Boss Industries, Inc. v. Yamaha Motor Corp., U.S.A., Inc. , 333 F. App'x 531 ( 2009 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2008-1311
BOSS INDUSTRIES, INC.,
Plaintiff/Counterclaim Defendant-Appellant,
and
JAMES ATHERLEY,
Counterclaim Defendant-Appellant,
v.
YAMAHA MOTOR CORPORATION, U.S.A., INC.,
Defendant/Counterclaimant-Appellee.
Alan M. Anderson, Briggs & Morgan, PA, of Minneapolis, Minnesota, argued for
plaintiff/counterclaimant defendant-appellant and counterclaim defendant-appellant. With him
on the brief was Christopher A. Young.
Robert C. Weiss, Jones Day, of Los Angeles, California, argued for
defendant/counterclaimant-appellee. With him on the brief was Anna E. Rainer.
Appealed from: United States District Court for the District of Utah
Judge Dale A. Kimball
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2008-1311
BOSS INDUSTRIES, INC.,
Plaintiff/Counterclaim Defendant-
Appellant,
and
JAMES ATHERLEY,
Counterclaim Defendant-Appellant,
v.
YAMAHA MOTOR CORPORATION, U.S.A., INC.,
Defendant/Counterclaimant-Appellee.
Appeal from the United States District Court for the District of Utah in case
no. 2:05-CV-00422, Judge Dale A. Kimball.
_________________________
DECIDED: May 28, 2009
_________________________
Before NEWMAN, SCHALL, and GAJARSA, Circuit Judges.
SCHALL, Circuit Judge.
DECISION
This is a patent infringement case. Boss Industries, Inc. and James Atherley 1
(together “Boss”), appeal the final judgment of the United States District Court for the
1
James Atherley is the inventor of the patents-in-suit and granted Boss a sole
and exclusive license to all rights in the patents-in-suit.
District of Utah, holding that Yamaha Motor Corp., U.S.A., Inc. (“Yamaha”) did not
infringe numerous claims of Boss’s U.S. Patent Nos. 6,086,149 (“the ’149 patent”),
6,386,630 (“the ’630 patent”), and 6,585,317 (“the ’317 patent”). In particular, Boss
appeals the district court’s claim construction of several terms in the claims asserted
against Yamaha. Boss Indus., Inc. v. Yamaha Motor Corp., U.S.A., No. 2:05CV00422
(D. Utah Sept. 7, 2007) (“Claim Construction”). Based on the court’s Claim
Construction, Boss conceded that it could not prove Yamaha infringed the asserted
claims as construed and therefore stipulated to noninfringement. Accordingly, the
district court entered judgment of noninfringement in favor of Yamaha and
simultaneously dismissed all of Yamaha’s counterclaims. Boss Indus., Inc. v. Yamaha
Motor Corp., U.S.A., No. 2:05CV00422 (D. Utah Mar. 13, 2008) (“Judgment”). In
addition, Boss appeals the district court’s denial of two discovery motions related to
Yamaha’s invalidity counterclaims. Because the district court’s construction of the
dispositive claim terms is correct and because Boss has stipulated to noninfringement
under the district court’s constructions, we affirm.
DISCUSSION
I.
Boss is the owner of the ’149, the ’630, and the ’317 patents. All three patents
share nearly identical disclosures and issued from related applications in a patent
family, including a “parent” patent and three “child” continuations-in-part patents. All
three patents-in-suit are continuations-in-part from parent U.S. Patent No. 5,944,3802008-1311 2
(“the ’380 patent”). 2 Additionally, the ’630 patent is a continuation-in-part of the ’149
patent, while the ’317 patent is a continuation-in-part of both the ’149 and ’630 patents.
All three patents-in-suit are identically titled and directed to a “Light-Weight
Snowmobile Seat.” ’149 patent, ’630 patent, ’317 patent. This light-weight snowmobile
seat contains a “rigid base section for mounting on a snowmobile.” See, e.g., ’149
patent Abstract. In reference to figure 4 below, the “base section” 40 of the snowmobile
seat 10 is a “closed-cell structure” and is “substantially rigid and provides support for the
seat.” Id. col.4 ll.20-22. According to the patents, “[t]he closed-cell base section 40 is a
significant improvement over prior art seats utilizing metal or plastic frames and open
cell foam cushioning because the closed-cell structure forms a substantially rigid base
without adding weight or absorbing water.” See, e.g., id. col.4 ll.34-39. A flexible seat
section 60 is placed in an indentation 54 on the upper surface 52 of the base section 40.
Id. col.4 l.60-col.5 l.1. “The upper surface 52 of the base section 40 may also form part
of the upper surface 20 of the seat 10.” Id. col.4 ll.64-65. The snowmobile rider sits on
the upper surface of the seat section 62 or the upper surface of the base section 52, if
the base section’s upper surface is exposed. Id. col.5 ll.1-10.
2
Boss did not assert the ’380 patent against Yamaha.
2008-1311 3
See ’149, ’630, ’317 patents fig.4.
In further detail, “[t]he base section 40 has a lower surface 42 that forms at least
part of the bottom 22” of the snowmobile seat. ’149 patent col.4 ll.44-45. The bottom
22 is disposed on the snowmobile, which is generally indicated at 23. Id. col.4 ll.8-10.
The bottom of the base section 40 also forms cavities, for example cavity 46, “so that
seat 10 fits around various snowmobile components, such as a gas tank, an engine, a
battery, etc.” Id. col.4 ll.58-60. The base section 40 is attached to the top of the
snowmobile 23—for example, using fasteners with one portion 93 located on the
snowmobile and the other portion 91 located on the lower surface 42 of the base
section 40, which contacts the snowmobile. Id. col.5 ll.54-65.
Claim 1 of the ’149 patent is representative of the claims on appeal:
2008-1311 4
1. A snowmobile seat comprising:
a generally rigid base section having a lower surface for mounting on a
snowmobile and an upper surface;
a flexible seat section disposed on the base section and having an upper
surface on which a rider may sit and a lower surface, the flexible seat
section being formed of a compressible, open-cell material which
compresses and deflects under force;
a space disposed between the lower surface of the rigid base section and
the upper surface of the flexible seat section and defining an air chamber,
the space being formed at least partially by the flexible seat section;
cover means for covering at least a portion of the base and seat sections;
and
at least one air passage extending from the air chamber;
the flexible seat section deflecting between (i) a first position in which the
seat section is substantially undeflected and defines the air chamber, and
(ii) a second position in which the seat section deflects into the air
chamber forcing air from the air chamber and through the at least one air
passage.
’149 patent col.9 l.53-col.10 l.6.
II.
Yamaha sells a variety of snowmobiles and snowmobile seats. On May 12,
2005, Boss filed a patent infringement suit against Yamaha in the United States District
Court for the District of Utah, alleging that Yamaha’s “Viper” seats infringe claims 1-3, 6,
8, 20, and 21 of the ’149 Patent; claims 19, 21, and 23 of the ’630 Patent; and claims 5,
7, 8, 12, 13, 16, and 18 of the ’317 Patent. Boss also alleged that Yamaha’s “Apex”
seats infringe claim 21 of the ’630 Patent, and claims 12 and 13 of the ’317 Patent. 3 On
3
The record does not clearly reflect which claims the Apex seats allegedly
infringe. Although the district court’s judgment states that the Apex seats are accused
of infringing only claim 21 of the ’630 patent and claims 12 and 13 of the ’317 patent,
see Judgment, slip op. at 2, Boss indicated in its post-claim construction status report to
the district court that claims 16 and 18 of the ’317 patent were asserted as well.
Neither party addresses this discrepancy in their briefing. Regardless, claims 16 and 18
2008-1311 5
July 7, 2005, Yamaha answered, asserting numerous counterclaims including that the
patents-in-suit were not infringed, and were invalid and unenforceable.
Following extensive briefing and a Markman hearing on June 14, 2007, the
district court issued a detailed claim construction order on September 7, 2007. See
Claim Construction. In its order, the court construed fifteen disputed claim limitations.
See id. While the constructions of the majority of these limitations have been appealed,
the constructions of two limitations are particularly important. These limitations are
“base” or “base section,” 4 and “adjacent.”
The term “base section” appears in all three patents-in-suit and in all of the
asserted claims, except for claim 5 of the ’317 patent. The term “adjacent” appears in
claims 5, 7, and 8 of the ’317 patent. After a detailed review of the claim language, the
patents’ specifications, and the prosecution histories, the court construed “base section”
for all three patents-in-suit as “the bottom support structure of the snowmobile seat.”
Claim Construction, slip op. at 20. Following a similar detailed analysis, the court
construed “adjacent” as “next to or adjoining.” Id. at 32.
After the court issued its Claim Construction, Boss filed a post-claim construction
status report, stating that “[a]s a result of the court’s claim construction, the court should
rule as a matter of law that Yamaha’s accused snowmobile seats do not infringe any of
of the ’317 patent both contain the limitation “base section,” which, as explained below,
Boss concedes is missing from the accused Apex seats as currently construed. Thus,
because we affirm the district court’s construction of “base section,” we consequently
find that claims 16 and 18 of the ’317 patent cannot be infringed.
4
The terms “base section” and “base” are used interchangeably in the
patents-in-suit and neither party has differentiated between the terms. In addition, the
district court treated the terms as the same during claim construction. See Claim
Construction, slip op. at 12. As such, we will treat the terms “base section” and “base”
the same on appeal and will refer to both collectively as “base section.”
2008-1311 6
the asserted claims of the Boss Patents.” Boss then requested the court to enter
summary judgment of noninfringement of all its asserted claims. Additionally, Boss
listed each of the limitations as construed that were missing from the accused products,
specifically indicating that either “base section” or “adjacent” were missing from all of the
asserted claims. Accordingly, the district court “enter[ed] judgment of non-infringement,
both literally and under the doctrine of equivalents, in favor of Yamaha on all claims in
Boss’s Amended Complaint.” Judgment, slip op. at 2-3. The court also dismissed
Yamaha’s counterclaims. Id. at 3.
In addition to claim construction, the district court also addressed issues that
Boss raised concerning Yamaha’s alleged discovery abuses. Because of Yamaha’s
alleged discovery misconduct, Boss filed a first motion (“Motion to Preclude”), urging the
court to preclude certain witness testimony and evidence, which, according to Boss,
Yamaha belatedly produced. Boss filed a second motion (“Adverse Inference Motion”)
that was based on Yamaha’s alleged failure to “institute a litigation hold after being
served with Boss’s Complaint.” Boss argued that Yamaha’s failure to issue a litigation
hold caused the destruction of relevant documents, prevented Boss from obtaining vital
information, and therefore warranted an adverse inference instruction.
On January 22, 2007, the district court denied Boss’s Motion to Preclude “[f]or
the reasons stated by Yamaha in its response to Plaintiff’s motion.” Boss Indus., Inc. v.
Yamaha Motor Corp., U.S.A., No. 2:05CV00422, slip op. at 3 (D. Utah Jan. 22, 2007).
The court gave no further explanation. Id. Because it was unclear why the court denied
Boss’s previous Motion to Preclude, Boss requested reconsideration, or clarification, of
the court’s denial.
2008-1311 7
On March 13, 2008, in the Judgment, the court denied both Boss’s Adverse
Inference Motion and its motion for reconsideration, or for clarification, of the court’s
previous denial of its Motion to Preclude. Judgment, slip op. at 3. The court did not
provide an explanation. Rather, it stated that “upon review and consideration of the
memoranda and other materials submitted therewith, the Court denies both motions on
the merits.”
III.
Boss appeals the district court’s claim construction and the district court’s denial
of its two discovery-related motions. We have jurisdiction over the appeal pursuant to
28 U.S.C. § 1295(a)(1). Boss acknowledged, in its post-claim construction status report
to the district court and in its briefing to this court, that all of the accused products do not
contain either the “base section” or “adjacent” limitations under the district court’s
construction. As such, because of Boss’s concessions and because infringement
requires each claim limitation to be satisfied, see BMC Res., Inc. v. Paymentech, L.P.,
498 F.3d 1373, 1378 (Fed. Cir. 2007) (“Direct infringement requires a party to perform
each and every step or element of a claimed method or product.”), if we find that the
district court correctly construed both of the limitations “base section” and “adjacent,” we
must affirm the judgment of noninfringement in favor of Yamaha. Because “base
section” and “adjacent” are dispositive if we affirm the district court’s construction, we
address those limitations first.
Claim construction is a question of law that we review de novo. Cybor Corp. v.
FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). The words of a claim
“‘are generally given their ordinary and customary meaning,’” according to a person of
2008-1311 8
ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d
1303, 1312-13 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (Fed. Cir. 1996)). The claims themselves provide “substantial”
guidance as to the meaning of claim terms. Id. at 1314. However, the claims must be
read in light of the specification, the “‘single best guide to the meaning of a disputed
term.’” Id. at 1315 (quoting Vitronics, 90 F.3d at 1582).
A.
We first turn to the “base section” limitation, which appears in all but one of the
asserted claims. More particularly, “base section” is found in claims 1-3, 6, 8, 20, and
21 of the ’149 patent; claims 19, 21, and 23 of the ’630 patent; and claims 7, 8, 12, 13,
16, and 18 of the ’317 patent. As noted, the district court construed this limitation to
have a single meaning for all three of the patents-in-suit: “the bottom support structure
of the snowmobile seat.” Claim Construction, slip op. at 20.
According to Boss, notwithstanding the fact that the patents’ specifications are
nearly identical, each patent should have a different construction for the term “base
section”:
The ’149 Patent: “a cellular structure that forms at least part of the bottom
of the seat.”
The ’630 Patent: “a cellular structure that forms at least part of the bottom
of the seat and which can be directly or indirectly mounted to the
snowmobile.”
The ’317 Patent: “a cellular structure that forms at least a part of the
bottom of the seat and which can be mounted to other support structure
that in turn can be mounted to the snowmobile.”
Boss argues that the district court erred by construing “base section” identically for all
three patents because “the specifications of the Boss Patents successively broaden the
2008-1311 9
scope of ‘base section.’” Specifically, Boss highlights that each patent has a slightly
different disclosure—including several unique sections in the ’630 and ’317 patents that
do not appear the other patents—to support its contention that “base section” should be
construed differently for each patent. Also, Boss argues that the district court incorrectly
limited “base section” to the preferred embodiments.
Yamaha counters that the district court’s construction of “base section” is
supported by the all three patents’ claims and specifications. In addition, Yamaha
points out that both the preferred and alternative embodiments indicate that the “base
section” is the bottom structure that provides support. Moreover, Yamaha argues that
Boss’s proposed constructions import unnecessary limitations into the claims and
misinterpret the patents’ specifications.
We hold that the district court correctly construed “base section” as the “bottom
support structure of the snowmobile seat.” Contrary to Boss’s arguments, the district
court’s construction—“bottom support structure of the snowmobile seat”—does not
improperly limit “base section” to a preferred embodiment. Rather, it is in accordance
with the entirety of each patents’ intrinsic evidence. See, e.g., Phillips, 415 F.3d at
1314-15 (emphasizing a patent’s intrinsic evidence as particularly important to claim
construction); Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1370-71 (Fed. Cir. 2003)
(looking to “whether the specification read as a whole suggests that the very character
of the invention requires” a particular claim construction). In addition, because each
patent-in-suit is derived from the same parent application and shares many common
terms with its sister patents, the district court correctly interpreted “base section”
consistently across all of the asserted patents. See NTP, Inc. v. Research In Motion,
2008-1311 10
Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (“Because NTP’s patents all derive from the
same parent application and share many common terms, we must interpret the claims
consistently across all asserted patents.”); Jonsson v. Stanley Works, 903 F.2d 812,
818 (Fed. Cir. 1990) (“The ’912 patent is the result of a continuation-in-part application
from the original ’008 application, which led to the ’251 patent. Hence . . . the
construction of the term ‘diffuse light’ contained in that patent, is relevant to an
understanding of ‘diffuse light’ as that term is used in the ’912 patent.”).
We begin by looking at the claim language itself, which is instructive of the proper
construction of “base section.” See Phillips, 415 F.3d at 1314 (“[T]he claims themselves
provide substantial guidance as to the meaning of particular claim terms.”). Several
claims at issue in each patent indicate that the “base section” has a “lower surface for
mounting on a snowmobile” and that “a flexible seat section [is] disposed on the base
section . . . on which a rider may sit.” ’149 patent col.9 ll.53-57; col.12 ll.31-38; see ’317
patent col.10 ll.65-67; col.11 ll.19-25 (claiming that the flexible seat section, upon which
the rider sits, is placed on top of the base section); ’630 patent col.11 ll.41-44 (claiming
that a flexible seat section is disposed on a generally rigid base section); col.12 ll.18-23
(claiming “a substantially rigid base section, supporting the flexible seat section,” upon
which a rider may sit). Other claims similarly state that the base section “has a bottom
surface configured to abut an upper surface of the track tunnel of the snowmobile” and
that “the rigid base section provides a desired shape and structure of the seat.” ’317
patent col.11 ll.25-29; col.12 ll.10-13, 42-46. In addition, certain unasserted claims
likewise suggest that the “base section” must be the bottom structure of the seat. See,
e.g., Phillips, 415 F.3d at 1314 (“unasserted [claims] can also be valuable sources of
2008-1311 11
enlightenment”). For example, several such claims indicate that the “base section”
includes “fasteners” to couple the seat to the body of the snowmobile. See, e.g., ’317
patent col.10 ll.28-61 (“fasteners being coupled on the lower surface of the base section
and configured to be coupled to the snowmobile to resist horizontal movement between
the base section and the snowmobile”); ’630 patent col.20 ll.5-16 (“fasteners, configured
to be coupled between the base section and the snowmobile” to resist movement
between the base section and the snowmobile); ’149 patent col.10 ll.30-35 (“fasteners
being coupled on the lower surface of the base section and configured to be coupled to
the snowmobile”). The fact that the base section abuts, mounts, and fastens to the
upper portion of the snowmobile body indicates that it must be the bottom of the
snowmobile seat. Indeed, it would be difficult, if not impossible, to mount the base
section to the top of the snowmobile, using the fasteners on the base section’s bottom,
if the base section was not the bottom of the snowmobile seat. Similarly, that the base
section is placed underneath the flexible seat section and that it provides the shape of
the snowmobile seat, certainly denotes that the base section provides support for the
snowmobile seat upon which the rider sits.
While the claims provide guidance, the district court’s construction of “base
section” is further confirmed, and consistently explained in detail, by each patents’
specification. See Phillips, 415 F.3d at 1315 (acknowledging that the specification is
“always highly relevant” and usually dispositive). The patents’ specifications emphasize
exactly what was described in the claims—that the base section has a bottom surface
that is disposed on, and abuts, the snowmobile body and an upper surface for placing a
flexible seat section upon which the rider may sit. See ’149 patent col.2 ll.40-45; col.4
2008-1311 12
ll.8-13; col.6 ll.33-34; see also ’630 patent col.3 ll.35-36 (“The front 24, like the bottom
22, abuts the snowmobile 23.”); col.4 ll.25-26 (“The seat section 60 has an upper
surface 62 on which a rider may sit.”); col.6 ll.3-4 (“bottom 222 disposed on the
snowmobile 23”); ’317 patent col.2 ll.1-3 (“a substantially rigid base disposed over an
upper surface of a track tunnel of a snowmobile.”), ll.15-17 (“the base section or bottom
thereof can abut directly to the upper surface of the track tunnel of the snowmobile.”);
col.3 ll.55-58 (same). Again reiterating the claim language, each specification explains
that the bottom surface of the base section includes fasteners, hooks, or rails for
coupling the base section to the body of the snowmobile. See, e.g., ’149 patent col.2
l.65-col.3 l.25 (“fasteners are coupled on the lower surface of the base section and
coupled to the snowmobile to resist horizontal movement”); col.5 ll.54-65; col.8 ll.53-58;
’630 patent col.2 ll.13-27; col.5 ll.11-35; col.8 ll.8-45; ’317 patent col.6 ll.5-20.
Moreover, the same point is reflected in all the figures in each patent. For example,
figure 4 of each patent discloses joining the snowmobile seat to the snowmobile body
using a pair of fasteners—one fastener 91 located on the lower surface of the base
section and the other fastener 90 located on the upper surface of the snowmobile 23.
See, e.g., ’630 patent fig.4; see also ’630, ’317, ’140 patents fig.10 (showing a different
embodiment of the snowmobile seat, but still disclosing one fastener on the on the
bottom of the base section and another fastener on the top of the snowmobile body).
Thus, the base section is required to be the bottom structure of the snowmobile seat.
Further emphasizing that the base section is the bottom structure of the
snowmobile seat, the base section consists of formed cavities that fit around various
components located on the snowmobile itself, such as the gas tank, engine, and
2008-1311 13
battery. ’630 patent col.4 ll.14-16; ’149 patent col.4 ll.58-60; ’317 patent col.2 ll.2-32
(describing various indentations in the base section to “match” components on the
snowmobile body). In this way, the base section can act as a “leak barrier between the
snowmobile components . . . and the flexible seat section,” which is placed on top of the
base section. ’317 patent col.2 ll.27-30; see, e.g., ’630 patent col.3 ll.47-50 (explaining
that the base section “does not absorb moisture or water”); ’149 patent col.4 ll.25-28
(same). If the base section was not the bottom of the snowmobile seat, it would not
need to be formed with cavities to “match” the shape of the snowmobile body and
components; nor could it protect the flexible seat section from leaking snowmobile
components.
The patents’ specifications similarly reiterate that the base section is the support
structure of the snowmobile seat. Specifically, each patents’ specification states that
the “base section . . . is substantially rigid and provides support for the seat [],” ’149
patent col.4 ll.21; col.6 ll.38-40; ’630 patent col.3 ll.42-43; col.6 ll.7-9; ’317 patent col.4
ll.5-7; col.7 ll.1-3, and “provide[s] strength and rigidity,” ’630 patent col.3 ll.47-48; ’149
patent col.4 ll.24-26; ’317 patent col.4 ll.20-22. The statement in the specification that
the base section “prevents the seat from collapsing onto the snowmobile components”
and “provide[s] the desired shape and structure of the seat,” ’317 patent col.2 ll.23-25;
col.4 ll.24-26; col.4 l.64-col.5 l.5, further suggests that the base section is the support
structure.
Boss cites several portions of the patents-in-suit, suggesting both that its
proposed constructions are correct and that the district court’s construction is unduly
2008-1311 14
narrow. In emphasizing these excerpts, however, Boss attempts to read unnecessary
limitations into the claims and misinterprets the specification. 5
Arguing that the “base section” should be only “at least a part of the bottom” of
the snowmobile seat, Boss stresses that each patent explains that the “base section 40
has a lower surface 42 that forms at least part of the bottom 22.” See, e.g., ’317 Patent
col.4 ll.44-45 (emphasis added); see also ’149 patent col.4 ll.44-45; ’630 patent col.3
ll.66-67. Boss, however, misinterprets these statements in the specifications. Tellingly,
the “at least part of the bottom 22” of the snowmobile seat language does not describe
the entire base section 40. Instead, as clarified in figure 4, the “at least a part of the
bottom 22” language only describes the “lower surface 42.” In other words, the “bottom
22” of the snowmobile seat consists of at least a “lower surface 42” of the base section,
but may consist of another surface on the bottom of the base section—i.e., a surface
higher than the lower surface, but still part of the bottom of the base section. 6 Indeed,
the “lower surface 42” forms a part of the bottom 22, while the higher surface, indicated
by 46, forms the remaining part of the bottom 22. 7 Thus, the higher and lower surfaces
5
We also note that Boss’ proposal to construe “base section” differently for
each patent is contrary to its initial suggestion, in the district court, that the limitation
should be construed identically across all three patents.
6
A “higher surface” should not be confused with the “upper surface” of the
base section, which is exemplified by 52 and 54 in figure 4. The “upper surface” is on
the top of the base section, and the rider either sits directly on the “upper surface” or on
a “flexible seat section” placed on the “upper surface.” See, e.g., ’317 patent col.5 ll.6-
23. In contrast, the “higher surface” refers to a surface higher than lower surface, but
nonetheless still on the bottom of the base section. See, e.g., ’317 patent fig.4.
Accordingly, both the higher and lower surfaces make up the bottom of the base
section, which abuts the snowmobile body.
7
We recognize that the patents’ specifications describe item 46 in figure 4 as
“additional cavities.” See, e.g., ’149 patent col.4 l.58. We in no way contradict this
disclosure, but, because the higher surface in figure 4 is not labeled, we simply use 46
as a convenient reference.
2008-1311 15
form the entire bottom of the snowmobile seat. Logically, because both the higher and
lower surfaces are part of the base section, the base section is therefore the bottom
structure of the snowmobile seat.
Next, Boss cites the specification language stating that the base section, or
bottom thereof, can be “directly or indirectly mounted on the snowmobile.” This
suggests to Boss that the base section for all patents need only be “at least a part of the
bottom” of the snowmobile seat. See ’630 patent col.3 ll.31-32; col.3 l.67-col.4 l.1; col.6
ll.19-21. Because this statement only appears in the ’630 patent, Boss also argues that
its unique construction of base section in the ’630 patent is correct. This disclosure,
however, does not further explain the difference between directly and indirectly
mounting and does not prevent the base section from being the “bottom support
structure of the snowmobile.” Rather, based on the entirety of the intrinsic evidence,
including these specific statements, the base section can still be indirectly mounted to
the snowmobile while being the “bottom” structure of the snowmobile seat. Moreover,
the other portions of the specifications, which more clearly discuss mounting the
snowmobile seat to the snowmobile body, disclose using “hook-and-loop type fasteners”
or the “snap type fasteners.” See, e.g., ’630 patent col.5 ll.10-35; col.8 ll.8-61. Not only
do neither of these mounting fasteners preclude the base section from being the bottom
structure, but they in fact support that the base section must be the bottom structure of
the snowmobile seat. As explained, mounting the base section to the top of the
snowmobile—using the fasteners on the base section’s bottom—would be difficult
unless the base section was the bottom of the snowmobile seat. As such, if the base
2008-1311 16
section is “indirectly mounted on the snowmobile” using either of these fastener-types,
the base section is nonetheless the “bottom support structure of the snowmobile seat.”
Boss also points out that the ’317 patent states that “the base structure can be
mounted to other support structure that in turn can be mounted on the track tunnel.”
See ’317 patent col.4 ll.14-16. According to Boss, this statement both proves its
different construction for the ’317 patent and that, because the base section can be
mounted to an additional support structure, the base section is not necessarily the
bottom support structure. Boss, however, overlooks that this statement is not
inconsistent with the base section being the bottom support structure of the snowmobile
seat, despite being mounted to another support structure. In fact, the cited passage
suggests that the “other support structure” is not part of the snowmobile seat, but rather
is part of the snowmobile body or is independent from any other part. The claim
construction, however, requires the base section to be the “bottom support structure of
the snowmobile seat.” As such, even assuming the “other support structure” provides
some support to the bottom of the seat, it is neither the bottom structure nor the support
structure of the snowmobile seat. Thus, the base section remains both the bottom
structure and the support structure of the snowmobile seat.
For the foregoing reasons, we hold the district court correctly construed “base
section” for all three patents-in-suit to mean the “bottom support structure of the
snowmobile seat.” We have considered Boss’s additional arguments on this issue, but
find them unpersuasive.
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B.
We now address the construction of “adjacent.” This limitation explicitly appears
only in independent claim 5 of the ’317 patent, but it is also required in dependent
claims 7 and 8 by dependency from claim 5. The district court construed this limitation
as “next to or adjoining.” Claim Construction, slip op. at 32.
Boss argues that this term should be construed as “close to.” Boss contends that
the district court inappropriately limited the definition of “adjacent” and, in doing so,
excluded certain embodiments in the ’317 patent. According to Boss, the proper
construction would cover all of the disclosed embodiments. Specifically, Boss points to
figures 4 and 10 in the ’317 patent, emphasizing that its proposed construction—“close
to”—would encompass both disclosed figures, whereas the district court’s construction
excludes the embodiment shown in figure 4.
Yamaha responds that the intrinsic evidence, the claims, and ordinary meaning
support the district court’s construction. In particular, Yamaha argues that the ’317
patent’s specification use of “adjacent” to describe “corners formed by adjacent sides of
the base section 240,” col.9 l.52, confirms “the concept of next to or adjoining.” Yamaha
also contends that, contrary to Boss’s suggestion, the court’s construction “does not
exclude any embodiments from the scope of the invention because other claims are
available to cover those embodiments.”
We agree with the district court that the correct construction of “adjacent” in the
’317 patent is “next to or adjoining.” Although the term “adjacent” is a commonly
understood word, we still look to the intrinsic evidence for the proper construction. See
Phillips, 415 F.3d at 1321 (“the specification is ‘the single best guide to the meaning of a
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disputed term’”) (quoting Vitronics, 90 F.3d at 1582); id. (“[T]he “ordinary meaning” of a
claim term is its meaning to the ordinary artisan after reading the entire patent.”).
Turning to the pertinent claim language, claim 5 states “a storage section,
disposed adjacent the flexible seat section, having a storage cavity formed therein.”
’317 patent col.11 ll.3-4. While the language of claim 5 alone does little to clarify the
parties’ dispute, the figures in the specification support the proposition that the term
means “next to or adjoining.” As shown by figure 10, the storage section is directly
“next to or adjoining”—not merely “close to”—the flexible seat section 260. Id. fig.10. In
addition, the specification’s use of “adjacent”—“corners formed between adjacent sides
of the base section”—supports that “next to or adjoining” is the correct construction. Id.col.9 ll.51-52. Indeed, in order for the sides of the base section to form “corners,” the
sides would logically have to be “next to or adjoining” each other, rather than merely
“close to” each other. See id. fig.9a items 230 and 224. Moreover, this construction,
gleaned from the intrinsic evidence, is consistent with the dictionary definition of
“adjacent.” See, e.g., American Heritage Dictionary of the English Language (4th Ed.
2000); Phillips, 415 F.3d at 1322-23 (acknowledging that a construction “may also rely
on dictionary definitions . . . so long as the dictionary definition does not contradict any
definition found in or ascertained by a reading of the patent documents.” (quoting
Vitronics, 90 F.3d at 1584 n.6)).
Moreover, Boss’s proposed construction of “close to” and its contentions that the
current construction of “next to or adjoining” excludes certain disclosed embodiments
are contradicted by the unasserted claims of the ’317 patent. See Phillips, 415 F.3d at
1314 (“Other claims of the patent in question, both asserted and unasserted, can also
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be valuable sources of enlightenment as to the meaning of a claim term.”); see also
PSN Illinois v. Ivoclar Vivadent, Inc., 525 F.3d 1159, 1166 (Fed. Cir. 2008)
(“[U]nasserted or cancelled claims may provide ‘probative evidence’ that an
embodiment is not within the scope of an asserted claim.”). Indeed, this case presents
a clear example of the situation in which, although alternatively disclosed embodiments
are not encompassed by the current claim construction, other unasserted claims cover
those alternative embodiments. See, e.g., TIP Sys., LLC v. Phillips & Brooks/Gladwin,
Inc., 529 F.3d 1364, 1373 (Fed. Cir. 2008) (“[T]he mere fact that there is an alternative
embodiment disclosed in the . . . patent that is not encompassed by [a] district court’s
claim construction does not outweigh the language of the claim, especially when the
court’s construction is supported by the intrinsic evidence.”); PSN Illinois, 525 F.3d at
1166 (“[C]ourts must recognize that disclosed embodiments may be within the scope of
other allowed but unasserted claims.”).
Claim 5 reads “a storage section, disposed adjacent the flexible seat section.”
’317 patent col.11 ll.3-4 (emphasis added). Under the current construction of “next to or
adjoining,” claim 5 encompasses the embodiment shown in figure 10, which discloses
the storage section next to the seat section. Id. fig.10. Importantly, unasserted
independent claims 1 and 12, as well as their dependent claims, omit the requirement
that the storage section be “adjacent” the seat section. See, e.g., id. col.10 ll.35-36;
col.12 ll.25-34. As such, the unasserted claims allow the storage section to be in a
variety of locations, including simply “close to” the seat section. The unasserted claims
therefore specifically encompass the other disclosed embodiments, which show the
storage section “close to” a seat section. See, e.g., id. fig.4 items 60 (seat section) and
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44 (utility cavity). Construing the limitation “adjacent” as “close to,” as urged by Boss, in
this case would render that limitation in claim 5 essentially meaningless in light of the
other unasserted claims—a construction we cannot accept based on the entirety of the
intrinsic evidence. See, e.g., Ortho-McNeil Pharma., Inc. v. Caraco Pharma. Labs.,
Ltd., 476 F.3d 1321, 1327-28 (Fed. Cir. 2007) (rejecting a claim construction that would
have “render[ed] meaningless another claim’s limitation”). 8
For the foregoing reasons, we hold the district court correctly construed
“adjacent” as “next to or adjoining.” We have considered Boss’s additional arguments
on this issue, but find them unpersuasive.
In sum, because we have affirmed the district court’s constructions of “base
section” and “adjacent,” either of which appear in all of the asserted claims, and
because Boss stipulated to noninfringement under the district court’s construction, we
affirm the summary judgment of noninfringement of all claims.
IV.
We now turn to Boss’s appeal of the district court’s decision denying its
discovery-related sanctions motions. Boss does not allege that its discovery motions,
and the district court’s denial of those motions, affected its claim construction or
infringement positions. Rather, Boss apparently acknowledges that its discovery
motions concerned only potential prior art and invalidity issues. As Boss correctly
acknowledged at oral argument, the discovery issues therefore only need to be
addressed “if the court reverses the claim construction rulings” and would only become
pertinent on remand. See Oral Arg. 39:00-39:20, Jan. 8, 2009, available at
8
Also, we note that Boss originally proposed during claim construction in the
district court that, if “adjacent” required construction, it should be construed as “next to.”
2008-1311 21
http://oralarguments.cafc.uscourts.gov. Thus, the only remedies that Boss has
requested—namely, an adverse inference and preclusion of certain evidence at trial—
are contingent upon further litigation in the district court. We, however, have not
reversed the district court’s claim construction, but rather affirmed the court’s
constructions of the dispositive claim terms, and Boss has conceded noninfringement
under those constructions. Consequently, we cannot remand for further litigation in the
district court and the discovery-related motions therefore are moot. See, e.g., Geneva
Pharm., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1386 (Fed. Cir. 2003) (“Because
this court affirms that the patents at issue in this case are invalid, the discovery issue is
moot.”); Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1380 (Fed. Cir. 1999)
(“[W]e note that in view of our conclusion that the claims at issue are invalid as not
enabled, the fact that the district court did not admit this evidence on the issue of
infringement is essentially moot.”).
Nor did Boss appeal the denial of its other sanctions motions, which requested
sanctions not contingent upon remanding for further district court litigation and which
possibly could have provided this court with another avenue to address discovery
issues. Accordingly, we are unable to rule on, not only the district court’s denial of
Boss’s discovery motions, but also on any other possible discovery abuses that may
have occurred in the district court. That said, it appears from the record presented to us
that Yamaha’s discovery practices were less than commendable. For example, on
several occasions Yamaha date-stamped documents to be filed with the district court
using the court’s time stamp, but did not actually place the document in the court’s drop-
box at that time. See Boss Indus., Inc. v. Yamaha Motor Corp., U.S.A., No.
2008-1311 22
2:05CV00422, slip op. at 2 (D. Utah Feb. 28, 2007) (“Discovery Order”). Rather,
Yamaha actually filed the documents, by placing them in the drop-box, several days
after the “filed” stamp was placed on the documents. Id. After the district court realized
that this was not an isolated incident, but happened several times, it admonished
Yamaha, stating that “[t]his deceitful conduct will not be tolerated” and that this
inappropriate practice “is particularly egregious when . . . the court is liberal in granting
extensions of time.” Id. slip op. at 2-3. The court further noted that “counsel in this case
have been admonished before about the gamesmanship that has been taking place in
this lawsuit.” Id. slip op. at 3. In addition, regarding Yamaha’s interpretation of
communications with the district court, the court further characterized Yamaha’s actions
as “unreasonabl[e]” and “disingenuous.” Boss Indus., Inc. v. Yamaha Motor Corp.
U.S.A., No. 2:05CV00422, slip op. at 4 n.2 (D. Utah Jan. 23, 2007). This type of
conduct during litigation is unacceptable and reflects a lack of respect for both the
opposing party and the court.
CONCLUSION
In sum, we affirm the district court’s claim constructions of “base section” and
“adjacent.” We therefore affirm the court’s grant of summary judgment of
noninfringement. Because we affirm the summary judgment of noninfringement, Boss’s
appeal of the denial of its discovery motions is moot.
Each party shall bear its own costs.
AFFIRMED
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