Wastow Enterprises, LLC v. truckmovers.com, Inc. ( 2021 )

Case: 20-2349 Document: 33 Page: 1 Filed: 05/14/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
WASTOW ENTERPRISES, LLC,
Plaintiff-Appellant
v.
TRUCKMOVERS.COM, INC., DEALER’S CHOICE
TRUCKAWAY SYSTEM, INC., DBA
TRUCKMOVERS,
Defendants-Appellees
______________________
2020-2349
______________________
Appeal from the United States District Court for the
Western District of Missouri in No. 4:19-cv-00249-NKL,
Judge Nanette K. Laughrey.
______________________
Decided: May 14, 2021
______________________
DANIEL A. KENT, Kent & Risley LLC, Alpharetta, GA,
for plaintiff-appellant. Also represented by CORTNEY
ALEXANDER, OLIVIA MARBUTT, SAMUEL NAJIM, STEPHEN
ROBERT RISLEY.
MICHAEL DULIN, Polsinelli PC, Denver, CO, for defend-
ants-appellees. Also represented by COLBY BRIAN
SPRINGER, Polsinelli LLP, San Francisco, CA.
Case: 20-2349 Document: 33 Page: 2 Filed: 05/14/2021
2 WASTOW ENTERPRISES, LLC v. TRUCKMOVERS.COM, INC.
______________________
Before NEWMAN, REYNA, and TARANTO, Circuit Judges.
TARANTO, Circuit Judge.
Wastow Enterprises, LLC, which owns U.S. Patent No.
8,613,583, sued TruckMovers.com, Inc., Dealer’s Choice
Truckaway System, Inc., d/b/a Truckmovers (collectively,
Truckmovers), alleging that Truckmovers was infringing
claims 1–15 of the ’583 patent by making, using, selling, or
offering to sell its Z-Wing towing system. The district court
held that the ’583 patent’s claims must be construed to be
limited to a universal folding boom trailer, and the parties
then stipulated to noninfringement. We agree with the dis-
trict court’s claim construction and therefore affirm the
judgment.
I
A
The ’583 patent is titled “Universal Folding Boom
Trailer.” The specification describes a towing system and
a method of loading, transporting, and delivering trucks.
See, e.g., ’583 patent, col. 1, lines 19–23. The specification
declares that the “present invention overcomes all the
shortcoming of previous methods and apparatuses by
providing a new Universal Folding Boom Trailer for
transport[ing] multiple vehicles in a safe and legal man-
ner.” Id., col. 1, lines 62–65. The “Universal Folding Boom
Trailer” provides several “advantage[s],” the patent adds,
such as a better “weight bearing capacity,” operability
without having “to immobilize the steering wheel with the
driver seat belt,” and a lower risk of a “blowout.” Id., col.
2, lines 20–37.
Independent claim 1 is illustrative and recites:
1. A towing system, comprising:
Case: 20-2349 Document: 33 Page: 3 Filed: 05/14/2021
WASTOW ENTERPRISES, LLC v. TRUCKMOVERS.COM, INC. 3
a towing vehicle, wherein the towing vehi-
cle is a first truck;
a towed vehicle having an axle and a frame,
wherein the towed vehicle is a second
truck; and
a device removably mounted to the towing
vehicle and to the towed vehicle, the device
including[:]
a front portion removably interfac-
ing with the towing vehicle,
a middle portion,
a rear portion at a different eleva-
tion from the front portion for re-
movably mounting to both the axle
and the frame of the towed vehicle
and supporting the towed vehicle
from underneath the towed vehicle,
wherein the front portion and the
rear portions are joined to the mid-
dle portion in a rigid configuration,
the rear portion further having a
front axle connector to which the
axle of the towed vehicle is at-
tached and a single central beam
with a frame connector at an end of
the single central beam to which
the frame of the towed vehicle is at-
tached, wherein the rear portion is
adjustable and slides forward and
aft for hauling various lengths of
the towed vehicle,
wherein the single central beam has a max-
imum width less than a maximum width of
a remainder of the rear portion, the single
central beam at least partly disposed inside
Case: 20-2349 Document: 33 Page: 4 Filed: 05/14/2021
4 WASTOW ENTERPRISES, LLC v. TRUCKMOVERS.COM, INC.
of the remainder of the rear portion, and
the front axle connector is disposed on the
remainder of the rear portion at a location
intermediate the end of the single central
beam and the middle portion, and
wherein the rear portion is configured for
towing the towed vehicle in a forward-fac-
ing direction.
Id., col. 6, lines 25–55. Claim 6 is similar in ways relevant
to this appeal, except that its preamble is “A device for a
towing system, comprising” instead of “A towing system,
comprising” (claim 1). Id., col. 7, line 1.
B
On March 29, 2019, Wastow sued Truckmovers, alleg-
ing that Truckmovers was infringing claims 1–15 of the
’583 patent by making, using, selling, or offering to sell its
Z-Wing product. Truckmovers counterclaimed for a declar-
atory judgment of noninfringement.
On May 26, 2020, the district court issued an order on
claim construction, resolving the parties’ disputes on the
proper construction of the phrase “A frame connector at an
end of the single central beam” and the term “device.”
Wastow Enters., LLC v. TruckMovers.com, Inc., No. 4:19-
cv-00249, 2020 WL 2736981 (W.D. Mo. May 26, 2020). As
to the “frame connector” phrase, the district court rejected
Truckmovers’s construction, id. at *4–5, a ruling not at is-
sue on appeal. As to the term “device,” the district court
adopted Truckmovers’s proposed construction that “the
broad term ‘device’ should . . . be construed to refer to a
‘universal folding boom trailer.’” Id. at *2. The court rea-
soned that, “[a]lthough there was no explicit disavowal of
other devices, the patentees description of ‘the present in-
vention’ as referring to a universal folding boom trailer and
the repeated, consistent use of the complete term ‘universal
folding boom trailer’ to refer to the claimed device together
Case: 20-2349 Document: 33 Page: 5 Filed: 05/14/2021
WASTOW ENTERPRISES, LLC v. TRUCKMOVERS.COM, INC. 5
support the conclusion that the patentee implicitly disa-
vowed claim terms lacking a ‘universal folding boom
trailer.’” Id. at *4. In so concluding, the district court re-
jected Wastow’s contention that this meaning would con-
flict with claim 6 because that claim uses “device” only in
the preamble (which Wastow argued was nonlimiting). Id.;
see also Plaintiff’s Response to Defendants’ Opening Claim
Construction Br. at 8–9, Wastow, No. 4:19-cv-00249, ECF
No. 44 (W.D. Mo. Jan. 21, 2020).
Given the district court’s claim-construction determi-
nations, Wastow stipulated to entry of a judgment of non-
infringement. The district court entered judgment on
August 31, 2020. Wastow timely appealed. We have juris-
diction under 28 U.S.C. § 1295(a)(1).
II
A
“We decide claim construction de novo as an issue of
law where, as here, the issue is decided only on the intrin-
sic evidence.” Arctic Cat Inc. v. GEP Power Prods., Inc.,
919 F.3d 1320, 1327 (Fed. Cir. 2019). We have held that
“the specification may reveal an intentional disclaimer, or
disavowal, of claim scope by the inventor. In that instance
as well, the inventor has dictated the correct claim scope,
and the inventor’s intention, as expressed in the specifica-
tion, is regarded as dispositive.” Phillips v. AWH Corp.,
415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). That
principle controls this case. Here, the specification makes
clear to a relevant artisan that the claims of the ’583 patent
require a universal folding boom trailer.
“When a patent . . . describes the features of the ‘pre-
sent invention’ as a whole, this description limits the scope
of the invention.” Verizon Servs. Corp. v. Vonage Holdings
Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). We have ex-
plained that “an inventor may disavow claims lacking a
particular feature when the specification describes ‘the
Case: 20-2349 Document: 33 Page: 6 Filed: 05/14/2021
6 WASTOW ENTERPRISES, LLC v. TRUCKMOVERS.COM, INC.
present invention’ as having that feature.” Poly-America,
L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir.
2016); see also Luminara Worldwide, LLC v. Liown Elecs.
Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (noting that we
have found disavowal or disclaimer based on statements
such as “the present invention includes” or “the present in-
vention is”).
The ’583 patent’s specification does just that. It repeat-
edly describes “the present invention” as a universal fold-
ing boom trailer. See, e.g., ’538 patent, col. 5, lines 25–27
(“The safety issues of the current prior art method illus-
trated in FIG. 1 are corrected by the use of the Universal
Folding Boom Trailer 30 of the present invention.”); id., col.
1, lines 19–23 (“The present invention overcomes all the
shortcoming of previous methods and apparatuses by
providing a new Universal Folding Boom Trailer for trans-
ported multiple vehicles in a safe and legal manner.”); id.,col. 2, lines 11–14 (“FIG. 2 illustrates the Universal Folding
Boom Trailer 30 of the present invention legally and safely
transporting two trucks 32, 34 and carrying a personal
pickup truck 36 between them.”); id., col. 2, lines 53–54
(“FIG. 3 illustrates a side view of the Universal Folding
Boom of the present invention in a folded position[.]”); id.,col. 1, lines 19–23 (“The present invention relates generally
to a method and apparatus for transporting and delivering
multiple trucks, and in particular, to a universal folding
boom trailer for loading, transporting and delivering trucks
in compliance with the Department of Transportation Reg-
ulations.”). And the specification does not use “device”
more broadly when referring to the inventive structure.
See id., col. 2, lines 61–63 (“FIG. 7 illustrates a top view of
the Universal Folding Boom as shown in FIG. 6, and fur-
ther shows a laterally central longitudinal axis A-A of a
rear portion of the device.” (emphases added)).
The specification also ties the stated benefits of the in-
vention over prior art to the use of a universal folding boom
trailer. See id., col. 5, lines 25–27 (“The safety issues of the
Case: 20-2349 Document: 33 Page: 7 Filed: 05/14/2021
WASTOW ENTERPRISES, LLC v. TRUCKMOVERS.COM, INC. 7
current prior art method illustrated in FIG. 1 are corrected
by the use of the Universal Folding Boom Trailer 30 of the
present invention.”); id., col. 1, lines 19–23 (“The present
invention overcomes all the shortcoming of previous meth-
ods and apparatuses by providing a new Universal Folding
Boom Trailer for transported multiple vehicles in a safe
and legal manner.”). That aspect of the specification rein-
forces the conclusion of disavowal. See Poly-America, 839
F.3d at 1136 (“Similarly, an inventor may disavow claims
lacking a particular feature when the specification distin-
guishes or disparages prior art based on the absence of that
feature.”); SciMed Life Systems, Inc. v. Advanced Cardio-
vascular Systems, Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001)
(“Thus, the SciMed patents distinguish the prior art on the
basis of the use of dual lumens and point out the ad-
vantages of the coaxial lumens used in the catheters that
are the subjects of the SciMed patents. That discussion in
the written description supports the district court’s conclu-
sion that the claims should not be read so broadly as to en-
compass the distinguished prior art structure.”); Forest
Labs., LLC v. Sigmapharm Labs., LLC, 918 F.3d 928, 933
(Fed. Cir. 2019).
The patent’s title—“Universal Folding Boom Trailer”—
also indicates that a relevant artisan would understand
that the claims require a universal folding boom trailer.
See Ruckus Wireless, Inc. v. Innovative Wireless Solutions,
LLC, 824 F.3d 999, 1003 n.2 (Fed. Cir. 2016) (“We have
used the title of a patent to aid in claim construction.”); see
also, e.g., Forest Labs., 918 F.3d at 933 (partly relying on
the patent’s title when limiting claim’s scope); Ultimate-
Pointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 823 (Fed. Cir.
2016) (same). The title thus reinforces what the written
description makes clear.
For the foregoing reasons, the patent supplies compel-
ling support for a conclusion of disavowal of claim scope be-
yond a “universal folding boom trailer.”
Case: 20-2349 Document: 33 Page: 8 Filed: 05/14/2021
8 WASTOW ENTERPRISES, LLC v. TRUCKMOVERS.COM, INC.
Wastow has advanced no persuasive argument to the
contrary. It points to Continental Circuits LLC v. Intel
Corp., 915 F.3d 788 (Fed. Cir. 2019), but the specification
at issue in that case used “‘the present invention’” with
nonlimiting “phrases such as ‘one technique,’ ‘can be car-
ried out,’ and ‘a way’” and only in the context of “the dis-
cussion of the preferred embodiment.” Id. at 797–98; see
also Absolute Software, Inc. v. Stealth Signal, Inc., 659
F.3d 1121, 1136–37 (Fed. Cir. 2011) (relying on terms like
“can” as indicating that a feature was “optional” when con-
cluding that there was no disavowal). For that reason, the
court concluded, the statements did “not characterize the
present invention as a whole. Instead, they disclose one
way to carry out the present invention.” Continental Cir-
cuits, 915 F.3d at 798 (cleaned up). As discussed above, the
’583 patent’s specification is quite different, repeatedly re-
ferring to the universal folding boom trailer as being part
“of the present invention.” The specification also differs
crucially from the specification at issue in In re Papst Li-
censing Digital Camera Patent Litigation, which held
simply that a single use of “the present invention” as “part
of the description of several preferred embodiments” was
not a sufficiently “clear declaration of what constitutes an
essential part of the invention.” 778 F.3d 1255, 1263–64
(Fed. Cir. 2015). The ’583 patent’s specification repeatedly
states that “the present invention” has a universal folding
boom trailer and does so outside a description of preferred
embodiments. Finally, the merely supportive role of the
title in the disavowal analysis in this case is consistent
with our precedent, cited above, and does not give “too
much weight” to the patent’s title. Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1312 (Fed. Cir. 1999).
B
Wastow suggests that the preamble of claim 6—the
only place in claim 6 where “device” is used—is not limit-
ing. As an initial matter, however, the district court rea-
sonably understood Wastow’s argument about claim 6 not
Case: 20-2349 Document: 33 Page: 9 Filed: 05/14/2021
WASTOW ENTERPRISES, LLC v. TRUCKMOVERS.COM, INC. 9
to be a freestanding argument that, whatever “device”
means, in claim 6 the term is not limiting even if it is lim-
iting in other claims—but rather only an argument that
the location of “device” in the preamble of claim 6 implies
that, to avoid inconsistency, the term cannot be read to re-
quire a universal folding boom trailer in any of the claims.
The district court’s rejection of Wastow’s inconsistency-
based contention is correct. Regardless, the disavowal of
claim scope made clear by the specification readily applies
to claim 6 as to the other claims. Indeed, the specification’s
clear message that the invention is confined to a universal
folding boom trailer suffices to make the term “device” in
the preamble of claim 6 limiting because it must be under-
stood as “defin[ing] the claimed invention.” Catalina Mktg.
Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
Cir. 2002); see also Deere & Co. v. Bush Hog, LLC, 703 F.3d
1349, 1357 (Fed. Cir. 2012) (“Whether to treat a preamble
as a limitation is ‘determined on the facts of each case in
light of the overall form of the claim, and the invention as
described in the specification and illuminated in the prose-
cution history.’” (quoting Applied Materials, Inc. v. Ad-
vanced Semiconductor Materials America, Inc., 98 F.3d
1563, 1572–73 (Fed. Cir. 1996))).
III
For the foregoing reasons, we affirm the judgment of
the district court.
The parties shall bear their own costs.
AFFIRMED