Case 2:01-cv-06530-SVW-AJWX Document 96 Filed 04/16/02 Page 1 of 1 Page ID #:46
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`Page 1 of 41
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`Petitioners Exhibit 1013
`Patent 5,944,040
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`ANTHONY W. SHAW (Aamitiea Pro Hac Vice)
`BROBECK, PHLEGER& HARRISON LLP
`1333 H Street, N.W., Suite 800
`Washington, D.C. 26005
`Telephone:
`(202) 220-6000
`Facsimile:
`(202) 220-5200
`
`FILED
`CLERK, U.S. DISTRICT COURT
`BY
`MAR 2.00 2002
`
`
`
`
`
`jc
`DEPUTY
`Bey
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`
`
`ISTRICT OF CALIFORNIA
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`
`
`MICHAEL C. TU (state Bar No. 186793)
`
`» BROBECK, PHLEGER & HARRISON LLP
`550 South Hope Street
`
`
`Los Angeles, California 90071-2604
`Telephone: {5I3} 489-4060
`
`Facsimile:
`(213) 745-3345
`JOERG-U WE SZIPL (Admitted Pro Hac Vice)
`
`GRIFFIN & SZIPL, PC
`Suite PH-1
`2300 9th Street, South
`
`Arlington, Virginia 22204
`Telephone:
`3) 979-5700
`Facsimile:
`(703) 979-7429
`
`
`
`Attorneys for Defendants
`AFFORDABLE INSTANT SHELTERS,
`ALLREDY PRODUCTS, CANVAS
`SPECIALTY, INC., CANOPIES BY FRED,
`CARAVAN CANOPY INTERNATIONAL,
`INC., RAGE PERFORMANCE,and
`CANOPY CONNECTIONS [LC
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` DATE: April-16, 2002°
`
`TIME:
`16:00 a.m.
`Plaintiffs,
` Vv.
`CTRM: Courtroom 6
`
`
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`CARAVAN CANOPY.
`|
`
`INTERNATIONAL, INC., a California _
`
`corporation, AFFORDABLE INSTANES
`SHELTERS,a Florida corporation; | Ch)
`ALLREDY PRODUCTS, a Califomia\%¥
`proprietorship; CANVAS SPECIALTY,
`“=}
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`INTERNATIONAL E-Z UP, INC, 4
`California corporation; and
`JAMES P. LYNCH,an individual, and
`K.D. KANOPY,INC., a Colorado
`corporation,
`.
`
`Case No. CV-01-06530 SVW (CTx)
`CARAVAN’S OPENING BRIEF
`FOR MARKMAN HEARING
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`INC., a California corporation;
`CANOPIES BY FRED, a Washington
`proprietorship; RAGE PERFO
`NC
`a California proprietorship; JOHN MEE
`CANOPIES, an Alabama proprietorship;
`and CANOPY CONNECTIONS LLC, a
`Colorado corporation.
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`3
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`Defendants.
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`MboNWNww22hFORRBESESDRBEERBRIS
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`TABLE OF CONTENTS
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`Se—j—|LY.ae
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`BACKGROUND FACTS oo... cece ce ccececereneeeeneeeeaeeseeesseatataeeneternaens 1
`
`RELEVANT LAW 10.0... cece cece cee ee recente ne nee seen ee en en eneneetaeetoenceaeas veel
`
`INTERPRETATION OF DISPUTED CLAIM TERMS
`OF U.S. PATENT NO. 5,244,001 «22.0... cece ccc cccc nce e cece eee eceeeeeeeneeeeneate 3
`
`A.
`
`Interpretation Of The Claim Term “Socket” .........cc cece eee eneee eens 4
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`Page
`
`1,
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`2.
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`3,
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`4.
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`The ‘001 Patent Defines “Socket” In Accordance
`With Its Ordinary Meaning To Be A Structure
`Or Hollow Which Substantially Encloses Or
`Captures The Scissor Edge Assembly ................0ccccccaneeeeeeees 4
`
`Lynch Defined The Term “Socket” Consistently
`With The Ordinary Meaning In Representations
`INE-TeCoos Krol Os)all© 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 356
`Patent ..... 0. ccc cece e cere e cece teen eee eeeeneee tas wed eeeeeeeeeeeees 10
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`The Term “Socket” Cannot Be Interpreted
`So As To Ensnare The Prior Art and Thus
`Invalidate The ‘001 Patent’s Claim ................ccccceeeteceecuseeeees 12
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`B.
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`C.
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`D.
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`Interpretation Of The Term “Parallel” «0.00.00. 0.0... cece cececec ene ee ee eees 15
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`Interpretation Of “Planar Contact Surfaces” ............cecececsceeeeeeeees 16
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`Interpretation Of “Close Fitting Engagement”................0.c0ccsee eens 17
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`INTERPRETATION OF DISPUTED CLAIM TERMS OF
`U.S. PATENT NO. 5,944,040 ..........ee edeeceeeneeaeeeteteeeeeneeneeeeeaneneees 18
`
`A.
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`B.
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`Interpretation Of “Center Pole” And “Center Pole Ribs” ................ 18
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`Interpretation Of “Claw Member”.................05 bebe eee eeeeeceeneeeeees 21
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`CONCLUSION 00. cece cece ence eee ne ADEE EEE Eade e eee eee es 22
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`i
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Avery Dennison v. Acco Brands, Inc.,
`1999 WL 33117262 (C.D. Cal.eh)re 12
`
`Bayer AG v. Blan Pharmaceutical Research Corp.,
`212 F.3d 1241 (Fed. Cir. 2000)... 0... ccccececcssusueeacceccceuscecsereeuuenenrecs 16
`
`Carroll Touch Inc. v. Electro Mech. Sys., I
`15 P.3d 1573, 27 USPQ2d 1836 (ted.Cir. 1993)... ccc ceceeecceceuscseeueveesass2
`Decca, Ltd. V. United States,
`210 Ct. Cl. 546, 544 F.2d 1070, 191 USPQ 439 (Ct. Cl. 1976)... eee 13,15
`
`Dreamwerks Production Group, Inc. v. SKG Studio,
`142 F.3d 1127 (9% Cir. 1997). ooo cccecceccccnceccevaeeceeneseeeerensccesenecs 12
`
`EMI Group N. Am., Inc. v. Intel Co
`157 F.3d 887, 48 USPQ2d 1181 (Fed. Cir. 1998)... 0... cccccccccaseecececcavavareens 2
`
`Elkay Mfe. Co. v. Ebco Mf. Co.
`192 F.3d 973, 52 USPQ2d.1109 (Fed. Cir, 1999)... ccc ee cases euceueees2,9
`Embrex, Inc. v. Serv. Eng’s Co
`216 F.3d 1343, 55 USPO2d 1161 (Fed. Cir. 2000)........ 0c cccecseececcecesceeees i
`
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
`234 F.3d 558, 56 USPQ2d 1865 (Fed. Cir. 2000),
`cert. granted, 69 U.S.L.W. 3779 (U.S. June 18, 2001) (No. 001543)... 11
`
`Harris Corp.
`
`Hamilton v. State Farm Fire & Casualty Co.,
`270 F.3d 778 (9° Cir, 2001)... cece cece ec ccseeeveeneeuenseserscessecusceueneeuss 10,11
`114 FE.34 1149, 43 USPQ2d 1018 (Fed. Cir. 1997)... 0... ccecceeeeeeneecesees3,13
`John Hopkins University v. Cellpro,Inc.,
`152 F.3d 1342, 47 USPQ2d 1705 (Fed. Cir 1998)... cc cccccceceecuceneeeeeeeees2)
`
`v. IXYS Co
`
`Jonsson v. The Stanley Works,
`903 F.2d 812, 14 USPQ2d 1863 (Ped. Cir, 1990)... ic ceccacsceeessssasccusaeesens2
`
`ii
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`Page 5 of 41
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`Kopykake Enterprises, Inc. v. Lucks Co.,
`264 F.3d 1377, 60 USPQ2d 1124 (Fed. Cir 2001)... 0.000. ceeceeccsesecsceseeecceeeece22
`
`Mantech Envtl. Servs., Inc. v. Hudson Envtl. Serv., Inc.,
`152 F.3d 1368, 47 USPQ2d 1732 (Fed. Cir, 1998)... 000... eecccceecceeeccecscceuses. 2
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967, 34 USPQ2d 1321 (Fed. Cir 1995)
`
`(en banc), aff'd, 517 U.S. 370, 116 S. Ct. 1384,
`134 L.Ed.2d 577 (1996)... eccccceccepececcescuceuesneseuseeesaeveesusteuteunececcescsee. 5
`
`Modine Mfg. Co. v. United States Int’] Trade Comm’n,
`75 F.3d 1545, 37 USPQ2d 1609 (Fed, Cir.)
`cert. denied, 135 L.Ed.2d 1048, 116 S. Ct.'2523 (1996).....ccccccccceeccceecceeeeeees 15
`New Hampshire v. Maine,
`532 U.S. 742, 121 S.Ct. 1808, 1815, 149 L.Ed.2d 968 (2001). ..ccccccccececeeee, 10,11
`Rissetto v. Plumbers & Steamfitters Local 343,
`94 F.3d 597 (9% Cir. 1996)... icc cecc ccc ecuessccceccussaesaucusceecuseeesseeseereeesess 10
`Russell v. Roifs,
`h
`893 F.2d 1033 (9" Cir. 1990)... ccecccccccccccceceueeeseeseesescccuseueeteeteteesce. 10,12
`Southwall Techs.. Inc. v. Cardinal IG, Co.,
`54 F.3d 1570, 34 USPQ2d 1673 (Fed. Cir. 1995)... ce. cceeccceccesssceeecccescceeee 2
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576, 39 USPQ2d 1573
`(Fed. Cir. 1996)... cecccecccccceeeeeesuucseeccueccesseueseuseusceussseees2,3,4,5,21,22
`Wilson Sporting Goods Co. v, David Geoffrey & Associates,
`904 F.2d 677, 14 USPQ2d 1942 (Fed. Cir.), cert. denied,
`498 U.S. 992, 111 8. Ct. 537, 112 L. Ed.2d'547 (1990),
`overruledin part on different grounds,
`Cardinal Chem. Co. v. Morton Int’l, 508 U.S. 83 (1993)... ccceececcce sees enees 13
`Wright Med. Tech., Inc. v. Osteonics Corp.,
`122 F.3d 1440, 43 USPQ2d 1837 (red, Cir. 1997)... ceccsccccceeeescecessuccess2
`
`Statutes
`
`United States Patent Act of 1952
`35 ULS.C. § 102(B). eee c cece ceeeeeesceesuesesausaeeeeesintutcerstiteetececce. 13
`
`.
`United States Patent Act of 1952
`35 US.C. § 103 (a)... ce cccc nce cceeeenese este ese ssu eeu sseteusuetutvseetecesseceess 13
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`OoOoWSDHtHBPYWBH
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`SmMYBYNMMBBYYMBeBeYeoIAAROHFFFSF6CeSDARESETES
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`ii
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`International E-Z UP,Inc., James P. Lynch, and K.D. Kanopy,Inc.
`(collectively, “Lynch”), brought this case against Caravan CanopyInt’l, Inc., et al.
`(collectively, “Caravan”), for infringement of U.S. Patent No. 5,244,001 (“the ‘001
`patent”)'. Caravan counterclaims against Lynch for infringement of U.S. Patent
`5,944,040 (“the ‘040 patent”)’. This Court has scheduled a “Markman” hearing for
`this case on April 16, 2002, and the parties have agreed to exchangebriefs in’
`preparation forthis 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) “closefitting 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“centerpole ribs”,
`and (2) “claw member”. Accordingly, Caravan hereby submits its constructions of
`these terms and phrases for the Court’s review.
`
`TH.
`
`RELEVANT LAW
`
`“The construction of claimsis simply a way ofelaborating the normallyterse
`claim language in order to understand and explain, but not to change, the scope of
`the claims.” Embrex, Inc.. v. Serv, Eng’g Corp., 216 F.3d 1343, 1347, 55 USPQ2d
`1161, 1163 (Fed. Cir. 2000) (mternal quotations andcitation 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. See id.; see also
`
`’ Copyattached hereto as Exhibit A.
`* Copy attached hereto as Exhibit B.
`> See Exhibit C, March 1 1, 2002 letter from defendant’s counsel, Anthony W.
`Shaw to plaintiff's counsel, John K. Fitzgerald.
`
`1
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`Vitronics Corp. 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. See Mantech Envil. Servs., Inc. v. Hudson Envtl.
`
`
`
`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 technology.
`See EMI Group N. Am.,Inc. v. Intel Corp., 157 F.3d 887, 892, 48 USPQ2d 1181,
`1184 (Fed. Cir. 1998).
`
`Asto the review of the intrinsic evidence, the specification is reviewed to
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`determine whether the patentee used terms in a manner inconsistent with their
`
`ordinary meaning. See Vitronics, 90 F.3d at 1582, 39 USPQ2d at 1577 (Fed.Cir.
`1996). “The words of a claim are generally given their ordinary and accustomed
`meaning, unless it appears from the specification orthe 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),
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`The prosecution history is considered to determine whetheror not there were
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`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,
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`1445, 43 USPQ2d 1837, 1841 (Fed. Cir. 1997); see also 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) (“Elkay”); see
`also Jonsson v. The Stanley Works, 903 F.2d 812, 817-18, 14 USPQ2d 1863, 1868
`(Fed. Cir. 1990) (providing that when twopatents issued from continuation-in-part
`2
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`applications derived from oneoriginal application, the prosecution history of a claim
`limitation in the first patent to issue was properly applied to the samelimitation in
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`the second patentto issue).
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`Lastly, claims are construed, where possible, to avoid ensnaringthe priorart,
`and thus preserve their validity, Harris Corp. v. IXYS Corp., 114 F.3d 1149, 1153,
`43 USPQ2d 1018, 1021 (Fed. Cir. 1997); and should not be construed in a manner
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`which would exclude a preferred embodiment, Vitronics, 90 F.3d at 1583-4, 39
`USPQ2dat 1578 (Fed. Cir. 1996).
`
`I.
`
`INTERPRETATION OF DISPUTED CLAIM TERMSOFU.S.
`
`PATENT NO. 5,244,001
`The ‘001 Patent is directed to an expandable framework structure that can be
`folded for storage and expandedfor use, especially as a canopy when a coveringis
`placed on top of the framework.
`
`The framework is shown generally in Fig 2a of the ‘001 Patent:
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`
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`The claims of the ‘001 Patent are exemplified by independentclaims 1
`and 18. These claims are reproduced separately from the patent in Exhibit D hereto,
`in which the disputed claim terms are shown initalics, with their immediate relevant
`context shown in bold.
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`13
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`A.
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`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
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`reviewed beginning with the words of the claims, then the specification and finally
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`the prosecution history. Vitronics, 90 F.3d at 1582, 39 USPQ2d 1576-7 (Fed. Cir.
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`1996).
`
`The ordinary meaning of the word “socket” is a structure or hollow that
`substantially encloses or captures that which it contains or receives.* Examples of
`the common usage of the word “socket” confirm this meaning. An eye socket
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`substantially encloses or captures the eyeball. An electrical socket substantially
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`encloses or captures an electrical plug. A light socket substantially encloses or
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`captures the winding of a light bulb. A ball-and-socketjointis a structure in which a
`socket substantially encloses or captures a ball. A socket wrench substantially
`contains or captures a nut.
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`Common usagealso illustrates the limits of the word socket. A socket wrench
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`contains a socket, whereas a box wrench does not because it does not substantially
`contain or capture the nut.
`
`* 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 (2"* ed. 1983).
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`4
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`For example, at left is a socket wrench, at right a box wrench:
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`
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`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
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`appears in the context of the phrase “a plurality offirst sockets, each said first socket
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`[sic] having a pair of spaced-apart, parallel first sidewalls ... sized to receive a
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`respective scissor edge assembly.” There is nothing in the wording ofthe 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
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`MwNYNYNYNYNNNDDwReaoeOkaeaaaoNDRPFBeNYFPSDS6BDOHDHhRBHDBYSBSG
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`“socket”is to be assigned its ordinary meaning.
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`This ordinary meaning is confirmed by the descriptive portion ofthe
`specification. “The specification acts as a dictionary whenit expressly defines terms
`
`used in the claims or whenit 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 banc), affd, 517 U.S.
`370, 116 S. Ct. 1384, 134 L.Ed.2d 577 (1996) (“Markman”),
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`In the specification of the ‘001 Patent, the sockets of the claims are shown
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`clearly in Fig. 3:
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`more detail in Fig. 8 of the ‘001 patent:
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`The individual “mount 60” in which the sockets are formed is shown in
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`The specification of the ‘001 patent describes the sockets as follows:
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`a channel shaped socket ... formed between a pair of spaced-
`apart sidewalls 121 and 122. Sidewalls 121 and 122 are joined by
`web 124 with sidewalls 121, 122 being spaced-apart a width
`wy
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`° 001 Patent, Exhibit A, col. 8, lines 47-52.
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`The descriptive portion ofthe specification,thatis the figures andthe text of
`the disclosure, consistently with the claims, indicates that the claimed socketis
`
`defined m 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
`endsof the edge scissor assemblies may be captured in closefitted engagement
`between the facing sidewall portions thereof.’ The “mount”is provided with
`“sockets and fastening pins to pivotally secure inner ends of the scissor bars within
`the sockets.”’ The specification further states that “scissor assembly 19 ... has
`opposite outer upper and lower ends captured in sockets formed in mounts 60 and
`62." 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 adaptedto receive end portions ofrespective scissor bars.””
`Fig. 11 shows the sockets 160 as follows:
`
`155
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`154
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`All of the claimed “sockets” depicted in the figures and otherportions of the
`
`§ «901 Patent, Exhibit A, col. 3, lines 57-61 (emphasis added).
`”*001 Patent, Exhibit A, col. 4, lines 15-17 (emphasis added).
`* 001 Patent, Exhibit A, col. 6, lines 61-63 (emphasis added).
`* O01 Patent, Exhibit A,col. 8, lines 36-39 (emphasis added),
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`specification illustrate and embody the ordinary and customary meaning ofthe term
`socket.'” As such, “socket” in the ‘001 Patentis given its ordinary meaning in every
`instance when referring to the claimed structure. The ordinary meaning in the
`contextof the 001 Patent is a structure or hollow which substantially encloses the
`edge scissor assembly.
`
`2
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`LYNCH DEFINED THE TERM “SOCKET” CONSISTENTLY
`WITH THE ORDINARY MEANINGIN 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 ofthe application which ledto the ‘001 Patent, Lynchfiled a
`so-called divisional U.S. 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. "! Not only was the
`disclosure of the two patent applications identical, and not only were they pending
`before the USPTOat the same time, Lynch expressly admitted that the claims of the
`‘356 Patent were merely obviousvariations ofthe claimsof the ‘001 Patent by
`disclaiming that portion of the ‘356 Patent’s term subsequent to the expiration ofthe
`‘001 Patent.’
`Lynch argued that the claimed sockets distinguished over his own priorart
`patents as follows:
`
`“The present Claim 1, however, provides sockets formed within the
`
`'® See, e.g., ‘001 Patent, Exhibit A, col. 10, tines 12, 25; col. 9, line 18; and
`Figs. 3, 8-13, 15, 16, 19-21, 23, 24, and 25.
`
`"' Attached hereto as Exhibit E.
`
`Prosecution History of United States Patent No. 5,421,356 (hereinafter cited
`as “356 Patent Pros. His.”), Exhibit F, Tab 16.
`
`8
`
`Page 14 of 41
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`Page 14 of 41
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`

`

`OoCOSFOHOOmBRWYYe
`
`MNNMNNNNNDeHoeeoTAHBRBBHB=SoeAAAREBDHAS
`
`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 ‘356 and ‘001 Patent disclosures puts competitors
`on clear notice oftheir linkage. '* 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 IIJ.A.1. 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, andthe prior art, including Lynch’s
`
`,
`
`'3 «356 Patent Pros. His., Exhibit F, Tab 10, p.3. The Fig. 3 Lynchis referring
`to is also Fig. 3 of the ‘001 Patent supra, p.6.
`'* Elkay, 192 F.3d at 980, 52 USPQ2dat 1114 (Fed. Cir. 1999) (“Elkay added
`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 ofclaims 1, 3 and 5 of[the
`*531 patent] with the ‘feed tube’ changedto ‘feed probe’....” By makingthis
`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’s statementput competitors
`on clear notice ofthat linkage and because the ‘531 and ‘855 patents stem from the
`same genus, it is proper to consider the prosecution history ofclaim I ofthe ‘855
`patent to be an amalgam ofthe prosecution histories ofboth patents.’’) (emphasis
`added).
`‘
`:
`
`Page 15 of 41
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`

`

`OoCO“SOWUB&BWYNHN
`PenhphkakehNOFBRYWNeOO
`
`17
`
`own patents prevent a more expansive meaning.
`
`3.
`
`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 ‘356 PATENT
`
`Underprinciples ofjudicial estoppel, Lynch cannotpresently 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 356 Patent. “Judicial
`estoppel is an equitable doctrine that precludes a party from gaining an advantage by
`asserting one position, and then later seeking an advantage by taking a clearly
`inconsistent position.” Hamilton v. State Farm Fire & Casualty Co., 270 F.3d 778,
`782 (9" Cir. 2001)(“Hamilton”) (Citing, Rissetto v, Plumbers & Steamfitters Local
`343, 94 F.3d 597, 600-601 (9" Cir. 1996)). ° “Several factors typically inform the
`decision whether to apply the doctrine[.]’” Id., 270 F.3d at 782-3 (9"Cir. 2001)
`(Quoting, New Hampshire v. Maine, 532 U.S. 742, 121 S.Ct.1808, 1815, 149
`L.Ed.2d 968 (2001) (“New Hampshire”)),'°
`
`
`
`’° Hamilton, 270 F.3d 778, 782 (9" Cir. 2001), quoting, Russell v. Rolfs, 893
`F.2d 1033, 1037 (9" 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 orderly administration ofjustice and
`regard for the dignity ofjudicial proceedings,’ and to ‘protect againsta litigant
`playing fast and loose with the courts.””).
`'6 «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 of 41
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`Page 16 of 41
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`

`

`oOooOoNNDNAWFFWDYe
`
`—-=©
`
`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 “356 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 Lynchthat the ‘356 patent
`
`was granted. Compare, Id., at 1816. In order to obtain claim allowance overhis
`
`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.”'’ The examiner’s subsequent allowance’? of
`claims incorporating the term ‘socket’ defined as such, therefore, represents the
`
`|
`
`USPTO’s acknowledgment and acceptance ofthis 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 whathe is entitled under
`
`the compromise struck with the United States Patent and Trademark Office
`(“PTO”) — all to Caravan’s detriment.’ The Hamilton court, 270 F.3d at 782-
`
`17 356 Patent Pros. His., Exhibit F, Tab 10.
`
`18 ¢356 Patent Pros. His., Exhibit F, Tab 17.
`
`'? The PTO issuespatents 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 Co., 234 F.3d 558, 574-575, 56 USPQ2d 1865, 1877 (Fed. Cir. 2000),cert.
`granted, 69 U.S.L.W. 3779 (U.S. June 18, 2001) (No. 001543).
`
`11
`
`Page 17 of 41
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`—OoCO“TDBAOmBSWobo
`
`3 (9" 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 ofthe term socket
`
`beyonda structure that “substantially encloses the edge scissor assemblies”
`
`would unfairly detriment Caravan by allowing Lynch to enforce against
`
`Caravan subject matter that Caravan could reasonably haverelied on as being
`disclaimed by Lynch.” Theprinciples ofjudicial estoppel should be applied
`here to prevent such an expansive definition of the term “socket.”
`
`4.
`
`THE TERM “SOCKET” CANNOT BE INTERPRETED
`SO AS TO ENSNARE THE PRIOR ART AND THUS
`INVALIDATE 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, U-shaped 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”). 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 U.S. Patents Nos. 1,846,496
`
`20 Seee.g., Dreamwerks Production Group,Inc. v. SKG Studio, 142 F.3d
`1127 n. 4 (9Cir. 1997) (implying that statements regarding the scope of a
`
`trademark would estopp a party in later proceedings); Russell v. Rolfs, 893 F.2d
`1033, 1037 (9th Cir.1990) (applying judicial estoppel); Avery Dennison v. Acco
`
`Brands, Inc., 1999 WL 33117262, *7, 1999 U.S. Dist. LEXIS 21464, *23-24 (C.D.
`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
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`

`

`OoCOSOBNABRDBOR
`aaeoBhWwWweS&S
`
`issued to Mills (“Mills”)or 684,130 issued to Taubert (“Taubert”).”
`In Harris Corp. v. IXYS Corp., 114 F.3d 1149, 1153, 43 USPQ2d 1018, 1021
`
`(Fed. Cir. 1997), the CAFC stated that “claims should be read in a way that avoids
`9924
`ensnaring prior art if it is possible to doso[.]”*” Moreover, in discussing the scope of
`claims under the doctrine of equivalents, in Wilson Sporting Goods Co. vy. David
`Geoffrey & Associates, 904 F.2d 677, 684, 14 USPQ2d 1942, 1948 (Fed. Cir.), cert,
`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 Intl, 508 U.S. 83 (1993), the
`
`CAFCexplained that the scope of the claims whetherliterally, 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 Patent 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 substantially contain the edge scissor
`
`assemblies, such as the U-shaped brackets of the ‘891 Patent, it would have
`been either anticipated** or obvious,”® and therefore invalid in view ofthe ‘891
`
`Patent. Specifically, the ‘891 Patent plamly teaches U-shaped brackets, as
`
`2 Attached hereto as Exhibit H.,
`
`23 Attached hereto as Exhibit L
`
`** See also 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.), cert. denied, 135 L. Ed. 2d 1048,
`116 8S. Ct. 2523 (1996)(“Whenclaims 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. Cl. 546, 544 F.2d 1070, 1080, 191
`U.S.P.Q. 439, 447 (Ct. Cl. 1976)(“priorart [...] requires that the claims be limited to
`the apparatus disclosed in order to preserve its validity”).
`° 35 U.S.C. § 102(b).
`
`13
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`Page 19 of 41
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`well as teaching or suggesting every other limitation found in claims | and 18
`of the ‘001 Patent:7’
`
`
`
`
`
`
`
`YEE
` <>olNEA
`
`fee
`
`
`
` FIG.8
`
`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
`
`Land 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 alone, or in view ofeither Mills or
`
`Taubert. Both the Mills and Taubert explicitly or inherently teach “close-
`77 66,
`
`fitted engagement betweenthe parallel facing sidewall portions,”
`
`“planar
`
`contact surfaces,” and “[resistance to] lateral and torsional deflections.” Thus,
`
`
`6 35 U.S.C. § 103(a).
`*7 See also, U.S. Patents Nos. 4,947,884, attached hereto as ExhibitJ, Fig.6,
`
`col. 6, line 35; and 4,779,635, attached hereto as Exhibit K, Fig. 3, col. 5, lines 55-
`61(¢U-brackets 36 and 37”), which also teach U-shaped brackets for use on scissor-
`
`Page 20 of 41
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`oOoFFSIDWABPWHHBO
`
`_ oO
`
`11
`
`even ifit were to be concluded that the ‘891 Patent did not by itselfprovide
`the motivation to produce the claimed structures, either Mills or Taubert
`
`would be sufficient to provide such a motivation.
`
`Claim charts comparing every claimed element of Claims 1 and 18 of the ‘001
`
`Patent to the ‘891 Patent in combination with either Mills or Taubert, are attached as
`
`hereto as Exhibits N and O.
`
`Since th