Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 1 of 44 PageID #: 5901
`
`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`THE HILLMAN GROUP, INC.,
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`v.
`
`KEYME, LLC
`
`
`
`§
`
`§
` CASE NO. 2:19-CV-209-JRG
`§
`
`§
`
`§
`
`
`CLAIM CONSTRUCTION
`MEMORANDUM AND ORDER
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`
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`Before the Court is the Opening Claim Construction Brief (Dkt. No. 142) filed by
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`Plaintiff The Hillman Group, Inc. (“Plaintiff” or “Hillman”). Also before the Court is the
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`Responsive Claim Construction Brief (Dkt. No. 151) filed by Defendant KeyMe, LLC
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`(“Defendant” or “KeyMe”) as well as Plaintiff’s reply (Dkt. No. 154).
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`
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`The Court held a hearing on June 23, 2020.
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`Table of Contents
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`I. BACKGROUND ....................................................................................................................... 2
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`II. LEGAL PRINCIPLES ........................................................................................................... 3
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`III. AGREED TERMS................................................................................................................. 7
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`IV. DISPUTED TERMS .............................................................................................................. 8
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`A. “configured to replicate the tooth pattern of the blade of said key inserted in said key
`receiving entry” ..................................................................................................................... 8
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`B. “configured to cut the selected key blank to duplicate a key tooth pattern of the master
`key” ..................................................................................................................................... 16
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`C. “configured to . . . cut the determined bitting pattern into a key blank” ............................. 18
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`D. “at least one duplicate,” “key duplication process,” and “duplicated key” ........................ 21
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`E. “to determine whether the inserted key matches one of a group of preselected key
`types” .................................................................................................................................. 22
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`F. “key analysis system . . .” .................................................................................................... 27
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`G. “queue of key duplication events” ...................................................................................... 35
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`H. “key duplicating system . . .” .............................................................................................. 40
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`V. CONCLUSION...................................................................................................................... 44
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 2 of 44 PageID #: 5902
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`I. BACKGROUND
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`
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`Plaintiff alleges infringement of United States Patents No. 8,979,446 (the “’446 Patent”),
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`9,914,179 (the “’179 Patent”), and 10,400,474 (the “’474 Patent”) (collectively, “the patents-in-
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`suit”). (Dkt. No. 142, Exs. 1–3). Plaintiff submits that “[t]he inventions and the machines
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`involved in this litigation represent the culmination of years of technological advances aimed at
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`automating the once cumbersome and inconvenient key cutting process.” (Dkt. No. 142, at 2.)
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`Defendant contends that “the asserted claims are directed to a particular technique for
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`duplicating keys, called ‘trace cutting,’ which involves making an identical copy of the tooth
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`profile of the customer’s key.” (Dkt. No. 151, at 1.) Plaintiff disputes Defendant’s contention,
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`as discussed regarding the disputed claim terms construed herein.
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`
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`The ’446 Patent, titled “Fully Automatic Self-Service Key Duplicating,” issued on
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`March 17, 2015, and bears an earliest priority date of June 3, 2010. The ’446 Patent was
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`originally assigned to Minute Key Inc. (“Minute Key”). The Abstract of the ’446 Patent states:
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`A self-service, fully-automatic kiosk for duplicating keys includes a kiosk
`housing having a customer interface for receiving payment from a customer for
`the purchase of at least one duplicate of the customer’s key. A key-receiving
`entry in the housing receives at least a portion of the customer’s key to be
`duplicated, and a key analysis system within the housing analyzes the blade of a
`key inserted in the key-receiving entry to determine whether the inserted key
`matches one of a group of preselected key types and, if so, which preselected key
`type is matched. A key blank magazine within the housing stores key blanks for
`each of the preselected key types. A key blank extraction system extracts from
`the magazine a key blank for the preselected key type matched by the blade of the
`key inserted in the key-receiving entry. Then a key duplicating system within the
`kiosk replicates the tooth pattern of the blade of the key inserted in the key-
`receiving entry, on the blade of the extracted key blank.
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`The ’179 Patent, titled “Self Service Key Duplicating Machine with Automatic Key
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`
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`Model Identification System,” issued on March 13, 2018, and bears an earliest priority date of
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 3 of 44 PageID #: 5903
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`November 28, 2006. The ’179 Patent was originally assigned to Minute Key. The Abstract of
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`the ’179 Patent states:
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`A method of duplicating a key includes receiving a master key in a key
`duplicating machine. The machine automatically detects a cross sectional profile
`of the master key. The machine automatically determines, based on the detected
`cross sectional profile, a type and model of the master key. The machine
`automatically selects a key blank that matches the type and model of the master
`key, and then automatically cuts the selected key blank to duplicate a key tooth
`pattern of the master key.
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`The ’474 Patent, titled “Identification Module for Key Making Machine,” issued on
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`
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`September 3, 2019, and bears an earliest priority date of August 16, 2013. Plaintiff is the
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`original assignee of the ’474 Patent. The Abstract of the ’474 Patent states:
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`An identification module is disclosed for use in a key making machine. The
`identification module may have a key receiving assembly configured to receive
`only a shank of an existing key. The identification module may also have a tip
`guide, configured to receive a tip of the shank of the existing key. The tip guide
`may have a slot that exposes a tip end of the shank. The identification module
`may also have an imaging assembly configured to capture an image of the tip end
`through the slot.
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`
`II. LEGAL PRINCIPLES
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`
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`It is understood that “[a] claim in a patent provides the metes and bounds of the right
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`which the patent confers on the patentee to exclude others from making, using or selling the
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`protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.
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`Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v.
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`Westview Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
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`(1996).
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`
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`“In some cases, however, the district court will need to look beyond the patent’s intrinsic
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`evidence and to consult extrinsic evidence in order to understand, for example, the background
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`science or the meaning of a term in the relevant art during the relevant time period.” Teva
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 4 of 44 PageID #: 5904
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`Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (citation omitted). “In cases where
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`those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about
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`that extrinsic evidence. These are the ‘evidentiary underpinnings’ of claim construction that we
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`discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on
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`appeal.” Id. (citing 517 U.S. 370).
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`
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`To ascertain the meaning of claims, courts look to three primary sources: the claims, the
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`specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
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`contain a written description of the invention that enables one of ordinary skill in the art to make
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`and use the invention. Id. A patent’s claims must be read in view of the specification, of which
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`they are a part. Id. For claim construction purposes, the description may act as a sort of
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`dictionary, which explains the invention and may define terms used in the claims. Id. “One
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`purpose for examining the specification is to determine if the patentee has limited the scope of
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`the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
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`
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`Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
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`the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
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`Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
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`lexicographer, but any special definition given to a word must be clearly set forth in the
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`specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
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`Although the specification may indicate that certain embodiments are preferred, particular
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`embodiments appearing in the specification will not be read into the claims when the claim
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`language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34
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`F.3d 1048, 1054 (Fed. Cir. 1994).
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 5 of 44 PageID #: 5905
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`
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`This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
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`decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips, the
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`court set forth several guideposts that courts should follow when construing claims. In
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`particular, the court reiterated that “the claims of a patent define the invention to which the
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`patentee is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari
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`Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used
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`in a claim are generally given their ordinary and customary meaning. Id. The ordinary and
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`customary meaning of a claim term “is the meaning that the term would have to a person of
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`ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date
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`of the patent application.” Id. at 1313. This principle of patent law flows naturally from the
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`recognition that inventors are usually persons who are skilled in the field of the invention and
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`that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.
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`
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`Despite the importance of claim terms, Phillips made clear that “the person of ordinary
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`skill in the art is deemed to read the claim term not only in the context of the particular claim in
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`which the disputed term appears, but in the context of the entire patent, including the
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`specification.” Id. Although the claims themselves may provide guidance as to the meaning of
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`particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
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`(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as
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`being the primary basis for construing the claims. Id. at 1314–17. As the Supreme Court stated
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`long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
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`portions of the specification to aid in solving the doubt or in ascertaining the true intent and
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`meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
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`addressing the role of the specification, the Phillips court quoted with approval its earlier
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 6 of 44 PageID #: 5906
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`observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
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`1998):
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`Ultimately, the interpretation to be given a term can only be determined and
`confirmed with a full understanding of what the inventors actually invented and
`intended to envelop with the claim. The construction that stays true to the claim
`language and most naturally aligns with the patent’s description of the invention
`will be, in the end, the correct construction.
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`Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the
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`specification plays in the claim construction process.
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`
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`The prosecution history also continues to play an important role in claim interpretation.
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`Like the specification, the prosecution history helps to demonstrate how the inventor and the
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`United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because
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`the file history, however, “represents an ongoing negotiation between the PTO and the
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`applicant,” it may lack the clarity of the specification and thus be less useful in claim
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`construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is
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`relevant to the determination of how the inventor understood the invention and whether the
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`inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see
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`Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that
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`“a patentee’s statements during prosecution, whether relied on by the examiner or not, are
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`relevant to claim interpretation”).
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`
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`Phillips rejected any claim construction approach that sacrificed the intrinsic record in
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`favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
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`condemned the suggestion made by Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193
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`(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
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`dictionaries or otherwise) before resorting to the specification for certain limited purposes.
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 7 of 44 PageID #: 5907
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`Phillips, 415 F.3d at 1319–24. According to Phillips, reliance on dictionary definitions at the
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`expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
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`words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
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`Phillips emphasized that the patent system is based on the proposition that the claims cover only
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`the invented subject matter. Id.
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`
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`Phillips does not preclude all uses of dictionaries in claim construction proceedings.
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`Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
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`court emphasized that claim construction issues are not resolved by any magic formula. The
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`court did not impose any particular sequence of steps for a court to follow when it considers
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`disputed claim language. Id. at 1323–25. Rather, Phillips held that a court must attach the
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`appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
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`bearing in mind the general rule that the claims measure the scope of the patent grant.
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`III. AGREED TERMS
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`
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`In their May 15, 2020 Amended Joint Claim Construction and Prehearing Statement
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`(Dkt. No. 146) and in their June 9, 2020 Joint Claim Construction Chart Under P.R. 4-5(d) (Dkt.
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`No. 155, Ex. A), the parties submitted the following agreements:
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`Term
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`“controllable drive coupled to said magazine”
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`(’446 Patent, Claims 9, 40, 66, 92)
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`“a guard adjacent said key receiving entry to
`protect the head of a key protruding from said
`entry from accidental contact”
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`(’446 Patent, Claims 22, 53, 78, 103)
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`
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`Agreed Construction
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`“a drive motor selectively energized to control
`the movement of said magazine”
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`“a guard adjacent to said key receiving entry to
`protect the head of a key inserted in the kiosk
`from being bumped during a key duplication
`process”
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 8 of 44 PageID #: 5908
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`“configured to exchange communications”
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`(’474 Patent, Claims 11–19)
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`“channel profile”
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`(’474 Patent, All Claims)
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`“a bitting pattern of an existing key”
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`(’474 Patent, Claims 20)
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`“the determined bitting pattern”
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`(’474 Patent, Claims 1–19)
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`
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`“configured to send and receive information”
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`sizes, and/or
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`locations of
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`shapes,
`“the
`channels”
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`“the tooth pattern of an existing key”
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`the existing key
`tooth pattern of
`“the
`determined by the imaging system”
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`IV. DISPUTED TERMS
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`A. “configured to replicate the tooth pattern of the blade of said key inserted in said key
`receiving entry”
`
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`“configured to replicate the tooth pattern of the blade of said key inserted in
`said key receiving entry”
`(Term 1)1
`(’446 Patent, All Asserted Claims)
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`Plaintiff’s Proposed Construction
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`Defendant’s Proposed Construction
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`“configured to make a copy of the tooth pattern
`of the blade of the customer’s key inserted into
`said key-receiving entry”
`
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`(Dkt. No. 146, App’x A, at 1; Dkt. No. 142, at 3; Dkt. No. 151, at 2; Dkt. No. 155, Ex. A, at 1.)
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`“configured to make an identical copy of the
`tooth pattern of the blade of the customer’s key
`inserted into said key-receiving entry”
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`(1) The Parties’ Positions
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`Plaintiff argues that “the copy has to work in that it has to be able to operate the same
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`lock as the master key,” but “it need not be a perfect copy, an exact copy, or an identical copy.”
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`1 The “Term” numbers set forth in this Claim Construction Memorandum and Order refer to
`numbering used by the parties. (See Dkt. No. 146, App’x A; see also Dkt. No. 142, at 3 n.2.)
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 9 of 44 PageID #: 5909
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`(Dkt. No. 142, at 4.) Plaintiff argues that this “common-sense understanding” is also consistent
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`with the specification. (Id., at 4; see id. at 4–7.) Plaintiff also emphasizes that “[t]he word
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`‘identical’ is nowhere to be found in any of the specifications when addressing duplicated keys,
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`tooth patterns, or bitting patterns.” (Id., at 7.) Plaintiff also cites dependent claims that
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`“include[e] a new limitation for removing certain imperfections in the copy.” (Id., at 8.)
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`Further, Plaintiff cites embodiments in which a key is cut based on a “code” associated with a
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`master key rather than based on the master key itself, such that “any slight imperfections or
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`nominal deviations in the master key from wear, usage, etc., will not be present in the code-cut
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`duplicate.” (Id., at 9.) Plaintiff concludes that “[a]dding a superlative (‘identical copy’) merely
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`stacks the deck in KeyMe’s favor in a way that is inconsistent with the disclosed inventions.”
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`(Id., at 11.)
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`
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`Defendant responds that mechanical trace cutting is the only disclosed technique. (Dkt.
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`No. 151, at 2–3.) Defendant argues that different patents, not the patents-in-suit, are directed to
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`techniques other than trace cutting, and such techniques do not necessarily reproduce the tooth
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`pattern of a customer key. (Id., at 3–5.) Defendant urges that the evidence distinguishes
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`between replicating a key and merely producing a duplicate that will work in the same lock. (Id.,
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`at 5–6.) Defendant also submits that its proposal does not exclude “minute flaws” and “does not
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`require replicating non-geometric features such as material, color, or an American Flag pattern,
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`or any feature of the key head, which is not part of the blade and does not have a tooth pattern.”
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`(Id., at 7.) Further, Defendant argues that judicial estoppel precludes Plaintiff from contesting
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`Defendant’s proposed interpretation. (Id., at 7–9.)
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`
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`Plaintiff replies that “[t]here is no basis to limit all three patents to a single ‘mechanical
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`trace cutting’ embodiment,” “[a]nd ‘mechanical trace cutting’ does not necessarily yield
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 10 of 44 PageID #: 5910
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`‘identical copies.’” (Dkt. No. 154, at 1.) Plaintiff emphasizes that the specification discloses
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`other duplication techniques, such as code cutting and optical trace cutting, and “[t]he
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`specification emphasizes the standard time and again—the copied ‘bitting pattern’ must be able
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`to open the lock, it need not be ‘identical’ to the original.” (Id., at 1–2.) Plaintiff concludes:
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`“The term ‘copy’ properly captures the scope of the inventions. As is clear from the
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`specifications, the scope of the claims contemplate that the newly cut key (or tooth pattern or
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`bitting pattern) can open the same lock as the original key despite recognized differences,
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`‘microscopic,’ ‘minute,’ aesthetic, or otherwise.” (Id., at 4.)
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`
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`At the June 23, 2020 hearing, Defendant argued that this disputed term does not
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`encompass code cutting because the phrase “said key” in this disputed term refers to the inserted
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`key, not a factory pattern. Plaintiff reiterated that the specification refers to code cutting and that
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`code cutting has been well known in the art.
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`(2) Analysis
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`The Background of the Invention section of the ’446 Patent discloses:
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`Duplicate keys are typically cut from pre-existing master keys using a hand-
`operated table-top tool having two clamps, a cutting wheel, a follower and a
`cleaning wheel. There is a long-felt need for a fully automatic key identifying
`and/or duplicating machine that can provide a duplicate key for an ordinary
`consumer in a manner as easy as purchasing an item from a vending machine or
`receiving money from an automated teller machine.
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`’446 Patent at 1:19–26.
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`
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`Claim 1 of the ’446 Patent, for example, recites (emphasis added):
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`1. A self-service kiosk for duplicating keys, comprising:
`a kiosk housing having a customer interface configure [sic] to receive
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`payment from a customer for the purchase of at least one duplicate of the
`customer’s key,
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`a key-receiving entry in said housing configured to receive at least a
`portion of the customer’s key to be duplicated, wherein the key-receiving entry
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 11 of 44 PageID #: 5911
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`blocks insertion of the head of an inserted key so that only the blade of an inserted
`key extends into the kiosk housing,
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`a key analysis system within said housing configured to analyze the blade
`of a key inserted in said key-receiving entry to determine whether the inserted key
`matches one of a group of preselected key types and, if so, which preselected key
`type is matched,
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`a key blank magazine within said housing configured to store key blanks
`for each of said preselected key types,
`
`a key blank extraction system configured to extract from said magazine a
`key blank for the preselected key type matched by the blade of said key inserted
`in said key-receiving entry,
`a key duplicating system within said kiosk configured to replicate the
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`tooth pattern of the blade of said key inserted in said key-receiving entry, on the
`blade of said extracted key blank, and
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`a key-removal exit in said housing providing customer access to the key
`with the replicated tooth pattern for removal from the kiosk.
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`The claims here at issue use “replicate” in the context of producing a key (referred to as a
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`
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`“duplicate”) based on an existing key (referred to as a “master” or as an “original”). A duplicate
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`should be able to open the same locks as the master. The parties agree that the master and the
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`duplicate can differ in various ways that do not affect the ability of the duplicate to open the
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`same locks as the master, such as differences in material and differences in aesthetic design. For
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`example, the specification refers to “key blanks of . . . different styles (plain brass, colored flag
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`pattern, colored flower pattern, etc.).” ’446 Patent at 6:10–13; see id. at 13:36–38 (“different
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`styles”).
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`
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`The parties also agree that the duplicate need not be perfectly identical to the master.
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`This understanding is consistent with disclosures and dependent claims regarding “de-burring” a
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`newly cut key. See, e.g., ’446 Patent at Cl. 11; id. at 17:45–52 (“the tooth edges of the key blank
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`that are first engaged by the de-burring wheel 141 are the edges last engaged by the cutting
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`wheel 131, which are the edges that contain any burrs or other debris remaining from the cutting
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`operation”). This understanding is also consistent with evidence cited by Plaintiff that a
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 12 of 44 PageID #: 5912
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`duplication process can correct for flaws in a master key. (See Dkt. No. 142, Ex. 13, U.S. Patent
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`No. 8,682,468 at Fig. 8.)
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`
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`Defendant’s proposal of “identical” is therefore potentially misleading and confusing.
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`Indeed, in prior instances the Court has found that absolutes in claim constructions are
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`disfavored. See, e.g., Colorquick, LLC v. Eastman Kodak Co., No. 6:06-CV-390, 2008 WL
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`5771324, at *14 (E.D. Tex. June 25, 2008) (Love, J.) (“Using the word ‘identical’ implies a level
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`of perfect correlation that is not necessarily always possible between an image on a screen and a
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`printed document.”).
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`
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`The parties dispute whether a duplicate can be produced merely from information about
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`the master or rather must be produced by physically tracing the tooth pattern2 of the master
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`(sometimes referred to as “mechanical trace cutting”). The key issue, so to speak, is whether
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`“replicate” encompasses techniques other than trace cutting, such as “code cutting.” Code
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`cutting involves matching the master with a manufacturing code and then cutting the duplicate
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`based on tooth pattern information associated with the code.3 Defendant urges that “replicate” is
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`limited to tracing.
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`2 The “tooth pattern” of a key can interact with pins inside a lock so as to enable the lock to be
`turned by the key. The “tooth pattern” is sometimes referred as a “bitting pattern.”
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`3 Plaintiff cites numerous references regarding code cutting (Dkt. No. 142, at 8 n.4):
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`See, e.g., [Dkt. No. 142,] Ex. 5 (U.S. Patent No. 2,731,087 (col. 1:22–23)
`(disclosing an invention “to cut keys after an established pattern or code with
`regard to the depth and location of the bits to be formed on the key blank”)); Ex. 6
`(U.S. Patent No. 5,271,698 (col. 35:28–31) (“creating a duplicate key by using
`factory numerical or alphanumeric key duplicating codes”)); Ex. 7 (U.S. Patent
`No. 5,676,504 (describing extensive art relating to creating “a duplicate key”
`using code-cutting from numerical codes associated with the master key (col. 1:5–
`2:64) and disclosing a “key cutting machine [that] can electronically duplicate a
`bit notch pattern defined by a key code without reference to the master key bit
`notch pattern” (col. 3:5–7))); Ex. 8 (Marc Weber Tobias, Locks, Safes, and
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 13 of 44 PageID #: 5913
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`
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`Defendant emphasizes disclosures that relate to mechanical tracing, such as disclosure of
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`using a “follower”:
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`FIG. 58 is a diagrammatic plan view of a master key clamped for engagement by
`a follower and a key blank clamped to be cut to reproduce the tooth profile of the
`master key.
`
` *
`
` * *
`
`
`Key duplication requires analysis of the master key to determine the model and
`tooth pattern of the master key, and then reproducing that tooth pattern on a key
`blank of the same model as the master key. It is generally necessary to have the
`master key stationary and to firmly hold the key blank while reproducing the
`tooth pattern.
`
`’446 Patent at 4:4–7 & 4:32–37 (emphasis added); see id. at 16:38–45 (“Thus, the cutting wheel
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`131 cuts a tooth pattern in the clamped key blank B that reproduces the tooth pattern of the
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`master key K . . . .”) & 17:3–13 (“the carrier 134 moves the follower along the blade of the
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`master key K, and the blade of the key blank B across the cutting wheel 131, to cut a tooth
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`pattern in the key blank that reproduces the tooth pattern of the master key”); see also id. at
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`Figs. 58–59.
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`
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`The specification also discloses:
`
`While particular embodiments and applications of the present invention have been
`illustrated and described, it is to be understood that the invention is not limited to
`the precise construction and compositions disclosed herein and that various
`modifications, changes, and variations may be apparent from the foregoing
`descriptions without departing from the spirit and scope of the invention as
`defined in the appended claims. For example, the master key inserted by the
`customer could be analyzed and matched to an original code that is then used to
`control the cutting of the duplicate key(s), rather than using the master key as a
`real-time pattern for cutting the duplicate.
`
`’446 Patent at 20:58–21:2 (emphasis added). The ’446 Patent cites various references that
`
`disclose techniques related to producing a duplicate key other than mechanical trace cutting.
`
`
`Security, An International Police Reference, 160, § 4.3.3 “Duplicating Keys by
`Code” (2nd ed. 2000)); Ex. 9 (Lockwiki); Ex. 10 (Wikipedia).
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 14 of 44 PageID #: 5914
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`(See id. at p. 2 (citing references); see also Dkt. No. 151, Ex. A, U.S. Patent No. 5,676,504
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`(“Mueller”) at 2:66–3:7; id., Ex. B, U.S. Patent No. 5,807,042 (“Almblad”) at 4:33–37; id. at
`
`Exs. C & D.) For example, the “Marsh” reference discloses inferring the “factory specifications
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`of the bitting of the to-be-copied key” and cutting “to these factory specifications instead of
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`merely replicating the original key’s bitting profile.” (Id., Ex. D, U.S. Patent No. 8,682,468 at
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`10:66–11:5; see id., Ex. C, U.S. Patent No. 6,064,747 (“Wills”) at 2:17–27 (“the depths of the
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`cuts . . . are modified to be the closest or most likely cut depth from the factory specifications”).)
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`
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`Defendant cites authority that the claims need not necessary encompass all embodiments.
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`See TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed. Cir. 2008)
`
`(“Our precedent is replete with examples of subject matter that is included in the specification,
`
`but is not claimed.”); see also SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121
`
`(Fed. Cir. 1985) (“If everything in the specification were required to be read into the claims . . .
`
`there would be no need for claims.”).
`
`
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`Nonetheless, Defendant fails to demonstrate that the word “replicate” warrants excluding
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`techniques that produce a duplicate key without tracing a master key, particularly given that the
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`above-cited intrinsic evidence demonstrates that a duplicate key can serve its purpose without
`
`having been trace cut. Defendant argues that the above-reproduced disclosure contrasts code
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`cutting with “using the master as a real-time pattern for cutting the duplicate.” ’446 Patent at
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`20:58–21:2. Any such contrast between trace cutting and code cutting embodiments, however,
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`does not warrant interpreting the disputed term as excluding code cutting.
`
`
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`Finally, Defendant also cites positions taken by Plaintiff in relation to litigation in the
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`Southern District of Ohio in 2013. In that litigation, Minute Key asserted United States Patent
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`No. 8,532,809 (“the ’809 patent”) (Dkt. No. 151, Ex. G). The ’809 Patent resulted from a
`
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`Case 2:19-cv-00209-JRG Document 159 Filed 07/02/20 Page 15 of 44 PageID #: 5915
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`continuation of a continuation-in-part of the application that issued as the ’446 Patent. The ’809
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`Patent is thus related to the ’446 Patent. Claim 1 of the ’809 Patent includes language that is
`
`identical to the present disputed term in the ’446 Patent except that Claim 1 of the ’809 Patent
`
`uses the phrase “for replicating” instead of the phrase “configured to replicate.” Defendant
`
`submits that in a letter from Plaintiff to Wal-Mart Stores Inc. (one of Plaintiff’s customers),
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`Plaintiff stated as follows regarding the recited “key duplication [sic] system” (this letter became
`
`an exhibit to the Complaint in the Ohio action):
`
`Hillman’s structure for duplicating a key is also significantly different than the
`structure in the ‘809 patent that corresponds to the “key duplication system.”
`Minute Key’s corresponding structure inc