Opinion
3:20-cv-01275-YY
11-17-2023
NATIONAL STEEL CAR LIMITED, a Canadian corporation, Plaintiff, v. GREENBRIER-CONCARRIL, LLC, GREENBRIER LEASING COMPANY, LLC, and GREENBRIER-GIMSA, LLC, Defendants.
OPINION AND ORDER
Youlee Yim You United States Magistrate Judge
Plaintiff National Steel Car Limited has brought this patent infringement suit against defendants Greenbrier-Concarril LLC, Greenbrier Leasing Company, LLC, and Greenbrier-GIMSA, LLC. The following motions are currently pending:
• Defendants' Motion for Summary Judgment (ECF 181);
• Defendants' Motion to Exclude Certain Opinions and Testimony of Carrie L. Distler (ECF 182);
• Defendants' Motion to Exclude Certain Opinions and Testimony of Mr. Ronald Sellberg (ECF 183);
• Plaintiff's Motion to Exclude Certain Opinions of Ambreen Salters under Daubert and FRE 702 (ECF 188); and
• Plaintiff's Motion for Partial Summary Judgment (ECF 190).
As explained more fully below, defendants' motion for summary judgment is granted because defendants' accused products do not include all the limitations in plaintiff's patents. All other pending motions are denied as moot.
I. Summary Judgment Standard
Under Federal Rule of Civil Procedure 56(a), “[t]he court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” The party moving for summary judgment bears the initial responsibility of informing the court of the basis for the motion and identifying portions of the pleadings, depositions, answers to interrogatories, admissions, or affidavits that demonstrate the absence of a triable issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Once the moving party does so, the nonmoving party must “go beyond the pleadings” and “designate ‘specific facts showing that there is a genuine issue for trial.' ” Id. at 324 (citing Fed.R.Civ.P. 56(e)). The court “does not weigh the evidence or determine the truth of the matter, but only determines whether there is a genuine issue for trial.” Balint v. Carson City, Nev., 180 F.3d 1047, 1054 (9th Cir. 1999). “Reasonable doubts as to the existence of material factual issue are resolved against the moving parties and inferences are drawn in the light most favorable to the non-moving party.” Addisu v. Fred Meyer, Inc., 198 F.3d 1130, 1134 (9th Cir. 2000).
II. Background
The patents at issue here involve railroad freight cars, specifically, a “gondola” car, which is an open-top freight car used to carry “lading,” such a scrap steel or crushed rock, among other things. Apel Decl., Ex. 1, U.S. Patent No. 7,434,519 (“ ‘519 patent”) 1:10-12, ECF 187-1; see also Defs. Mot. Summ. J. 2, ECF 181; Pl. Claim Const. Br. 1, ECF 92. These gondola cars have two side walls, two end walls, and a floor, as generally represented by one the figures from the ‘519 patent:
The patents asserted in this suit are U.S. Patent Nos. 7,434,519 (“ ‘519 patent”) and 7,878,125 (“ ‘125 patent”). See First Am. Compl. ¶¶ 11-12, ECF 125. The asserted patents are part of a related family of patents, and all five related patents have “identical specifications and figures.” Defs. Mot. Summ. J. 3, ECF 181; see also Apel. Decl., Exs. 1-5, ECF 187-1-187-5. Because the patents share a common specification, the references herein are to the ‘519 patent for ease of reference, unless specifically noted otherwise. See Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1372 n.2 (Fed. Cir. 2019).
(Image Omitted) ‘519 patent, Fig. 7a, ECF 187-1. Of particular importance to the pending motions are the side walls, including the exterior “side wall posts,” which are generally understood to be “vertical structures that help stiffen” the side walls, and the floor. See Defs. Mot. Summ. J. 8, ECF 181. As will become clear, an important claim term in the patents is “side wall web.” The patents describe the long side walls of a gondola car to be primarily composed of a “beam,” which is made of two “flanges” (or “chords”) at the top and bottom, and a “web” running between the flanges, in what might be more commonly referred to as an “I-beam” structure:
(Image Omitted) Pl. Claim Const. Br., Ex. 10 (Long Decl.) at 20, ECF 92-1; see also ‘519 patent 1:12-13, ECF 187-1 (“Traditionally, gondola cars have tended to have two relatively deep side beams”). The diagram below roughly shows how this “beam” structure, if the web portion is stretched longitudinally, creates the side wall of a gondola car:
(Image Omitted) Long Decl. 52, ECF 92-1.
The court uses these two rather generic diagrams from the Long Declaration, which were submitted in support of plaintiff's initial claim construction brief, for the limited purpose of helping the reader who may not be familiar with the technical language used in the patents, and by the parties and their witnesses, to describe the structure of a gondola car. Of course, the actual structure of a gondola car and the invention described in the asserted patents do not conform precisely to these representations. See, e.g., ‘519 patent 1:26-33, ECF 187-1 (“The top chord defines the upper edge or upper margin of the side beam of the car. It performs the function of the upper flange of the side beam. Most typically the top chord may be a hollow section. While top chords in the form of I-beams and C-channels can, and have, been used, top chords are frequently formed of closed hollow sections, such as rectangular (or square) steel tubes.”). The court's use of these diagrams from the Long Declaration should not be interpreted as establishing any particular fact about what the asserted patents claim or how defendants' accused cars are actually constructed.
Traditionally, the side wall and floor of a gondola car were mostly “used to prevent the lading (or cargo) from spilling out; they play[ed] little role in the structural integrity of the railcar.” Pl. Claim Const. Br. 2, ECF 92; see also ‘519 patent 1:09-2:06, ECF 187-1. This meant that the structural integrity of the car had to be provided by “a bulky underframe,” making the car “quite heavy” and thus limited in how much lading it could carry “without exceeding a maximum gross weight on rail.” Pl. Claim Const. Br. 2, ECF 92; ‘519 patent 1:60-67, ECF 1871. Plaintiff's patents generally describe a “unibody construction” for gondola cars “in which the floor and side beams serve as structural members” that can replace the “conventional underframe components, such as side sills and heavy center sills and cross members with top flanges.” Pl. Claim Const. Br. 2, ECF 92. In other words, the asserted patents generally describe that the floor itself acts as the bottom flange for each of the side walls beams; as part of that invention, the “floor panel” and the “side wall web” are, at least for the most part, “directly mated together.” Id. at 2; ‘519 patent 2:20-22, ECF 187-1.
Plaintiff alleges that defendants infringe claims 2-4, 8, 9, 11, 13-15, 18, 19, and 22-24 of the ‘519 patent, and claims 1, 15, 16, 18, and 19 of the ‘125 patent in connection with four railroad cars: a 6,400 cubic foot gondola and a 7,100 cubic foot gondola, in the “original” and “revised” version of each car (collectively referred to as the “accused cars”). See First Am. Compl. ¶¶ 24 32, ECF 125; Apel Decl., Ex. 6 (Plaintiff's Final Infringement Contentions) at 10, ECF 187-6. Plaintiff initially filed suit against defendants in the Western District of Texas in 2019. ECF 1. The matter was transferred to this district in July of 2020. Order (July 27, 2020), ECF 54. This court conducted a claim construction hearing over two days in March of 2021, see ECF 111, 113, and subsequently issued a claim construction order. ECF 127. Plaintiff filed a motion for clarification of that order; defendants filed a motion for reconsideration of the same. ECF 130, 132. The court then issued a second claim construction order in November of 2021. ECF 151.
The parties thereafter conducted discovery. Defendants then moved for summary judgment and plaintiff moved for partial summary judgment in November of 2022. See ECF 181, 190. Each party also moved to exclude certain portions of the other party's experts' opinions. See ECF 182, 183, 188. The court held hearings on the parties' motions over several different days in the spring of 2023; because of the broad scope of issues raised by the numerous motions, the court directed the parties to focus their initial arguments on those issues relevant to the merits of the case, saving for a later time the arguments related to damages. See ECF 226, 227.
In the parties' briefing and at the hearings on the motions, the parties disagreed about the effect of the court's previous claim construction orders on defendants' motion for summary judgment for noninfringement. The court directed the parties to submit supplemental briefing to expand on the arguments regarding the court's claim construction orders. ECF 228. The court held a final hearing on the merits portion of the parties' pending motions and on the arguments the parties raised in their supplemental briefing regarding claim construction. ECF 238. The merits issues raised in the motions and at the various hearings are now ripe for decision.
III. Discussion
Defendants move for summary judgment of non-infringement on several grounds, but primarily on the basis that defendants' accused cars do not infringe plaintiff's patents because the “side wall web” of defendants' cars are not “directly mated” to, or do not otherwise physically touch, the cars' “floor panel” or “deck” as those terms are used in the patents and have been construed by the court. Defs. Mot. Summ. J. 16-27, ECF 181. This issue is dispositive of the entire case because each of plaintiff's asserted claims require that some part of the “side wall web” of the car is in physical contact with the “floor panel” or “deck” of the car. See id. at 17; Pl. Resp. 7-9, ECF 203. As an example, claim 3 of the ‘519 patent, which is dependent on claim 1, is representative of the asserted claims in-suit and reads as follows:
1. A rail road gondola car comprising: a gondola car body carried by railroad car trucks for rolling motion along rail road tracks; said gondola car body having a longitudinal centerline; said gondola car body having a floor and a wall structure standing upwardly of said floor, said floor and said wall structure defining a lading receptacle; said floor including at least one floor panel; said gondola car body including a pair of lengthwise running side beams, said side beams defining portions of said wall structure; said side beams each having an upper margin, and a longitudinally running shear web member extending predominantly downwardly
of said upper margin and said shear web member has a lower margin terminating at said at least one floor panel; and said at least one floor panel and said lower margin of said shear web member being directly mated together.
...
3. The rail road gondola car of claim 1 wherein: said shear web member includes an upper portion and a lower portion; said upper portion having a lower margin; said lower portion being attached along said lower margin to said upper portion; and said lower portion being mated directly to said at least one floor panel.‘519 patent, 40:47-41:8, ECF 187-1. Claim 1 of the ‘125 patent reads:
1. A rail road gondola car, said rail road gondola car having: a lading containment receptacle mounted on a pair of spaced apart rail road car trucks for rolling motion along rail road tracks in a longitudinal direction; first and second side beams defining first and second side walls of said receptacle; a deck defining a floor of said lading containment receptacle; an array of cross-members extending cross-wise underneath said deck between said first and second side walls; said array of cross-members including at least a first cross-member; said first crossmember having a first end and a second end; said first end being adjacent to said first side beam, said first cross-member of said array of cross-members extending laterally inboard of said first end; said first side beam including a predominantly upstanding web running lengthwise along said car; an array of longitudinally spaced upstanding stiffeners mounted to reinforce said first side wall; said array of longitudinally spaced upstanding stiffeners including a first stiffener; said upstanding web of said first side beam extending upwardly of said deck; said first side beam having a first web extension, said first web extension extending predominantly downwardly of said deck, and said first web extension being mounted to said first end of said first cross-member; there being web continuity between said first web extension and said upstanding web; said first web extension having a lower margin downwardly distant from said deck; said first web extension being narrower at said lower margin than nearer to said deck, said first web extension having broadening wings to either side of said first end of said first cross-member.Apel Decl., Ex. 2 (“ ‘125 patent”), 40:58-41:26, ECF 187-2.
After defendants moved for summary judgment, plaintiff statutorily disclaimed claim 1 of the ‘519 patent. See Valenzuela Decl., Ex. 7, ECF 204-7. Plaintiff maintains, however, that defendants infringed dependent claims 2-4, 8, 9, and 11-14 of the ‘519 patent. See Defs. Reply 37, ECF 213. “[D]ependent claims incorporate by reference all the claim limitations of a referenced claim, and include additional claim limitations uniquely set forth in the particular dependent claim.” Intamin, Ltd. v. Magnetar Techs. Corp., 623 F.Supp.2d 1055, 1065 (C.D. Cal. 2009), aff'd, 404 Fed.Appx. 496 (Fed. Cir. 2010) (citing 35 U.S.C. § 112; Robotic Vision Sys.,Inc. v. View Eng'g, Inc., 189 F.3d 1370, 1376 (Fed. Cir. 1999)). Therefore, the limitations in claim 1 of the ‘519 patent are still relevant to the analysis of the remaining dependent claims, though it would be improper to use claim 1 as a stand-alone representation of the claims remaining in-suit.
As explained in more detail below, the court construed the claim terms “floor panel” or “deck” (which the parties agreed should be given the same construction) to mean “one sheet, or a plurality of sheets joined together, and may also include one or more extensions, which may be integral, or which can be separate.” Opinion and Order (Nov. 19, 2021) 5, ECF 151.
The parties' positions can be best understood through their respective diagrams. First, defendants offered the following diagram of its accused car and the parts at issue:
(Image Omitted) Defs. Mot. Summ. J. 10 (Fig. 11), ECF 181; see also Apel Decl., Ex. 14, ECF 187-22 (colored annotations added). Plaintiff offers the following alternative diagram of defendants' accused car:
(Image Omitted) Stip. Mot. File Supplements, Ex. 14 at 6, ECF 239-14.
The parties jointly submitted their respective slide deck presentations that were used during the hearings on the pending motions. See ECF 239.
The key question is the relationship between the “side post gusset” of defendants' accused car (green, in defendants' diagram above), and the “floor,” (purple in defendants' diagram). The patents, in short, disclose a “floor” that includes a “deck” or “at least one floor panel.” The court construed the terms “floor panel” and “deck” to include “extensions,” which could be “integral” or “separate.” Plaintiff's infringement theory requires the L-shaped “side sill” of defendants' car (red in defendants' diagram)-which is indisputably a single piece of steel bent into an angled piece-to be split along an imaginary axis, and then for the resulting horizontal portion and vertical portion of the side sill to be combined with other pieces of the car to create a “floor” and “side wall structure” that are connected as the patents disclose. See Pl. Resp. 9, ECF 203. Defendants assert that the side post gusset does not fall within the scope of the court's construction of the term “floor panel” or “deck” because it does not physically touch the floor panel, and thus side post gussets are not “extensions” of the “floor panel” or “deck.” Defs. Mot. Summ. J. 16-27.
See Apel Decl., Ex. 8 at 102:3-103:22, ECF 187-10; id., Ex. 9 ¶¶ 68, 196, ECF 187-17.
“Evaluation of summary judgment of noninfringement is a two-part inquiry: first, a court construes the scope and meaning of the asserted patent claims, and then compares the construed claims to the accused product or process.” Medgraph, Inc. v. Medtronic, Inc., 843 F.3d 942, 949 (Fed. Cir. 2016). “As such, a grant of summary judgment of noninfringement is proper when no reasonable factfinder could find that the accused product contains every claim limitation or its equivalent.” Id.
A. Claim Construction
Before reaching the merits of the parties' summary judgment arguments, it is necessary to explain the court's previous claim construction rulings. The parties asked the court to construe ten claim terms, including “floor panel” and “deck,” which the parties agreed were “synonymous” and should be given a “single construction applicable to both.” Pl. Op. Claim Const. Br. 17, ECF 92; see also Defs. Resp. Claim Const. Br. 26, ECF 93. Plaintiff proposed that the terms should be construed to mean “one piece, or a plurality of pieces joined together, and may also include one or more extensions, which may be integral, or which can be separate.” Pl. Op. Claim Const. Br. 17, ECF 92. Defendants proposed that the terms should be construed to mean “floor sheet, or abutting floor sheets joined together, that may have one or more integral or abutting floor extensions.” Id.
The court initially construed the terms “deck” and “floor panel” to mean a “floor sheet, or floor sheets joined together, that may have one or more integral floor extensions.” Opinion and Order (July 9, 2021) 13-16, ECF 127. In large part, this construction reflected defendants' proposed definition, except the word “abutting” was not included. See id. That decision was based on the parties' arguments, during claim construction, about what the term “abutting” meant in the context of the patents and in defendants' proposed construction. In particular, the dispute centered around the use of “abutting” as a term of art that required any “sheets” or “extensions” to be joined end-to-end using a “butt-joint” or a “butt weld.” See Defs. Resp. Claim Const. Br. 27, ECF 93 (“The word ‘abutting' is a term of art. Sheets or plates are ‘abutting' when they are joined together, end to end, without overlapping[.]”). During the claim construction hearing, plaintiff objected to the use of the term “abutting” in defendants' proposed definition based on defendants' insistence that the term meant not only “touching” but specifically connected end-to-end in this particular way:
So one of the other big disputes between the parties is the use of “abutting” in Greenbrier's construction. Their construction requires that the floor extension must be abutting, or I guess all sheets of the floor, in their position, must be abutting one another. And it's clear from their -- the rest of their positions and their arguments that when they use the word “abutting,” they mean more than just touching or connected together. They are using “abutting” to mean a butt joint or a butt weld, and exclude everything else.Transcript (March 23, 2021), 11:14-23, ECF 116. Another diagram helps to demonstrate what both parties believed the term “abutting” in defendants' proffered construction meant:
Illustration 12: Representation of Lap Joint vs. Butt Joint
(Image Omitted) Defs. Claim Const. Br. 27, ECF 93. The second “butt joint” shows the type of end-to-end touching that defendants' term “abutting” was meant to encompass, at the exclusion of any other type of touching. See id.
The court ultimately concluded that permissive language in the patents that a floor panel “may be made” of abutting floor sheets did not require that the sheets were “abutting,” as that term was described by both parties to exclusively mean touching or connected in a specific, end-to-end fashion. Opinion and Order (July 9, 2021) 15-16, ECF 127. Thus, the court initially construed the terms “deck” and “floor panel” to mean a “floor sheet, or floor sheets joined together, that may have one or more integral floor extensions.” Id. at 13, 16.
Plaintiff moved for clarification, ECF 130, and defendants moved for reconsideration, ECF 132, of the court's claim construction order. Defendants' motion focused again on the disputed term “abutting,” largely repeating or expanding on the arguments it initially made based on intrinsic evidence that if multiple floor panels were used, the patents required an “abutting” or end-to-end connection between them. Defs. Mot. Partial Reconsideration 3, ECF 132 (“[A]butment is not optional or permissive in the multiple floor sheet structure.”). Plaintiff's motion pointed out that “[b]y deleting the word ‘abutting' from [defendants'] proposed construction, but adopting the remainder of [defendants'] construction . . . the Court's construction could be interpreted as precluding any non-integral extension from falling within the literal scope of the claims,” and that “[n]either party sought such a narrow construction.” Pl. Mot. Clarification 3, ECF 130.
The court denied defendants' motion and granted plaintiff's motion. Opinion and Order (Nov. 19, 2021) 5, ECF 151. In doing so, the court agreed that its initial construction was unintentionally too narrow because it “[left] out the possibility that an extension may be separate from the floor panel, which certainly was not what the court intended and [is] contrary to what is permissible under the claims.” Id. According to the specifications, floor panel extensions “may be formed by trimming the floor panel stock, such that extensions 140 are integral parts of floor panel 44, rather than being joined after-the-fact as gussets welded in place.” ‘519 patent, 14:4045. They also may be “fabricated piecemeal, as stub plates, and welded in planar abutment to the laterally outboard margin of floor sheet 346.” ‘519 patent, 30:22-24. Thus, the court adopted the following, final, construction of the terms:
A ‘deck' or ‘floor panel' can be one sheet, or a plurality of sheets joined together, and may also include one or more extensions, which may be integral, or which can be separate.Id. This clarified construction was based on the description of the floor panel extensions in the patents' specifications, which distinguished between “extensions that are integral parts of the [the] floor panel” and those extensions that were “joined after-the-fact as gussets welded in place.” ‘519 patent, 14:40-45, ECF 187-1.
B. Non-Infringement Analysis
Having explained the court's construction of the relevant terms “floor panel” and “deck,” the next task is to compare the construed claims to defendants' accused cars. Medgraph, 843 F.3d at 949. Defendants argue that its accused cars do not infringe any asserted claim because the alleged “side wall web” of its cars do not contact the “floor panel.” See Defs. Mot. Summ. J. 1719, ECF 181. Instead, defendants posit that the “side wall web” of its cars are attached to the “side post gusset” of the cars that, at least according to defendant, are not extensions of the “floor panel” because the side post gussets do not physically contact any floor panel. Id. at 19.
As described by defendants, and not disputed by plaintiff, the sides of defendants' accused cars “include several side posts (i.e., vertical structures that help stiffen the sides) spaced apart intermittently along the length of the car.” Id. at 8 (citing Apel Decl., Ex. 10 ¶¶ 1121-1126, ECF 187-18; Apel Decl., Ex. 9 ¶ 50, ECF 187-17; Apel Decl., Ex. 14, ECF 187-22). “Toward the bottom of each side post are two small steel plates, each about 7” x 5”, called side post gussets[.]” Id. (citing Apel Decl., Ex. 10 ¶¶ 1121-1124). These annotated pictures show both the side posts and the approximate size and location of the side post gussets for defendants' accused cars:
(Image Omitted)
(Image Omitted) Id. at 8-9 (citing Apel Decl., Ex. 10 ¶ 1127, ECF 187-18; Dawson Decl., Ex. 1 at 10, ECF 184 1). It is undisputed that the side post gussets are located outside the lading container, or outboard of the side wall, and that the side post gussets do not physically contact the “floor sheets” or “floor panel” because of the intervening “side sill,” as generally depicted below:
(Image Omitted) Defs. Mot. Summ. J. 10 (Fig. 11), ECF 181; see also Apel Decl., Ex. 14, ECF 187-22 (colored annotations added); Apel Decl., Ex. 8 (Sellberg Dep.) at 226:6-20, ECF 187-10. It is further undisputed that, as defendants assert, the “only way [plaintiff] can prove infringement of any Asserted Claim is if the side post gussets of the Accused Cars are considered ‘extensions' of the floor panel.” Defs. Mot. Summ. J. 19, ECF 181; see also Pl. Resp. 1-9, ECF 203; Defs. Reply 1, ECF 213.
Plaintiff's primary argument in opposing summary judgment on this point is that the court's final claim construction order conclusively decided the issue whether side post gussets were floor panel extensions in plaintiff's favor by rejecting defendants' proposed inclusion of the term “abutting” in favor of plaintiff's proposed construction that the floor panel could include “extensions” that were “integral” or “separate.” Pl. Resp. 2-7, ECF 203. But as explained in detail above, the dispute about the use of “abutting,” “integral,” and “separate” in the construction of the claim terms “floor panel” and “deck” was framed by both parties as one exclusively focused on defendants' use of the word “abutting” to mean only end-to-end contact; the court's claim construction order resolved the dispute as presented by the parties and nothing more. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). Plaintiff never posited during claim construction that its use of the term “separate” in reference to a floor panel extension meant that the two pieces did not have to physically touch. See Pl. Claim Const. Br. 17-19, ECF 92; Pl. Claim Const. Reply 22-27, ECF 99; Pl. Mot. Clarification 2-4, ECF 130. Rather, the term “separate” in reference to the floor panel extension was meant to distinguish from extensions that were “integral,” as plaintiff's motion for clarification on the court's original claim construction order recognized. See Pl. Mot. Clarification 3, ECF 130 (“By deleting the word ‘abutting' from [defendants'] proposed construction, but adopting the remainder of [defendants'] construction, however, the Court's construction could be interpreted as precluding any non-integral extension from falling within the literal scope of the claims. Neither party sought such a narrow construction.”). Nothing in the court's claim construction order conclusively determined that the side post gussets are “extensions” of the floor panel.
Nor is it necessary to refine, revisit, or otherwise clarify the court's previous construction of the terms “floor panel” or “deck.” Pl. Supp. Br. 2, ECF 232; see also Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370, 1379 (Fed. Cir. 2017) (“A sound claim construction need not always purge every shred of ambiguity, including potential ambiguity arising from the words a court uses to construe a claim term. Such an endeavor could proceed ad infinitum.” (simplified) (quoting Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1318 (Fed. Cir. 2016)). The word “extension” in dispute here is not a claim term, but is rather part of the court's construction of the terms “floor panel” and “deck,” and thus the meaning of the word “extension” is not a matter of claim construction. E-Pass Techs., Inc. v. 3Com Corp, 473 F.3d 1213, 1220 (Fed. Cir. 2007) (“[C]laim interpretation is the process of giving proper meaning to the claim language, and . . . the terms courts use to enunciate the proper construction of a claim are not themselves limitations that require interpretation.”) (internal citation omitted). The task is simply to “compar[e] the construed claims to the accused product[.]” Medgraph, 843 F.3d at 949.
The plain and ordinary meaning of the word “extension” is “a part that is extended from or attached to a main body or section as an addition, supplement, or enlargement.” Webster's Third New Int'l Dictionary 805 (2002); see also Apel Decl., Ex. 15, ECF 187-23. This requires that the two parts physically touch. Adopting plaintiff's implicit premise-that an “extension” of the floor panel does not have to physically contact the floor panel-would render the terms “floor panel” or “deck” essentially limitless as they could encompass potentially any part of a railroad car. See Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1578 (Fed. Cir. 1996) (refusing to read a limitation so broadly that it would become “meaninglessly empty”).
In responding to defendants' motion for summary judgment, plaintiff moved to strike, among other things, this dictionary definition, primarily on the basis that it “directly contradicts and ignores” the court's claim construction order. Pl. Resp. 3-5, ECF 203. As explained above, the court's claim construction order did not address the question whether a “separate” floor panel extension could include a piece that did not physically touch a floor panel, because the parties' dispute over the claim terms “floor panel” and “deck” was primarily focused on the use of the word “abutting” to specifically and exclusively mean “touching in an end-to-end fashion,” and plaintiff did not take the position during claim construction that a floor panel “extension” did not have to physically touch a floor panel. See Pl. Claim Const. Br. 17-20, ECF 92. Plaintiff's motion to exclude this evidence is therefore denied.
The patents' specifications confirm this understanding of the word “extension” as related to the “floor panel” or “deck.” The specifications consistently describe the floor panel “extensions” being formed in generally two ways: either (1) as “integral” to the floor panel itself, meaning that the floor panel and its extension are cut from the same, larger single piece of material, and the extension is therefore an integral part of the panel because no further joining is required, or (2) the extension and floor panel are cut from different pieces of material and then “joined” together after-the-fact:
Floor panel 44 may include floor panel extensions 140 that underlie the respective bases of stiffeners 118. Extensions 140 may be formed by trimming the floor panel stock, such that extensions 140 are integral parts of floor panel 44, rather than being joined after-the-fact as gussets welded in place.‘519 patent, 14:40-45, ECF 187-1 (emphasis added); see also id. at 27:30-35 (“Floor panel 344 may include floor panel extensions 440 that underlie the respective bases of stiffeners 418. Extensions 440 may be formed by trimming the floor panel stock, such that extensions 440 are integral parts of floor panel 344, rather than being joined after-the-fact as gussets welded in place.”).
In other places, the specifications are more detailed about how the “extensions” may be formed and arranged, and in each instance, the specifications describe that the “extension” must be physically touching the “floor panel”:
Floor panel 344 may have floor panel extensions 484 that underlie stiffeners 422 and that may be of the same nature as extensions 188 described above, being integral parts of a larger sheet, cut to the desired size. Alternatively, extensions 484 may be fabricated piecemeal, as stub plates, and welded in planar abutment to the laterally outboard margin of floor sheet 346. In FIG. 8k a butt weld backing bar for this alternate method of fabrication is indicated as 481.Id. at 30:18-26 (emphasis added).
In one embodiment, floor panel 344 may have floor panel extensions substantially the same as extensions 140, 174, 188, 440 or 474 described above. Alternatively it may be that cutting floor panel 344 (as floor panel 44) from a single sheet of stock may involve significant scrap corresponding to those pieces cut out between the floor panel extensions, such as they may be. It may be that the amount of scrap may be reduced by cutting a partial, or truncated, floor extension 486, and using
an auxiliary plate 488 such as may abut partial floor extension 486, with the welded joint 487 lying outboard of the locus of the junction of the side beam with the floor plate.Id. at 30:36-46 (emphasis added).
Floor panel 344 may include floor panel extensions 474 to which the lower end of stiffener 420 may be connected, as by welding. Floor panel extensions 474 may have a generally trapezoidal shape, having a central, generally rectangular region 476 that underlies the hollow section defined by stiffener 420, and a pair of wing portions 478 that define gussets extending to either side of legs 472. In one embodiment, extensions 474 may be formed as monolithic, or integral, parts of floor panel 344 when floor panel 344 is cut from a sheet of stock, rather than, for example, being gussets that are cut separately and welded in place after the fact. In each case, the profile cut corners may be smoothly radiused to merge smoothly into the profile of the adjacent plate.Id. at 29:25-64. In all of these instances, the extensions are “joined” or “welded” so that the pieces “abut” or are “merge[d] smoothly into the profile of the adjacent plate,” and all of those descriptions indicate that the extension and the floor panel are physically touching.
Additionally, all of the drawings and diagrams in the specification show that the floor panel “extension” is physically contacting the floor sheet, as exemplified by this excerpt from Figure 4b of the ‘519 patent:
(Image Omitted) See also ‘519 patent, 14:40-44 (“Floor panel 44 may include floor panel extensions 140 that underlie the respective bases of stiffeners 118.”); Id., Fig. 8b.
It is, of course, well-established that a court “should not import limitations from the specification into the claims.” ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1375 (Fed. Cir. 2009) (citing Phillips, 415 F.3d at 1320, 1323). But it is also true that “the line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court's focus remains on understanding how a person of ordinary skill in the art would understand the claim terms,” and that must be done by “focus[ing] on how such a person would understand the claim term after reading the entire patent.” Id. (internal quotation marks omitted). The specification never suggests that an extension of the floor panel is anything other than a piece that is “integral,” “joined,” or “merged” with the floor panel. See id. (“The specification never suggests that the spike can be anything other than pointed.”). The side post gusset of defendants' accused car is not an extension of the “floor panel” or “deck,” as those terms are used in the patents and have been construed by the court, and therefore defendants' cars do not infringe plaintiff's patents.
None of the plaintiff's other arguments change this outcome. Plaintiff points to a “finite element analysis” performed by plaintiff's expert that “show[s] that the floor extensions are functionally part of the floor because they cooperate with the floor sheets and the horizontal legs of the angles to create a continuous transfer of principal stress across the floor sheets, the horizontal leg of the angle, and the floor extensions.” Pl. Resp. 8, ECF 203 (citing Apel Decl., Ex. 7 at ¶¶ 50-51, ECF 181-9; Valenzuela Decl., Ex. 4 at 1-2, 6-8, ECF 204-4). Plaintiff asserts that the “floor sheets” or panels, the “horizontal legs of the angles” of the side sill, and the “floor extensions” or side post gussets create an “overall floor” that “is a continuous floor, in which all components are attached to each other, in which there are no ‘gaps,' and in which the ‘floor extensions' are true extensions of the floor.” Id. at 7. But the term “overall floor” does not appear in any of the patents, and plaintiff has already conceded that the “horizontal legs of the angles are not ‘floor panel(s)' or a ‘deck' under the Court's construction because they are not ‘sheets[.]' ” Id. There remains a gap between the floor panel and the side post gusset, and thus the side post gusset is not an integral or separate extension of the floor panel as those terms are used in the patents or as the court has construed them.
Plaintiff's citations to other courts' construction of variations on the term “extension” are unavailing because the patent claims or specifications in those cases specifically disclosed that the relevant component of the invention was “extended from,” but not connected to, another component. Pl. Supp. Br. 4, ECF 232; see Duhn Oil Tool, Inc. v. Cooper Cameron Corp., 474 F.Supp.2d 1148, 1164 (E.D. Cal. 2007); B. Braun Melsungen AG v. Terumo Med. Corp., No. 1:09-cv-09-00347-LPS, 2010 WL 2219667, at *10 (D. Del. June 3, 2010).
The fact that the specification specifically describes a “side web” and a “side web extension” that do not physically touch each other supports the court's reading regarding the “floor panel” and “deck” limitations. See Pl. Supp. Resp. 8-9, ECF 236. For one, the side web and its extensions are wholly different components from the floor panel and its extensions, and plaintiff does not adequately explain why the specifications' descriptions of these different components should have any bearing on the application of the court's construction of the terms “floor panel” and “deck” to the accused cars. Additionally, the specifications and figures make clear that the “side web” and its “extensions” do not have to physically touch, and the specification goes to great lengths to describe how the side web and the side web extension are physically arranged and what effect this arrangement has on the structure of the car and the various physical forces that may act on those components. ‘519 patent 14:62-15:28, ECF 187-1. The specifications do not, however, offer any similar description of the floor panel extensions. See Aventis Pharms. Inc. v. Amino Chemicals Ltd., 715 F.3d 1363, 1374 (Fed. Cir. 2013) (“We have previously held that the same claim term can have different constructions depending upon the context of how the term is used within the claims and specification.”).
It is undisputed that the side post gusset does not physically contact a “floor panel” or “deck”, and therefore the side post gusset is not an extension of the “floor panel” or “deck” under the court's construction of those terms. Defendants' accused cars do not infringe plaintiff's patents because they are missing the limitation that the “side wall web” be connected to or directly mated to a “floor panel” or “deck.” It is unnecessary to reach the issues raised by the parties' other arguments and motions.
ORDER
Defendants' Motion for Summary Judgment on the issue of non-infringement (ECF 183) is granted. Judgment will be entered for defendants. All other pending motions are denied as moot.