Resh, Inc v. Skimlite Manufacturing Inc ( 2023 )

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION 7 8 RESH, INC, Case No. 5:22-cv-01427-EJD 9 Plaintiff, CLAIM CONSTRUCTION ORDER v. 10 11 ROBERT CONRAD, INC. d/b/a SKIMLITE MANUFACTURING, et al., 12 Defendants. 13 Plaintiff Resh, Inc. brings this suit against Defendants Robert Conrad, Inc., d/b/a Skimlite 14 Manufacturing; James R. Conrad; and Barrett R. Conrad for infringement of U.S. Patent No. 15 11,141,852, entitled “Telepole Apparatus and Related Methods.” The parties dispute the 16 construction of eight terms. After considering the intrinsic and extrinsic evidence, as well as the 17 parties’ arguments at hearing, the Court construes the disputed terms as set forth below. 18 I. BACKGROUND 19 Defendant Robert Conrad, Inc., d/b/a Skimlite Manufacturing (“Skimlite”), is a California 20 corporation principally owned by Defendants James and Barrett Conrad (father and son, 21 respectively). Pl. CC Br. 1–2. Skimlite has been selling and manufacturing swimming pool poles 22 since the 1950s, primarily poles that utilize twisting and clamping technology to extend and lock 23 the poles’ lengths. First Am. Compl. (“FAC”) ¶¶ 49–51. 24 Plaintiff Resh, Inc. (“Resh”) is a California corporation run by husband and wife, Eric and 25 Jenel Gonzalez Resh. FAC ¶ 2. Eric Resh started working as a pool man in the late 1980s 26 cleaning other people’s swimming pools and has since “invented and patented a number of 27 improved swimming pool tools to assist pool men as well as homeowners.” Pl. CC Br. 2. This 1 includes the patent-in-suit, U.S. Patent No. 11,141,852 invention for “Telepole Apparatus and 2 Related Methods.” Resh’s pool poles use a button and detent to extend and lock the pole length 3 instead of twisting and untwisting like Skimlite’s poles. 4 The Complaint alleges that Skimlite had been manufacturing “twist-and-clamp” pool poles 5 for nearly 60 years until Defendant James Conrad encountered Resh’s “button detent” poles at a 6 2012 trade show. FAC ¶¶ 70–71. Since then, Skimlite has allegedly been designing infringing 7 pool poles using Resh’s button detent technology. Specifically, Skimlite’s new “SnapLite” poles 8 use a self-described “snap button lock” technology. Id. ¶ 79. 9 II. LEGAL STANDARD 10 A. Claim Construction 11 Claim construction is a question of law to be decided by the court. Markman v. Westview 12 Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). “[T]he 13 interpretation to be given a term can only be determined and confirmed with a full understanding 14 of what the inventors actually invented and intended to envelop with the claim.” Phillips v. AWH 15 Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (citation omitted). Consequently, courts construe 16 claims in the manner that “most naturally aligns with the patent’s description of the invention.” 17 Id. (citation omitted). 18 When construing disputed terms, courts begin with “the language of the asserted claim 19 itself.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) (citations 20 omitted). That is because “[i]t is a ‘bedrock principle’ of patent law that ‘the claims of a patent 21 define the invention to which the patentee is entitled the right to exclude.’” Phillips, 415 F.3d at 22 1312 (citation omitted). The words of a claim should be given their “ordinary and customary 23 meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art 24 in question at the time of the invention.” Id. at 1312–13 (citations omitted). A person of ordinary 25 skill in the art “is deemed to read the claim term not only in the context of the particular claim in 26 which the disputed term appears, but in the context of the entire patent, including the 27 specification.” Id. at 1313. Thus, courts “have long emphasized the importance of the 1 specification in claim construction.” David Netzer Consulting Eng’r LLC v. Shell Oil Co., 824 2 F.3d 989, 993 (Fed. Cir. 2016) (citation omitted). They have explained that the specification is 3 “always highly relevant” and “[u]sually, it is dispositive; it is the single best guide to the meaning 4 of a disputed term.” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 5 F.3d 1576, 1582 (Fed. Cir. 1996)). 6 The prosecution history of a patent—which “consists of the complete record of the 7 proceedings before the PTO [Patent and Trademark Office]”—is also intrinsic evidence of a claim 8 term’s meaning. Id. at 1317. But since the prosecution history “represents an ongoing negotiation 9 between the PTO and the applicant, rather than the final product of that negotiation, it often lacks 10 the clarity of the specification and thus is less useful for claim construction purposes.” Id. Any 11 limitation or disclaimer of claim scope based on prosecution history must constitute “unmistakable 12 [and] unambiguous evidence of disclaimer.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 13 1325 (Fed. Cir. 2003) (internal citations omitted). 14 Finally, the court is also authorized to consider extrinsic evidence, such as “expert and 15 inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 980 (internal 16 citations omitted). Although the court may consider evidence extrinsic to the patent and 17 prosecution history, such evidence is considered “less significant than the intrinsic record” and 18 “less reliable than the patent and its prosecution history in determining how to read claim terms.” 19 Phillips, 415 F.3d at 1317–18 (citation omitted). While extrinsic evidence may be useful in claim 20 construction, ultimately “it is unlikely to result in a reliable interpretation of patent claim scope 21 unless considered in the context of the intrinsic evidence” and may not be used to “contradict 22 claim meaning that is unambiguous in light of the intrinsic evidence.” Id. at 1319, 1324. 23 B. Indefiniteness 24 Section 112 requires that the “specification shall conclude with one or more claims 25 particularly pointing out and distinctly claiming the subject matter which the inventor or a joint 26 inventor regards as the invention.” 35 U.S.C § 112(b). The Supreme Court has held that a patent 27 is invalid for indefiniteness if its claims—read in light of the specification delineating the patent 1 and the prosecution history—fail to inform a person of ordinary skill in the art about the scope of 2 the invention with reasonable certainty. See Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 3 898, 901 (2014). The dispositive question is whether the claims—and not specific claim terms— 4 would fail to provide notice of the invention’s scope. Cox Commc’ns, Inc. v. Sprint Commc’n Co. 5 LP, 838 F.3d 1224, 1232 (Fed. Cir. 2016). Indefiniteness must be proven by clear and convincing 6 evidence. Sonix Tech. Co. v. Publications Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017). 7 III. CLAIM CONSTRUCTION 8 The parties originally identified 10 disputed terms in their joint claim construction 9 statement. However, in their responsive claim construction brief, Defendants withdrew two of 10 their disputed terms. The Court, therefore, only addresses the eight remaining terms. 11 A. “elongated [outer/inner] tube” (Claim 1) 12 Plaintiff’s Construction Defendants’ Construction Court’s Construction 13 A first axially extended Indefinite (none) Plain and ordinary meaning external tube; a second axially 14 extended internal tube; with cross-sections configured and 15 sized so that the second tube can be placed within the first 16 tube and thereby have an “inner/outer” relationship with 17 each other, with the tubes making a “long pole for 18 manually skimming a pool,” in contrast to being short like the 19 mounting bracket 34 shown in the McFarland ‘181 patent 20 Defendants claim that this term is indefinite because of the descriptor “elongated.” Defs. 21 CC Br. 13–14. Because the terms “outer tube” and “inner tube” appear in other terms without 22 “elongated,” they argue that the canon of claim differentiation would teach that an “elongated 23 outer tube” is different from just an “outer tube.” Plaintiff proposes a construction of “elongated” 24 to mean “with the tubes making a ‘long pole for manually skimming a pool,’ in contrast to being 25 short like the mounting bracket 34 shown in the McFarland ’181 patent.” Pl. CC Br. 7. 26 The Court disagrees with Defendants’ argument that “elongated” renders the entire Claim 27 1 1 indefinite, such that a person of ordinary skill in the art (“POSITA”) could not determine the 2 invention’s scope with reasonable certainty. Defendants first rely on the doctrine of claim 3 differentiation to demand that some meaning be ascribed to “elongated” in Claim 1 that is not 4 already captured by the phrases “outer tube” and “inner tube” in Claims 2 and 20. Def. CC Br. 5 13–14; Clearstream Wastewater Sys., Inc. v. Hydro-Action, Inc., 206 F.3d 1440, 1446 (Fed. Cir. 6 2000) (“Under the doctrine of claim differentiation, it is presumed that different words used in 7 different claims result in a difference in meaning and scope for each of the claims.”). Here, 8 however, an “elongated [outer/inner] tube” can be differentiated because only Claim 1—and not 9 Claims 2 or 20—contains a separate limitation describing the functional lengths of the invention. 10 ’852 Patent col. 17 l. 50–55. This length limitation also provides objective and functional 11 boundaries for a POSITA to understand the degree of “elongated,” thereby providing further 12 definiteness to the term. See generally infra Section III(C). 13 Plaintiff contend that the prosecution history provides further definiteness because it 14 indicates that “elongated” is intended to distinguish the ’852 pole from a “short” pole utilized in 15 the McFarland ’181 invention. Pl. CC Br. 7–8; Defs. CC Br. 14–15. The McFarland ’181 16 invention is an apparatus for “mounting a pool skimmer or strainer net alongside an edge of a pool 17 in order to clear the pool of floating debris as the water circulates in the pool.” Smith Decl., Ex. 9 18 (“’181 Patent”), 1:9–13. The prosecution history indeed reflects the ’852 patentee’s efforts to 19 distinguish a telescoping pole from the ’181 Patent’s “short stub” by emphasizing the “significant 20 lever arm distance” between a user and a tool affixed to the end of the pole. Smith Decl., Ex. 2 21 (“’852 History”), at 59, ECF No. 50-2, at 59 (noting that “the user is gripping the extended pole at 22 a location near the remote end of a substantially long pole, typically a significant distance from the 23 attachment holes”). 24 Defendants, however, respond to Plaintiff’s arguments by noting the plain and ordinary 25 meaning of “elongated” (which they contend is “longer than it is wide”) would not distinguish the 26 ’852 Patent from the ’181 Patent’s “short stub” pole, which is also technically longer than it is 27 wide, albeit by a smaller margin. Def. CC Br. 15. The Court cannot confirm the dimensions of 1 the ’181 Patent’s “short” pole from the presented evidence nor is it fully convinced that the plain 2 and ordinary meaning of “elongated” is necessarily the definition Defendants have advanced. In 3 any event, because the Court finds that Claim 1 does contain objective boundaries for the term 4 “elongated,” a POSITA—who is familiar with both telescoping pool poles and mounted pool-side 5 skimmers, and who has reviewed the ’852 Patent’s prosecution history—would have reasonable 6 certainty as to the scope of the “elongated” term in Claim 1. 7 In summary, the Court does not find the term “elongated” to be indefinite and will accord 8 this term its plain and ordinary meaning. 9 B. “said selective sliding action of the tubes causing the respective distance 10 between the grip . . . and said actuated detent . . . to change” (Claim 1) 11 Plaintiff’s Construction Defendants’ Construction Court’s Construction 12 A user’s choice to actuate the Indefinite (none) Plain and ordinary meaning detent allows the tubes to 13 slide with respect to each other, which results in the 14 movement (toward or away from each other) of the grip 15 and the detent 16 Defendants argue that this claim term is indefinite because it describes an action that must 17 be taken to effectuate the claim language and, therefore, is claiming both an apparatus and a 18 method for use. As a result, a “manufacturer or seller of the claimed apparatus would not know 19 from the claim whether it might also be liable for contributory infringement because a buyer or 20 user of the apparatus later performs the claimed method of using the apparatus.” Defs. CC Br. 21 21 (citing IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)). 22 Specifically, Defendants are focused on the language “causing the respective distance . . . to 23 change,” which they argue indicates that a sliding action must occur to ascertain infringement. 24 The Court begins by noting that Plaintiff’s proposed construction (“a user’s choice to 25 actuate the detent allows the tubes to slide with respect to each other”) is a non-starter. The 26 reference to a “user” is nearly directly analogous to claims that the Federal Circuit has found to be 27 indefinite for mixing method and apparatus limitations. See, e.g,. IPXL, 430 F.3d at 1384 (“the 1 user uses the input means”); H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d 1329, 1336 (Fed. 2 Cir. 2014) (“user completes” and “user selects”). However, Plaintiff also suggests that the Court 3 may construe this limitation by its plain meaning. CC Hr’g Tr. 70:9–13. 4 Turning then to this term’s original language in the claims, the Court finds that this term’s 5 plain and ordinary meaning describes only the apparatus and its capabilities without also capturing 6 a method for usage. To start, the subject of the disputed term (“said selective sliding action”) 7 refers to the immediately preceding condition: “said first end [of the inner tube] being received in 8 said slidable relationship within said outer tube.” ’852 Patent col. 17 l. 43–45. Because these 9 terms are couched as events (e.g., “being received,” “sliding action . . . causing”), Defendants 10 submit that this limitation requires a user to first engage the “selective sliding action” in a way that 11 “caus[es] the respective distance . . . to change” before infringement could be ascertained. Defs. 12 CC Br. 21. This stilted syntactical interpretation, however, misses the forest for the trees. A 13 POSITA understands that the invention is a telescoping pole, the core premise of which is that 14 they “[c]ommonly . . . utilize two separate lengths of tubing,” configured so that one tube slides 15 within another and may be locked at certain lengths. ’852 Patent col. 2 l. 18–23. In this context, 16 therefore, the passive gerunds “being received” and “causing” would be understood as 17 characterizing the invention’s telescoping functions, not as active verbs describing a user’s 18 actions. Contrary to the language that IPXL and H-W Tech found to be indefinite (i.e., “users 19 uses,” “user completes,” “user selects”), the phrases “sliding action of the tubes” and “causing” do 20 not presuppose any such user—it is the tubes’ sliding that causes the pole’s length to change, 21 which simply describes the telescoping pole’s capability. When the tubes slide, the length of the 22 pole changes. The Court does not read this term to also be claiming the “method” of a user using 23 the telescoping pole as intended. 24 In short, Defendants’ proposed construction relies on a wooden interpretation that projects 25 a faceless user onto the “sliding action of the tubes,” an interpretation that is not supported by the 26 intrinsic evidence or the basic background available to a POSITA. Accordingly, the Court rejects 27 Defendants’ indefiniteness argument and will accord the term its plain and ordinary meaning. 1 C. “the lengths . . . being sufficient to permit a user . . . to manipulate the . . . tool . 2 . . against the bottom of a swimming pool while the user is standing on the side 3 of the pool” (Claim 1) 4 Plaintiff’s Construction Defendants’ Construction Court’s Construction 5 The interlocked tubes are long Indefinite (none) Plain and ordinary meaning enough to allow a user 6 standing on the side of the pool to hold the grip end of the pole 7 and push a cleaning tool at the other end of the pole against 8 the bottom of the pool 9 Defendants argue that this term is indefinite because the necessary length to permit a user 10 to perform these actions depends on the depth of the pool and how far away a user is from the 11 pool’s edge. Defs. CC Br. 11–12. As a result, a POSITA cannot assess whether a product 12 infringes on the patent without experimenting on every new pool, so the argument goes. Plaintiff 13 counters that the entire point of the invention is to allow a pool cleaner to adjust the pole’s length 14 to accommodate different pools. Pl. Reply Br. 12–13. Plaintiff proposes a construction that adds 15 language that “the interlocked tubes are long enough to allow a user” to use the tool to clean the 16 bottom of a pool but also accepts that the plain meaning is acceptable. CC Hr’g Tr. 73:11–14. 17 The Court finds that this term is not indefinite and will accord the term its plain and 18 ordinary meaning. Defendants’ indefiniteness argument would effectively demand specific length 19 limitations from a patent claiming an adjustable telescoping pole. This theory is not supported by 20 the specification, which expressly acknowledges that the specific length of a pool pole will 21 “depend[] on a number of factors, such as the depth of the pool, the strength of the person using 22 the tool, the particular tool being used.” ’852 Patent col. 2 l. 23–26. Second, even if the precise 23 boundaries of the pole’s length and the claim’s scope are not described down to the inch, a 24 POSITA would understand that this term sets out a functional minimum for the product’s length, 25 i.e., the length needs to be “sufficient” for a user to clean a pool. ’852 Patent col. 17 l. 51–55. 26 As a result, the plain and ordinary meaning of this term would avoid the indefiniteness 27 discussed in Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008), 1 which is Defendants’ primary cited authority. Unlike in Halliburton where practitioners would 2 have been required to comprehensively test whether a gel was mechanically “fragile” enough to 3 infringe the patent, the length of a pole is readily apparent and needs no such ad hoc pool-by-pool 4 testing. Shoehorning Halliburton’s reasoning into the facts of this case—which Defendants 5 attempt by contending that a POSITA must “test[] the pole in every circumstance for every user” 6 to determine if a particular pole’s length would infringe—would be antithetical to the basic 7 premise of an adjustable pole. See ’852 Patent col. 2 l. 18–29. Moreover, the Federal Circuit has 8 consistently noted that claims are not “not per se indefinite merely because they contain functional 9 language”; indeed, in certain circumstances such as the one here, “functional language promotes 10 definiteness because it helps bound the scope of the claims by specifying the operations that the 11 [invention] must undertake.” Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838 F.3d 1224, 12 1232 (Fed. Cir. 2016). Here, the functional language set forth in Claim 1 specifies that the pool 13 pole should be at least long enough to clean pools. Such a term requires no construction. 14 D. “hollow along at least substantially its length" (Claim 2) 15 Plaintiff’s Construction Defendants’ Construction Court’s Construction 16 The inner tube has an unfilled Indefinite (none) Plain and ordinary meaning or hollowed-out space within it, 17 along most or all of its length 18 Defendants dispute this term on two grounds: (1) Plaintiff cannot cite to any tube that is 19 hollow along less than its entire length, i.e., all tubes Plaintiff identified are hollow along their 20 entire length; and (2) even if there are some tubes that are hollow along less than its full length, the 21 adverb “substantially” does not give any clarity as to how much of the tube can or cannot be 22 hollow. Defs. CC Br. 17–18. Plaintiff’s proposed construction states that “the inner tube has an 23 unfilled or hollowed-out space within it, along most or all of its length,” utilizing the adjective 24 “most” instead of the adverb “substantially.” Pl. CC Br. 11–12. Plaintiff also notes that some 25 pool poles may use a buoyancy plug positioned at the end of the inner tube that would plug some 26 portion of the tube’s hollow space, thereby rendering the tube not entirely hollow. Id. 27 Because the parties’ dispute appears to revolve around the contours of the adverb 1 “substantially,” the Court will focus its analysis on whether “substantially” renders this claim 2 indefinite. As a general matter, “[i]t is well settled law that terms of degree such as ‘about,’ 3 ‘relatively,’ ‘partially,’ and ‘substantially’ do not automatically brand a claim indefinite.” 4 Affymetrix, Inc. v. Hyseq, Inc., 132 F. Supp. 2d 1212, 1229 (N.D. Cal. 2001). These terms are 5 sufficiently “definite when the patent ‘provides some standard for measuring that degree . . . where 6 the patent provides examples, or where the claims themselves recite functional limitations that 7 determine the meaning of the terms.” Impinj, Inc. v. NXP USA, Inc., 2021 WL 4221659, at *3 8 (N.D. Cal. Sept. 16, 2021) (internal citations omitted). 9 Here, the Court finds that the patent claims and specification provide sufficient examples 10 and standards for a POSITA to measure the degree of “substantially” in the disputed term. First, 11 the specification states that a “preferred lightweight design may be at least partially hollow along 12 the length of the tube(s).” ’852 Patent col. 6 l. 50–54 (emphasis added). In this recitation, there is 13 no qualification as to what portion of the tube should be hollow—the tube is partially hollow 14 along its entire length.1 This excerpt also indicates that the term “hollow along at least 15 substantially its length” provides some functional boundaries—the tube should be hollow enough 16 to lightweight the pole design. See Impinj, 2021 WL 4221659, at *4 (rejecting indefinite 17 arguments where “there is a functional limitation that determines whether the shape meets the 18 claims”); Legacy Separators LLC v. Halliburton Energy Servs. Inc, 2016 WL 3017140, at *9 19 (S.D. Tex. May 26, 2016) (rejecting indefiniteness where a POSITA “would understand that the 20 use of the word ‘substantially’ means as much separation as possible ‘to obtain good performance 21 and life from the ESP’”). Second, as Defendants concede, the ’852 Patent contains several 22 different examples of tube configurations with hollow portions that are hollow along their entire 23 length. Def. CC Br. 17 (citing ’852 Patent figs. 3b, 3c 3d, 4a). Although Defendants flag this as 24 evidence that there is no tube configuration that is less than entirely hollow, they also do not 25 26 1 It is worth clarifying that the Court does not consider the qualifier “at least partially” in this excerpt, because the qualifier only modifies “hollow” and not the length of the tube. This is 27 distinguishable from the disputed term “along at least substantially its length,” where the qualifier modifies the length, not the tube’s hollowness. 1 adduce any evidence that suggests a POSITA would lack reasonable certainty when confronted 2 with such hypothetical tube configurations. To the contrary, the specification’s consistent use of 3 fully hollow examples would provide useful guidance to the POSITA as to the meaning and scope 4 of this term. See Impinj, 2021 WL 4221659, at *4 (“[T]he specification provides multiple 5 examples of shapes that meet these claim requirements. That also provides guidance.”) (internal 6 citation omitted). Finally, the disputed adverb “substantially” appears again in a later claim that 7 Defendants do not challenge for indefiniteness, where it is also mentioned in relation to the length 8 of the pole. Specifically, Claim 6 notes that the inner and outer tubes are in a keyed relationship 9 that exists “at all or substantially all of the positions in which said inner tube can be selectably 10 position within said outer tube.” ’852 Patent col. 18 l. 27–29 (emphasis added). And consistent 11 with the other two points, the close association with “all” provides yet another indication that 12 “substantially” should be construed as some proportion that is near the tube’s full length. 13 Although this disputed term does not specify with mathematical precision as to the exact 14 proportion of a pole that must be hollow, “[s]ome modicum of uncertainty . . . is the price of 15 ensuring the appropriate incentives for innovation.” Nautilus, 572 U.S. at 909; see also Sonix, 844 16 F.3d at 1377 (“[A] patentee need not define his invention with mathematical precision in order to 17 comply with the definiteness requirement.”). With respect to this term, the Court finds that 18 intrinsic evidence provides sufficient examples and language that would permit a POSITA to 19 determine the scope of this claim with reasonable certainty. 20 E. “keyed” (Claims 1, 6–8, 24) 21 Plaintiff’s Construction Defendants’ Construction Court’s Construction 22 Shaped to prevent relative Plain and ordinary meaning, Shaped to prevent relative rotation of the tubes which is “[having/has] a rotation of the tubes 23 groove or channel for a key” 24 Defendants contend that “keyed” should be accorded its plain and ordinary meaning, 25 which they define as “having a groove or channel for a key.” Defs. CC Br. 4–8. Plaintiff argues 26 that Defendants’ construction is improperly narrow and proposes a construction for “keyed” that 27 would mean “shaped to prevent relative rotation of the tubes.” Pl. CC Br. 12–13. 1 Turning first to Plaintiff’s construction, the Court finds this construction to be supported 2 by the intrinsic evidence. Throughout the patent specification and claims, each and every 3 reference to “keyed” is accompanied by elaboration that the keyed pieces should not rotate with 4 respect to each other. See, e.g., ’852 Patent col. 8 l. 8–11; col. 12 l. 48–63; col. 15 l. 56–61; col. 5 17 l. 34–36; col. 18 l. 24–46; col. 20 l. 36–38. Where a potentially broad term (e.g., keyed) is 6 consistently and uniformly accompanied by a separate limitation (e.g., preventing relative rotation 7 of the tubes), the Federal Circuit has incorporated that separate limitation into the construction of 8 the term. See, e.g., Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) 9 (construing “fuel injection system component” to mean only “fuel filter” because every reference 10 in the description specified a fuel filter); Nystrom v. TREX Co., 424 F.3d 1136, 1145 (Fed. Cir. 11 2005) (construing “board” to mean only wooden boards because the “written description and 12 prosecution history consistently use the term ‘board’ to refer to wood decking materials cut from a 13 log”) (emphasis added); AquaTex Indus., Inc. v. Techniche Sols., 419 F.3d 1374, 1382 (Fed. Cir. 14 2005) (construing “fiberfill” to mean only synthetic fiber because it was consistently used to refer 15 to synthetic materials and never natural materials). Even Defendants’ own extrinsic evidence 16 supports a construction of “keyed” that contains a rotational limitation. Smith Decl., Ex. 7, at 442, 17 ECF No. 50-7, at 11 (“Keys . . . are used on shafts to secure rotating elements.”) (emphasis 18 added). A POSITA reviewing the patent’s consistent usage of “keyed” would understand that 19 “keyed” tubes are shaped and designed to prevent them from rotating with respect to each other— 20 indeed, the POSITA would have no occasion to entertain a concept of “keyed” without a rotational 21 limitation, as none exist in the patent. 22 Defendants contend that the separate references of the rotational limitation would rebut a 23 functional construction of “keyed,” because to do so would render superfluous all those separate 24 and express recitations of the rotation limitation. Defs. CC Br. 7–8. Although the Court 25 acknowledges that the doctrine of claim differentiation would generally counsel against construing 26 “keyed” to contain a rotational limitation, the Federal Circuit has also clarified that “this doctrine 27 is not a rigid rule but rather is one of several claim construction tools.” ICU Med., Inc. v. Alaris 1 Med. Sys., Inc., 558 F.3d 1368, 1376 (Fed. Cir. 2009) (rejecting argument that a term cannot 2 include a limitation lest another claim be rendered superfluous); see also Tools Aviation, LLC v. 3 Digital Pavilion Elecs. LLC, 2021 WL 5920142, at *13 (E.D.N.Y. Dec. 15, 2021) (“Although an 4 invention claimed in purely structural terms generally resists functional limitation, it is entirely 5 proper to consider the functions of an invention in seeking to determine the meaning of particular 6 claim language.”) (internal quotation marks, brackets, and citation omitted). In this case, the 7 overwhelming consistency by which “keyed” is associated with the rotational limitation supports 8 rebutting the canon of claim differentiation. Moreover, construing “keyed” to encompass a 9 rotational limitation would be consonant with and resolve Defendants’ insistence that “keyed” 10 cannot be equated with “matched.” Defs. CC Br. 7 (“Matched profiles and keying are different.”). 11 In adopting Plaintiff’s construction, the Court rejects Defendants’ construction of “keyed,” 12 which reads the term to require that the tubes have a “groove or channel for a key.” The intrinsic 13 evidence simply does not support such a limitation. First, the terms “groove” or “channel” appear 14 nowhere in the specification or the claims, much less with any proximity to “keyed.” Defendants 15 are only able to cite to Figure 14 as support, which reflects a cross-section design described as 16 “one potential embodiment” and notably not described as “keyed.” ’852 Patent col. 15 l. 66 – col. 17 16 l. 5. In any event, “importing [a] limitation from an embodiment in the figures . . . is 18 improper.” Polaris Innovations Ltd. v. Brent, 48 F.4th 1365, 1377 (Fed. Cir. 2022). Second, 19 Defendants assembled their construction by purportedly first consulting a mechanical engineering 20 textbook that associates keys with “keyways,” and then consulting a general dictionary’s 21 definition of “keyway” to arrive at the phrase “a groove or channel for a key.” Defs. CC Br. 5 22 (citing Smith Decl. Exs. 7, 8). The linguistic contortion required to reach Defendants’ 23 construction undermines their attempt to portray this definition as the plain and ordinary meaning 24 for “keyed.” Finally, although the specification describes some potential embodiments that could 25 resemble the “groove or channel” design Defendants reference, the specification does not use the 26 term “keyed” to describe these specific types of design or embodiment. See ’852 Patent col. 14 l. 27 11–16 (“In another alternative embodiment of the present invention, the inner tube may be 1 provided with notches [] about its circumference . . . that correspond to protrusions/tabs . . . to 2 prevent the inner tube from excessively or undesirably rotating within the outer tube during use.”); 3 col. 15 l. 66 (“In one potential embodiment . . . an outer tube may be provided with an 4 inward/interior-facing protrusion [] within its profile, and an inner tube may correspondingly have 5 an indention [] within its profile.”). In any event, even if some tubes with a “groove or channel” 6 may also be considered “keyed” under the Court’s construction so long as the groove or channel 7 prevents unwanted rotation, there is no intrinsic support for Defendants’ contention that “keyed” 8 necessarily includes a “groove or channel.” 9 Accordingly, given the consistent intrinsic and extrinsic evidence available in this case, the 10 Court construes “keyed” to mean “shaped to prevent relative rotation of the tubes.” 11 F. “relatively lightweight material” (Claim 19) 12 Plaintiff’s Construction Defendants’ Construction Court’s Construction 13 Not a heavy material Indefinite (none) Plain and ordinary meaning 14 Defendants argue that “relatively lightweight” is indefinite because, even if “lightweight” 15 can be understood to mean aluminum or fiberglass (materials that are referenced in the 16 specification), a POSITA would not know what “relatively” lightweight means. Defs. CC Br. 12– 17 13. Defendants also point out that the indefiniteness is exacerbated by the fact that the 18 specification is inconsistent in giving examples of “lightweight” materials. Id. Plaintiff proposes 19 a construction of “not a heavy material.” 20 Although this term is not a paragon of clarity on its own, the Court finds that Defendants 21 have failed to demonstrate by clear and convincing evidence that a POSITA would not be able to 22 ascertain the scope of Claim 19 with reasonable certainty. Because “relatively” is a term of 23 degree, the Court must consider whether the patent contains sufficient “objective boundaries” for a 24 POSITA to determine the scope of what is a “relatively lightweight material.” See, e.g., Niazi 25 Licensing Corp. v. St. Jude Med. S.C., Inc., 30 F.4th 1339, 1349 (Fed. Cir. 2022). Here, the 26 specification describes a wide variety of materials and their relative qualities: handles made of 27 hard wood are stronger but also weigh more than soft wood handles; metal tubes may be heavy 1 and bend under pressure; and synthetic handles like plastic or fiberglass may also be heavy, lack 2 strength, or fail for other reasons. See ’852 Patent col. 1 l. 46–57. More specifically, the 3 specification notes that telepole tubing is typically made from “aluminum, fiberglass, or some 4 other light, yet relatively strong material” (id. col. 2 l. 30–31), but it also remarks that the 5 invention “can be practiced using any of a wide variety of suitable processes and materials” and 6 that “[m]aterials are not limited in any way and could extend from metals to plastics, to resins of 7 all types” (id. col. 10 l. 44–57). Aluminum also appears multiple times throughout the 8 specification with Claim 19 specifically citing aluminum as a “relatively lightweight” material. 9 See id. col. 2 l. 30–31; col. 6 l. 46–48; col. 19 l. 16–18. These examples indicate that the 10 composition limitation in Claim 19 is “broad, but [] not uncertain.” Niazi, 30 F.4th at 1349; see 11 also id. (“[E]xamples in the written description helped provide sufficient guidance to render the 12 claims not invalid as indefinite.”); see also Actavis Lab’ys UT, Inc. v. UCB, Inc., 2016 WL 13 3678987, at *9 (E.D. Tex. July 11, 2016) (declining to find “relatively rigid” as indefinite, noting 14 that “the term ‘relatively’ clarifies that the claim is not referring to absolute rigidity”). A POSITA 15 would be familiar with the materials used to manufacture pool poles, and the specification’s 16 examples would provide objective boundaries to cabin Claim 19’s “relatively lightweight” term. 17 To the extent that Defendants contend that the specification is inconsistent in its 18 characterizations of fiberglass, the Court does not find the specification’s language to be so fatally 19 contradictory as to render the term “relatively lightweight” indefinite. The passages in question 20 are as follows: (1) “[i]t is also common for handles on shovels, rakes, brooms, etc. to be made 21 from synthetic materials such as plastic or fiberglass; such handles likewise may be heavy, lack 22 strength or fail for other reasons,” ’852 Patent col. 1 l. 53–57 (emphasis added); and (2) 23 “[t]ypically, telepole tubing is made from aluminum, fiberglass, or some other light, yet relatively 24 strong material.” Id. col. 2 l. 30–31 (emphasis added). Contrary to Defendants’ argument, these 25 excerpts are not inconsistent when read in their corresponding contexts. The first passage 26 mentions fiberglass as used for a shovel or broom handle, whereas the second passage discusses 27 fiberglass as a material for telescoping poles. The first passage’s criticisms of fiberglass handles 1 are also couched in the disjunctive—the handles “may be heavy, lack strength or fail for other 2 reasons.”2 The Court will not construe this discussion of prior art in the specification to mean that 3 fiberglass is a categorically “heavy” material or allow it to cast doubt onto Claim 19’s “relatively 4 lightweight” term. See Guangdong Alison Hi-Tech Co. v. Int’l Trade Comm’n, 936 F.3d 1353, 5 1363 (Fed. Cir. 2019) (rejecting perceived inconsistency argument because “examples in the 6 specification may be used to inform . . . without being directly construed into the claim”) 7 (emphasis added). The Federal Circuit has likewise declined to construe claims as indefinite 8 based on a single perceived inconsistency in the patent specification, especially where a POSITA 9 could readily differentiate between the two characterizations. See Niazi Licensing, 30 F.4th at 10 1350 (reversing indefiniteness holding where the perceived inconsistency arose from a “single 11 sentence in the written description” regarding stiffness and flexibility); Guangdong Alison Hi- 12 Tech, 936 F.3d at 1363. 13 In summary, although the term and the specification’s commentary could be clearer, the 14 Court does not find that Defendants have demonstrated by clear and convincing evidence that 15 “relatively lightweight material” fails to give a POSITA notice about the scope of Claim 19. 16 G. “readily slide” (Claim 21) 17 Plaintiff’s Construction Defendants’ Construction Court’s Construction 18 The tubes can move smoothly Indefinite (none) Plain and ordinary meaning with respect to each other 19 without much difficulty as the user extends and/or collapses 20 the pole 21 Defendants argue that this term is indefinite by virtue of the adverb “readily.” They point 22 out that other claims require the tubes to be “slidable” or “slidably positioned”; therefore, “readily 23 slide” must mean something else that is more than just slidable. Defs. CC Br. 20. Plaintiff 24 proposes a construction that states, “the tubes can move smoothly with respect to each other 25 26 2 The disjunctive nature of this remark is further evidenced by the observation that a material’s heaviness is often inversely correlated with a lack of strength. See ’852 Patent col. 1 l. 49–51 27 (“Sometimes manufacturers use harder woods to reduce such breakage; however, hard woods tend to weigh more than softer woods.”). 1 without much difficulty as the user extends and/or collapses the pole.” Pl. CC Br. 13–14. 2 Defendants are correct that, under the doctrine of claim differentiation, the use of “readily 3 slide” in Claim 21 is presumed to result in a difference in meaning and scope from the recitation of 4 “slide” in Claims 1, 2, 8, 9, and 20. See Clearstream, 206 F.3d at 1446. The Court, however, 5 does not find that a POSITA would be confused by the term “readily slide,” to the point that they 6 cannot reasonably ascertain whether a set of tubes would fall within this limitation. As described 7 in the specification, a POSITA familiar with telepoles and the prior art would understand that such 8 poles involve outer and inner tubes, sometimes with a “gripping element [that] serves to prevent 9 the inner tube from sliding completely into the outer tube.” ’852 Patent 3:16–18 (emphasis 10 added). The POSITA would also know that poles with cam elements can sometimes “freely slide 11 within the outer tube” and at other times “appl[y] a pressure against the inner walls of the outer 12 tube and ‘locks’ the inner tube in place.” Id. 3:24–38; see also id. 4:14–19 (“[T]he cam may also 13 spontaneously align itself with the inner walls of the tube, thus permitting the tubes to readily slide 14 past one another.”) (emphasis added). And finally, a POSITA will also notice the multiple 15 instances where the specification describes the invention’s inner tube as being able to “readily 16 slide” in relation to a collar or outer tube. Id. 11:1–6; 13:6–10. These examples provide objective 17 boundaries for a POSITA to determine the scope of how “readily” the tubes may slide. 18 The Court finds that the intrinsic evidence provides sufficient examples and guidance such 19 that a POSITA can understand the scope and meaning of “readily slide” with reasonable certainty. 20 H. “generally round with at least one flat side” (Claim 24) 21 Plaintiff’s Construction Defendants’ Construction Court’s Construction 22 Having a cross-section that is “a D-shape”; otherwise, Having a cross-section that approximately circular and indefinite has at least one flat side and at 23 also includes a generally level least one round or non-flat or even portion side 24 Defendants propose that this term be construed to mean “a D-shape.” Otherwise, they 25 argue that this term would be indefinite because “generally round” is unclear. Defs. CC Br. 10. 26 Plaintiff proposes a construction that this term means “approximately circular and also includes a 27 1 generally level or even portion.” 2 As a preliminary matter, the Court will dispense with Defendants’ indefiniteness argument, 3 because the specification contains numerous figures of cross-sections and embodiments that would 4 fall under this term. See ’852 Patent col. 8 l. 57–65; see also id. figs. 3, 3a, 3b, 3c, 3d. These 5 embodiments provide sufficiently concrete examples that would allow a POSITA to determine the 6 objective bounds and scope of this claim. Additionally, the prosecution history also reveals that 7 the term “generally round” describes a functional limitation that reduces the discomfort of 8 gripping a pole with sharp edges. See ’852 History, at 87 (“The hexagonal profile/shape and 9 relatively sharp elongated edges of Mr. LongArm’s inner tube would be very uncomfortable and 10 even painful to grasp . . . when cleaning a swimming pool.”). Read alongside the intrinsic 11 evidence, the Court does not find that the term “generally round” renders Claim 24 indefinite. 12 With respect to the parties’ competing constructions, the Court finds neither acceptable. 13 Defendants’ proposed construction of a “D-shape” cross-section is far too narrow, as the express 14 language of the term contemplates “at least one flat side.” This indicates that there may be more 15 than one flat side to the cross-section, as evidenced by the possible embodiments in Figures 3, 3a, 16 3b, 3c, and 3d. ’852 Patent 8:57–65. Plaintiff’s construction of “approximately circular” and 17 “generally level,” however, is too broad. First, the specification only mentions “circular” once and 18 does not equate it with “round”; rather, it associates “circular” with “uniformly round.” See ’852 19 Patent col. 16 l. 20–21 (describing “an outer tube whose profile is not uniformly round/circular 20 along its length”). A construction involving uniform roundness would exclude several referenced 21 embodiments that are visibly not uniformly round and contain off-set straight edges. See ’852 22 Patent figs. 3, 3a, 3b, 3c, 3d. Second, the Court is skeptical about Plaintiff’s attempt to construe 23 “one flat side” to mean “a generally level or even portion.” Claim 24 expressly recites a flat side 24 without any qualification—Plaintiff’s injection of “generally” broadens the scope of the claim 25 beyond this language and is not supported by any intrinsic or extrinsic evidence presented. 26 Accordingly, the Court declines to adopt either party’s proposed constructions. 27 Instead, the Court will construe this disputed term to refer to a tube cross-section that has 1 “at least one flat side and at least one round or non-flat side.” This construction gives meaning to 2 |} Claim 24’s requirements for both round and flat elements to the cross-section, as well as avoids 3 conflating “round” with “circular” as noted above. This construction also includes all the various 4 || cross-section embodiments mentioned in the specifications, while excluding cross-sections that do 5 not contain any round elements. 6 || IV. CONCLUSION 7 For the reasons set forth above, the Court construes the disputed terms, as follows: 8 OEM Kowiit ieatea yi “said selective sliding action of the tubes Plain and ordinary meaning 10 causing the respective distance between the grip ... and said actuated detent . . . to 11 change” D “the lengths ... being sufficient to permit a Plain and ordinary meaning user... to manipulate the... tool... against 5 13 the bottom of a swimming pool while the user is standing on the side of the pool” 14 “hollow along at least substantially its length” | Plain and ordinary meaning 15 Shaped to prevent relative rotation of the tubes Sam 16 “relatively lightweight material” Plain and ordinary meaning “readily slide” Plain and ordinary meaning 17 “generally round with at least one flat side” Having a cross-section that has at least one flat 18 side and at least one round or non-flat side 19 IT IS SO ORDERED. 29 || Dated: December 7, 2023 22 EDWARD J. DAVILA 23 United States District Judge 24 25 26 27 28 || Case No.: 5:22-cv-01427-EJD CLAIM CONSTRUCTION ORDER