknowledges that a possible although not primary
definition of base is a point of reference. However, the dictionary definitions
also tend to support Hysitrons construction. In the American Heritage
Dictionary, the first definition for base is the lowest or bottom part: the base of
a cliff. (Id.) The third definition is a supporting part or layer; a foundation: a
skyscraper built on a base of solid rock. (Id.) Additionally, the Wileys Electrical &
Electronics Engineering Dictionary also supports Hysitrons construction. Its
first definition of base is [t]he foundation of something, or the material that
composes said foundation. Wileys Electrical & Electronics Engineering
Dictionary 61 (2004).
5. Conclusion
The Court adopts Hysitrons proposed construction of the term base.
From the language of the 124 Patent itself, it is clear that the base is a part of
the structure. A magnet cannot be mounted in a point with no volume the
specification, the preferred embodiment, and the illustrations all show that
30
base is a physical concept. Moreover, the prosecution history and the cited
prior art demonstrate that Oliver and others skilled in the art use the term base
to mean the foundation of the device.
The intrinsic evidence demonstrates that the base is a physical structure;
however, the extrinsic evidence also supports this construction. MTSs dictionary
definition is the fifteenth definition in the dictionary, while Hysitrons is the
primary definition, not only in the general usage dictionary, but also in the
technical dictionary in the field. The textbook upon which Ravi‐Chandar relies
also uses the term base to clearly refer to a physical structure. Although Oliver
and Ravi‐Chandar are qualified as experts and testified to MTSs proffered
construction, their testimony is not persuasive. As Oliver admits, his definition
does not make sense when the specification calls for a magnet to be mounted in
the base. Neither of the experts can support their word‐for‐word identical
definition with any outside source. Finally, simply because the foundation of the
device is used as the point of reference does not mean that it is no longer the
foundation.
Adopting Hysitrons construction will limit the 124 Patent. It may be that
Oliver did not intend to limit the 124 Patent so that only the foundation could be
31
the reference point it would make logical sense to have other possible reference
points. However, the 124 Patent claims before the Court do not claim those
potential alternative embodiments. Oliver could have defined base, used the
clearer term point of reference, or provided alternative points of reference.
Instead, he only used the term base, which, at multiple points in the 124
Patent, clearly refers to the physical foundation of the invention.
The term base is construed as: a platform that supports the entire
apparatus.
C. Coupled To
The term coupled to is found in asserted claims 2, 7, and 8 of the 124
Patent. These claims speak to actuators coupled to specimen holders, controllers
coupled to actuators, and plates coupled to specimen holders.
MTS asserts that the term coupled to means to connect for
consideration together, or to join for combined effect. Hysitron asserts that the
term means to connect for consideration together. Thus, the parties agree that
the term coupled to should at least encompass the definition to connect for
consideration together, but disagree about MTSs additional definition or to
join for combined effect.
32
Both parties proposed constructions come directly from the dictionary: 1.
a: to connect for consideration together b: to join for combined effect. Merriam
Websters Collegiate Dictionary 266 (10th ed. 1994).
The 124 Patent specification describes features consistent with MTSs
broader definition:
Another aspect of the present invention includes a material testing
system having first and second specimen holders. A first actuator is
coupled to the first specimen holder and a second actuator is
coupled to the second specimen holder. A controller is coupled to
the first and second actuators. The controller operates the first
actuator to cause displacement of the first specimen holder and
further operates the second actuator to dispose the second specimen
holder in a known position.
(124 Patent at 1:53‐55.) The controller, the actuator, and the specimen holder are
all joined for combined effect the controller operates the actuator which in turn
causes displacement of the specimen holder which in turn applies a load, such as
a static or oscillating load, to the test specimen. (Id. at 2:41‐43, 3:22‐38.) The
specification demonstrates that the controller, the actuator, and the specimen
holder are not just connected; they are joined for combined effect. These features
of the tensile testing invention act together to apply force or loads to the sample
during the test procedure.
33
[T]he claims of the patent will not be read restrictively unless the patentee
has demonstrated a clear intention to limit the claim scope using words or
expressions of manifest exclusion or restriction. Liebel‐Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (citation omitted). The term
coupled to has a broad meaning in everyday parlance and is used in the 124
Patent consistent with that broad meaning.
The Court adopts MTSs construction of the term coupled to because it is
consistent with the ordinary meaning of the term and the specification.
Coupled to is constructed as: to connect for consideration together, or to join
for combined effect.
D. Fixedly Coupled To
MTS asserts that no construction is required once coupled to is
construed. Hysitron asserts that the term means connected to prevent any
movement relative to.
The Court concludes that, once it has construed coupled to, there is no
need to separately construe fixedly coupled to, because the ordinary meaning
of the claim language is readily apparent. See Allan Block Corp. v. County
Materials Corp., 502 F. Supp. 2d 845, 852 (D. Minn. 2007) (declining to construe
34
phrase when, [c]onsistent with the claim language, the specification, and the
prosecution history, the Court determines that the claim language creates no
ambiguity and has a readily understood meaning).
For the reasons stated, IT IS HEREBY ORDERED:
The claims 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: June 21, 2008 s / Michael J. Davis
Judge Michael J. Davis
United States District Court
 

 
 
 

  What day were you injured?

  / /


  What caused your injuries?
Traffic/Bicycle Accident
Work-Related Injury
Wrongful Death
Dog Bite
Slip and Fall
Other:


  How have your injuries affected

  your life?

 


  What kinds of medical care
  professionals have you seen?

 


  What has your treatment cost?

 

  Is Insurance Involved?
My insurance may cover
        this.

Someone else's insurance
        may cover this.

I already filed a claim.
I rejected a settlement
        offer.

I accepted a settlement
        offer.

  Were there any witnesses?
Bystanders Witnessed This.
Police Responded and Filed
        a Police Report

Police Responded but Did
        Not File a Police Report


 

 

          By visiting this page or clicking the
  "submit" button above, you agree
  that you have read and accept this   "disclaimer".
 
Copyright © Michael E. Douglas, Attorney at Law, Saint Paul MN. All Rights Reserved.
Minnesota Law Firm representing Personal Injury, Car / Auto Accident, Workers Compensation, Medical Malpractice, Social Security Disability claims.
Dedicated to Injured Workers, Victims of Negligence, Car Accidents, Victims of Fraud, and those in need of legal assistance.