Case 2:01-cv-06530-SVW-AJWX Document 96 Filed 04/16/02 Page 1 of 1 Page ID #:46
`
`
`
`Page 1 of 41
`
`Petitioners Exhibit 1013
`Patent 5,944,040
`
`

`

`
`
`
`
`
`
`1:2,. --
`f I
`‘
`r
`e.
`'x
`g.)
`"“
`311 f... A
`
`,
`
`7.,
`
`fl,‘
`.i
`
`.i
`
`I‘:
`
`'
`
`,
`
`_>
`
`.
`
`.
`-«-.§’Lw-.»_\:f
`“L,
`
`,
`
`N,
`
`ANTHONY W. SHAW (Admitted Pro Hac Vice)
`BROBECK, PHEGERBC HARRISON LLP
`1333 H Street, NW. Suite 800
`Washmgton, DC. 26005
`Telephone:
`202 220-6000
`Facsumle:
`202 220—5200
`
`
`
`
`
`
`
`MICHAEL C. TU (State Bar No. 186793)
`.BROBECK PHLEGER & HARRISON LLP
`550 South
`0 e Street
`Los Angeles,
`r alifomia 90071-2604
`Telephone: E2133 489-4060
`Facsmule:
`213 745—3345
`
`
`
`‘
`
`FILED
`CLERK, U-S. DESTRICT COURT
`3 L
`' MAR 2 '0
`_
`
`2092
`
`'
`
`
`
`' CENTRAL
`BY
`-
`
`1STR|CT OF CALIFORNIA
`Damn,
`
`JOERG"UWE SZIPL (Admitted Pro Hac Vice)
`GRIFFIN & SZIPL, PC
`Suite PH—l
`2300 9th Street, South
`Arlin ton, Vll'
`111121 22204
`Telep one:
`3 979-5 700
`Facsmule:
`703 979-7429
`
`KOOOxJoanAOJN
`
`10
`
`11
`
`12
`
`” 13
`
`I
`
`.14
`
`15
`
`16
`
`1'7
`
`18
`
`19
`
`2o
`
`21
`
`23
`
`24 .
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`
`
`
`
`
`
`
`Attorne s for Defendants
`AFFO ABLE INSTANT SHELTERS,
`ALLREDY PRODUCTS CANVAS
`SPECIALTY INC, CANOPIES BY FRED
`CARAVAN CANOPY WTERNATIONAL:
`1NC., RAGE PERFORMANCE and
`CANOPY CONNECTIONS LL’C
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`22‘
`
`
`
`
`C'TRM: Courtroom 6
`
`.0,-
`Hon. Steven V. Wilson
`‘s
`'
`CARAVAN CANOPY.
`
`.
`INTERNATIONAL, INC., a California ,
`
`cgEoration; AFFORDABLE INST
`'
`"
`
`S
`LTERS, aFlonda corporation;
`_
`'1
`_
`‘
`
`ALLREDY PRODUCTS a California '.
`'-
`
`elf-nonetotshi' CANVAS SPECIALT 3
`=
`
`
`
`
`
`
`INTERNATIONAL E—Z UP, INC., a
`California corporation; and
`
`JAMES P. LYNCH, an individual, and
`K.D. KANOPY, INC, a Colorado
`corporation,
`
`Plaintiffs,
`
`V.
`
`Case No. cum-06530 svw (CTX)
`CARAVAN’S OPENING BRIEF
`FOR MARKMAN HEARING
`
`DATE: A til-16,2002
`TIME:
`1
`:00 am.
`
`
`
`
`
`
`
`
`
`
`
`
`Page 2 Of41
`
`
`
`
`
`Page 2 of 41
`
`

`

`INC. a California 00 oration;
`CANQPIESBY FRE , a Washin ton
`propnetorahlp; RAGE PERFO
`‘ CE,
`a Cahforma proprletorsh1p; J01le MEE
`CANOPIES, an Alabama 1'0 netorsh1p;
`and CANOPY CONNEC 10 S LLC, a
`Colorado corporation.
`
`Defendants.
`
`l—l
`
`\DOO'QQLII-PUJN
`
`oo.~J0\M-bmt\J.—toko;:3;:$5:g
`MMN'NNNNN‘NH
`
`Page 3 of4l
`
`
`
`Page 3 of 41
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`BACKGROUND FACTS ............................................................ 1
`
`RELEVANT LAW .................................................................. ,- . . .1
`
`INTERPRETATION OF DISPUTED CLAIM TERMS
`OF U. S. PATENT NO. 5,244,001 ................................................... 3
`
`A.
`
`Interpretation Of The Claim Term “Socket” ................................ 4
`
`1.
`
`2.
`
`3.
`
`4.
`
`The ‘001 Patth Defines “Socket” In Accordance
`With Its Ordinary Meaning To Be A Structure
`Or Hollow Which Substantially Encloses Or
`Captures The Scissor Edge Assembly ................................... 4
`
`Lynch Defined The Term “Socket” Consistently
`With The Ordinary Meaning In Representations
`Made To USPTO ........................................................... 8
`
`Lynch Is Estopped By The Principles of
`Judicial Estoppel From Asserting A Meaning
`Of The Term “Socket” Different From That
`
`Given During The Prosecution Of The ‘35 6
`Patent ...................................................... ................... 1 0
`
`The Term “Socket” Cannot Be Inte reted
`So As To Ensnare The Prior Art an Thus
`Invalidate The ‘001 Patent’s Claim ...................................... 12
`
`B.
`
`C.
`
`D.
`
`Interpretation Of The Term “Parallel” ...................................... 15
`
`Interpretation Of “Planar Contact Surfaces” ............................... 16
`
`Interpretation Of “Close Fitting Engagement” ............................. 17
`
`IV.
`
`INTERPRETATION OF DISPUTED CLAIM TERMS OF
`U. S. PATENT NO. 5,944,040 ..........' ............................................. 18
`
`A.
`
`B.
`
`Interpretation Of “Center Pole” And “Center Pole Ribs” ................ 18
`
`Interpretation Of “Claw Member” ................... -. ...................... 21
`
`V. CONCLUSION ......................... ..22
`
`\ODO‘JONLhub-UJN
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`i
`
`Page 4 of4l
`
`
`
`Page 4 of 41
`
`

`

`TABLE OF AUTHORITIES
`
`Page! 5 1
`
`
`Cases
`
`Avery Dennison V. Acco Brands, Inc,
`1999 WL 33117262 (CD. Cal. 1999) .................................................... 12
`
`Bayer AG V. Elan Pharmaceutical Research Com,
`212 F.3d 1241 (Fed. Cir. 2000) ............................................................ 16
`
`Carroll Touch Inc. V. Electro Mech. 8353., Inc.,
`15 F.3d 1573, 27 USPQ2d 1836 (Fed. Cir. 1993) ....................................... 2
`
`Decca, Ltd. V. United States,
`210 Ct. C1. 546, 544 F.2d 1070, 191 USPQ 439 (Ct. C1. 1976) .................... 13,15
`
`Dreamwerks Production Group, Inc. V. SKG Studio,
`142 F.3d 1127 (9 Cir. 1997) ............................................................. 12
`
`EMI Group N. Am., Inc. V. Intel Corp,
`157 F.3d 887, 48 USPQ2d 1181 (Fed. Cir. 1998) ....................................... 2
`
`Eikay Mfg. Co. V. Ebco Mfg. Co.,
`192 F.3d 973, 52 USPQ2d 1109 (Fed. Cir. 1999) ......................................2,9
`
`Embrex, Inc. v. SerV. Eng’g Corp,
`216 F.3d 1343, 55 USPQ2d 1161 (Fed. Cir. 2000) ....................................... I
`
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
`234 F.3d 558, 56 USPQ2d 1865 (Fed. Cir. 2000),
`LIT. granted, 69 U.S.L.W. 3779 (U.S. June 18, 2001) (No. 001543) ................. 11
`
`Hamilton V. State Farm Fire & Casualty Co.,
`270 F.3d 778 (9 Cir. 2001) ............................................................. 10,11
`
`Harris Corp. V. IXYS Com,
`114 F.3d 1149, 43 USPQ2d 1018 (Fed. Cir. 1997) ................................... 3,13
`
`John Hopkins Universipg V. Ceilpro, Inc.,
`152 F36 1342, 47 USPQ2d 1705 (Fed. Cir 1998) ......................................21
`
`Jensson V. The Stanley Works,
`903 F.2d 812, 14 USPQ2d 1863 (Fed. Cir. 1990) .........................................2
`
`\oooaaoxmLmN
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`ii
`
`Page 5 of4l
`
`
`
`Page 5 of 41
`
`

`

`kake Ente rises Inc. V. Lucks Co.,
`264 F.3d 1377, 60 USPQ2d 1124 (Fed. Cir 2001) ......................................22
`
`Mantech Envtl. Serve.., Inc. V. Hudson Envtl. SerV.., 1110.,
`152 F. 3d 1368, 47 USPQ2d 1732 (Fed. Cir. 1998) ....................................... 2
`
`Markman V. Westview Instruments, Inc.,
`52 F3d 967, 34 USPQ2d 1321 (Fed. Cir 1995)
`(e_nbanc),affd, 517U.S.370, 116 S. Ct. 1384,
`134 L.Ed.2d 577 (1996) ...................................................................... 5
`
`Modine Mfg. Co V. United States Int lTrade Comm’11,
`75 F.3d 1545, 37 USPQ2d 1609 (Fed. Cir.),
`c_e__rt.d_enied,135 L.Ed.2d 1048, 116 S. Ct. 2523 (1996) ............................... 15
`
`New Harngshire V. Maine,
`532 U.S. 742, 121 S.Ct. 1808, 1815, 149 L.Ed.2d 968 (2001)..................... 10,11
`
`Rissetto V. Plumbers & Steamfitters Local 343,
`94 F3d 597 (9 Cir 1996) ................................................................. IO
`
`M8
`
`93 F.2d 1033 (9t Cir 1990) ........................................................... 10,12
`
`Southwall Techs.., Inc. V. Cardinal IG, Co.,
`54 F. 3d 1570, 34 USPQ2d 1673 (Fed. Cir. 1995) ........................................ 2
`Vitronics Com. V. Conceptronic, Inc.
`90 F.3d 1576, 39 USPQ2d 1573
`(Fed. Cir 1996) ..................................................................2,3,,45,21 ,22
`
`Wilson Sporting Goods Co. V. David Geoffrey & Associates,
`904 F.2d 677,14 USPQ2d 1942 (Fed. Cir), cert. denied,
`498U..S 992,111 S.Ct.537, 112L. Ed.2d 547 (1990),
`overruledin part on different grounds,
`Cardinal Chem. Co. v. Morton Int 1, 508 U. S. 83 (1993) ............................... 13
`
`Wri ht Med. Tech. Inc. V. Osteonics Co
`122 F.3d 1440, 43 USPQ2d 1837 lFed. Cir. 1997)......................................2
`
`Statutes
`
`United States Patent Act of 1952
`35 U.S.C. § 102(1)).......................................................................... 13
`
`I
`'
`United States Patent Act of 1952
`35 U.S.C. § 103(a) ........................................................................... 13
`
`\DOO‘JONM-ifiWN
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`iii
`
`Page 6 of41
`
`
`
`Page 6 of 41
`
`

`

`\DOOxZIQLhJDnUJN
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`I6
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`International E-Z UP, 1110., James P. Lynch, and K.D. Kanopy, Inc.
`
`(collectively, “Lynch”), brought this case against Caravan Canopy Int’l, Inc., et al.
`
`(collectively, “‘Caravan”), for infringement of U.S. Patent No. 5,244,001 (“the ‘001
`
`patent”)1. Caravan counterclaims against Lynch for infringement of U.S. Patent
`
`5,944,040 (“the “040 patent”)2. This Court has scheduled a “Markman” hearing for
`
`this case on April 16, 2002, and the parties have agreed to exchange briefs in '
`
`1
`
`preparation for this hearing.
`
`I.
`
`BACKGROUND FACTS
`
`Terms or phrases of Lynch’s ‘001 Patent that are apparently in dispute are: (1)
`
`“socket,” (2) phrases such as “spaced—apart, parallel sidewall portions”, “parallel
`
`sidewalls,” “parallel facing sidewall portions”, and “spaced—apart, parallel first
`
`sidewalls” (3) “planar contact surfaces,” and (4) “close fitting engagement.” In
`
`addition, the following terms of Caravan’s ‘040 Patent are also apparently in dispute:
`
`(1) “center pole” and phrases in which that term appears such as “center pole ribs”,
`
`and (2) “claw member”.3 Accordingly, Caravan hereby submits its constructions of
`
`these terms and phrases for the Court’s review.
`
`II.
`
`RELEVANT LAW
`
`“The construction of claims is simply a way of elaborating the normally terse
`
`claim language in order to understand and explain, but not to change, the scope of
`
`the claims.” Embrex, Inc., V. Serv. Eng’g Corbin 216 F.3d 1343, 1347, 55 USPQ2d
`
`1161, 1163 (Fed. Cir. 2000) (internal quotations and citation omitted). Interpreting
`
`the claims begins with a review of the intrinsic evidence, which consists of the claim
`
`language, the written description, and the prosecution history.
`
`_S_e_e fig se_e glsg
`
`1 Copy attached hereto as Exhibit A.
`
`2 Copy attached hereto as Exhibit B.
`
`3 See Exhibit C, March 11, 2002 letter from defendant’s counsel, Anthony W.
`Shaw to plaintiffs counsel, John K. Fitzgerald.
`
`1
`
`Page 7 of4l
`
`
`
`Page 7 of 41
`
`

`

`\DOO‘JChUI-PUJM
`
`10
`
`-11
`
`12_
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Vitronics Cogp. V. Conceptronic, Inc., 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1576
`
`(Fed. Cir. 1996) (“Vitronics”). If the intrinsic evidence resolves any ambiguity in a
`
`disputed claim, extrinsic evidence cannot be used to contradict the established
`
`
`meaning of the claim language. 8% Mantech Envtl. Servs. Inc. v. Hudson EnvtI.
`
`
`Serv. Inc., 152 F.3d 1368, 1373, 47 USPQ2d 1732, 1736 (Fed. Cir. 1998). Extrinsic
`
`evidence may, however, be accepted to enhance understanding of the technoiogy.
`
`_S_p_g EMI Group N. Am, Inc. V. Intel 0019., 157 F.3d 887, 892, 48 USPQ2d 1181,
`
`1184 (Fed. Cir. 1998).
`
`As to the review of the intrinsic evidence, the specification is reviewed to
`
`determine whether the patentee used terms in a manner inconsistent with their
`
`ordinary meaning.
`
`_S_e_e Vitronics, 90 F.3d at 1582, 39 USPQ2d at 1577 (Fed. Cir.
`
`1996). “The words of a claim are generaily given their ordinary and accustomed
`
`meaning, unless it appears from the specification or the file history that they were
`
`used differently by the inventor.” Carroll Touch Inc. V. Electro Mech. Sys, Inc., 15
`
`F.3d 1573, 1577, 27 USPQ2d 1836, 1840 (Fed. Cir. 1993).
`
`The prosecution history is considered to determine whether or not there were
`
`any express representations made in obtaining the patent regarding the scope and
`
`meaning of the claims. Wright Med Tech, Inc. V. Osteonics Corp, 122 F.3d 1440,
`
`
`1445, 43 USPQZd 1837, 1841 (Fed. Cir. 1997); age als_o Southwall Techs. Inc. V.
`
`
`Cardinal IG Co., 54 F.3d 1570, 1576, 34 USPQ2d 1673, 1676 (Fed. Cir. 1995)
`
`(“The prosecution history limits the interpretation of claim terms so as to exclude
`
`any interpretation that was disclaimed during prosecution”). “When multiple
`
`patents derive from the same initial application, the prosecution history regarding a
`
`claim limitation in any patent that has issued applies with equal force to subsequently
`
`issued patents that contain the same claim limitation.” Elkay Mfg. Co. V Ebco Mfg.
`
`Co., 192 F.3d 973, at 980, 52 USPQ2d 1109, 1114 (Fed. Cir. 1999) (“flgf ggcme
`
`@ Jonsson V. The Stanley Works, 903 F.2d 812, 817-18, 14 USPQ2d 1863, 1868
`
`(Fed. Cir. 1990) (providing that when two patents issued from continuation~in-part
`2
`
`Page 8 of41
`
`
`
`Page 8 of 41
`
`

`

`koooxnoxmeoom
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`2O
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`applications derived from one original application, the prosecution history of a claim
`
`limitation in the first patent to issue was properly applied to the same limitation in
`
`the second patent to issue).
`
`Lastly, claims are construed, where possible, to avoid ensnaring the prior art,
`
`and thus preserve their validity, Harris Com. V. IXYS Corp, 114 F.3d 1149, 1153,
`
`43 USPQ2d 1018, 1021 (Fed. Cir. 1997); and should not be construed in a manner
`
`which would exclude a preferred embodiment, Vitronics, 90 F.3d at 1583-4, 39
`
`USPQ2d at 1578 (Fed. Cir. 1996).
`
`III.
`
`INTERPRETATION OF DISPUTED CLAIM TERMS OF U. S.
`
`PATENT NO. 5,244,001
`
`_
`
`The ‘001 Patent is directed to an expandable framework structure that can be
`
`folded for storage and expanded for use, especially as a canopy when a covering is
`
`placed on top of the fiamework.
`
`The framework is shown generally in Fig 2a of the ‘001 Patent:
`
`
`
`The claims of the ‘001 Patent are exemplified by independent claims 1
`
`and 18. These claims are reproduced separately from the patent in Exhibit D hereto,
`
`in which the disputed claim terms are shown in italics, with their immediate relevant
`
`context shown in bold.
`
`Page 9 of41
`
`
`
`Page 9 of 41
`
`

`

`A.
`
`INTERPRETATION OF THE CLAIM TERM “SOCKET”
`
`1.
`
`THE ‘001 PATENT DEFINES “SOCKET” IN ACCORDANCE
`
`WITH ITS ORDINARY MEANING TO BE A STRUCTURE
`
`OR HOLLOW WHICH SUBSTANTIALLY ENCLOSES OR
`CAPTURES THE EDGE SCISSOR ASSEMBLY
`
`To determine the meaning of a claim term, first the intrinsic evidence must be
`
`reviewed beginning with the words of the claims, then the specification and finally
`
`the prosecution history. Vitronics, 90 F.3d at 1582, 39 USPQ2d 1576—7 (Fed. Cir.
`
`l 996).
`
`The ordinary meaning of the word “socket” is a structure or hollow that
`
`substantially encloses or captures that which it contains or receives.4 Examples of
`
`the common usage of the word “socket” confirm this meaning. An eye socket
`
`substantially encloses or captures the eyeball. An electrical socket substantially
`
`encloses or captures an electrical plug. A light socket substantially encloses or
`
`captures the winding of a light bulb. A ball-and—socket joint is a structure in which a
`
`socket substantially encloses or captures a ball. A socket wrench substantially
`
`contains or captures a nut.
`
`Common usage also illustrates the limits of the word socket. A socket wrench
`
`contains a socket, whereas a box wrench does not because it does not substantially
`
`contain or capture the nut.
`
`4 Websters Dictionary defines socket as “an opening or tubular recess in which
`anything is fitted; any hollow thing or place which receives and holds something
`else; as, the sockets of the eyes.” Websters New Universal Unabridged Dictionary
`1723 (2nd ed. 1983).
`
`4
`
`Page 10 of4l
`
`
`
`Page 10 of 41
`
`

`

`For example, at left is a socket wrench, at right a box wrench:
`
`
`
`In claim 1, the term “socket” first appears in the context of the phrase “sockets
`formed [in the mounts] by spaced-apart, parallel sidewall portions
`said edge
`
`scissor assemblies each having outer end portions of rectangular cross~section
`
`received in a respective one of said brackets.” In claim 18, the word socket first
`
`appears in the context of the phrase “a plurality of first sockets, each said first socket
`
`[sic] having a pair of spaced—apart, parallel first sidewalls ... sized to receive a
`
`respective scissor edge assembly.” There is nothing in the wording of the claims
`
`themselves that would indicate that the inventor intended to depart from the ordinary
`
`meaning of the term “socket” as discussed above. This indicates that the word
`
`“socket” is to be assigned its ordinary meaning.
`
`This ordinary meaning is confirmed by the descriptive portion of the
`
`specification. “The specification acts as a dictionary when it expressly defines terms
`
`used in the claims or when it defines terms by implication.” Vitronics, 90 F.3d at
`
`
`1582, 1576—77 (Fed. Cir. 1996), citing, Markman v. Westview Instruments Inc., 52
`
`F.3d 967, 979, 34 USPQ2d 1321, 1330 (Fed. Cir. 1995) (in bane), m, 517 US.
`
`370, 1E6 S. Ct. 1384, 134 L.Ed.2d 577 (1996) (“Marlqnan”).
`
`In the specification of the ‘001 Patent, the sockets of the claims are shown
`
`clearly in Fig. 3:
`
`\oooxschumpmww
`
`
`
`NNNNNNNNNMI—JHHD—lb—Lb—Ht—lb—ll—lOO‘le‘tU‘i-hUJNt—‘OKDOO‘QOXLh-bU-‘Nt—‘O
`
`Page 11 of41
`
`
`
`Page 11 of 41
`
`

`

`\D‘oo-QQMAUJN
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`The individual “mount 60” in which the sockets are formed is shown in
`
`more detail in Fig. 8 of the ‘001 patent:
`
`
`
`
`The specification of the ‘001 patent describes the sockets as follows:
`
`a channel shaped socket ... formed between a pair of spaced~
`
`apart sidewalls 121 and 122. Sidewalis 121 and 122 are joined by
`
`web 124 with sidewalls 121, 122 being spaceduapaft a width
`
`(CW2), 5
`
`5 ‘001 Patent, Exhibit A, (:01. 8, lines 47-52.
`
`6
`
`Page 12 of41
`
`
`
`Page 12 of 41
`
`

`

`\DOOQGNkh-P-UJN
`
`10
`
`ll
`
`l2
`
`l3
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`The descriptive portion of the specification, that is the figures and the text of
`
`the disclosure, consistently with the claims, indicates that the claimed socket is
`
`defined in the ordinary fashion. The specification further states that the “sockets”
`
`are “formed [in a mount] by spaced-apart facing sidewall portions so that the outer
`
`ends of the edge scissor assemblies may be captured in close fitted engagement
`
`between the facing sidewall portions thereof.”6 The “mount” is provided with
`
`“sockets and fastening pins to pivotally secure inner ends of the scissor bars within
`
`the sockets.”7 The specification further states that “scissor assembly 19
`
`has
`
`opposite outer upper and lower ends captured in sockets formed in mounts 60 and
`
`62.”8 Still further, it states that “it may be seen in these figures that each of the
`
`respective mounts define junction elements having a plurality of socket openings
`
`which are adapted to receive end portions of respective scissor bars.”9
`
`Fig. 11 shows the sockets 160 as follows:
`
`
`
`All of the claimed “sockets” depicted in the figures and other portions of the
`
`6 ‘001 Patent, Exhibit A, col. 3, lines 57-61 (emphasis added).
`
`7 ‘001 Patent, Exhibit A, col. 4, lines 15-17 (emphasis added).
`
`8 ‘001 Patent, Exhibit A, col. 6, lines 61-63 (emphasis added).
`
`9 ‘001 Patent, Exhibit A, col. 8, lines 36~39 (emphasis added).
`7
`
`Page 13 of4l
`
`
`
`Page 13 of 41
`
`

`

`specification illustrate and embody the ordinary and customary meaning of the term
`
`socket.10 As such, “socket” in the ‘001 Patent is given its ordinary meaning in every
`
`instance when referring to the claimed structure. The ordinary meaning in the
`
`context of the “001 Patent is a structure or hollow which substantially encloses the
`
`edge scissor assembly.
`
`2.
`
`LYNCH DEFINED THE TERM “SOCKET” CONSISTENTLY
`WITH THE ORDINARY MEANING IN REPRESENTATIONS
`BEFORE THE USPTO
`
`Lynch, the inventor, defined the term “socket” as used in the ‘001 Patent’s
`
`specification consistently with Caravan’s interpretation during prosecution of
`
`another patent application having a disclosure identical to that of the ‘001 Patent.
`
`During the pendency of the application which led to the ‘001 Patent, Lynch filed a
`
`so—called divisional US. Patent Application Serial No. 08/121,298 (“the ‘298
`
`Application”) having the same disclosure of the ‘001 Patent. The ‘298 Application
`subsequently issued as United States Patent No. 5,421,356. H ‘Not only was the
`
`disclosure of the two patent applications identical, and not only were they pending
`
`before the USPTO at the same time, Lynch expressly admitted that the claims of the
`
`‘35 6 Patent were mereiy obvious variations of the claims of the ‘001 Patent by
`
`disclairning that portion of the ‘356 Patent’s term subsequent to the expiration of the
`
`‘001 Patent.12
`
`Lynch argued that the claimed sockets distinguished over his own prior art
`
`patents as follows:
`
`“The present Claim 1, however, provides sockets formed within the
`
`I” 553, ggm ‘001 Patent, Exhibit A, col. 10, lines 12, 25; col. 9, line 18; and
`Figs. 3, 813, 15, 16, 19-21, 23, 24, and 25.
`
`“ Attached hereto as Exhibit E.
`
`12 Prosecution History of United States Patent No. 5,421,356 (hereinafter cited
`as “‘356 Patent Pros. His”), Exhibit F, Tab 16.
`
`8
`
`Page 14 of4l
`
`
`
`Page 14 of 41
`
`

`

`mounts for the purpose ofreinforcing the mount-edge scissor
`
`assembly [sic] joint. These sockets are shown in the Figure 3 to
`
`substantially enclose the edge scissor assembly?”
`
`Therefore, the Lynch expressly defined the term “sockets” to
`
`“substantially enclose the edge scissor assembly.”
`
`The identity of the ‘35 6 and ‘001 Patent disclosures puts competitors
`
`on clear notice of their linkage. 14 A reasonable competitor would therefore
`
`reasonably infer that the definition of the term socket made in the
`
`prosecution history of the ‘356 Patent would apply to the same term socket
`
`as used in the identical disclosure of the ‘001 Patent.
`
`Lynch’s definition of socket as being a structure that “substantially
`
`encloses the edge scissor assembly” is consistent with the plain meaning of
`
`the term as discussed supra, section III.A.l. Beyond this, Lynch’s own
`
`definition is potent evidence of what the term “socket” means and was
`
`intended to mean by the inventor, and should be adopted by this Court. In
`
`addition, for the reasons below, Lynch should be estopped from asserting
`
`that “sockets” have any other meaning, and the prior art, including Lynch’s
`
`13 ‘356 Patent Pros. His, Exhibit F, Tab 10, p.3. The Fig. 3 Lynch is referring
`to is also Fig. 3 of the ‘001 Patent supra, p.6.
`
`'
`
`14meginrsmamdannmpdannunscmiwmcnnwmnw
`new claims 26-28 during the prosecution of the ‘639 application, which issued as
`claims 1—3, respectively, in the ‘855 patent. In describing the claims, Elkay stated
`that “[n]ew claim 26 is patterned after a combination of claims 1, 3 and 5 of [the
`‘531 patent] with the “feed tube” changed to ‘feed probe’. . ..” By making this
`statement, Elkay affirmatively linked the meaning of claim 26 of the ‘639 application
`to claims 1, 3, and 5 of the ‘531 patent. Because Elkay ’3 statement put competitors
`on clear notice ofthat linkage and because the ‘53] and ‘855 patents stem from the
`same genus, it is pmper to consider the prosecution history ofclaim I ofthe ‘855
`patent to be an amalgam ofthe prosecution histories ofboth patents. ”) (emphasis
`added)
`t
`
`1
`
`2 3 4 5 5
`
`7 8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`18
`
`19
`20
`
`2,
`
`22
`23
`
`24
`25
`
`26
`27
`
`28
`
`Page 15 of4l
`
`
`
`Page 15 of 41
`
`

`

`own patents prevent a more expansive meaning.
`
`KOOOQONUI-D-UJN
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`i6
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`3.
`
`LYNCH IS ESTOPPED BY THE PRINCIPLES OF JUDICIAL
`
`ESTOPPEL FROM AS SERTING A MEANING OF THE TERM
`“SOCKET” DIFFERENT FROM THAT GIVEN DURING THE
`PROSECUTION OF THE ‘356 PATENT
`
`Under principles ofjudicial estoppel, Lynch cannot presently assert that
`
`“sockets” in the claims of the ‘001 Patent do not “substantially enclose the scissor
`edge assemblies” as expressly stated in the prosecution of the 3% Patent. “Judicial
`
`estoppel is an equitable doctrine that precludes a party fiom gaining an advantage by
`
`asserting one position, and then later seeking an advantage by taking a clearly
`
`inconsistent position.” Hamilton v. State Farm Fire & Casually Co., 270 F.3d 778,
`
`782 (9th Cir. 2001)(“Hamilton”) (mg, Rissetto v. Plumbers & Steamfitters Local
`
`343, 94 F.3d 597, 600—601 (9th Cir. 1996)). ‘5 “‘Several factors typically inform the
`
`decision whether to apply the doctrine[.]”’ 131;, 270 F.3d at 782-3 (9th Cir. 2001)
`
`(Mg, New Hampshire v. Maine, 532 US. 742, 121 S.Ct.1808, 1815, 149
`
`L.Ed.2d 968 (2001) (“New Hampshire”)).‘6
`
`
`
`15 Hamilton, 270 F.3d 778, 782 (9th Cir. 2001 ), Quoting, Russell v. Rolfs, 893
`F.2d 1033, 1037 (9th Cir. 1990) (“This court invokes judicial estoppel not only to
`prevent a party from gaining an advantage by taking inconsistent positions, but also
`because of ‘general consideration[s] of the orderiy administration ofjustice and
`regard for the dignity ofjudicial proceedings,’ and to ‘protect against a litigant
`playing fast and loose with the courts”).
`
`16 “‘First, a party's later position must be ‘clearly inconsistent’ with its earlier
`position. [. . .] Second, courts regularly inquire whether the party has succeeded in
`persuading a court to accept that party's earlier position, so that judicial acceptance
`of an inconsistent position in a later proceeding would create ‘the perception that
`either the first or the second court was misled,’ [. . .] A third consideration is whether
`the party seeking to assert an inconsistent position would derive an unfair advantage
`or impose an unfair detriment on the opposing party if not estopped. [. . .]”°
`
`10
`
`Page 16 of4l
`
`
`
`Page 16 of 41
`
`

`

`\DOOfiJONLh-PUJN
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Applying the three New Hampshire factors to the present case, it is seen that
`
`the plaintiffs are judicially estopped from asserting that “sockets” as claimed in the
`
`‘001 Patent should not be construed to “substantially enclose the edge scissor ‘
`
`assemblies.” First, while prosecuting claims directed to identically disclosed subject
`
`matter in the ‘35 6 Patent, Lynch’s statement that the “sockets substantially enclose
`
`the edge scissor assemblies” would be inconsistent with any position that the sockets
`
`do not need to substantially enclose the edge scissor assemblies.
`
`Second, Lynch’s statement regarding the scope of the term socket was
`
`accepted by the patent examiner, with the advantage to Lynch that the ‘356 patent
`was granted. Compare, 151,, at 1816. In order to obtain claim allowance over his
`
`own prior patents, Lynch argued that the claimed sockets distinguished the invention
`
`after his prior devices and “[t]hese sockets are shown in the Figure 3 to substantially
`
`enclose the edge scissor assembly.”17 The examiner’s subsequent allowance18 of
`
`claims incorporating the term ‘socket’ defined as such, therefore, represents the
`
`USPTO’s acknowledgment and acceptance of this position.
`
`Third, Lynch will “derive an unfair advantage or impose an unfair
`
`detriment on [Caravan] if not estopped” from taking an inconsistent position.
`
`New Hampshire, 121 S.Ct. at 1815 (2001). If allowed to presently assert that
`
`his sockets do not “substantially enclose the edge scissor assemblies,” Lynch
`
`will in effect, unfairly expand his monopoly beyond What he is entitled under
`
`the compromise struck with the United States Patent and Trademark Office
`
`(“PTO”) - all to Caravan’s detrimentlg The Hamilton court, 270 F.3d at 782-
`
`” ‘356 Patent Pros. His., Exhibit F, Tab 10.
`
`18 ‘356 Patent Pros. His, Exhibit F, Tab 17.
`
`19 The PTO issues patents to notify the public as to the scope of an inventor’s
`rights, and this “has become paramount”. Festo Corp. v. Shoketsu Kinzoku Kogyo
`Kabushiki (30., 234 F.3d 558, 574—575, 56 USPQ2d 1865, 1877 (Fed. Cir. 2000), w.
`granted, 69 U.S.L.W. 3779 (U.S. June 18, 2001) (No. 001543).
`
`11
`
`Page 17 of4l
`
`
`
`Page 17 of 41
`
`

`

`\OOO‘JQLAJAUJN
`
`10
`
`ll
`
`12
`
`13
`
`i4.
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`3 (9th Cir. 2001), stated that creditors must pian actions in bankruptcy
`
`proceedings based on disclosure statements. ' Likewise, in patent cases, market
`
`entrants must be able to competitively design their products so as to avoid
`
`infringement, based on the prosecution history of patents, including statements
`
`of the patentee. Therefore, expansion of the meaning of the term socket
`
`beyond a structure that “substantialiy encloses the edge scissor assemblies”
`
`would unfairly detriment Caravan by allowing Lynch to enforce against
`
`Caravan subject matter that Caravan could reasonably have relied on as being
`
`disclaimed by Lynch.20 The principles ofjudicial estoppel should be applied
`
`here to prevent such an expansive definition of the term “socket.”
`
`4.
`
`THE TERA/I “SOCKET” CANNOT BE INTERPRETED
`SO AS TO ENSNARE THE PRIOR ART AND THUS
`EN VALIDATE THE ‘001 PATENT’S CLAIMS.
`
`If “socket” were to be interpreted contrary to its accustomed meaning to
`
`include structures that do not substantially enclose that which they receive, such as,
`
`for example, Uwshaped brackets, claim 1 would be invalid as anticipated under 35
`
`U.S.C. § 102 by Lynch’s own U.S. Patent No. 4,885,891 (“the ‘891 Patent”)21. In
`addition, claims 1 and 18 so interpreted would be invalid as obvious under 35 USC §
`
`103 over the ‘891 Patent alone, or in View of either US. Patents Nos. 1,846,496
`
`20 See, e.g., Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d
`1127 n. 4 (9th Cir. 1997) (implying that statements regarding the scope of a
`
`trademark would estopp a party in later proceedings); Russel}. v. Rolfs 893 F.2d
`1033, 1037 (9th Cir. 1990) (applying judicial estoppel); Avery Dennison V. Acco
`
`Brands Inc., 1999 WL 33 1 17262, *7, 1999 US. Dist. LEXIS 21464, *23-24 (CD.
`Cal. 1999) (Though not ultimately finding a later position to be inconsistent, this
`Court applied judicial estoppel to an earlier position made during trademark
`prosecution before the United States Patent and Trademark Office (“PTO”)).
`
`21 Attached hereto as Exhibit G.
`
`12
`
`Page 18 of4l
`
`
`
`Page 18 of 41
`
`

`

`\DOO‘JQM-P-UJ'MI—t
`
`mummawwwowmqmag$5:5
`NNNNMMNMNHHt—nw
`
`issued to Mills (“ix/tins”)22 or 684,130 issued to Taubert (“Taui)crt”).23
`
`In Harris Corp. V. IXYS Corp, 114 F.3d 1149, 1153, 43 USPQ2d 1018, 1021
`
`(Fed. Cir. 1997), the CAPC stated that “claims should be read in a way that avoids
`”24
`ensnaring prior art if it is possible to do so[.] Moreover, in discussing the scope of
`
`claims under the doctrine of equivalents, in Wilson Sporting Goods Co. v. David
`
`Geoffrey & Associates, 904 F.2d 677, 684, 14 USPQ2d 1942, 1948 (Fed. Cir.), fl
`
`denied, 498 U.S. 992, 111 S.Ct. 537, 112 L.Ed.2d 547 (1990), overruled in part on
`
`different grounds, Cardinal Chem. Co. v. Morton Int’l, 508 U.S. 83 (i993), the
`
`CAFC explained that the scope of the claims whether literally, or under the doctrine
`
`of equivalents, cannot cover subject matter that would have been obvious to one of
`
`ordinary skill in the art. Thus, claims 1 and 18 of the ‘001 Patth must be construed
`
`to ensure that they do not cover the prior art or subject matter obvious in View of the
`
`prior art.
`
`If the term “socket” in claims 1 and 18 were to be construed so as to
`
`read on a structure that does not substantialiy contain the edge scissor
`
`assemblies, such as the U—shaped brackets of the ‘891 Patent, it would have
`
`been either anticipated25 or obvious,26 and therefore invalid in view of the ‘891
`
`Patent. Specifically, the ‘891 Patent plainly teaches U—shaped brackets, as
`
`22 Attached hereto as Exhibit H.
`
`23 Attached hereto as Exhibit 1.
`
`24 _S_t_:_e_: @ng Modine Mfg. Co. v. United States Int'l Trade Comm'n, 75 F.3d
`1545, 1557, 37 U.S.P.Q.2D 1609, 1617 (Fed. Cir.), in. denied, 135 L. Ed. 2d 1048,
`116 S. Ct. 2523 (1996)(“When claims are amenable to more than one construction,
`they should when reasonably possible be interpreted so as to preserve their
`
`validity”); Decca Ltd. v. United States, 210 Ct. C1. 546, 544 F.2d 1070, 1080, 191
`U.S.P.Q. 439, 447 (Ct. Cl. 1976)(“prior art [. . .] requires that the claims be limited to
`the apparatus disclosed in order to preserve its vaiidity”).
`
`25 35 U.S.C. § 102(b).
`
`13
`
`Page 19 of4l
`
`
`
`Page 19 of 41
`
`

`

`\OOOKJQ'JI-b-UJNH
`
`mommhmmHSEESEGKESSS
`
`NNNNNNNN
`
`well as teaching or suggesting every other limitation found in claims 1 and 18
`
`of the ‘001 Patent:27
`
`
`
`Claim charts comparing every claimed element of claims 1 and 18 of
`
`the ‘001 patent with Lynch’s prior ‘891 Patent are attached hereto as Exhibits
`
`L and M.
`
`In addition, if “sockets” where to be impermissibly held as
`
`encompassing a structure which does not substantially enclose that which it
`
`contains, such as the U—shaped bracket of the ‘891 Patent, such claims would
`
`also have been obvious, and therefore invalid under 35 U.S.C. 103(a) over the
`
`Lynch’s own prior ‘891 Patent, either aIOne, or in View of either Mills or
`
`Taubert. Both the Mills and Taube