Citations
- 115 F. Supp. 2d 996
Full opinion text
MEMORANDUM OPINION AND ORDER REGARDING DEFENDANTS’ MOTIONS FOR SUMMARY JUDGMENT REGARDING NON-INFRINGEMENT AND INVALIDITY OF THE ’325 PATENT AND PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT REGARDING NON-INFRINGEMENT OF THE ’007 PATENT
BENNETT, Chief Judge.
TABLE OF CONTENTS
1002 I.INTRODUCTION.
1002 A. Procedural Background.
1003 B. Factual Background.
1003 1. The ’325 patent.
1003 a. The background and claims of the patent.
1006 b. Undisputed and disputed facts relating to the invalidity of the ’325 patent..
c. Undisputed and disputed facts relating to non-infringement of the ’325patent.,. Q O o
2. The ’007patent. H t-H o
a. The background and claims of the patent. H t — I o
.1016 b. Undisputed and disputed facts relating to non-infringement of the ’007patent.
.1019 II. LEGAL ANALYSIS.
.1019 A. Standards For Summary Judgment In Patent Cases..
.1020 B. Specialty’s Motions For Summary Judgment.
.1021 1. Construction of claim 1 of the’325 patent.
.1021 a. Rules of construction..
.1022 b. Disputed language of the claim..
.1022 c. Construction of claim 1(d) .
.1024 d. Construction of claim 1(e).
.1024 i. Rules of construction for a means-plus-function element.
.1026 ii. Application of the rules.'..
.1032 2. Invalidity of the ’325patent.
.1032 a. The “on-sale” bar.
.1034 b. Applicability of the on-sale bar here..
.1035 i. Sufficiency of Kudlacek’s evidence of the date of invention .
.1036 ii. The “Bottjer/Moore” sales.
.1037 iii. The “Kivett” sale .
.1038 iv. The “Mannos” sales..'...
.1038 v. The “Bickel Flitemate” sales.
.1039 3. Non-infringement of the ’325patent.
.1039 a. Literal infringement .
.1039 i. The literal infringement analysis.
.1040 ii. Literal infringement of claim 1(d).
.1042 iii. Literal infringement of claim 1(e).
.1047 b. Infringement under the doctrine of equivalents.
; 1047 i.The infringement analysis under the doctrine of equivalents .
.1050 ii. Equivalents infringement of claim 1(d).
.1051 iii. Equivalents infringement of claim 1(e)..
.1053 C. Kudlacek’s Motion For Summary Judgment .
.1054 1. Construction of claim 1 of the ’007patent. .
.1054 a. Language of the claim.
.1055 b. Prosecution history and the Shores ’786 patent.
.1056 i. Application claim 1.. 1.
.1056 ii. The Shores ’786 patent.
.1058 iii. Rejection and amendment.
.1059 iv. The scope of prosecution history estoppel.
.1061 v.The resulting construction .
.1061 c. Construction of “threaded” .
.1062 2. Non-infringement of the ’007patent.
.1062 a. Literal infringement .
.1063 i. Literal infringement of the “threading” limitation.
.1064 ii. Literal infringement of the “interchangeability” limitation .
.1065 b. Equivalents infringement.
.1065 i. Equivalents of the “threading” limitation...
ii. Equivalents of the “interchangeability” limitation.1067
c. “Direct” infringement.1068
d. Contributory infringement.1069
i. The statutory basis for the claim.1070
ii. Requirements of the claim .1070
iii. Contributory infringement here.1071
D. Final Or Partial Judgment?.1072
1. Guidance from the Federal Circuit Court of Appeals .1073
2. The Supreme Court’s decision in Cardinal Chemical.1073
3. The import of Cardinal Chemical for this case.1075
III. CONCLUSION.1075
Upon his return from years of wandering after the Trojan War, just before killing all the suitors his wife had unwillingly collected during his absence, Odysseus won an archery contest by shooting an arrow through twelve rings arranged in a line. What is most amazing about this story, at least to one acquainted with the present litigation, is that Odysseus apparently managed this feat of marksmanship without the aid of the archery bow stabilizers or peep sight targeting systems made by the parties to this patent infringement lawsuit.
I. INTRODUCTION
A. Procedural Background
Plaintiff Donald S. Kudlacek filed this action alleging patent infringement on May 20, 1999, against defendants DBC, Inc., an Iowa corporation, doing business as Specialty Archery Products, and Donald I. Chipman. Unless otherwise dictated by the circumstances, the defendants will be referred to collectively as “Specialty.” In the single count of his Complaint, Kudlacek alleges that Specialty has been infringing and is continuing to infringe Kudlacek’s United States Patent No. 5,611,325 (the ’325 patent) for an archery bow stabilizer by making, using, selling, and offering for sale bow stabilizers embodying the patented invention. Kudlacek seeks injunc-tive relief and damages, including treble damages for willful and wanton infringement, prejudgment interest and costs, attorney’s fees, and such other legal and equitable relief as the court deems just. Kudlacek demanded a jury trial of his infringement claim.
On June 14, 1999, Specialty filed an Answer and Counterclaims, and on July 26, 1999, Specialty and third-party plaintiffs Robert E. Shoemake and Jessie Morehead filed an Amended Answer and Counterclaims and Third-Party Complaint. In the Amended Answer, Specialty denied Kudlacek’s claim of infringement of the ’325 patent and asserted various affirmative defenses to that claim. Specialty also asserted one Counterclaim addressed to the ’325 patent, Counterclaim 1, which seeks declaratory judgment that Specialty is not now and never has infringed, induced infringement, or contributorily infringed the ’325 patent, and that the ’325 patent is invalid and/or unenforceable. In a second Counterclaim and Third-Party Claim, Specialty, Shoemake, and More-head assert their own claim for patent infringement. This claim alleges that Kudlacek sells an “Adjustable Control Peep” for an archery bow that infringes at least claim 1 of United States Patent No. 5,137,007 (the ’007 patent), a patent for an “Archery Shooting Control System,” which is owned by third-party plaintiffs Shoe-make and Morehead, but exclusively licensed to Specialty and for which Specialty holds the first-right to sue infringers. Because of this licensing arrangement, the defendants and third-party plaintiffs will also be referred to collectively as “Specialty,” unless the circumstances dictate otherwise. On this claim for infringement of the ’007 patent by Kudlacek, -Specialty seeks injunctive relief, damages, treble damages for willful infringement, an accounting of profits, attorney’s fees and costs, and such other relief as the court deems just and equitable.
On March 6, 2000, Specialty filed separate motions for summary judgment determinations of invalidity and non-infringement of the ’325 patent. Specialty filed a supplemental memorandum in support of its “invalidity” motion on May 25, 2000, asserting additional grounds for invalidity of the ’325 patent, and yet another supplemental memorandum in support of its “invalidity” motion on September 8, 2000, a facsimile copy of which was received by the court on September 7, 2000, the day before the court heard oral arguments on the various summary judgment motions at issue here. Pursuant to a court-ordered briefing schedule, Kudlacek resisted Specialty’s “invalidity” motion on June 1, 2000, and Specialty filed a reply brief on June 14, 2000. Also pursuant to the briefing schedule, Specialty filed its brief in support of its “non-infringement” motion on June 14, 2000, Kudlacek filed his resistance to that motion on August 1, 2000, and Specialty filed a reply brief on August 14, 2000. On August 11, 2000, Kudlacek filed his own motion for summary judgment of non-infringement of the ’007 patent, which Specialty resisted on August 31, 2000. Kudlacek filed a reply brief in support of his motion for non-infringement of the ’007 patent on September 8, 2000.
By order dated August 21, 2000, the court set the various summary judgment motions for oral arguments on September 7, 2000. Those oral arguments were subsequently rescheduled to September 8, 2000. At the oral arguments, plaintiff Donald S. Kudlacek was represented by Daniel J. Cosgrove of Zarley, McKee, Thomte, Voorhees & Seese, P.L.C., in Des Moines, Iowa. Defendants DBC, Inc., d/b/a Specialty Archery Products, and Donald I. Chipman were represented by John B. Lunseth II of Rider, Bennett, Egan & Arundel, L.L.P., in Minneapolis, Minnesota. Defendant Donald Chipman was also personally present for the oral arguments. This matter is now fully submitted.
B. Factual Background
The Kudlacek. ’325 patent and the Shoemake/Morehead ’007 patent are the centers of attention in this litigation, and indeed, the centers of attention in the summary judgment motions presently before the court. Therefore, to provide the necessary background for the legal analysis to follow, for each patent, the court will first consider the invention as defined in the patent itself, pertinent portions of the prosecution history for that patent, and then the undisputed and disputed facts asserted by the parties regarding that patent. ■ In its legal analysis, the court will construe the patents, as necessary, and address in greater detail, where necessary, the parties’ assertions of genuine issues of material fact to determine whether those factual disputes, preclude summary judgment on the claim, counterclaims, and third-party claim in this litigation.
I. The ’325 patent
a. The background and claims of the patent
According to the ’325 patent itself, Kud-lacek filed Application No. 622,966 for a patent for an “Archery Bow Stabilizer” on March 27, 1996, identifying himself as the inventor. The application was eventually granted and United States Patent No. 5,611,325 (the ’325 patent) was issued on March 18, 1997. The abstract of the ’325 patent describes the invention as follows:
An archery bow stabilizer is formed of at least three elongated stabilizer rods secured at their inner ends to a base member mounted detachably on the handle of an archery bow and extending forwardly of the bow handle in parallel, circumferentially spaced-apart arrangement. At least one tuning slide member has elongated openings therethrough, spaced apart to match the spacing of the stabilizer rods and having a larger diameter than the rods for freely receiving the rods therethrough. A set screw is threaded into a threaded bore in the tuning slide member, the bore communicating with each opening, and a resilient pad on the inner end of the set screw is arranged to engage the associated stabilizer rod to secure the turning [sic] slide member to the stabilizer rods intermediate the ends of the rods, the pads allowing the rods to vibrate in the enlarged openings. The outer ends of the stabilizer rods are spaced apart freely from each other for individual vibration, and preferably are fitted with enlarged diameter weights to retard vibration. An O-ring cushion on each weight provides a resilient bumper for cushioning the stabilizer rods from each other during vibration.
Plaintiffs Complaint, Exhibit 1, United States Patent No. 5,611,325 (The ’325 Patent), Abstract.
The “Background of the Invention” acknowledges that “[m]any forms of stabilizers presently are in use or proposed for use on archery bows [but][a]ll of these types of stabilizers have limited stabilizing effectiveness.” Id. at “Background of the Invention.” Specifically, “the adjustable archery stabilizer disclosed in U.S. Pat. No. 5,090,396” (the Bickel ’396 patent) has a “fixed end cap at the outer end of the rod assembly [that] limits the range of vibration dampening.” Id Thus, “the principal objective of this invention [is] to provide an archery bow stabilizer that overcomes the aforementioned limitations and disadvantages of prior stabilizers.” Id at “Summary of the Invention.” Subsidiary objectives of the patent include “providing] a degree of vibration stabilization not attainable herretofore”; “pro-vidfing] an archery bow stabilizer ... in which the free ends of the rods are spaced resiliently from each other to allow each rod to vibrate independently of the others”; and “provision of an archery bow stabilizer ... that is of simplified construction for economical manufacture.” Id
Figures 1 through 3 of the ’325 patent show the invention:
The invention claimed in the ’325 patent consists of two independent claims (claims 1 and 6) and four dependent claims (claims 2 through 5). Kudlacek has clarified in response to Specialty’s summary judgment motions that he is alleging only that Specialty’s “Super Stix” bow stabilizer infringes — either literally or under the “doctrine of equivalents” — claim 1 of the ’325 patent. The pertinent claim is quoted below, with the court’s insertion of numbers from Figures 1 through 3 above to assist the reader:
I claim:
1. An archery bow stabilizer, comprising:
a) a base member [10] configured for attachment to an archery bow handle [14],
b) at least three elongated stabilizer rods [18] each having an inner end and an outer end,
c) anchor means [16 & 20] on the base member [10] securing the inner ends of the stabilizer rods thereto with the rods extending forwardly therefrom substantially parallel to and spaced apart circumferentially from each other,
d) at least one vibration dampener adjustment member [22] having openings therethrough [24] matching the number and circumferential spacing of said stabilizer rods [18] and a diameter larger than the diameter of said stabilizer rods freely receiving said rods therethrough, and
e) resilient securing means [26 & 28] on the vibration dampener adjustment member [22] extending into each of said openings and resiliently engaging and securing said adjustment member [22] to said stabilizer rods [18] intermediate the inner and outer ends of said rods.
Plaintiffs Complaint, Exhibit 1, ’325 patent.
Turning briefly to the prosecution history of the ’325 patent, in an “Examiner’s Statement of Reasons for Allowance,” attached to a “Notice of Allowability,” dated July 28, 1996, the patent examiner stated the following:
The prior art does not show a bow stabilizer with three spaced parallel rods extending from a base member attached to the bow, with a vibration damper member with openings corresponding to each rod, slidably receiving the rods, and a resilient means extending into each opening to secure the rods to the damper.
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Bickel shows a stabilizer similar to applicant’s, but the rods 20 are secured to the damper 50 with rigid set screws 44, without a resilient connection.
Helget Declaration, Exhibit D (July 28, 1996, “Notice of Allowability” of the ’325 patent).
In a “Supplemental Notice of Allowability,” dated October 28, 1996, the examiner added the following pertinent comments to the prosecution history:
The references show set screws with a resilient tip. These would not be com-binable with Bickel to arrive at the claimed invention, because Applicant requires the set screws to extend through openings in the adjustment member and contact each stabilizer rod. Bickel only uses one set screw to contact only one rod, so the others are not anchored to the adjustment member.
Plaintiffs Statement of Controverted Facts of June 1, 2000 (Invalidity), Exhibit 5 (October 28, 1996, “Supplemental Notice of Allowability” of the ’325 patent).
b. Undisputed and disputed facts relating to the invalidity of the ’325 patent
The essence of Specialty’s claim that the ’325 patent is invalid is that the invention embodied in the patent was sold or offered for sale more than one year prior to the filing of the patent application, that is, more than one year before March 27, 1996, and therefore is invalid under the “on-sale bar” stated in 35 U.S.C. § 102(b): Specialty contends that there is undisputed evidence of four sales or offers to sell the patented invention itself or a device anticipating the patented invention more than one year prior to Kudlacek’s application for the ’325 patent.
Specifically, Specialty contends that Sam Mannos, a former sales representative for Kudlacek, made the first invalidating sale, because he avers that he personally sold Kudlacek’s “4x4 carbon stabilizers” containing resilient pads as early as 1993. Specialty next contends that Dianne Bottjer, another former sales representative for Kudlacek, personally sold two of Kudlacek’s “4x4 carbon stabilizers” containing resilient pads to Bob’s Bowhunting in Horseheads, New York, on May 20, 1994. Bottjer’s sales invoice for the sale to Bob’s Bowhunting is included in the record and memorializes the sale of two 30” Pro lite 2 slides. Specialty contends that these bow stabilizers were subsequently purchased from Bob’s Bowhunting by Mr. and Mrs. Lee W. Moore in 1994. The Moores purportedly made no alterations or changes to the stabilizers during the time they owned them, and have since provided them to Dianne Bottjer, who also purportedly made no modifications or alterations to them before forwarding them to Specialty’s counsel. Specialty’s counsel also avers that he did not alter or modify the “4x4 carbon stabilizers” provided by Dianne Bottjer, but instead photographed them and “confirmed” that they contain a “resilient securing means” for securing the “vibration adjuster” to the stabilizer rods, and that this “resilient securing means” consists of “resilient pads” that are pressed against the stabilizer rods by set screws.
Two photographs of one of the stabilizers purportedly sold by Bottjer to Bob’s Bowhunting and then to the Moores more than a year before Kudlacek filed the application for the ’325 patent are shown below:
Set Screws
Resilient Pads
Helget Declaration, Exhibit B (labels in photographs by Specialty’s counsel).
Specialty contends further that Lawrence Kivett attended Kudlacek’s booth at the February 1995 Las Vegas Archery Tournament and observed a display of “4x4 carbon stabilizers” containing resilient pads, one of which was purchased by his nephew. Finally, Specialty contends that Bickel’s “Flitemate” archery bow stabilizers also contain a “resilient securing means,” consisting of a nylon tip attached to a set screw, to hold the vibration adjuster in place, and “Flitemate” stabilizers were sold in the United States as early as October 1994.
Specialty contends that these four sales of stabilizers or offers to sell stabilizers establish beyond dispute that each and every element of the ’325 patent was present in archery bow stabilizers sold or in public use more than one year prior to March 27, 1996, the; date on which Kudla-cek filed his application for what became the ’325 patent. Consequently, Specialty contends that it cannot be disputed that the ’325 patent is invalid.
However, Kudlacek disputes each of these factual contentions. He contends that he first invented archery bow stabilizers incorporating “resilient securing means” in June of 1995, and following his “discovery” of such “resilient securing means,” he and his business associate, Roland Haggard, began assembling resilient pads into the archery stabilizers they were going to display at the NFAA archery tournament in Wassau, Wisconsin, in July of 1995. Consequently, Kudlacek contends that the first public disclosure and/or sale of archery stabilizers that included rubber, soft, or resilient pads was at the NFAA archery tournament in Wassau in July of 1995, less than one year before he filed the application for the ’325 patent.
Turning to Kudlacek’s specific challenges to Specialty’s “undisputed” invalidating sales, Kudlacek contends that a second Declaration by Sam Mannos, which Kudlacek has submitted in support of his resistance to Specialty’s “invalidity” motion, demonstrates that Mannos is not sure whether Kudlacek’s 4x4 carbon stabilizers with resilient or soft pads were ever for sale prior to March 27, 1995. Moreover, Kudlacek contends that the 4x4 carbon stabilizers shown in photographs attached to Dianne Bottjer’s Declaration, one of which is shown again in the photographs by Specialty’s counsel included above, are not the 30" Pro lite 2 slides listed in Dianne Bottjer’s May 20, 1994, sales invoice, and hence are not the stabilizers involved in Bottjer’s transaction with Bob’s Bowhunting or the subsequent sale to the Moores. Instead, Kudlacek contends that the stabilizers shown in the photographs above and those attached to Bottjer’s Declaration were not made before June of 1995 and were not publicly displayed, offered for sale, or sold until July 1995, or later. Similarly, Kudlacek contends that the “4x4 carbon stabilizers” displayed in photographs attached to Lawrence Kivett’s Declaration were not made before June of 1995, and were not publicly displayed, offered for sale, or sold prior to July of 1995, and thus could not have been purchased by Kivett’s nephew in February of 1995, as Kivett avers. Finally, Kudlacek contends that, although the Bickel “Flitemate TRITRACK” bow stabilizer uses nylon-tipped screws, those screws do not constitute “resilient securing means” within the meaning of the ’325 patent, and even if the tips of those screws are “resilient,” they do not anticipate any of the claims of the ’325 patent, as indicated by the examiner’s “Supplemental Notice of Allowability,” dated October 28, 1996, the pertinent part of which is quoted above in Section LB.l.a., at page 1003.
c. Undisputed and disputed facts relating to non-infringement of the ’325 patent
The parties agree that the device Kudla-cek contends infringes the ’325 patent is Specialty’s “Super Stix” archery bow stabilizer. However, Specialty contends that the undisputed facts demonstrate that there is no infringement. The “Super Stix” stabilizer is shown in the following photographs:
PHOTOGRAPHS OF “SUPER STIX” PRODUCT (ASSEMBLED AND DISASSEMBLED)
Helget Declaration, Exhibit C (labels in photographs by Specialty’s counsel).
Specialty contends that, as these photographs show, the adjustment mechanism of the “Super Stix” is comprised of four separate pieces that come together to form channels through which the stabilizer rods pass. The separate pieces of the adjustment member are held together by rigid screws that pass through the outer edges of the adjustment member, but do not extend into the channels through which the stabilizer rods pass. Thus, Specialty contends, the screws do not engage, intersect with, or make any contact with the stabilizer rods; rather, they pull the four pieces of the adjustment member together in a “clamping” action around the rods. Moreover, Specialty contends, the “Super Stix” adjustment mechanism is not held in place by set screws applying uneven pressure against the stabilizer rods, but is instead held in place by eight separate rubber washers surrounding the stabilizer rods (two per rod). Thus, when the adjustment mechanism on the “Super Stix” is tightened around the washers, Specialty contends that the adjustment mechanism distributes pressure evenly across the stabilizer rods.
Kudlacek, however, disputes these factual contentions. Although he admits that the “Super Stix” stabilizer adjustment member consists of four parts held together with screws, Kudlacek contends that all elements and limitations of claim, 1 of the ’325 patent are present in the “Super Stix” stabilizer, both literally and under the doctrine of equivalents., Specifically, Kudlacek contends that, when the separate pieces of the adjustment member are assembled, the adjustment member has four openings that are capable of freely receiving the stabilizer rods, and indeed, the openings are slightly larger than the stabilizer rods, so that they allow the stabilizer rods to pass through the adjustment member, as defined in the ’325 patent. Kudla-cek contends that the rubber O-rings in the “Super Stix” stabilizer perform the same function of “engaging” and “securing” as the “resilient pads” in the ’325 patent, that is, these O-rings extend into the openings in the stabilizer and thereby engage the stabilizer rods. Moreover, Kudlacek contends that the accused “Super Stix” stabilizer works in substantially the same way as the stabilizer claimed in claim 1 of-the ’325 patent, because both apply pressure to the resilient pads or 0-rings by tightening screws, while the result of the resilient securing means of both the “Super Stix” and claim 1 of the ’325 patent is that these means hold the adjustment member to the stabilizer rods. Thus, Kudlacek contends that claim 1 of the ’325 patent and the “Super Stix” stabilizer perform substantially the same function in substantially the same way to achieve substantially the same result.
2. The ’007patent
a. The background and claims of the patent
Specialty’s counterclaim and third-party claim of patent infringement relates not to bow stabilizers, but to archery targeting systems. Specifically, Specialty alleges that Kudlacek’s “Adjustable Control Peep” infringes the Shoemake/Morehead ’007 patent for “An Archery Shooting Control System” for which Specialty holds the exclusive license and first right to sue in-fringers.
Inventors Robert C. Shoemake and Jesse Morehead filed Application No. 622,739 on December 5, 1990, for the patent that was subsequently granted as United States Patent No. 5,137,007 on August 11, 1992 (the ’007 patent). . The abstract of the ’007 patent describes the invention as follows:
A shooting control system for bows and arrows that cooperates with front sight pins including a bowstring sight having a base mounted in the strands of the bowstring and sight inserts selectively mounted on the base for the user to ■sight through using the front sight pins to aim an arrow being shot in the bow. The system also includes an arrow nok on the bowstring at the arrow noking point.
Plaintiffs Statement of Undisputed Facts, Exhibit B (the ’007 patent, “Abstract”).
The “Background of the Invention” explains, in pertinent part, as follows:
Current archery equipment typically uses some type of sighting equipment and some type [of] arrow noking on the bowstring to increase accuracy. The sighting equipment typically includes a front sight and a rear sight.
' A commonly used rear sight is called a peep sight and is installed in the bowstring itself. The peep sight has a fixed size sighting hole through it. Different field conditions, however, require different size holes. Thus, it is necessary to install different peep sights for these different field conditions. Because the bow has to be recalibrated each time the sight is changed, accommodating different field conditions is tedious and time consuming.
The axis of the sighting hole through the peep sight must also be correctly aligned with the front sight of [sic] accurate aiming. To control the rotational position of the peep sight, resilient members have been used to connect the bowstring in the vicinity of the peep sight to the bow. This device is clumsy and tends to interfere with the movement of the bowstring.
Plaintiffs Statement of Undisputed Facts in Support of Plaintiffs Motion for Summary Judgment of Non-Infringement, Exhibit B (the ’007 patent). The “Summary of the Invention” explains further:
These and other problems and disadvantages associated with the prior art are overcome by the invention disclosed herein by providing the peep sight with interchangeable inserts, each with a different size sight hole through it so that different field conditions can be covered without having to change the entire sight. This eliminates having to recalibrate the sight each time the sight hole diameter is changed....
The peep sight of the invention includes a base adapated [sic] to be mounted in the strands of the bowstring similarly to the mounting for prior art peep sights where the base defines a hole through it. At least one sight insert is adapted to be selectively mounted in the hole through the base. The insert has a different size sight hole through it than the diameter of the hole through the base. The hold [sic] through the base may be used as one diameter sight hole with the insert providing a smaller diameter sight hole. The hole through the base may be threaded and the sight insert eomplementarily threaded to screw into the hole in the base to install the insert. Means may be provided for selectively locking the insert into position in the base.
Id.
Figures 1, 3, 4, 5, 5A, and 6 show the pertinent parts of the patent for purposes of this litigation.
The ’007 patent consists of two independent claims, claims 1 and 9, and seven dependent claims, claims 2 through 8. However, in response to discovery requests, Specialty has clarified that it is alleging that Kudlacek’s “Adjustable Control Peep” infringes claims 1, 2, and 5 of the ’007 patent. Therefore, the court will quote here only those claims of the patent. These claims are quoted below with the court’s insertion of numbers from Figures 1, 3, 4, 5, 5A, and 6 above to assist the reader:
We claim:
1. A shooting control system for permitting sighting of bows and arrows along a sighting path where the bow has a bowstring equipped with a bowstring serving at the arrow noking point on the bowstring, said control system comprising:
a bowstring sight [Fig. 1: 11] adapted to be installed in the strands of a bowstring for use with front sight pins [Fig. 1: FS] on the bow, said bowstring sight including:
a base [Fig. 3: 15] adapted to the [sic] mounted in the strands of a bowstring at a pescribed [sic] sighting location lengthwise of the bowstring, said base defining a pair of mounting recesses [20] therein adapted to receive the strands of the bowstring therein a mount of said body at the prescribed sighting location and an internally threaded opening [25] therethrough aligned with the sighting path when the bowstring is drawn for shooting, said threaded opening having a first prescribed diameter [Fig. 4: dj so that the user can sight through said threaded hole in low light conditions; and
a plurality of externally threaded interchangeable sight inserts [Fig. 3-6: 16] interchangeably and selectively mountable to a prescribed sight position in and substantially filling said threaded opening [Fig. 3-4: 25] in said base [15], each of said sight inserts defining a sight opening therethrough [Figs. 3, 5, 5A, 6: 32] arranged for the user to sight through said sight opening using the front sight pins on the bow to aim an arrow being shot in the bow when said insert is in said prescribed sight position, said sight opening in each of said inserts being a different fixed diameter [Figs. 5, 5A: d2, d3] from that [Fig. 4: dj of the threaded opening [25] through said body [15] and from that of each of te [sic] other of said inserts so that the user can selectively interchange said inserts in said body to incrementally change the diameter of said sight opening being used to sight the bow and can selectively remove said insert from said body and use said threaded opening through said base to sight the bow.
2. The shooting control system of claim 1 wherein said bowstring sight further includes releasable locking means [Fig. 4: tapering hole 25] for selectively locking each of said sight inserts in said prescribed sight position in said base.
H? iH * # ‡ %
5. The shooting control system of claim 1 for use with an installation wrench wherein each of said sight inserts [16] of said bowstring sight defines a driving recess [Figs. 3, 5, 5A, 6: 31] therein opening onto one end of said insert and having a bottom end, and extending partly therethrough along the length thereof, said driving recess adapted to drivingly receive the installation wrench therein to facilitate rotation of said insert during installation and removal with the installation wrench, said opening extending from the bottom end of said driving recess to the opposite end of said insert.
Id.
Turning briefly to the prosecution history of the ’007 patent, in an Examiner’s Action dated September 16, 1991, the examiner rejected the application for the ’007 patent, in pertinent part, because application claims 1 through 4 were anticipated by the “Shores, Sr.,” prior art reference, that is, United States Patent No. 4,833,786 (the Shores ’786 patent). In response to this rejection of application claim 1, the applicants filed an amendment on December 16, 1991, including the language of the present claim 1, requiring “an internally threaded opening”, in the base member and “a plurality of externally threaded interchangeable sight inserts interchangeably and selectively mountable to a prescribed sight position.... ” Id. at 47. After this amendment, the examiner issued a Notice of Allowability for the ’007 patent application on March 6, 1992, allowing application claims 1, 2, 5-8, 12, 13, and 20. Id. at 56. The examiner’s grounds for rejection of the ’007 patent in light of the Shores ’786 patent, the precise amendments then made by the applicants, and the applicants’ arguments for the patentability of the amended claim over the Shores ’786 patent will be examined in more detail in the court’s “Legal Analysis” of Kudlacek’s motion for summary judgment of non-infringement of the ’007 patent. For now, the court turns instead to a summary of the undisputed and disputed facts concerning the ’007 patent asserted by the parties.
b. Undisputed and disputed facts relating to non-infringement of the ’007patent
As noted above, Specialty contends that Kudlacek’s “Adjustable Control Peep” infringes claims 1, 2, and 5 of the ’007 patent. Kudlacek contends, and Specialty apparently does not dispute, that Kudlacek’s accused “Genesis Archery Products’ Adjustable Control Peep” sight, as made, used, and sold, is described in the patent application entitled “Adjustable Archery Bowstring Peep Sight,” which Kudlacek has never filed. However, as mentioned below, Specialty disputes the worth and utility of the device as described, made, and sold. The “Background of the Invention” in the patent application, in its entirety, is as follows:
This invention relates to archery bow-sights, and more particularly to a novel adjustable bowstring peep sight.
Bowstring-mounted peep sights of diverse designs are known in the art. Typical forms are disclosed in U.S. Patent Nos. 3,703,770; 3,859,733; 4,454,857; and 4,656,747. All of these suffer the common disadvantages and limitations of having one or more peep sight openings that are fixed relative to the bowstring angle at full draw, as well as being fixed relative to the rotation of the bowstring. Moreover, none affords adjustment of sighting angle while sighting on a target.
Most bowstring peepsights [sic] of the prior art are fixed at an angle of 45° to accommodate the average draw length of 29 inches on a 45 inch bow. As the length is varied between 35 and 41 inches, the fixed angle of the peep admits less light. Also, as the rotation of the bowstring is varied as little as 1-2°, the light gathering quality decreases by 20-25%.
Plaintiffs Statement Of Undisputed Facts (in support of plaintiffs motion for summary judgment of non-infringement of the ’007 patent), Exhibit E (Kudlacek Peep Sight Patent Application), “Background to the Invention” at 1.
, The “Summary of the Invention” in the patent application, also in its entirety, states the following:
The bowstring peep sight of this invention includes a hollow body configured for attachment to the bowstring of an archery bow, and a peep component mounted in the hollow body for universal adjustment relative thereto.
It is the principal objective of this invention to provide an archery bowstring peep sight that overcomes the aforementioned disadvantages and limitations of prior bowstring peep sights.
Another objective of this invention is the provision of an archery bowstring peep sight that is provided with a novel configuration for secure attachment to a bowstring.
Still another objective of this invention is to provide an archery bowstring peep sight that includes a novel adjusting tool which affords viewing through the peep sight during its adjustment.
A further objective of this invention is the provision of an archery bowstring peep sight that maintains precise adjustment during continuous use.
Still another objective of this invention is to provide an archery bowstring peep sight of simplified construction for economical manufacture.
The foregoing and other objects and advantages of this invention will appear from the following detailed description, taken in connection with the accompanying drawing of a preferred embodiment.
Kudlacek Peep Sight Patent Application, “Summary of the Invention” at 2-3.
Kudlacek contends that his accused device is shown in Figure 4 of the patent application, below, with the adjustment tool installed therein:
Kudlacek Peep Sight Patent Application, Fig. 4. For purposes of this unpatented device, the court concludes that the most helpful explanation of the illustration is not the claims in the application, but the “Description of the Preferred Embodiment,” pertinent parts of which follow:
In accordance with this invention, a peep sight is provided that is adjustable universally while sighting. It includes a base member 48 [number missing at top left of Fig. 4] provided with a central opening 50 defined by a surface having the shape of a spherical segment. The base member preferably is made of Del-rin, polycarbonate, or other synthetic resin that, in cooperation with the longitudinal slot 52 [not shown in Fig. 4] that extends inwardly from the outer surface to the central opening 50, renders the base member sufficiently resilient to receive in its central opening, as a snap fit, a peep ball 54, preferably of similar resilient material. The peep ball is in the shape of a truncated sphere configured to be received in the central opening 50 by deforming either or both base member 48 and ball 54. The ball is held resiliently in the opening with sufficient friction to retain it in any adjusted position of rotation relative to the base member, during continued use of the archery bow.
The ball 54 is provided with a peep opening 56 that tapers from the rear side of the ball inwardly to smaller diameter at its inner end, approximately midway through the depth of the ball. A second opening 58 of uniform and larger diameter communicates at its inner end with the peep opening 56 and extends forwardly therefrom to the forward end of the ball. This opening serves as a socket to frictionally receive the inner end of an elongated adjustment tool 60 of tubular shape. The tube preferably is made of synthetic resin, although it may be made of metal or other suitable material.
The tool 60 is provided with a central bore 62 which registers with the peep opening 56, whereby to allow viewing of a target through the peep opening. An elongated slot 64 may trap the bowstring segments to insure positive retention of the base member between the bowstring segments.
To adjust the peep sight opening'to a desired angle for a certain archer, the tool-60 is fitted into the forward opening 58. Then, by grasping the tool in the fingers, the tool and the connected ball 54 may be rotated- through any desired angular direction, while looking through the peep sight opening 56 at full draw, until the target image is brought into optimum view. Rotational adjustment of the ball 54 thus accommodates the characteristics of any archer, both as to draw length and bowstring rotation.
When the peep sight opening 56 has been adjusted to the desired position, ■ the tool 60 is removed to allow normal operation of the archery bow.
It will be apparent to those skilled in the art that various changes may be made in the size, shape, type, number and arrangement of parts described hereinbefore. For example, the base member 48 may be formed as two longitudinal or lateral sections of metal or other rigid material and secured together with screws, capturing the ball member 54 Mctionally in the spherical opening 50. The ball member also may be formed of metal or other rigid material, as may also be the tubular tool 60. Other means may be employed to secure the base member to a bowstring. These and other changes may be made, as desired, without departing from the spirit of this invention and the scope of the appended claims.
Kudlacek Peep Sight Patent Application, “Description of Preferred Embodiment” at 5, l. 18, to 9, l. 3.
Kudlacek contends that he offers peep sights as a single unit, which includes one ball installed in one body, but he does not sell a “plurality” of inserts separately .or in combination with a single body, and he does not make, use, or sell a peep sight with a plurality of interchangeable inserts, as taught by the ’007 patent. However, he contends that each peep sight made, used, or sold by defendant Chipman, presumably meaning Specialty as well, is made, used, and sold as a complete unit, including interchangeable inserts. Moreover, Kudlacek points out that, as originally filed, claim 1 of the ’007 patent contained no requirements or limitations that the base have a threaded opening or that there be more than one insert. Kudlacek contends that the “threading.” limitations were added to overcome anticipation by the Shores ’786 patent, as indicated by the prosecution history. -Kudlacek contends that none of the balls. of , the peep sights he makes are designed to be interchangeable, the ball on his peep sight is not externally threaded, the body of his device does not contain an internally threaded opening, and there are in fact no "threads in the accused sight.
In response, Specialty contends that Kudlacek’s “Genesis Archery Products Adjustable Control Peep” is designed to perform the exact same function as the ’007 patent, because it is designed to allow different size sight holes to be easily interchanged in the field. Specialty contends that Kudlacek’s device “is virtually worthless” and has “little or no utility” unless a customer purchases it in different sizes and uses the sight inserts interchangeably. Specialty also rejects Kudlacek’s contention that his device has no threads at all by contending that Kudlacek’s device has one large thread that holds the sight insert in the base. Thus, Specialty contends that Kudlacek’s device performs substantially the same function, in substantially the same way, to achieve substantially the same result as the ’007 patent.
Moreover, Specialty contends that the amendment to the ’007 patent to include references to “threaded” and “threads” was neither necessary nor intended to overcome the examiner’s rejection based on the Shores ’786 patent. Rather, Specialty contends that the examiner allowed the ’007 patent over the Shores ’786 patent because of the inclusion of language highlighting the “interchangeable inserts” feature of the,’007 patent. Specialty points out that the Shores ’786 patent depicted an internally threaded base and an externally threaded insert, so that inclusion of “threading” in the ’007 patent would not make the invention in the ’007 patent patentable over the Shores ’786 patent.
With this factual background, the court turns to its legal analysis of the parties’ motions for summary judgment of patent invalidity and non-infringement.
II. LEGAL ANALYSIS
A. Standards For Summary Judgment In Patent Cases
The Federal Circuit Court of Appeals recently explained its exclusive jurisdiction over certain appeals as follows:
Our relevant jurisdictional authority is contained in 28 U.S.C. § 1295(a)(1) (1994), which states that this court enjoys exclusive appellate jurisdiction over appeals “based, in whole or in part, on section 1338 [of Title 28].” Section 1338(a), in turn, provides that district courts have jurisdiction over suits “arising under any Act of Congress relating to patents.” 28 U.S.C. § 1338(a) (1994). Thus, our jurisdiction turns upon whether the claims here arise (at least in part) under the patent laws.
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... “In order to demonstrate that a case is one ‘arising under’ federal patent law, ‘the plaintiff must set up some right, title or interest under the patent laws, or at least make it appear that some right or privilege will be defeated by one construction, or sustained by the opposite construction of these laws.’” Christianson [v. Colt Industries Operating Corp.], 486 U.S. [800,] 807-08, 108 S.Ct. 2166, [100 L.Ed.2d 811 (1988)] (quoting Pratt v. Paris Gaslight & Coke Co., 168 U.S. 255, 259, 18 S.Ct. 62, 42 L.Ed. 458 (1897)). In other words, the scope of section 1338 extends to (1) claims where federal patent law creates the cause of action, or (2) claims where the plaintiffs right to relief necessarily depends upon resolution of a “substantial question of federal patent law.” Christianson, 486 U.S. at 809, 108 S.Ct. 2166.
Helfgott & Karas, P.C. v. Dickenson, 209 F.3d 1328, 1333-34 (Fed.Cir.2000). This lawsuit involves claims and counterclaims of patent infringement that involve causes of action created by federal patent law and the present motions for summary judgment of patent invalidity and non-infringement necessarily involve “substantial question^] of federal patent law.” See id. Thus, this action and the present motions for summary judgment fall within the exclusive jurisdiction of the Federal Circuit Court of Appeals. Therefore, the court will consider here the standards for summary judgment in patent cases, as articulated by the Federal Circuit Court of Appeals.
“Summary judgment is appropriate in a patent case, as in other cases.” Nike, Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed.Cir.1994); Conroy v. Reebok Int’l, Ltd., 14 F.3d 1570, 1575 (Fed.Cir.1994) (“The grant of summary judgment [in a patent case] is appropriate where the standards set forth in Rule 56(c) are satisfied.”). Therefore, on a motion for summary judgment in a patent case, “a district court must decide ‘if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.’ ” CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1315 (Fed.Cir.2000) (quoting FED. R. CIV. P. 56(c), and citing Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)); Eli Lilly & Co. v. Barr Labs., Inc., 222 F.3d 973, 978 (Fed.Cir.2000); Vehicular Techs. Corp. v. Titan Wheel Int’l, Inc., 212 F.3d 1377, 1381 (Fed.Cir.2000); Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1333 (Fed.Cir.2000).
The court must “dra[w] all reasonable inferences from the evidence in favor of the nonmovant.” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1355 (Fed.Cir.2000); Vehicular Techs. Corp., 212 F.3d at 1381 (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). However, “an asserted issue of material fact is not ‘genuine’ in the sense of Fed.R.Civ.P. Rule 56 if a reasonable jury could only resolve the question for the moving party.” Vehicular Techs. Corp., 212 F.3d at 1381 (citing Anderson, . 477 U.S. at 248, 106 S.Ct. 2505). On the other hand, “[t]he truth of a disputed material fact can not be established on attorney statement alone.” Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 812 (Fed.Cir.1999).
“When evaluating a motion for summary judgment, the court views the record evidence through a prism of the evidentiary standard of proof that would pertain at a trial on the merits.” Eli Lilly & Co., 222 F.3d at 980 (citing Anderson, 477 U.S. at 248, 106 S.Ct. 2505). Thus, when summary judgment involves the question of non-infringement, as both Specialty’s and Kudlacek’s motions do here, summary judgment is only appropriate if, after resolving reasonable inferences in favor of the patentee, “no reasonable jury could find infringement.” Ishida Co., Ltd. v. Taylor, 221 F.3d 1310, 1315 (Fed.Cir.2000); IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed.Cir.2000), cert. dismissed, — U.S. —, 121 S.Ct. 24, — L.Ed.2d - (2000) (No. 00-234). This standard applies whether the court examines literal infringement or infringement under the “doctrine of equivalents.” See CAE Screenplates, Inc., 224 F.3d at 1312 (“Even though infringement by equivalents is an issue of fact ordinarily preserved for the jury, ‘[w]here the evidence is such that no reasonable jury could determine two elements to be equivalent, district courts are obliged to grant partial or complete summary judgment.’ ”) (quoting Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n. 8, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997)); KCJ Corp., 223 F.3d at 1355 (“Whether the accused device contains each claim element exactly or its equivalent is a question of fact,” but one on which summary judgment may nevertheless be appropriate); Vehicular Techs. Corp., 212 F.3d at 1381 (“Infringement under the doctrine of equivalents requires an intensely factual inquiry. And, this court is well aware of the difficulty of granting summary judgment motions on issues requiring delicate balancing of many factual components. Ultimately this court may sustain summary judgment of non-infringement under the doctrine of equivalents, where that doctrine is legally applicable, only if it discerns no genuine issue of material fact and that no reasonable jury could find equivalence.”) (citations omitted). “This standard [for summary judgment of non-infringement] sets a high hurdle which th[e] court does not lightly attempt to surmount.” Vehicular Techs. Corp., 212 F.3d at 1381.
As to summary judgment of patent invalidity, the hurdle is, if anything, even higher. A patent enjoys a presumption of validity pursuant to 35 U.S.C. §.282, and that presumption can only be overcome by evidence that is “clear and convincing.” Eli Lilly & Co., 222 F.3d at 977 (citing United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1563 (Fed.Cir.), cert. denied, 522 U.S. 950, 118 S.Ct. 369, 139 L.Ed.2d 287 (1997)). Therefore, “a moving party seeking to invalidate a patent at summary judgment,” as Specialty attempts to do here as to the ’325 patent, “must submit such clear and convincing evidence of invalidity so that no reasonable jury could find otherwise.” Id.
In short, “[i]n assessing issues of material fact to determine whether a ‘reasonable jury’ could disagree on them, th[e] court identifies facts posing a potential dispute and then examines those facts in the context of the legal criteria by which a fact finder would resolve the dispute.” Vehicular Techs. Corp., 212 F.3d at 1381.
B. Specialty’s Motions For Summary Judgment
Specialty has filed separate summary judgment motions asserting that the ’325 patent, on which Kudlacek’s claim of infringement is based, is invalid as a -matter of law, and that, even if the ’825 patent is valid, Specialty’s “Super Stix” bow stabilizer does not infringe the ’825 patent, either literally or under the doctrine of equivalents. The court’s first step in assessing claims of “invalidity” or “non-infringement” of a patent is construction of the pertinent claim or claims of the patent-in-suit. Compare, e.g., Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 995 (Fed.Cir.2000) (“ ‘The first step in any invalidity ... analysis is claim construction.’”) (quoting Rockwell Int’l Corp. v. United States, 147 F.3d 1358, 1362 (Fed.Cir.1998)), petition for cert. filed, (Aug. 15, 2000) (No. 00-249); with, e.g., CAE Screenplates, Inc., 224 F.3d at 1316-17 (the first step in analysis of a motion for summary judgment of non-infringement of a patent is construction of the claims of the patent).
1. Construction of claim 1 of the ’325 patent
a. Rules of construction
Claim construction is a question of law for the court. CAE Screenplates, Inc., 224 F.3d at 1316-17; KCJ Corp., 223 F.3d at 1355; Optical Disc Corp., 208 F.3d at 1333; IMS Tech., Inc., 206 F.3d at 1429. The process of construing a claim begins with the language of the claim itself. Id. at 1316-17; KCJ Corp., 223 F.3d at 1355; Optical Disc Corp., 208 F.3d at 1334. This is so, because “‘[t]he claim language, of course, defines the bounds of claim scope.’” Schering Corp. v. Amgen, Inc., 222 F.3d 1347, 1353 (Fed.Cir.2000) (quoting York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed.Cir.1996)). Furthermore, throughout the construction analysis, “[t]he central focus of the infringement inquiry remains on the claim language, as illuminated by the written description and the prosecution history.” KCJ Corp., 223 F.3d at 1355. Thus,
[i]n interpreting an asserted claim, we look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history. Usually an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term. However, extrinsic evidence may be considered if needed to assist in determining the meaning or scope of technical terms in the claims.
Optical Disc Corp., 208 F.3d at 1334 (citations omitted); see also Tate Access Floors, Inc. v. Maxcess Techs., Inc., 222 F.3d 958, 964-65 (Fed.Cir.2000) (same identification of primacy and nature of “intrinsic evidence”); Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 954-55 (Fed.Cir.2000) (same). If the meaning of a claim is unambiguous from the intrinsic evidence, then a court may not rely on extrinsic evidence for purposes of claim construction. CAE Screenplates, Inc., 224 F.3d at 1317-18; Hockerson-Halberstadt, Inc., 222 F.3d at 954-55.
As to the meaning of specific terms, although “[i]n some cases, a claim term can be given a different meaning in the various claims of the same patent, when a patent so provides,” CAE Screenplates, Inc., 224 F.3d at 1317 (emphasis added), the general rule is that “[a] word or phrase used consistently throughout a patent claim should be interpreted consistently.” Phonometrics, Inc. v. Northern Telecom, Inc., 133 F.3d 1459, 1465 (Fed.Cir.1998) (quoted with favor in CAE Screenplates, Inc., 224 F.3d at 1317). Furthermore, “ ‘[without an express intent to impart a novel meaning to claim terms, an inventor’s claim terms take on their ordinary meaning.’ ” Schering Corp., 222 F.3d at 1353 (quoting York Prods., Inc., 99 F.3d at 1572); Tate Access Floors, Inc., 222 F.3d at 965 (“Absent an express intent to impart a novel meaning, ‘terms in a claim are to be given their ordinary and accustomed meaning.’ ”) (quoting Renishaw, P.L.C. v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed.Cir.1998)); Hockerson-Halberstadt, Inc. 222 F.3d at 954-56 (“As a starting point, the court gives claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art,” and such ordinary meaning provides the “default meaning,” although “the patentee may act as a lexicographer and ascribe a different, or modified, meaning to the term”); Optical Disc Corp., 208 F.3d at 1334 (“Without evidence in the patent specification of an express intent to impart a novel meaning to a claim term, the term takes on its ordinary meaning.”)- “For such ordinary meaning, [the court] turn[s] to the dictionary definition of the term.” Optical Disc Corp., 208 F.3d at 1335. Notwithstanding this “ordinary meaning” rule, certain expressions in patents receive “conventional” constructions:
This court has repeatedly emphasized that an indefinite article “a” or “an” in patent parlance carries the meaning of “one or more” in open-ended claims containing the transitional phrase “comprising.” Unless the claim is specific as to the number of elements, the article “a” receives a singular interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the article. Under this conventional rule, the claim limitation “a,” without more, requires at least one.
KCJ Corp., 223 F.3d at 1356 (citations omitted).
As mentioned above, the written description may assist in claim interpretation. KCJ Corp., 223 F.3d at 1356. Nevertheless, “‘[although the specifications may well indicate that certain embodiments are preferred, particular embodiments appearing in a specification will not be read into the claims when the claim language is broader' than such embodiments.’ ” Id. (quoting Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed.Cir.1994)); Tate Access Floors, Inc., 222 F.3d at 966-67; Kemco Sales, Inc., 208 F.3d at 1362. Also as mentioned above, “[p]rosecution history also may assist claim interpretation.” KCJ Corp., 223 F.3d at 1356. “Indeed, prosecution history ‘limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.’ ” Id. (quoting Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir.1985)); Hockerson-Halberstadt, Inc., 222 F.3d at 954-55.
b. Disputed language of the claim
Kudlacek has clarified that he is alleging that Specialty’s “Super Stix” bow stabilizer infringes claim 1 of the ’325 patent. Thus, the court’s claim construction will focus on that claim of the ’325 patent. Claim 1 is quoted in its entirety above in Section I.B.l.a. of this opinion, beginning at page 1005-06. The parties’ disputes about construction focus specifically on the meaning of limitations (d) and (e) of claim 1, each of which will be construed in turn.
c. Construction of claim 1(d)
The parties first dispute the proper construction of certain terms in claim 1(d), which claims an element of the invention as follows:
1. An archery bow stabilizer, comprising:
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d) at least one vibration dampener adjustment member having openings therethrough matching the number and circumferential spacing of said stabilizer rods and a diameter larger than the diameter of said stabilizer rods freely receiving said rods there-through[.]
Plaintiffs Complaint, Exhibit 1 (the ’325 patent). The bone of contention as to .this element, as asserted in the parties’ briefs, is whether the language requiring “at least one vibration dampener adjustment member having openings therethrough” requires that the adjustment member consist of a single piece through which openings are “bored,” or whether it can instead encompass an “adjustment member” made up of multiple pieces that create “channels” through which the stabilizer rods pass. At oral arguments, Specialty also suggested that “openings therethrough” would not encompass “openings” that left a “gap” at some point on their perimeter. Kudlacek argued that the patent language did not require that the “openings” be completely enclosed.
The court agrees with the parties that the proper construction of element (d) of claim 1 can be discerned from the language of the claim illuminated by “intrinsic” evidence. See, e.g., CAE Screenplates, Inc., 224 F.3d at 1316; KCJ Corp., 223 F.3d at 1355. Indeed, the meaning of this portion of claim 1 can be determined according to the “ordinary meaning” rule, because Kudlacek has not acted as his own lexicographer defining any of the terms used in novel ways. See Schering Corp., 222 F.3d at 1353; Tate Access Floors, Inc., 222 F.3d at 964-65; Hockerson-Halberstadt, Inc. 222 F.3d at 954-56; Optical Disc Corp., 208 F.3d at 1334.
Use of the word “member” does not necessarily define a component made of a single piece or exclude a component made up of multiple pieces. For example, the pertinent definition of member is “a constituent part of a whole,” see, e.g., MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th ed., 1995), and the synonym “part” is defined, inter alia, as “a constituent member of a machine or other apparatus.” See id. Ordinary experience teaches that a constituent part or member of a machine or apparatus may itself consist of one or several components, depending, for example, on the intricacy of the “part” or “member” and the machine or apparatus to which it belongs.
Specialty nevertheless contends that “member” here must mean a single piece, because the “Description of the Preferred Embodiment” refers to a “member” with “through bores,” while “bore” in turn is defined as a “cylindrical hole made by or as if by boring.” Specialty’s argument fails for at least two reasons.
First, nothing about use of the