Opinion
No. C-00-3217 VRW
June 19, 2002
DARRYL M. WOO (SBN 100513), PATRICK C. DOOLITTLE (SBN 203659), FENWICK WEST LLP, Palo Alto, CA, FRANK JANOSKI (Pro Hac Vice), RICHARD B. WALSH, JR. (Pro Hac Vice), KEITH GRADY (Pro Hac Vice), LEWIS, RICE FINGERSH, L.C., St. Louis, MO, for Defendant.
STEVEN L. SMITH (S.B. #109942), DARIN W. SNYDER (S.B. #136003), LAURA C. BREMER (S.B. #162900), O'MELVENY MYERS LLP, San Francisco, California, for Plaintiffs.
STIPULATION AND ORDER FOR ENTRY OF FINAL JUDGMENT OF INFRINGEMENT AND DISMISSAL OF CLAIMS OF UNENFORCEABILITY AND INVALIDITY WITHOUT PREJUDICE
Pursuant to Civil Local Rule 7-11, IT IS HEREBY STIPULATED and agreed by and between the parties to this action, SRAM Corporation ("SRAM") and SunRace Roots Enterprise Co., Ltd. ("SunRace") and Sun Victory Trading Co., Inc. ("Sun Victory"), by and through their respective counsel, that:
1. The parties have received and reviewed the Court's claim construction ruling in the above-captioned matter, dated July 26, 2001. That ruling construes the term "shift actuator" in claims 16 and 20 of U.S. Patent No. B1 4,900,291 ("the Reexamined `291 patent") as "a mechanism for controlling the changing of gears that contains a cam configured with a series of lobes and valleys that rotates so as to engage a cam follower[.]" The accused devices are mechanisms for controlling the changing of gears of a bicycle that contain a grip rotatably mounted over the stationary handlebar and include, for example, SunRace's 220 series shifters (such as shifters with the model numbers HS 220-5R and 220 A-R7), which have been marketed under the names Handy Shifts, Turbo Grips and TD-Pros (the "Accused Devices"). Under the Court's construction of the term "shift actuator." the parties agree that the Accused Devices do not fall within the claim language and, therefore, do not infringe claims 16 and 20 of the Reexamined `291 patent.
2. SRAM respectfully disagrees with the Court's claim construction ruling and wishes to appeal to the United States Court of Appeals for the Federal Circuit to obtain appellate review.
3. An immediate appeal of the Court's claim construction ruling would preserve the resources of the parties and the Court by avoiding the unnecessary litigation of any other issues relating to the Reexamined `291 patent.
4. Should the Court enter the proposed order regarding the claim for declaratory judgment of patent noninfringement and the counterclaim of patent infringement, the parties agree that SunRace and Sun Victory's claims for declaratory judgment of patent invalidity and declaratory judgment of patent unenforceability (claims 1 and 2 of the complaint) shall be dismissed by the Court without prejudice.
5. The parties therefore request that, based on the Court's July 26, 2001 claim construction ruling, the Court enter (a) a judgment of noninfringement in favor of SunRace and Sun Victory and against SRAM declaring that SunRace and Sun Victory have not infringed, contributed to the infringement of, or induced the infringement of claims 16 or 20 of the Reexamined `291 patent and (b) a judgment of noninfringement in favor of SunRace and Sun Victory and against SRAM on SRAM's counterclaim that the accused devices infringe claims 16 and 20 of the Reexamined `291 patent. The parties agree that the entry of judgment of noninfringement shall not constitute any implied or express agreement by SRAM with the claim construction ruling or any waiver of SRAM's right of appeal, and this stipulation for entry of judgment is entered into by the parties for the express purpose of facilitating such an appeal.
6. If the United States Court of Appeals for the Federal Circuit does not affirm the Court's claim construction ruling, the parties agree that (1) SunRace and Sun Victory's claims for declaratory judgment of patent invalidity and declaratory judgment of patent unenforceability shall be reinstated and that SunRace and Sun Victory may pursue those claims as reinstated or amend their complaint to restate those claims; (2) the parties' respective pleadings shall likewise be reinstated and SunRace and Sun Victory may pursue their defenses to SRAM's claim for patent infringement, including their defenses of patent invalidity and unenforceability, as asserted in their Reply to SRAM's counterclaim, or amend their Reply to restate their defenses; (3) not later than 60 days after the Court of Appeals for the Federal Circuit files such an opinion, SRAM may serve Final Infringement Contentions pursuant to Patent L.R. 3-6 that amend its "Preliminary Infringement Contentions" with respect to the information that is required by Patent L.R. 3-1(c) and (d); and (4) not later than 90 days after the Court of Appeals for the Federal Circuit files such an opinion, SunRace and Sun Victory may serve Final Invalidity Contentions pursuant to Patent L.R. 3-6 that amend their "Preliminary Invalidity Contentions" with respect to the information required by Patent L.R. 3-3.
IT IS SO STIPULATED.
FINAL ORDER AND JUDGMENT
PURSUANT TO STIPULATION OF THE PARTIES, IT IS HEREBY ORDERED. THAT:
1. On July 26, 2001, the Court issued the attached claim construction ruling, construing the term "shift actuator" in claims 16 and 20 of U.S. Patent No. B1 4,900,291 (the "Reexamined `291 patent") to mean "a mechanism for controlling the changing of gears that contains a cam configured with a series of lobes and valleys that rotates so as to engage a cam follower." Thereafter, the parties stipulated that the accused devices are mechanisms for controlling the changing of gears of a bicycle that contain a grip rotatably mounted over the stationary handlebar and include, for example, SunRace Roots Enterprise Co., Ltd.'s ("SunRace") 220 series shifters (such as shifters with the model numbers HS 220-5R and 220 A-R7), which have been marketed under the names Handy Shifts, Turbo Grips and TD-Pros (the "Accused Devices"). The parties also stipulated that under the Court's construction of the term "shift actuator," the Accused Devices do not read on the claim language and do not infringe claims 16 and 20 of the Reexamined `291 patent. Based on the Court's claim construction ruling and the parties' stipulation as to the effect of that ruling, final judgment is hereby entered in favor of SunRace and Sun Victory Trading Co., Inc. ("Sun Victory") and against SRAM Corporation ("SRAM") on SunRace and Sun Victory's claim for declaratory relief of noninfringement; accordingly, the Court declares that SunRace and Sun Victory have not infringed, contributed to the infringement of or induced the infringement of claims 16 or 20 of the Reexamined `291 patent; judgment of noninfringement is also entered in favor of SunRace and Sun Victory and against SRAM on SRAM's counterclaim alleging that the accused devices infringe claims 16 and 20 of the Reexamined `291 patent.
2. SunRace and Sun Victory's claims for declaratory judgment of patent invalidity and declaratory judgment of patent unenforceability (claims 1 and 2 of the complaint) are hereby dismissed without prejudice pursuant to Fed.R.Civ.P. 41(a).
3. If the United States Court of Appeals for the Federal Circuit does not affirm the Court's claim construction ruling, (1) SunRace and Sun Victory's claims for declaratory judgment of patent invalidity and declaratory judgment of patent unenforceability shall be reinstated and SunRace and Sun Victory may pursue those claims as reinstated or amend their complaint to restate those claims; (2) the parties' respective pleadings shall likewise be reinstated, and SunRace and Sun Victory may pursue their defenses to SRAM's claim for patent infringement, including their defenses of patent invalidity and unenforceability, as asserted in their Reply to SRAM's counterclaim, or amend their reply to restate their defenses; (3) not later than 60 days after the Court of Appeals for the Federal Circuit files such an opinion, SRAM may serve Final Infringement Contentions pursuant to Patent L.R. 3-6 that amend its "Preliminary Infringement Contentions" with respect to the information required by Patent L.R. 3-1(c) and (d); and (4) not later than 90 days after the Court of Appeals for the Federal Circuit files such an opinion, SunRace and Sun Victory may serve Final Invalidity Contentions pursuant to Patent L.R. 3-6 that amend their "Preliminary Invalidity Contentions" with respect to the information required by Patent L.R. 3-3.
ORDER
In this order, the court must construe the claims of the reexamined United States Patent No 4,900,291 (the `291 patent). The `291 patent discloses methods and apparatuses for shifting gears on bicycles.
I
Bicycle shifting systems are used on multi-speed bicycles and include a shifter, a shifting mechanism (often a "derailleur") and a control cable that connects the shifter to the shifting mechanism. Most bicycles have both a front and rear derailleur and a corresponding front and rear shifter. The rear derailleur shifter is usually on the right side of the handlebar and the front derailleur shifter is on the left. Multi-speed bicycles allow riders to downshift to lower gears to make pedaling easier (useful, for example, when climbing hills) or upshift to a higher gear to make pedaling more difficult. Focusing on the rear derailleur, to downshift, the rider moves the shifter in a way that pulls on the cable and moves the derailleur toward a larger sprocket, thereby moving the chain onto the larger sprocket. To upshift, the rider moves the shifter to release some cable, allowing the rear derailleur spring to move the derailleur toward a smaller sprocket, moving the chain onto that sprocket.
Prior to the mid 1980s, bicycles used "friction" shifters rather than the "index" shifters, which are used today. With friction shifters, the rider must move the shifter until he feels the gear change and then adjust the shifter so that the derailleur is properly aligned with the newly selected gear. Index shifting involves moving the shifter in discrete movements that cause the derailleur to move the chain the precise amount necessary to shift gears.
Another way shifters can vary is in their placement. Shifters can take the form of levers mounted on the frame of the bicycle or levers mounted on the bicycle's handlebars. Shifters can also be rotatable handgrip shifters. These shifters allow the rider to change gears without taking his hand off the handlebars.
The `291 patent is owned by SRAM Corporation, a Chicago based company that began making rotatable grip shifters in 1988. SRAM's shifters were sold under the name "Grip Shift." The shifters performed index shifting rather than friction shifting. The `291 claims both methods and apparatuses related to twist index shifting. Specifically, the patent describes a type of rotatable grip shifter that relies on a "cam member" with an "operating face" having a precise shape to cause the cable to be pulled the proper amount, moving the derailleur the proper amount and allowing index shifting. The cam member is cylindrical and fits over the end of the handlebar. It is joined with the outside portion of the shifter which is rotated by the rider. When the shifter is rotated, the cam is rotated, causing the cam operating face to slide along the "cam pin." In one form of the invention, the cam operating face is held against the pin by the tension in the cable, which is attached to the back of the cam member, runs through the center of the cam member, into the cable housing and all the way to the derailleur, whose spring pulls it against the cable. In a different form, used in mountain bike shifters, the cable attaches to the pin and holds the pin against the cam operating face. In this version, it is the pin that pulls the cable, moving along the axis of the handlebars. In the first version, the cam member itself moves along the axis of the handlebars.
In either version, the operation of the shifting system centers on the interaction of the cam operating face and the cam pin. The cam operating face is not flat. Rather it has peaks and valleys, with consecutive peaks and valleys farther from the cable attachment, so that when the cam member is rotated the cable is pulled as the peaks slide against the pin, released as the valleys slide against the pin, but on average pulled as the member is rotated one direction and released as it is rotated the other direction. As the cam is rotated, the face peaks slide over the pin and the cam member comes to rest when the pin encounters a face valley. When the pin is in a valley, the derailleur is aligned with a particular sprocket and the bicycle is in gear. Thus, as the cam is rotated and the pin moves to a higher valley, the bicycle is shifted into a lower gear.
The peaks between valleys allow "overshift" automatically to be achieved. Overshift occurs when the cable is pulled farther than necessary to align the derailleur with the destination sprocket. Apparently, overshift makes downshifting occur more quickly and smoothly. With friction shifters, the rider overshifted by moving the derailleur past the destination sprocket until the chain switched to that sprocket, and then moved the derailleur back to align with that sprocket. Automatic overshift allows the rider to employ overshift yet only move the shifter once.
The peaks are also designed to take into account cumulative lost motion, which is the amount the shifter must move to take up the slack in the system before the derailleur begins to move. The amount of extra movement necessary is adjusted for in the cam operating face.
The `291 patent was initially issued in 1990. In 1997, Shimano, Inc, a major manufacturer of bicycle parts, challenged the validity of the patent. Both Shimano and SRAM asked the Patent and Trademark Office (PTO) to reexamine the patent. On April 25, 2000, the PTO issued a reexamination certificate. SRAM notified SunRace that its products infringed the reexamined patent and SunRace then filed this lawsuit seeking a declaratory judgment that its products do not infringe or that the `291 patent is invalid.
Presently before the court is a dispute over the construction of two terms used in the patent: "shift actuator" and "moving said shift actuator back." "Shift actuator" appears in method claims 16 and 20 and "moving said shift actuator back" appears in claim 20.
II A
Construing terms in disputed patent claims is a question of law resolved exclusively by the court. Markman v. Westview Instruments, Inc, 52 F.3d 967, 979 (Fed Cir 1995) (en banc). In construing a patent claim, the court must look first to the intrinsic evidence in the record, i.e., the claim, the specification and the prosecution history of the patent. Vitronics Corp v. Conceptronic, Inc, 90 F.3d 1576, 1582 (Fed Cir 1996). The intrinsic evidence is "the most significant source of the legally operative meaning of disputed claim language." Id. In most cases, reviewing the intrinsic evidence alone will resolve any ambiguities in a disputed claim term. Id at 1583.
With respect to the intrinsic evidence, the court must start with the language of the claims themselves to define the scope of the patented invention. Id at 1582. The ordinary and customary meaning of the claim terms as understood by persons experienced in the field of the invention normally controls. Hockerson-Halberstadt, Inc v. Avia Group Int'l, Inc, 222 F.3d 951, 955 (Fed Cir 2000). The Federal Circuit has emphasized an objective test for arriving at the ordinary meaning of a disputed term:
[T]he focus in construing disputed terms in claim language is not the subjective intent of the parties to the patent contract when they used a particular term. Rather the focus is on the objective test of what one of ordinary skill in the art at the time of the invention would have understood the term to mean.
Markman, 52 F.3d at 986.
Absent an explicit contrary definition of a term in the specification or a lack of clarity in the meaning of a claim term, the court must give full effect to the ordinary and customary meaning of the terms. Johnson worldwide Associates, Inc. v. Zebco Corp, 175 F.3d 985, 989 (Fed Cir 1999). Thus, the court operates under a "heavy presumption" that the ordinary meaning of the terms will control. Id. But, that presumption can be rebutted. First, if the patentee chooses to provide a special meaning for a term, the court may utilize the definition, so long as it is clearly stated in the specification. See Vitronics, 90 F.3d at 1582; see also Multiform Desiccants, Inc. v. Medzam, Ltd, 133 F.3d 1473, 1477 (Fed Cir 1998). "For claim construction purposes, the [specification] may act as a sort of dictionary, which explains the invention and may define terms used in the claims." Markman, 52 F.3d at 986. Second, the specification and prosecution history can shed light on the proper construction of a term in dispute when it lacks clarity. Johnson Worldwide Associates, 175 F.3d at 990; Toro Co. v. White consolidated Indus, Inc, 199 F.3d 1295, 1301 (Fed Cir 1999); Eastman Kodak Co. v. Goodyear Tire Rubber Co, 114 F.3d 1547, 1552 (Fed Cir 1997), overruled on other grounds by Cybor Corp v. FAS Technologies, Inc, 138 F.3d 1448 (Fed Cir 1998) (en banc).
It is clear that the Federal Circuit endorses the practice of looking to a patent's specification and patent history to interpret narrowly a term susceptible to a broader "ordinary" definition. See Wang Lab, Inc. v. America Online, Inc, 197 F.3d 1377, 1383 (Fed Cir 1999); Multiform Desiccants, Inc. v. Medzam Ltd, 133 F.3d 1473, 1478 (Fed Cir 1998). In Vitronics Corp, the Federal Circuit stated: "Thus, the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics Corp, 90 F.3d at 1582. The specification can be helpful because the specification is designed to provide a description of the invention that is "clear and complete enough to enable those of ordinary skill in the art to make and use" the invention. Id.
The prosecution history of a patent may also be considered. Id. The prosecution history is useful because it "limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution." Vitronics, 90 F.3d at 1582-83. An applicant can limit the scope of his claims by disclaiming certain interpretations of the claims before the patent office. Southwall Technologies, Inc. v. Cardinal IG Co, 54 F.3d 1570, 1576 (Fed Cir 1995). It appears, however, that when relying on the patent prosecution history to limit a claim the court must find that the applicant "clearly disavowed" coverage of the patent. IMS Technology, Inc. v. Haas Automation, Inc, 203 F.3d 1422, 1439 (Fed Cir 2000).
The respective roles of the claim language and the specification are somewhat hazily defined. For example, "one may not read a limitation into a claim from the written description, but one may look to the written description to refine a term already in a claim, for a claim must be read in view of the specification of which it is a part." Renishaw PLC v. Marposs Societa Per Azioni, 158 F.3d 1243, 1248 (Fed Cir 1998). As one commentator pointed out, "there is a `fine line' between interpreting claim language `in light of the specification,' which is appropriate, and importing a limitation `from the specifications' which is not." David C. Radulescu, The Federal Circuit's Narrowing of the Literal Scope of Patent Claims by Focussing on Embodiments Disclosed in the Specification, 82 J Pat Trademark off Soc'y 539, 539 (2000). Furthermore, while Johnson Worldwide Associates holds that the ordinary language of the claim should prevail except under limited circumstances, it also seems clear that Federal Circuit cases look beyond the language of the claims and consider the specification and the prosecution history. See, e.g., Wang Lab, 197 F.3d 1377 (9th Cir 1999); Desper Products, Inc. v. Qsound Labs, Inc, 157 F.3d 1325 (Fed Cir 1998); Radulescu, The Federal Circuit's Narrowing of the Literal Scope of Patent Claims by Focussing on Embodiments Disclosed in the Specification, 82 J Pat Trademark off Soc'y 539, 543-54 (2000) (cases cited therein).
Another complication is added by the doctrine of claim differentiation. That doctrine holds that claims must be read in light of the other claims of the patent and that different claim language should be interpreted differently. Karlin Tech Inc. v. Surgical Dynamics, Inc, 177 F.3d 968, 971 (Fed Cir 1999). But, the doctrine cannot broaden a claim beyond "what is contained in the specification and claims as filed." Tandon Corp. v. United States Int'l Trade Comm'n, 831 F.2d 1017, 1023 (Fed Cir 1987); see also ATD Corp. v. Lydall, Inc, 159 F.3d 538, 541 (Fed Cir 1998). "The presumption that separate claims have different scope `is a guide, not a rigid rule.'" ATD, 159 F.3d at 541. As the Federal Circuit has stated: "construction of claims is not based solely on the language of other claims; the doctrine (of claim differentiation] cannot alter a definition that is otherwise clear from the claim language, description and prosecution history." O.I. Corp. v. Tekmar Co, Inc, 115 F.3d 1576, 152 (Fed Cir 1997).
In the end, the court must strike a careful balance when interpreting the claims of the patent at issud. If claim language is clear, its ordinary meaning must control. If the language of the claim is unclear, however, the court will turn to the specification and the prosecution history for guidance. The court will endeavor not to read in limitations from the specification but the court must construe the claims in light of the specification.
III
The parties dispute only two terms from the patent: "shift actuator" and "moving said shift actuator back."
A
Claim 16 states:
In a bicycle derailleur gear shifting system having a rear derailleur shifting mechanism, a shift actuator rotatably mounted on a bicycle handlebar, said shift actuator being mounted on and engaged over an outside of the handlebar inboard of a fixed handgrip on an end of the handlebar, and control cable means operatively connecting said actuator to said shifting mechanism, a method of performing down-shifting events from a relatively smaller origin sprocket to a relatively larger destination sprocket freewheel sprocket, which comprises:
first rotating said shift actuator a sufficient amount to take up substantially all of the cumulative lost motion in said derailleur mechanism and said cable means; and
then rotating said shift actuator a further amount so as to move the bicycle chain at least substantially the distance between the centers of said origin and destination sprockets.
Grady Decl, Exh A, `921 patent reexamination certificate at 4:66-5:17. SRAM contends that "shift actuator" should be construed to mean: "a mechanism that controls the changing of gears." Amended Joint Claim Construction Chart at 1. SunRace would define "shift actuator" as: "a mechanism for controlling the changing of gears that contains a cam configured with a series of lobes and valleys that rotates so as to engage a cam follower." Id.
SRAM makes a number of arguments in support of its significantly broader construction of "shift actuator". First, SRAM argues that the plain meaning of the term "shift actuator" supports its definition. SRAM cites dictionary definitions of shift and actuate. SunRace does not really contest that the plain meaning of "shift actuator" encompasses any kind of shifter, not just those using a cam with lobes and valleys. This is a wise concession. The court agrees with SRAM that the plain, general meaning of "shift actuator" is "a mechanism that controls the changing of gears." Of course, this does not end the inquiry. The court must interpret the language of the claims in light of the specification and the prosecution history. To the extent the specification puts forth a different definition of "shift actuator" or fails to support the plain meaning definition, then the plain meaning definition must be discarded. Similarly, if SRAM disclaimed the plain meaning definition in the prosecution of the patent, then that definition cannot control.
SRAM argues that the doctrine of claim differentiation requires its construction of the term "shift actuator." This is a powerful argument. The claims of the patent do not all use the more generic term "shift actuator." In fact, many use the term "handgrip shift actuator indexing cam means." See claims 4, 5, 9, 10 and 14. Others use "handgrip shift actuator cam means." See claims 11, 12 and 13. If a "shift actuator" by definition includes a cam, the language in these claim terms is superfluous. In particular, the difference between claim 24 and claim 16 supports SRAM's construction of "shift actuator." Claim 24 reads: "A method according to claim 16, wherein said shift actuator comprises cam means rotatably mounted on the bicycle handlebar generally coaxially of the handlebar." Grady Decl, Exh B, `291 patent at 34:33-36. The only thing claim 24 adds to claim 16 is the word "cam." Thus, if "shift actuator" is construed as requiring a cam then claim 24 is completely superfluous.
SRAM next argues that the specification supports its construction. First, SRAM points out that the specification never explicitly defines "shift actuator" as including a cam with lobes and valleys. SunRace concedes this point. It is clear, however, that an explicit definition is unnecessary. SciMed Life Systems v. Advanced Cardiovascular, 242 F.3d 1337, 1344 (Fed Cir 2001) ("the written description can provide guidance as to the meaning of the claims, thereby dictating the manner in which the claims are to be construed, even if the guidance is not provided in explicit definitional format."). Second, SRAM cites portions of the specification that refer to "shift actuators" without mentioning cams. SRAM is correct that the specification does refer numerous times to "shift actuators" without mentioning the use of a cam. It is less clear that this means the term was used in the specification in its broader sense. It is just as likely that the specification used the term in its more narrow sense. SRAM has not pointed to any use of the term "shift actuator" in a context that makes it clear the broad sense is intended.
Turning to the prosecution history, SRAM discusses the reexamination process in which the PTO Examiner required SRAM to amend claim 16 to add some structural requirements. SRAM was required to add the limitation that the shift actuator be "rotatably mounted" "over an outside of the handlebar inboard of a fixed handgrip." The Examiner, did not, however, impose a structural limitation related to the presence of a cam.
Next, SRAM argues that accepting SunRace's construction would require the court impermissibly to import limitations from the specification. Finally, SRAM cites testimony by Sam Patterson, the inventor of the `291 patent, John Cheever, an inventor of other bicycle shifter patents, and Robert van der Plas, SunRace's expert. Patterson and Cheever testified that the term "shift actuator" has a general meaning. See Grady Decl, Exh O, Patterson Depo at 52:7-12; Exh P, Cheever Depo at 26:23-27:2. Van der Plas stated that the method of claim 16 could, in theory, be performed without using cam structures. Id, Exh N, Van der Plas Depo at 108:6-15.
SunRace contends that its construction of "shift actuator" as "a mechanism for changing gears that contains a cam configured with a series of lobes and valleys that rotates so as to engage a cam follower" is mandated by the patent specification. First, SunRace points to the Summary of the Invention portion of the specification. That section states: "Each handgrip shift actuator contains a generally cylindrical cam member having a generally helical operating face configured with a plurality of spaced detents or valleys with a cam peak or lobe between each pair of adjacent detents." Bremer Decl, Exh 10, `921 patent at 4:49-53. The Summary states that the "programming of the cam operating face of the handgrip shift actuators of the invention to accurately achieve such shifting limits for each available derailleur system" is an "important part of the invention." Id. at 6:20-26. Finally, the Summary states that one of the objects of the invention "is to provide a bicycle derailleur shifting system having a handgrip shift actuator embodying a generally helical cam which defines the derailleur mechanism movements." Id at 3:32-36.
In the Detailed Description, the specification states "A rotary cam member 74 having a generally helical operating face is the heart of the rear handgrip shift actuator * * *." Id. at 9:64-66. Not only does the specification characterize the cam as the heart of the invention, the specification reveals that the cam truly is integral to the invention. The specification lists a number of different embodiments of the invention; each one uses a cam operating face with valleys and detents. Indeed, much of the specification is devoted to the details of the cam operating face. See, e.g., id. at figures 8, 12-15, 19, 34-38.
SunRace argues that the specification shows that the cam structure is essential to the invention. The court agrees. No where does the specification even hint that the invention might be embodied in a structure that does not use a cam. Instead, the entire specification refers to embodiments employing a cam. The only place that the patent raises the possibility that a cam is not required is claim 16 itself.
SunRace also looks to the prosecution history to show that both the Examiner and SRAM meant the term "shift actuator" to encompass a cam structure. First, SunRace cites SRAM's request for reexamination. The document titled Detailed Request introduces the `291 patent as "involving an actuator * * * comprising a cylindric cam member 74 rotary on the outside of the handlebar and axially slidable relative to the handlebar." Bremer Decl, Exh 4, Detailed Request for Reexamination at 4. The same document also makes reference to shift actuator 66 (containing a cam structure) in its discussion of claim 16. Id at 8.
SunRace also points to SRAM's discussion of the Huret reference during the reexamination proceedings. Having considered that discussion, however, the court cannot conclude that SRAM specifically stated that claim 16 employed a shift actuator with a cam structure. See Bremer Decl, Exh 24, 3/27/97 SRAM Statement at 4-5. Next, SRAM points to the Examiner's Office Action in Reexamination mailed June 20, 1997. In that document (subsequently vacated) the Examiner explained his rejection of claims 1-4 but he allowed claims 5-26. The Examiner explained allowance of claims 5-26 as follows: "Claim 5-26 are deemed to be allowable over the prior art of record. These claims comprise what the examiner considers to be `fine tuning' features wherein specific embodiments are `configured' so as to provide a more absolute control of the derailleur gear shifting system for a bicycle existing thentofore." Bremer Decl, Exh 12, Office Action at 6. This statement is plainly inconsistent with SRAM's view that claim 16 embraces broadly a method of shifting gears unconstrained by any structural limitations requiring the use of a cam.
SunRace also points the court to statements made by SRAM concerning the patentability of claims 27 and 28, claims dependent on claim 16, which were eventually withdrawn but which contained the structural limitations added to claim 16. In asserting the patentability of these claims, SRAM directed the examiner to portions of the patent specification describing the cam structure. See Bremer Decl, Exh 25, 8/19/97 Amendment at 7-8. Finally, SunRace cites SRAM's response to Shimano's arguments to the PTO against patentability. SRAM focused on the fact that claim 16 describes taking up slack in the cable at the shift actuator. Id, Exh 27, 1/12/98 Patent Owner's Statement at 12-13. SunRace argues that because the way such slack was taken up was through the operation of the cam, SRAM was implicitly conceding that the cam was essential to claim 16. The court does not agree that these statements disclaim the use of structures other than cams in method of claim 16.
Reviewing the prosecution history, the court concludes that in three instances either SRAM or the examiner indicated that claim 16 encompassed a cam structure: SRAM's request for reexamination, the June 20, 1997, Office Action and SRAM's August 19, 1997, amendment which asserted the patentability of claims 27 and 28. The other areas cited by SunRace are ambiguous. The court cannot rely on them as an indication that SRAM abandoned its claim to a broad reading of the term "shift actuator."
On the whole, the court concludes that SunRace's construction of "shift actuator" must be adopted. While the plain meaning of the term may be to the contrary, a reading of the specification makes abundantly clear that the invention claimed in the `291 patent employs a cam structure. In the words of the patent, the cam is the "heart" of the shift actuator. The cam structure is integral to the invention just as embossments with point contact were essential to the invention in ATD, and the coaxial lumen structure was essential to the invention in SciMed. See ATD v. Lydall, 159 F.3d 534 (Fed Cir 1998); SciMed Life Systems v. Advanced Cardiovascular, 242 F.3d 1337 (Fed Cir 2001).
SRAM's claim differentiation argument is strong, but the doctrine of claim differentiation cannot broaden the claims beyond the invention disclosed in the specification. See ATD, 159 F.3d at 541. As discussed above, the doctrine of claim differentiation is merely a guide, not a rigid rule. When the specification indicates that a term must be construed narrowly, claim differentiation cannot trump the specification. O.I. Tekmar, 115 F.3d at 1582. In this case, the specification must control. The use of the term "shift actuator" in claim 16 and "shift actuator cam means" in claim 24 is redundant in light of this construction. But this does not meant that SRAM and the Examiner did not have this construction in mind. In fact, the prosecution history confirms that both SRAM and the PTO examiner considered the term "shift actuator" to require the use of a cam structure having valleys and lobes. Patent examination and drafting is an imperfect process. From time to time claims will be drafted in a way that renders one superfluous. This is why the doctrine of claim differentiation is only a "guide."
Because the intrinsic evidence resolves the ambiguity with respect to the meaning of the term "shift actuator," the court need not consider the extrinsic evidence submitted by the parties. The term "shift actuator" is construed as "a mechanism for controlling the changing of gears that contains a cam configured with a series of lobes and valleys that rotates so as to engage a cam follower."
B
Claim 20 reads:
A method according to claim 16, which comprises first moving said shift actuator a sufficient amount to cause the bicycle chain to first move beyond said destination sprocket, and then moving said shift actuator back to cause the chain to move back to substantial alignment with said destination sprocket, whereby the chain approaches the destination sprocket in the same direction as it would in an upshifting event.
Grady Decl, Exh B, `291 patent at 34:12-19. In dispute is the construction of the phrase "moving said shift actuator back." SRAM would construe the phrase as follows: "moving the shift actuator to restore the lag between the movement of the shift actuator and the movement of the rear derailleur previously removed." Amended Joint Claim Construction Chart at 7. SunRace would construe it as: "moving the shift actuator in the opposite direction as its initial movement." Id.
SRAM initially argues that the plain meaning of the phrase requires the construction it proposes. The plain meaning of the phrase, however, is the one that SunRace would give to it: moving the shift actuator in the opposite direction as its initial movement.
SRAM moves on to argue that read in light of the specification, the phrase must be construed to allow overshifting to occur with a single movement of the shift actuator by the rider. In support of this contention, SRAM cites portions of the specification that explain how overshift is achieved as the rider moves the shifter in one direction, in a single movement. See Grady Decl, Exh B, `291 patent at 13:59-14:19; 22:37-23:3; 23:39-68; 4:1-14, 25-29. This feature, central to the patented invention (and performed by the cam), is succinctly stated: "Another object of the invention is to provide a bicycle derailleur shifting system having built-in overshift, wherein the overshift timing is automatically established by the natural shifting movement, and does not require separate rider input." Id at 4:25-29.
SRAM correctly notes that SunRace's interpretation would exclude a preferred embodiment of the invention. If possible, his should be avoided. Vitronics Corp. v. Conceptronic, Inc, 90 F.3d 1576, 1583 (Fed Cir 1996). Next, SRAM relies on extrinsic evidence in the form of testimony by Sam Patterson, John Cheever and Robert van der Plas.
SunRace first argues that the plain meaning of the phrase "moving said shift actuator back" favors its construction. The court agrees. Claim 20 purports to be a "method according to claim 16" comprising the steps of "first moving said shift actuator" to move the chain beyond the destination sprocket and then "moving said shift actuator back" to align the chain with the destination sprocket. In claim 16, the movement of the shift actuator is a rotation of the unit as a whole. Claim 16 does not refer to the movement of component parts, as SRAM suggests. The only plausible reading of the phrase "moving said shift actuator back" is the one proposed by SunRace, moving it in the opposite direction as it was initially moved.
SunRace next contends that SRAM admitted that SunRace's construction is the correct one in its Preliminary Infringement Contentions. SRAM does not deny the admission, but argues that the admission should not be binding because it was a preliminary infringement contention, not a claim construction submission. SRAM is correct that SunRace presents no authority for the proposition that SRAM is bound by its statements in the Preliminary Infringement Contentions. The case SunRace relies on for its admission theory, is not wholly on point. In Leggett Platt Inc. v. Hickory Springs Mfg Co, 2000 WL 1269363 (ND Ill 2000), the court held that a defendant's earlier admission that certain elements of the patent were found in its products was a binding admission with respect to the construction of those elements in the patent. Id. at *7. In the case at bar, SRAM did not admit that its products contained an element of the patent; rather, as the holder of the patent, SRAM made preliminary accusations about SunRace's products. In any event, the court finds SRAM's argument that it would be unfair to bind it to its earlier position to be meritorious. Under the patent local rules, the Preliminary Infringement Contentions can be modified after claim construction. See Patent Local Rule 3-6(a). Given that these contentions can be modified, the court sees no reason to treat them as binding admissions.
SunRace next points to the parties' agreement that the word "back" used a second time in claim 20 ("to cause the chain to move back to substantial alignment") means move in the opposite direction. SunRace argues that the court should interpret the same word, back, in the same manner within the same claim. The court agrees that it would be anomalous for the word back to take on two different meanings when used in parallel in the same claim.
A statement by the PTO Examiner also indicates that he considered claim 20 to require movement of the shift actuator in the opposite direction as it was first moved. See Bremer Decl, Exh 31, Office Action at 13. SRAM does not address this argument and it is clear from the Examiner's statement that he read claim 20 as SunRace does. The examiner stated:
The Bicycling Magazine (Reference AE) discloses (page 57, line 5) several marketed rear derailleurs which provide a uniform chain gap and further discloses (page 56, line 7 and following) the condition called `late shifting' wherein after each shift, one has to reverse the shift lever to center the jockey pulley and quiet the grinding at the back, a condition herein taken as being functionally equivalent to that called for in claim 20 wherein after reversing the shift lever the chain approaches the destination sprocket in the same direction as it would in an up-shifting event.
Id. Plainly, the Examiner read claim 20 to require the rider to reverse the shift lever to cause the chain to move back to the destination sprocket.
Finally, SunRace contends that SRAM's construction is nonsensical because restoration of cumulative lost motion will not cause the chain to move back to the destination sprocket. SRAM argues in reply that restoration of cumulative lost motion does in fact allow the chain to move back to the destination sprocket. For purposes of this construction, the court will assume SRAM is correct, that restoring cumulative lost motion would cause the chain to move back. SunRace also takes issue with SRAM's use of the phrase "restoring the lag." SunRace argues that "lag," a measure of time, cannot be restored. Indeed, the choice of the word lag is awkward.
The court concludes that SunRace's construction must be adopted. It is clear that this construction means that claim 20 does not read on the preferred embodiment of the claimed invention. SRAM is correct that the invention, a shifting system using a detailed cam to control derailleur movement, was designed to allow overshift to occur automatically, without the rider having to move the shift actuator back to achieve overshift. But the language of claim 20 just cannot be read to incorporate that invention. The plain language of the claim must control.
In claim 16 the court construed the term "shift actuator" in light of the specification and in keeping with the nature of the invention claimed in the `291 patent. There was some ambiguity in the phrase "shift actuator." The phrase "moving said shift actuator back," however, just cannot bear the construction SRAM proposes, which would allow claim 20 to read on the preferred embodiment of the invention. "Moving said shift actuator back" is therefore construed to mean: "moving the shift actuator in the opposite direction as its initial movement."
The court has construed both of the disputed terms without reference to the extrinsic evidence submitted by the parties. Because the court has declined to rely on this evidence, the parties respective objections to evidence are DENIED as moot.