United States District Court,

E.D. Michigan,

Southern Division.

Scott CLARE, et al., Plaintiffs,

v.

CHRYSLER GROUP, LLC, Defendant.

 

No. 13–11225.

Signed June 4, 2014.

 

Jonathan T. Suder, David A. Skeels, Friedman, Suder & Cooke, Fort Worth, TX, Jaye Quadrozzi, Rodger D. Young, Young & Associates, Farmington Hills, MI, for Plaintiffs.

 

Frank C. Cimino, Jr., Jonathan L. Falkler, Megan S. Woodworth, Dickstein Shapiro LLP, Washington, DC, Moheeb H. Murray, Patrick G. Seyferth, Susan M. McKeever, Bush, Seyferth & Paige, PLLC, Troy, MI, for Defendant.

 

OPINION AND ORDER ACCEPTING AND ADOPTING THE SPECIAL MASTER’S REPORT AND RECOMMENDATION AND OVERRULING PLAINTIFFS’ AND DEFENDANT’S OBJECTIONS [34, 35]; OPINION AND ORDER GRANTING PLAINTIFFS’ MOTION TO AMEND INFRINGEMENT CONTENTIONS [33]; OPINION AND ORDER GRANTING PLAINTIFFS’ MOTION TO COMPEL DISCOVERY [40]

NANCY G. EDMUNDS, District Judge.

*1 This is a patent case. Plaintiffs Scott Clare, Neil Long, and Innovative Truck Storage, Inc. hold and license U.S. Patent No. 6,499,795 (the “’795 patent”) and U.S. Patent No. 7,104,583 (the “’583 patent”). Roughly, the patents secure the rights to an invention that entails putting a storage box in a pickup truck’s sides to deter theft. Plaintiffs have filed suit alleging that Defendant Chrysler, LLC, has infringed the patents with its Dodge Ram pickup’s RamBox—also a storage box in the pickup’s sides.

 

This case originated in the Eastern District of Texas. On March 20, 2013, that court transferred the case to this district. (Dkt. 1 .) As part of its transfer order, that court vacated the magistrate judge’s provisional claim construction order. (Dkt.2.) Upon the case’s arrival, the Court met with parties and told the parties that it would not restart the case, meaning the parties were to not go through the entire Markman briefing again. The Court also told the parties that it would refer claim construction to a special master. The Court did so, referring claim construction to Special Master John Thomas. (Dkt.11.) The Special Master conducted the Markman hearing and has issued his report and recommendation on three contested patent phrases. (Dkt.31.)

 

The parties’ objections to the Special Master’s claim construction report and recommendation are now before the Court. (Dkt.34, 35.) Plaintiffs have two other motions before the Court: their motion to amend infringement contentions and their motion to compel discovery relating to damages. (Dkt.33, 40.)

 

Because the Court finds that the Special Master has appropriately constructed the claims and because the parties have not persuaded the Court that it should alter the Special Master’s recommendation, the Court accepts and adopts the report and recommendation in full. Because the Court finds that Plaintiffs should have the opportunity to amend their infringement contentions, the Court GRANTS Plaintiffs’ motion, but with conditions, as the Court discusses below. And because the Court finds that Plaintiffs’ discovery requests relating to Dodge Ram trucks without RamBoxes may be relevant, the Court GRANTS Plaintiffs’ motion to compel.

 

I. General facts

On October 22, 1996, the United States Patent and Trademark Office (“USPTO”) issued Plaintiff Scott Clare U.S. Patent No. 5,567,000, entitled “Hidden Storage/Utility System.” (Compl.¶ 7.) Six years later, Plaintiff Clare obtained one of the patents at issue in this case, the ‘795 patent, titled “Vehicle with Storage/Utility System.” (Id. ¶ 8.) On September 12, 2006, Plaintiff Clare obtained the ‘583 patent, titled again “Vehicle with Storage/Utility System.” (Id. ¶ 9.)

 

Plaintiffs state that the patents are assigned to Plaintiff Clare and Plaintiff Neil Long and that Plaintiff Innovative Truck Storage, Inc. is the exclusive licensee of both patents. (Compl.¶¶ 11, 12.)

 

*2 Plaintiffs allege that Defendant had actual notice of all three patents. (Compl.¶ 10.) They have set forth facts in their complaint supporting their allegation. Plaintiffs have filed suit claiming that Defendant’s Dodge Ram’s RamBox Cargo Maintenance System infringes the ‘795 and ‘583 patents. (Id. ¶¶ 19–22.)

 

Plaintiffs maintain that the RamBox is a “side panel storage system” that meets “each and every element of” the claims in the patents.

 

II. Asserted claimsFN1

 

FN1. The Court recognizes that Plaintiffs have filed a motion to amend their infringement contentions. The Court includes those requested contentions here, claims 45 and 46 of the ‘795 patent, and the claims those claims are dependent upon.

 

Plaintiffs allege that Defendant has infringed the following claims:

 

• Patent ‘795: claims 15, 19–21, 34, 36, and 37

 

• Patent ‘583: claims 33–35, 37, 41, 43–44, 46–48, 53, 56, and 57.

 

The Court lists the claims at issue below, for the sake of thoroughness.

 

A. ‘795 patent

• 14. A pickup truck having: a cab with two or more doors, each having an external surface; a bed with two contoured side panels connected to the cab; at least two rear wheels configured to support the bed, and two wheel wells connected to the bed above the rear wheels, the improvement comprising: at least one storage box adjacent a side panel, wherein the storage box does not substantially extend laterally beyond the exterior surfaces of the doors; and at least one hinged panel providing access to the storage box.

 

• 15. The improvement of claim 14, wherein the exterior surface of the side panel is substantially aligned with an exterior surface of the cab.

 

• 19. The improvement of claim 14, wherein at least a portion of the storage box is located above the wheel well, at least a portion is located in front of the wheel well, and at least a portion is located behind the wheel well.

 

• 20. The improvement of claim 14, wherein the storage box is substantially centered relative to the width of one of the rear wheels.

 

• 21. The improvement of claim 14, wherein the hinged portion is constructed such that the pickup truck has an external appearance of a conventional pickup truck free of storage box.

 

• 33. A vehicle comprising: a passenger cab; a cargo area defined by a pair of side panels and located behind the cabin; at least two rear wheels configured to support the cargo area; and a storage box mounted within the cargo area and adjacent to the side panels where the horizontal width of the cargo area is not substantially greater than the width of the passenger cabin.

 

• 34. The vehicle of claim 33, wherein the vehicle is a pickup truck and the cabin is a cab.

 

• 36. The vehicle of claim 33, wherein the storage box is substantially centered relative to the width of one of the rear wheels.

 

• 37. The vehicle of claim 33, wherein the side panels are contoured.

 

• 39. A pickup truck having: a cab; a bed with two side panels connected to the cab and mounted on a frame; at least two rear wheels configured to support the bed; and two wheel wells connected to the bed above the rear wheels, the improvement comprising: a storage compartment mounted within the bed and adjacent to one of the wheel wells; and at least a portion of one of the side panels is hinged to provide access to at least a portion of the storage compartment wherein the side panels terminate adjacent the frame.

 

*3 • 44. The truck of claim 39 which further comprises a second storage compartment mounted within the bed and adjacent to a second wheel well.

 

• 45. The truck of claim 44 wherein the first and second storage compartments are formed by contoured side panels connected to the cab wherein at least a portion of said side panels are hinged to provide access to at least a portion of said storage compartments.

 

• 46. The truck of claim 45 wherein the hinged portion is constructed such that the truck has an external appearance of a conventional pickup truck.

 

B. ‘583 patent, September 12, 2006

• 22. A pickup truck comprising a forward area with contoured sides and a bed; the bed comprising: an open cargo area; rear wheel wells, two opposed side panels which are contoured and generally in line with the contoured sides of the forward area of the pickup truck, a floor; a first and second inner wall, which are visually integrated into the bed to define the lateral sides of the open cargo area of the bed, the inner walls being spaced laterally inwardly of their associated side panels; storage compartments built into the bed between the inner walls and their associated side panels, the storage compartments located at least partially above the floor; and hinged panels providing access to the storage compartments; the bed being constructed such that the pickup has substantially the external appearance of a pickup without the built-in storage.

 

• 23. The pickup truck of claim 22, wherein the hinged panels comprise hinges that are not exposed to an external view of the pickup truck.

 

• 24. The pickup truck of claim 22, wherein the bed is constructed such that the pickup truck has substantially the appearance of a pickup truck without the built in storage.

 

• 25. The pickup truck of claim 22, 23, or 24 wherein the contour of the side panels proximate the forward area substantially conforms to the contour of the forward area up to substantially the height of the bed.

 

• 33. The pickup truck of claim 25, wherein the first and second inner walls are spaced apart by a distance of at least four feet.

 

• 34. The pickup truck of claim 25, wherein the wheel wells have inner edge portions, and the inner walls are approximately aligned with the inner edge portions of the wheel wells.

 

• 35. The pickup truck of claim 25, wherein the wheel wells have inner edges and inner walls are each positioned near an inner edge of the wheel wells.

 

• 36. The pickup truck of claim 25, further comprising top rails between the inner walls and the side panels.

 

• 37. The pickup truck of claim 36, in which the hinged panels include at least a portion of the top rails.

 

• 41. The pickup truck of claim 25, wherein the width of the storage compartments at the top of the side panels is less than the width of the wheel wells at the level of the floor.

 

• 43. The pickup truck of claim 25, wherein at least one of the storage compartments contains a storage bin.

 

*4 • 44. The pickup truck of claim 25, wherein at least one of the storage compartments is lockable.

 

• 45. A pickup truck comprising a forward area with contoured sides and a bed; the bed comprising: an open cargo area; rear wheel wells, two opposed side panels which are contoured and generally in line with the contoured sides of the forward area of the pickup truck, top rails; a floor; first and second inner walls, which are visually integrated into the bed to define the lateral sides of the open cargo area of the bed, the inner walls being spaced laterally inwardly of their associated side panels; storage compartments built into the bed between the inner walls and their associated side panels, the storage compartments being located at least partially above the floor, at least partially above the wheel wells and at least partially behind the wheel wells; and hinged panels providing access to the storage compartments; the bed being constructed such that the pickup has substantially the appearance of a pickup without the built-in storage.

 

• 46. The pickup truck of claim 45, wherein the hinged panels comprise hinges that are not exposed to an external view of the pickup.

 

• 47. The pickup truck of claim 45, wherein the storage compartments are at least partially in front of the wheel wells.

 

• 48. The pickup truck of claim 45, wherein the hinged panels comprise hinges located along a portion of the top rails.

 

• 49. The pickup truck of claim 45, 46, 47, or 48, wherein the storage compartments are entirely above the floor of the bed.

 

• 53. The pickup truck of claim 49, wherein the side panels are contoured to substantially match the contoured sides of the forward area.

 

• 56. The pickup truck of claim 49, wherein at least one of the storage compartments contains a storage bin.

 

• 57. The pickup truck of claim 49, wherein at least one of the storage compartments is lockable.

 

III. The Special Master’s report and recommendation

The parties asked the Special Master to construct three terms/phrases in the claims. The parties asked the Special Master to construct “hinged panel” in the ‘795 and ‘583 patents, “substantially the external appearance” in the ‘ 583 patent, and “the external appearance of a conventional pickup truck” in the ‘795 patent.

 

The Special Master recommended not giving a different construction for “hinged panel.” (Dkt. 31, Special Master Report at 7.) The Special Master found that “[h]inges and panels are common pieces of hardware that are encountered on an everyday basis.” (Id.) He explained that “[l]ay persons require no special definition to understand the meaning of these terms.” (Id.)

 

As for “substantially the external appearance” in the ‘583 patent and “the external appearance of a conventional pickup truck” in the ‘795 patent, the Special Master recommended defining the two terms in the same way: “[t]he hinged portion is constructed such that the storage box is not obvious from the outward appearance of the pickup.” (Special Master Report at 14.)

 

IV. Claim construction’s purpose and guiding tenets

*5 Claim construction’s “ultimate goal” is to determine the meaning and scope of the patent claim that a defendant is allegedly infringing. Advanced Fiber Tech. (AFT) Trust v. J & L Fiber Servs., Inc., 674 F.3d 1365, 1374 (Fed.Cir.2012) (citation omitted).

 

In claim construction, courts generally give words “their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony, 669 F.3d 1362, 1365 (Fed.Cir.2012) (citation omitted). Two exceptions to that practice exist: “1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citation omitted).

 

Under the “lexicographer” exception, a patentee must “clearly set forth a definition of the disputed claim term” “other than its plan and ordinary meaning.” Thorner, 669 F.3d at 1365 (citation omitted). A patentee cannot “simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citation omitted). “[T]he investor’s written description of the invention … is relevant and controlling insofar as it provides clear lexicography[.]” Id. (citation omitted, first insertion in Thorner, emphasis removed.).

 

Under the “disavowal” exception, “[w]here the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even thought the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Thorner, 669 F.3d at 1366 (citation omitted). “The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of the claim term by including in the specification expressions of a manifest exclusion or restriction, representing a clear disavowal of claim scope.” Id. (citation omitted). But, the “[m]ere criticism of a particular embodiment encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear disavowal. Id. (citation omitted).

 

The standard to show disavowal is high. The Federal Circuit has stated “that even where a particular structure makes it ‘particularly difficult’ to obtain certain benefits of the claimed invention, this [difficulty] does not rise to the level of disavowal of the structure.” Thorner, 669 F.3d at 1366. The Federal Circuit has continued,

 

[i]t is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. [Courts] do not read limitations from specification into claims; [courts] do not redefine words. Only the patentee can do that. To constitute disclaimer, there must be a clear and unmistakable disclaimer.

 

*6 It is the claims that define the metes and bounds of the patentee’s invention. The patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope.

 

Id. (citations omitted).

 

V. The Court accepts and adopts the Special Master’s “hinged panel” construction

Again, the Special Master, after a lengthy discussion that directly addressed the parties’ arguments, recommended that the Court not offer a different “hinged panel” construction.

 

Plaintiffs do not object to the Special Master’s “hinged panel” construction. (Dkt. 34, Pls.’ Obj.)

 

Defendant, though, objects to the Special Master’s “hinged panel” claim construction. (Dkt. 35, Def.’s Obj.) Defendant asks the Court to adopt Judge Payne’s construction of hinged panel that he construed when the case was still in Texas. (Def.’s Obj. at 1.) Judge Payne interpreted “hinged panel” as “a panel formed primarily from the side of the panel that is hinged.” (Id.) Defendant argues that Judge Payne’s construction correctly took into account the intrinsic record. (Id.)

 

Defendant suggests that “[t]hroughout the proceedings, Plaintiffs have failed to identify even a single sentence in the patent specification showing a hinged opening formed somewhere other than the side panel.” (Def.’s Obj. at 1.)

 

Defendant posits that the Special Master erred in two ways. Defendant first argues that the Special Master did not consider the intrinsic evidence in the aggregate. (Def.’s Obj. at 2.) If he had, Defendant maintains, he would have construed the “hinged panel” term as Judge Payne did. (Id.) Defendant then argues that the Special Master misread a prosecution history passage. (Id.) If he had read the passage correctly, Defendant argues, he would have found that the misread language actually limited the claim, instead of broadening it. (Id.)

 

Defendant argues that Retractable Technologies, Inc. v. Becton, Dickinson and Co., 653 F.3d 1296 (Fed.Cir.2011) is directly on point. (Def.’s Obj. at 3.) Defendant maintains that Retractable stands for the proposition that a patent’s specification, prosecution history, and other intrinsic evidence can narrow a broad claim term.

 

In Retractable, the Federal Circuit addressed the claim construction of the term “body” in a retractable syringe patent. 653 F.3d at 1304. The patents in question contained an independent claim that contained a “body,” and a dependent claim that limited the “body” to a “one-piece body.” Id. at 1305. The court stated that “none of the claims expressly recite a body that contains multiple pieces.” Id. The court reasoned that, “while the claims can be read to imply that a ‘body’ is not limited to a one-piece structure, that implication is not a strong one.” Id.

 

The Retractable court ultimately held that the proper construction of “body” was that it referred solely to a one-piece body. 653 F.3d at 1305. The court held so by looking at the specifications, which “expressly state[d] that each syringe embodiment contain[ed] a one-piece body,” and by looking at the figure drawings, which each depicted a syringe with a one-piece body. Id. The court stated that the specifications did not disclose a body that consisted of multiple pieces or indicated that the body was anything other than a one-piece body. Id.

 

*7 In deciding, the court stated that “the claim construction process entails more than viewing the claim language in isolation.” Retracable, 653 F.3d at 1305. The court pointed out that “[c]laim language must always be read in view of the written description … and any presumption created by the doctrine of claim differentiation ‘will be overcome by a contrary construction dictated by the written description or prosecution history[.]” Id. Given that a “contrary construction” from the written description or prosecution history can overcome the claim language, the court held that “it is necessary to review the specifications to determine if the proper construction of the term ‘body’ is limited to a one-piece body.” Id. (citations omitted).

 

The Federal Circuit noted that “[t]here is a fine line between construing claims in light of the specification and improperly importing a limitation from the specification into the claims.” Retractable, 653 F.3d 1305 (citation omitted). “In reviewing the intrinsic record to construe the claims, we strive to capture the scope of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow the claim language to become divorced from what the specification conveys is the invention.” Id. (citation omitted).

 

Applying claim construction goals to its case, the Retractable court held that, while the claim “[left] open the possibility that the recited ‘body’ may encompass a syringe body composed of more than one piece, the specifications tell [ ] otherwise.” 653 F.3d at 1305. The court pointed out that the specifications “expressly” recited that “the invention” had “a body constructed as a single structure” which expressly distinguished it from prior art. Id. The court held that “a construction of ‘body’ that limits the term to a one-piece body [wa]s required to tether the claims to what the specifications indicate the inventor actually invented.” Id.

 

Defendant argues that the Court should look to Retractable for guidance in how to construe the claims. Defendant states that “the specification embodiments here include a specific feature that is more limited than what the claims would appear to encompass if viewed without reference to the specification.” (Def.’s Obj. at 4.) Defendant explains that all of the specification embodiments of the ‘795 and ‘583 patents include a “hinged panel” formed exclusively or primarily from the side panel. (Id. at 4–5.) Defendant stresses that “every time” “the specification describes access to the storage, it is through a hinged side panel[.]” (Id. at 5.) Defendant adds that “every method” “described for making the claimed invention involves adapting a side panel to create the hinged panel[.]” (Id. at 6.)

 

Defendant also stresses that Retractable is persuasive because that court found that that patentee distinguished its invention from prior art and, here, Defendant argues that Plaintiff also has distinguished his invention from prior art. (Def.’s Obj. at 9.) Defendant maintains that the patentee in this case, for the ‘583 patent, “twice distinguished” its patent from prior art because the ‘583 patent contemplated a “hinged opening in the side panel.” (Id.) Defendant represents that the Special Master mischaracterized the argument by stating that the patentee was providing a general description of the prior art, and did not distinguish the claimed invention. (Id. at 9–10.) Defendant claims that the patentee’s distinguishing comments appeared under the heading “No Claims are Obvious Over [the Prior Art]” and that the comments’s express purpose were to distinguish the claims as not obvious. (Id. at 10.) Defendant then claims that the patentee argued that its present claims, in which Defendant states included “hinged panel,” differed from the prior art because the prior art did not include a hinged opened in the “side panel” or “portion of the side panel. (Id.)

 

*8 Defendant lastly argues that Retractable is analogous because, both there and here, the patentee described the invention in a way that limits the invention. (Def.’s Obj. at 12.) Here, Defendant points out that the patentee described its invention to include a hinged side panel. (Id.) Defendant points to the abstract as well as the specification, both which include hinged side panels, to suggest that the patent must include a hinged side panel. (Id. at 12–13.)

 

Plaintiffs disagree with Defendant’s proposed claim construction. (Dkt. 38, Pls.’ Resp. to Def.’s Obj.) Plaintiffs argue that Defendant has failed to show how “hinged panel” should not be entitled to a broad scope and that Defendant has failed to show any “clear and unmistakable disclaimer” of that broad scope. (Id. at 1–2.) Plaintiffs maintain that the specifications do not include any “clear expressions of manifest exclusion or restriction” and do not reflect an intent to limit the claims to a preferred embodiment. (Id. at 2–3.) Plaintiffs also state that the summary of the inventions states “repeatedly,” “[i]n certain embodiments of the present disclosure[.]” (Id.) Plaintiffs also suggest that the drawings and the detailed descriptions all mention “embodiments” and do not limit the hinged panel to being on the side panel. (Id.) Plaintiffs urge the Court to adopt the Special Master’s finding that “no passage within either patent states that the invention is limited to a hinged panel located on the side panel.” (Id.)

 

Plaintiffs next argue that the specification supports various hinged panel configurations.FN2 (Pls.’ Resp. to Def.’s Obj. at 5.) For support, Plaintiffs point to the preferred embodiment of the invention, Figure 1. (Id. at 6.) Plaintiffs suggest that Figure 1 shows a hinged panel that includes the entire top rail, and not simply the side panel. (Id.) Plaintiffs point to claims 39 and 49 of the ‘795 patent and claim 37 of the ‘583 patent to show that claims include a variety of hinged panel configurations. (Id. at 8.)

 

FN2. The Court quickly disposes of some of Defendant’s arguments. Plaintiffs address Defendant’s history excerpts. (Pls.’ Resp. to Def.’s Obj. at 3.) Plaintiffs maintain that the Special Master correctly read the prosecution history excerpts as attempts to distinguish prior references rather than limiting Plaintiffs’ invention. (Id.) Plaintiffs offer that the Special Master reviewed the entire intrinsic record and concluded properly that Plaintiffs did not disclaim any claim scope regarding “hinged panel .” (Id. at 4.) The Court has reviewed the agrees with Plaintiffs and the Special Master. Plaintiffs also argue that the testimony of the prosecuting attorneys is irrelevant. The Court again agrees. See Bell & Howell Document Mgmt. Prods. Co. v. Altek Systems, 132 F.3d 701, 706 (Fed.Cir.1997) (citations omitted) (“The testimony of an inventor and his attorney concerning claim construction is thus entitled to little or no consideration. The testimony of an inventor often is a self-serving, after-the-fact attempt to state what should have been part of his or her patent application; the testimony of an attorney ‘amounts to no more than legal opinion-it is precisely the process of construction that the court must undertake.’ ”)

 

Plaintiffs also argue that Defendant, in making its arguments, has not been faithful to the specification. (Pls.’ Resp. to Def.’s Obj. at 8–9.) Plaintiffs suggest that Defendant has improperly argued from the abstract, background, and summary sections instead of the “Detailed Description” section and “conveniently omit the words ‘in certain embodiments’ or other language making clear the description relates to one preferred embodiment without the intention of disclaiming others.” (Id.)

 

The Court agrees with the Special Master and Plaintiffs, neither the claims nor the detailed description are so clear as to constitution disavowal of the full reading of “hinged panel.” Here, as Plaintiffs point out, the claims themselves contemplate differing configurations of the hinged panel that opens to the storage box. Claims 39 and 49 of the ‘795 patent contemplate various sized portions of the side panel, from “at least a portion of the side panel” to “a substantial portion[.]” Claim 37 of the ‘583 patent contemplates a hinged panel that includes portions of the top rail.

 

*9 The detailed description of both patents strengthen a broader reading than Defendant suggests as well. The detailed description recognizes the need for different embodiments of the inventions. The detailed description states that “[w]hile a specific embodiment of the storage/utility system of the present invention has been described and illustrated, such is not intended to limit the invention to this embodiment.” The detailed description also recognizes the need for various types of hinged panels given that “[b]eds for pickups, trailers, and trucks are designed with differently constructed side panels and frame/undercarriage arrangements.” And the detailed description expressly conceives of a hinged panel that “eliminates the need for raising the entire side panel” by making cuts in an extended panel’s lower portion.

 

As the Special Master discussed, the claims contain varying distinctions between the appropriate amount of side panel to be hinged. (Special Master Report at 5.) The Court agrees that “[i]gnoring these distinctions among the claims through the exercise of claim construction would effectively amount to rewriting the claims and importing limitations from the specifications into some of the claims[.]” (Id.)

 

This case is not similar to Retractable, as Defendant argues. In Retractable, the court noted that the specifications did not reveal anything other than a one-pieced-bodied syringe. The court further noted that neither the specifications, the figures, nor the prosecution history disclosed anything other than a one-pieced-bodied syringe. There, the entire intrinsic record was consistent. Here, the Court notes that the claims and specification are consistent, but that some inconsistencies appear to exist in the prosecution history. But, even if these minor inconsistencies existed, in the face of the claims and the specifications, they do not constitute a clear disavowal of the scope of how “hinged panel” should be interpreted. See Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309, 1318 (Fed.Cir.2006) (stating, a patentee “is not entitled to a claim construction divorced from the context of the written description and prosecution history.”).

 

Because the patent claims and detailed description use “hinged panel” consistently in a broad manner, the Court rejects Defendant’s objections and adopts the Special Master’s construction. While Defendant argues that the Court ‘must’ construe “hinged panel,” and that not giving an explanatory phrase is not construing the term, the Court disagrees. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed.Cir.2008) (“When the parties raise an actual dispute regarding the proper scope of [ ] claims, the court, not the jury, must resolve that dispute.”) (And holding that the district court erred when it concluded that “only if” was a common phrase that needed no construction even though the parties disputed the phrase.) “Words of a claim are generally given their ordinary and customary meaning, which is the meaning a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention.” O2 Micro, 521 F.3d at 1360. Here, the Court finds that “hinged panel” is a common phrase and that it is entitled to the full scope of its common meaning.

 

VI. The Court accepts and adopts the Special Master’s construction of the external appearance terms

*10 The Special Master recommended constructing the ‘583 patent’s “substantially the external appearance” and the ‘795 patent’s “the external appearance of a conventional pickup truck” as “the hinged portion is constructed such that the storage box is not obvious from the outward appearance of the pickup.” (Special Master Report at 14.)

 

Plaintiffs object to the Special Master’s recommendation related to the various “external appearance” terms. (Pls.’ Obj. at 1.) Plaintiffs argue that the Special Master’s construction “(a) deleted the expressly recited frame of reference, (b) is contrary to the express definition memorialized in the intrinsic record, and (c) will confuse the jury.” (Id.)

 

Plaintiffs suggest that the “external appearance” terms require no construction. (Pls.’ Obj. at 2.) They argue that the terms are “common, everyday, non-technical words” and that they require no construction. (Id.) Plaintiffs suggest that the Court “exercise restraint” and leave the claims alone or replace certain words without “overhauling the claims.” (Id.)

 

Plaintiffs first object to the Special Master’s deletion of frames of reference terms that appear both in the ‘795 and ‘583 patents.FN3 (Pls.’ Obj. at 3–4.) Plaintiffs state that the Special Master has deleted the frames of reference, and in doing so has “transform[ed] the way in which the claim is to be read, understood, and applied to the accused product.” (Id. at 4.) Plaintiffs maintain that the jury is to “evaluate infringement by comparing the accused pickup truck with built-in storage to a conventional pickup truck without built-in storage.” (Id. at 4–5.)

 

FN3. The ‘795 patent contains the phrase “the hinged portion is constructed such that the pickup truck has an external appearance of a conventional pickup truck free of a storage box.” The ‘583 patent contains the phrases akin to “the bed being constructed such that the pickup has substantially the external appearance of a pickup without the built-in storage.”

 

Plaintiffs also argue that the Special Master rewrites the claims by substituting “not obvious” for all the claims that include an “external appearance” phrase in it. (Pls.’ Obj. at 5.)

 

Plaintiffs suggest that, instead of rewriting the claims, the Court should instead replace the construed terms with language that it determines will offer the most clarity, such as “has outward aspect of, “looks like,” or “looks similar to.” (Pls.’ Obj. at 6.) Plaintiffs say that, if the Court does so, the Court will preserve the claims’s integrity. (Id.)

 

Plaintiffs, looking to the patents’s prosecution histories, argue that the Court should swap “the pickup truck has the external appearance of” with “the outward aspects of the inventive pickup truck are like the outward aspects of a conventional pickup truck.” (Pls.’ Obj. at 9.) Plaintiffs alternatively suggest that the Court could replace the “external” language with “looks like” or “looks similar to.” (Id.)

 

Plaintiffs next object to the Special Master’s alleged rejection of the intrinsic record. (Pls.’ Obj. at 10.) Plaintiffs argue that the Special Master rejected without discussion the representations that Plaintiffs made during the patent prosecution. (Id.) Plaintiffs object to the Special Master’s characterization that these representations conflict with the patent specification. (Id .)

 

*11 Plaintiffs last object to the Special Master’s report because, they argue, the proposed construction will confuse the jury. (Pls.’ Obj. at 12–13.)

 

Plaintiffs explain that, in patent law, “obviousness” and “non-obviousness” are terms of art under 35 U.S.C. § 103, and that, here, Defendant has to prove “obviousness” by clear and convincing evidence whereas Plaintiff have to prove infringement by a preponderance of the evidence.FN4 (Pls.’ Obj. at 12–13.)

 

FN4. 35 U.S.C. § 103 provides, “[a] patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention as a whole would have been obvious before the effective date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.”

 

Given the “obvious” language in the burdens of proof as well as the Special Master’s report, Plaintiffs suggest that the jury could possibly be confused.

 

Defendant opposes Plaintiffs’ objections to the Special Master’s recommended construction of the external appearance terms. (Dkt. 37, Def.’s Resp. to Pls.’ Obj.) Defendant first points to the abstract, which emphasizes that one of the invention’s purposes was to create a storage system that reduced the attraction for theft by providing storage that would not “substantially alter the truck’s external appearance.” (Id. at 4.) Defendant stresses that the abstract alone does not support its argument, but the specification also explains that Plaintiffs’ invention differed from prior storage boxes in that it provided for a storage/utility system that did not alter the bed’s external appearance and therefore reduced theft. (Id.) Defendant notes that the specification emphasizes repeatedly the invention’s “hidden storage” attributes. (Id. at 4–5.)

 

Defendant also points to the patents’ prosecution history. (Def.’s Resp. to Pls.’ Obj. at 6.) Defendant represents that prior storage systems were noticeable and did not address the theft issues. (Id.)

 

The Court again agrees with the Special Master and accepts and adopts his report and recommendation over Plaintiffs’ objections. The Court finds that the Special Master’s proposed construction, “[t]he hinged portion is constructed such that the storage box is not obvious from the outward appearance of the pickup,” captures the patent’s substance and purpose. The Court again needs only look at the claims and the specification to determine that the invention’s purpose and a great part of its essence is devoted to deterring theft by cloaking the storage box in the appearance of a truck without a storage box-a storage box that is “not obvious.” The Special Master’s proposed construction will assist the jury and provide clarity, the Court adopts it.

 

The detailed descriptions both contain the following:

 

It has thus been shown that the present invention provides a hidden storage/utility arrangement that can be initially built into a pickup truck bed, or a conventional bed can be converted to include the storage/utility arrangement without altering the external appearance of the bed and without a significant reduction in the carrying capacity of the bed. While the invention has been described with respect to a pickup bed, it can be readily incorporated into trailer or full-sized truck beds having side panels without detracting from the appearance of the side panels, except for the two vertical cuts therein.

 

*12 The claims also convey that the invention’s purpose is to hide the storage box from casual notice to deter theft. The “not obvious” language captures that purpose.

 

As to Plaintiffs’ argument that the Special Master has proposed a construction that removes frames of reference, the Court rejects that argument. The invention’s purpose is to render the storage box “not obvious,” so as to deter theft. An outcome of the purpose is that a truck with a storage box looks like it does not have a storage box. A jury does not have to have a frame-of-reference truck to tell whether a truck with a storage box looks as if it does not have a storage box. Given the detailed description, the Court overrules Plaintiffs’ objections and fully adopts the Special Master’s recommendation.

 

As to the arguments about the term “obvious,” the Court finds, if this case goes to trial, that it can properly instruct the jury about the different terms and burdens of proof so as not to confuse the jury. The Court therefore rejects Plaintiffs “obvious” arguments.

 

VII. The Court grants Plaintiffs’ motion for leave to amend their infringement contentions

Plaintiffs have filed a motion for leave to amend infringement contentions in order to substitute two claims. (Dkt. 33, Pls.’s Mot. to Am.) Defendant opposes the amendment. The Court heard oral argument on this motion during the May 28, 2014 hearing. After hearing the parties’ arguments, the Court informed them that it would grant the motion. The Court therefore grants Plaintiffs’ motion, in the interests of justice; but, given that Plaintiffs did not abide by their original representation that they would hold themselves bound by the agreed-upon proposed scheduling order, the Court requires Plaintiffs to pay the costs of the additional discovery that Plaintiffs’ amendment necessitates. The Court discusses the costs issue and limitations on the additional discovery below.

 

Plaintiffs want to assert claims 45 and 46 of the ‘795 patent, which they stated both relate to independent claim 39. (Pls.’ Mot. to Am. at 2.) Plaintiffs offer to remove two previously asserted claims so that the total claims asserted would remain at the agreed-upon twenty. (Id. at 2–3.) Plaintiff offers to remove claims 36 of the ‘795 patent and claim 35 of the ‘583 patent. (Id. at 3.)

 

Plaintiff argues that they have timely moved for leave to amend. (Pls.’ Mot. to Am. at 3.) They argue that claims 45 and 46 have been “in” the case since 2012 and only “out” of the case for eight business days. (Id.) Plaintiffs maintain that the amendment is important to their case because, they allege, Defendant is infringing the claims. (Id.) Plaintiffs state that they “have determined that [c]laims 45 and 46 could be important to the disposition of the case.” (Id.) Plaintiffs also state that 45 and 46 are similar to asserted claims 14 and 21 of the ‘795 patent, but with subtle and possibly important differences. (Id.)

 

*13 Plaintiffs then argue that Defendant will not suffer prejudice by the amendment/substitution of the claims. (Pls.’ Mot. to Am. at 3–4 .) Plaintiffs explain that they previously disclosed their infringement theories for claims 45 and 46 in 2012. (Id.) Plaintiffs state that they “notified [Defendant] on numerous occasions that they might seek leave to add [c]laims 45 and 46.” (Id.)

 

A. Facts relevant to motion to amend infringement claims

In early December, 2013, Defendant suggested limiting Plaintiffs’ asserted claims to fifteen by January 20, 2014. (Def.’s Resp. to Pls.’ Mot. to Am., Ex. B.) On December 13, 2013, Plaintiffs’ counsel responded to Defendant’s email and stated that Plaintiffs proposed to limit their claims to thirty within fourteen days of the Special Master’s claim construction ruling, so long as Defendant would agree to limit its prior art references to fifteen at that time. (Id., Ex. C.) Plaintiffs’ counsel also represented that Plaintiffs would consider limiting their number of claims during the pretrial process and they expected not to go to trial on more than twelve claims. (Id.)

 

On January 14, 2014, Plaintiffs’ counsel emailed Defendant’s counsel. (Def.’s Resp. to Pls.’ Mot. to Am., Ex. F.) Plaintiffs’ counsel wrote, “[a]ssuming we agree to limit the asserted claims by Jan. 24, when would [Defendant] limit its references? Can you give me a non-binding estimate of that date so I can plug it in to a draft scheduling order[?]” (Id.) Defendants’ counsel responded a day later, with an agreement and clarification. (Id., Ex. G.)

 

By January 17, 2014, Plaintiffs’ counsel had finished the stipulated proposed scheduling order and Defendant’s counsel had given the approval to file. (Def.’s Resp. to Pls.’ Mot. to Am., Ex. J.)

 

On January 20, 2014, the parties corresponded. (Pls.’ Mot. to Am ., Ex. B.) Plaintiffs’ counsel stated that Plaintiffs would file the proposed order and that they would narrow their claims to twenty by the date specified in the schedule. (Id.) Plaintiffs’ counsel included a caveat; he stated that Plaintiffs would “reserve the right to seek leave of Court to replace some of those 20 claims with [c]laim 45 (very similar to [c]laim 14) and [c]laim 46 (very similar to [c]laim 21).” (Id.) Plaintiffs’ counsel asked Defendant’s counsel to be mindful of those claims and their position that Defendant is infringing those claims. (Id.) Plaintiffs’ counsel further explained that, given Plaintiffs’ position in the email, Defendant would not be able to claim any prejudice or surprise if Plaintiffs request, and the Court permits, the amendment. (Id.)

 

On January 20, 2014, Plaintiffs filed the agreed upon motion for entry of scheduling order. (Dkt.32.)

 

On January 23, 2014, Plaintiffs’ counsel emailed Defendant’s counsel. (Def.’s Resp. to Pls.’ Mot. to Am., Ex. K.) In that email, Plaintiffs’ counsel stated,

 

[b]y now, you should have received our Supplemental Infringement Contentions, which are limited to 20 claims, as agreed. As you know, the Court has not yet adopted the schedule we jointly proposed. Nevertheless, I assume we are in agreement that the parties will abide by, and be bound by, that schedule unless and until the Court orders otherwise.

 

*14 (Id.) While the exhibit includes a response from Defendant’s counsel, the response does not address the “assumption.” (Id.)

 

Between January 17 and January 31, 2014, Defendant represents that it deposed all of Plaintiffs’ witnesses, including the inventor, all three plaintiffs, their wives, and the patent agent. (Def.’s Resp. to Pls.’ Mot. to Am. at 5.)

 

On February 3, 2014, Plaintiffs’ counsel emailed Defendant’s counsel and informed Defendant that it would assert infringement claims 45 and 46 and drop two other claims. (Pls.’ Mot. to Am., Ex. G.) Plaintiffs’ counsel explained Plaintiffs’ position, that they had repeatedly informed Defendant that they might seek leave to add these claims and that Defendant cannot claim any prejudice relating to the addition. (Id.)

 

That same day, Defendant’s counsel responded to the email, stating that Defendant would oppose any motion to amend. (Pls.’ Mot. to Am., Ex. G.)

 

On February 7, 2104, the Court entered the parties’ amended scheduling order. (Dkt.36.) The order provided that Plaintiffs were to identify their asserted claims (no more than twenty) by January 23, 2014. (Id.)

 

The Amended Scheduling Order provides, by January 23, 2014, that

 

Plaintiffs shall identify their asserted claims by identifying no more than 20 claims, which shall be limited to independent claims 14 and 33 of the ‘ 795 Patent, independent claims 22 and 45 of the ‘583 Patent, or to claims that depend from one of those four independent claims. Deadline for Plaintiffs to serve Supplemental or Amended Infringement Contentions.

 

(Dkt.36.) The Amended Scheduling Order has a footnote that states,

Plaintiffs have complied with this deadline by identifying 20 asserted claims and by serving Supplemental Infringement Contentions. Plaintiffs will be filing a Motion for Leave to Amend those contentions, seeking to substitute two claims (Claims 45 and 46 of the ‘795 Patent) in place of two other claims that are currently being asserted.

 

(Id.)

 

Plaintiffs request to assert claims 45 and 46, which they allege are similar to claim 14.

 

[14] A pickup truck having: a cab with two or more doors, each having an external surface; a bed with two contoured side panels connected to the cab; at least two rear wheels configured to support the bed, and two wheel wells connected to the bed above the rear wheels, the improvement comprising: at least one storage box adjacent a side panel, wherein the storage box does not substantially extend laterally beyond the exterior surfaces of the doors; and at least one hinged panel providing access to the storage box[, 21] wherein the hinged portion is constructed such that the pickup truck has an external appearance of a conventional pickup truck free of storage box.

 

[39] A pickup truck having: a cab; a bed with two side panels connected to the cab and mounted on a frame; at least two rear wheels configured to support the bed; and two wheel wells connected to the bed above the rear wheels, the improvement comprising: a storage compartment mounted within the bed and adjacent to one of the wheel wells; and at least a portion of one of the side panels is hinged to provide access to at least a portion of the storage compartment wherein the side panels terminate adjacent the frame. [44] a second storage compartment mounted within the bed and adjacent to a second wheel well, [45] wherein the first and second storage compartments are formed by contoured side panels connected to the cab wherein at least a portion of said side panels are hinged to provide access to at least a portion of said storage compartments, and [46] wherein the hinged portion is constructed such that the truck has an external appearance of a conventional pickup truck.

 

*15 Plaintiffs offer to remove two other claims so that the total infringement contentions remain at twenty.

 

B. The parties’ arguments

Defendant objects to the proposed claims substitutions. (Def.’s Resp. to Pls.’ Mot. to Am. at 1.) Defendant argues that Plaintiffs’ request violates the stipulated order in “important ways.” (Id.) Defendant argues that the motion to amend (1) adds a fifth, independent, asserted claim to the case (a claim that was not at issue when Defendant agreed to and selected its ten primary prior art reference), (2) alters the infringement contentions with the substitutions, and (3) moves the deadline for Plaintiffs’ final infringement contentions to a date after Defendant “took all of the key depositions in the case based on the Stipulated Independent Claims.” (Id.)

 

Defendant suggests that the Court should deny Plaintiffs’ request for any of three reasons. (Def.’s Resp. to Pls.’ Mot. to Am. at 2.) Defendant first suggests that the stipulation is binding and that case law provides that Defendant cannot overcome the stipulation’s binding nature. (Id.) Defendant then argues that Plaintiffs cannot prove that they have “good cause” to amend. (Id.) And Defendant finally argues that Plaintiffs cannot claim that the amendment would not prejudice Defendant, given the fact that Defendant has already identified its prior art references and conducted four consecutive days of depositions and relied upon Plaintiffs’ asserted claims during those depositions. (Id.)

 

Plaintiffs argue that Defendant has been on notice for “nearly two years about Plaintiffs’ infringement theories claims 45 and 46.” (Pls.’ Reply at 3.) They also argue that Defendant cannot identify any prejudice. (Pls.’ Reply at 4–5.) Plaintiffs suggest that Defendant’s discovery and deposition prejudice argument does not hold up. (Id. at 5.) Plaintiffs maintain that they permitted Defendant to ask Plaintiffs “any questions about any claims.” (Id.) Plaintiffs say that Defendant cannot point to a single instance in which Defendant can show that Plaintiffs precluded it from asking about claims 45 or 46. (Id.) Plaintiffs further say that “to the extent [Defendant] asked any questions about Claims 14 or 21, it necessarily would have asked questions directly related to Claims 45 and 46, because of the substantial overlap and similarities between those claims.” (Id.) They also argue that they expressly reserved the right to amend their contentions.

 

C. Given the fact that Plaintiffs expressly reserved the right to amend, but did not do so in a timely manner, the Court grants the motion to substitute infringement contentions, but requires Plaintiffs to bear the costs of the discovery needed

Given that Plaintiffs did reserve the right to substitute the two claims, the Court grants their motion to amend infringement contentions. But because Plaintiffs did not timely seek the substitution, the Court finds that Plaintiffs should bear the costs of the additional discovery the substitution will require.

 

*16 The Court therefore orders:

 

• Plaintiffs are to make the required deponents available for Defendant to redepose;

 

• the subject matter of the depositions is limited to the substituted claims, i.e., the new contentions/claims that the motion permits;

 

• Depositions are not to exceed three hours for each deponent;

 

• Depositions are to be conducted by July 15, 2014; and

 

• Plaintiffs are to bear the costs of the additional discovery. Defendant’s attorneys’ fees are not to exceed $1500.00 per deponent. Plaintiffs are to make the deponents available either at Defendant’s choice of location or Plaintiffs are to pay the travel costs for Defendant’s counsel to redepose the deponents; those travel costs are not to exceed the amounts that Defendant’s counsel charged previously to travel to the deponents. Plaintiffs must also pay for any other costs that the additional discovery requires, e.g. court reporting fees; conference room fees, etc.

 

At the hearing, given the Court’s granting of the motion to amend the infringement contentions, Defendant requested the ability to amend their invalidity reports. The Court granted that request. Defendant is to amend their invalidity report by August 15, 2014.

 

VIII. The Court grants Plaintiffs’ motion to compel because the information sought is relevant to a damages calculation

Plaintiffs have filed a motion to compel information that they argue is necessary to compute damages in this case. (Dkt. 40, Pls.’ Mot. to Compel.) Plaintiffs state that Defendant “has produced revenue and cost information for the RamBox option, but has refused to produce such information for the accused pickup trucks themselves .” (Id. at 2.) Plaintiffs argue that the revenue and cost information for the entire truck has a “direct bearing” on damages . FN5 (Id.) Plaintiffs request that the Court order the production of the information as well as order that, after a reasonable time to review the materials, the Court order Defendant to reproduce its 30(b)(6) witness for “the limited purpose of eliciting testimony relating [ ] to the [ ] materials.” (Id. at 3.)

 

FN5. Plaintiffs seek the following information:

 

Topic 16: Financial information associated with the sale of the Accused Products, including but not limited to total revenues (gross and net), costs and expenses, and profits, per Model Year, for the Accused Products (specifically the pickup trucks as a whole-NOT just revenues and profits for the RamBox storage or the RamBox Cargo Maintenance System). In addition, total revenues (gross and net) and profits, per Model year, for the RamBox and for the RamBox Cargo Maintenance System.

 

Topic 17: Chrysler’s financial information relating specifically to the profitability of the Accused Products, the profitability of the RamBox option, and the extent to which the RamBox option helps drive sales of the Accused Products.

 

Topic 21: Costs and revenues associated with sales of the Accused Products.

 

(Pls.’ Mot. to Compel, Ex. 6.)

 

Plaintiffs state that they have requested documents relating to gross and net revenues and profit margins for Dodge Ram trucks that are equipped with the RamBox for model year 2009 to the present. (Pl.’s Mot. to Compel at 3, Ex. 2.)

 

Defendant has refused to produce the revenue information that Plaintiffs sought, asserting that the information was not relevant. (Pls.’ Mot. to Compel, Ex. 3.)

 

Plaintiffs responded to Defendant’s email, asserting their position. (Pls.’ Mot. to Compel, Ex. 4.) Plaintiffs stated that the requested information was relevant because they have asserted claims that are directed to a “pickup truck” or a “vehicle” and not simply a storage compartment or a storage system. (Id.) Plaintiffs stated that, “[a]t a minimum, this information is necessary to fully analyze [ ] Factor # 6, which related to convoyed sales.” (Id.) Plaintiffs also stated that the information related to Dodge pickup trucks is relevant given that the comparing RamBox trucks to non-RamBox trucks might reveal relevant information relating to RamBox pricing. (Id.)

 

*17 Defendant continued to object and not produce the requested information through email and during Plaintiffs’ examination of Defendant’s damages witness. (Pls.’ Mot. to Compel, Exs. 5, 7, 8, 9 .)

 

The scope of discovery under the Federal Rules of Civil Procedure is traditionally quite broad. Lewis v. ACB Bus. Servs., 135 F.3d 389, 402 (6th Cir.1998). Parties may obtain discovery on any matter that is not privileged and is relevant to any party’s claim or defense if it is reasonably calculated to lead to the discovery of admissible evidence. Fed.R.Civ.P. 26(b)(1). “Relevant evidence” is “evidence having any tendency to make the existence of any fact that is of consequence to the determination of the action more probable or less probable than it would be without the evidence.” Fed.R.Evid. 401. But the scope of discovery is not unlimited. “District courts have discretion to limit the scope of discovery where the information sought is overly broad or would prove unduly burdensome to produce.” Surles ex rel. Johnson v. Greyhound Lines, Inc., 474 F.3d 288, 305 (6th Cir.2007).

 

In patent cases, “[u]pon finding for the claimant the court should award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.” 35 U.S.C. § 284. In assessing damages, a court is to ask: “Had the infringer not infringed, what would the patent holder have made?” Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed.Cir.2009) (citations omitted, altered). “Two alternative categories of infringement compensation are the patentee’s lost profits and the reasonable royalty he would have received through arms-length bargaining.” Id. (citation omitted).

 

Defendant argues that, in cases where an invention is part of a larger product, as the storage box here is part of a truck, then the damages should only be calculated by how much profit is made on the smaller invention. See LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 67 (Fed.Cir.2012) (“Where small elements of multi-component products are accused of infringement, calculating a royalty on the entire product carries a considerable risk that the patentee will be improperly compensated for non-infringing components of that product.” “Thus, it is generally required that royalties be based not on the entire product, but instead on the ‘smallest salable patent-practicing unit.’ ”). That rule is the general rule. An exception, though, does exist. “The entire market value rule is a narrow exception to this general rule. If it can be shown that the patented feature drives the demand for an entire multi-component product, a patentee may be awarded damages as a percentage of revenues or profits attributable to the entire product.” LaserDynamics, 694 F.3d at 67 (citation omitted). “In other words, ‘[t]he entire market value rule allows for the recovery of damages based on the value of an entire apparatus containing several features, when the feature patented constitutes the basis for customer demand.’ ” Id. (citations omitted, insertion in LaserDynamics.).

 

*18 Defendant is right, if Plaintiffs were to succeed in this case, Plaintiffs should not be able to recover more than the reasonable royalty rate without a sufficient showing that the storage box drove sales of the trucks themselves. See LaserDynamics, 694 F.3d at 67–68 (“[I]n any case involving multi-component products, patentees may not calculate damages based on sales of the entire product, as opposed to the smallest salable patent-practicing unit, without showing that the demand for the entire product is attributable to the patented feature.”). The Court recognizes the risks of requiring Defendant to disclose profits of the trucks. Id. at 68 (“Regardless of the chosen royalty rate, one way in which the error of an improperly admitted entire market value rate manifests itself is in the disclosure of the revenues earned by the accused infringer associated with a complete product rather than the patented component only.”). But the Court is confident, upon a more appropriately timed motion in limine, that it can sort out the proper damages method.FN6

 

FN6. At the hearing, Defendant requested that the Court make clear, given that the Court was inclined to grant the discovery motion, that Defendant could still object to the admissibility of the evidence produced because of this motion. The Court therefore does so: Defendant retains every right to object to the admissibility of evidence in an appropriate motion in limine.

 

The Court finds that Plaintiffs’ requested information is relevant, it could lead to admissible evidence. The Court therefore orders Defendant to produce the requested information by July 15, 2014. Defendant must also make available a knowledgeable 30(b)(6) witness for Plaintiffs to depose, the deposition is to take by August 15, 2014.

 

IX. Conclusion

For the above-stated reasons, the Court OVERRULES Plaintiffs and Defendants’ objections to the Special Master’s report and recommendation, ACCEPTS and ADOPTS the report and recommendation in full, GRANTS Plaintiffs’ motion to amend, and GRANTS Plaintiffs’ motion to compel.

 

So ordered.

 

SCOTT CLARE, NEIL LONG and, INNOVATIVE TRUCK STORAGE, INC., Plaintiffs,

 

v.

 

CHRYSLER GROUP LLC, Defendant.

 

Special Master’s Report and Recommendations Regarding Claim Construction

JOHN R. THOMAS, Special Master.

I. Introduction

1. The Court appointed the undersigned to make recommendations regarding resolution of patent claim construction issues. The Special Master heard oral argument at the Georgetown University Law Center in Washington, D.C., on September 12, 2013.

 

2. The patents involved in this case, U.S. Patent Nos. 6,499,795 and 7,104,583, generally pertain to pickup trucks with internal storage systems. The two patents are closely related, as each descends from a common patent application filed at the USPTO on July 26, 1995 (Application No. 08/506,893). As such, the ‘795 and ‘583 patents share nearly identical specifications, although their claims differ.

 

3. The parties have agreed to the construction of many terms within the claims of the ‘795 and ‘583 patents. However, the parties contest the correct construction of the following terms: “hinged panel,” “substantially the external appearance of a pickup without the built-in storage,” and “external appearance of a conventional pickup truck free of storage box.” After summarizing pertinent aspects of the law of claim construction, this Report and Recommendations addresses these three claim limitations in turn.

 

II. Governing Legal Standards

*19 4. The patent owner’s right to exclude is established by the claims of the patent instrument. In Markman v. Westlaw Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), the Supreme Court held that the construction of patent claims is a matter of law to be conducted by the court. The Court of Appeals for the Federal Circuit has built upon the foundation of Markman in subsequent case law. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005) (en banc). A brief review of the tenets of claim construction that are salient to this case appears appropriate.

 

5. The purpose of claim construction is to simplify the tasks of the trier of fact by addressing technical terminology that may appear in a claim and substituting wording that may be more readily understandable. See Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1360 (Fed.Cir.2008). However, not all terms within a patent’s claims may require construction. The Federal Circuit has stressed that district courts are not required to construe claim terms with well-understood meanings, lest they be “inundated with requests to parse the meaning of every word in the asserted claims.” O2 Micro Int’l, Ltd. v. Beyond Innovation Technology Co. ., 521 F.3d 1351, 1360 (Fed.Cir.2008). If the proper interpretation of a term may be readily apparent to a lay person, then the court should simply apply its widely accepted meaning. Phillips, 415 F.3d at 1314; see also Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed.Cir.2010).

 

6. The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in context of the specification and prosecution history. Phillips, 415 F.3d at 1313. The Federal Circuit has identified two exceptions to this general rule. First, a patentee may choose to define claim terms within the specification. If the patentee choses to “act as his own lexicographer” by setting forth a definition of a disputed claim term other than its plain and ordinary meaning, then that definition controls. Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 1365–66 (Fed.Cir.2012).

 

7. Second, the patentee may disavow the full scope of a claim term. “Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys. ., Inc., 242 F.3d 1337, 1341 (Fed.Cir.2001). In addition to the discussion of the invention within the specification, the patentee may disavow claim scope during its prosecution of the patent. See Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed.Cir.2004) (“Absent a clear disavowal or contrary definition in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.”).

 

*20 8. The doctrine of claim differentiation creates “a presumption that each claim in a patent has a different scope.” Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed.Cir.1998). However, “claim differentiation is a rule of thumb that does not trump the clear import of the specification.” Edwards Lifesciences, LLC v. Cook Inc., 582 F.3d 1322, 1332 (Fed.Cir.2009).

 

9. “While claim terms are understood in light of the specification, a claim construction must not import limitations from the specification into the claims.” Douglas Dynamics LLC v. Buyers Products Co., 717 F.3d 1336, 1342 (Fed.Cir.2013). The Federal Circuit has explained that “an accused infringer cannot overcome the ‘heavy presumption’ that a claim term takes on its ordinary meaning simply by pointing to the preferred embodiment or other structures or steps disclosed in the specification or prosecution history.” Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1327 (Fed.Cir.2002) (citation omitted). Further, a claim construction that excludes a preferred embodiment of the invention is unlikely to be correct. See SynQor, Inc. v. Artesyn Technologies, Inc., 709 F.3d 1365, 1378–79 (Fed.Cir.2013).

 

10. With these basic principles in mind, this Report and Recommendations turns to the specific issues disputed by the parties. They involve construction of the following terms:J “hinge panel,” “substantially the external appearance of a pickup with the built-in storage,” and “external appearance of a conventional pickup truck free of storage box.” After summarizing pertinent aspects of the law of claim construction, this Report and Recommendations addresses these three claim limitations in turn.

 

III. “Hinged Panel”

11. Claims 8 and 14 of the ‘795 patent, as well as claims 1, 3, 4, 22, 23, 45, 46, 48, 59, 61, and 62 of the ‘583 patent refer to a “hinged panel” or “hinged panels.” Plaintiffs assert that no construction of the term is required, or alternatively that the “hinged panel” should b e defined as “a panel that is hinged and provides access to the storage box.” The defendant instead proposes that “hinged panel” be defined as “a panel formed almost exclusively from the side panel that is hinged,” or words to that effect.

 

12. In support of their constructions, each litigant may point to a judicial holding, for the U.S. District Court for the Eastern District of Texas has twice considered the meaning of the term “hinged panel” in the ‘795 and ‘583 patents. In Clare v. Ford Motor Co., Judge Ward defined “hinged panel” to mean “a panel which is hinged and provides access to the storage box.” 2003 WL 25782751, at *3 (E.D.Tex.2003). However, earlier in these proceedings, Magistrate Judge Payne issued a provisional order instead defining the term as a “panel formed primarily from the side panel is that hinged,” with the additional’ observation that “this construction does not exclude incorporating part of what the parties refer to as the ‘top rail.’ ” Clare v. Chrysler Group LLC, Case No. 2:11–CV–503–JRG–RSP (E.D.Tex. Feb. 7, 2013) (Joint Claim Construction Appendix, Non–Confidential, at A649). That provisional order was vacated upon transfer of this lawsuit to this Court. Clare v. Chrysler Group LLC, Case No. 2:11–CV–503–JRG–RSP (E.D.Tex. Feb. 7, 2013) (E.D.Tex. Feb. 25, 2013) (Joint Claim Construction Appendix, Non–Confidential, at A657).

 

*21 13. Claim construction analysis begins with the language of the claim itself, as it would have been understood by a person of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at 1312–13. Plainly the term “hinged panel” does not by itself expressly require that the panel be formed primarily from the side panel. Further, neither patent explicitly defines the term “hinged panel” at all, not to mention in a way that would require the side panel to be formed from the side panel. See Aventis Pharms. Inc. v. Amino Chemicals Ltd., 715 F.3d 1363, 1373 (Fed.Cir.2013) (“The written description and other parts of the specification, for example, may shed contextual light on the plain and ordinary meaning; however, they cannot be used to narrow a claim term to deviate from the plain and ordinary meaning unless the inventor acted as his own lexicographer or intentionally disclaimed or disavowed claim scope.”).

 

14. Given the wording of the ‘795 and ‘583 patents, the term “hinged panel,” by itself, does not seem to suggest that this component must be formed primarily from the side panel. The defendant asserts that the term should be so limited, however, for two principal reasons. First, the defendant asserts that the disclosure of the two patents is limited to hinged panels formed primarily from the side panel. In the defendant’s view, then, the scope of the term “hinged panel” within the claims should also be limited.

 

15. More specifically, the defendant observes that the abstract of the ‘ 583 patent speaks to a “hinged panel in the side panel.” The abstract of the ‘795 patent similarly states that the “storage system … uses hinges to open and close the fender (side panel) of the bed.” The “Background of the Invention” of both patents states that the invention provides “the fender/side panel of the bed with a hinge and latch arrangement whereby the fender/side panel can be raised to expose the storage area ….” ‘795 Patent, col. 1, lines 47–49. The “Summary of the Invention” portion o both patents explains that “certain embodiments of the disclosure” feature “a hinged side panel.”.” ‘ 795 Patent, col. 2, lines 53–55. Finally, the “Detailed Description of the Invention” explains that the invention calls for “hinging the side panel along the upper length ….”.” ‘795 Patent, col. 4, lines 34–35.

 

16. Although the defendant is correct that the disclosure of the patents-in-suit focuses upon a hinged panel situated on the side panel, the Federal Circuit has frequently “cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Texas Instruments v. U.S. Int’l Trade Comm’n, 805 F.2d 1558, 1563 (Fed.Cir.1986). The Court of Appeals has further stated that a patentee “is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope.”   Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 1367 (Fed.Cir.2012). Further, it “is likewise3 not enough that the only embodiments, or all of the embodiments, contain a particular limitation.” Id. at 1366.

 

*22 17. Under the standard articulated by the Federal Circuit, the mere fact that the disclosure of the ‘583 and ‘795 patents centers on a particular mechanical arrangement does not compel the conclusion that the patentee engaged in a “clear and unmistakable disclaimer” of other configurations. Indeed, where relevant to the hinged panels, the disclosure of the two patents repeatedly speaks to “certain embodiments” and stresses that the “drawings … illustrate an embodiment of the invention.” In particular, no passage within either patent states that the invention is limited to a hinged panel located on the side panel. See Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1334 (Fed.Cir.2009) (recognizing a “heavy presumption that claim terms carry their full ordinary and customary meaning ….”).

 

18. The wording of the claims of these two patents provides even more compelling evidence of the meaning of the term “hinged panel.” Whether asserted against the accused infringer or not, the language of other claims also provides guideposts to the meaning of claim language. See Phillips, 415 F.3d at 1314 (“Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term.”). Many of the claims of the ‘795 patent explicitly require that the hinged panel be formed at least in part from the side panel. But other claims do not. For example, claim 1 states that “at least a portion of one of the side panels is hinged”; claim 22 provides that “at least a portion of the adjacent side panel is hinged to provide access to the storage box”; claim 29 recites “at least one of the side panels is hinged to provide access to at least a portion of the storage box”; claim 39 indicates that “at least a portion of one of the side panels is hinged”; and claim 49 requires that “a substantial portion of the two side panels is hinged.” But claim 8 only speaks to a “hinged panel providing access to the storage box” and claim 14 recites “one hinged panel providing access to the storage box,” ‘without reciting the side panel limitation. Ignoring these distinctions among the claims through the exercise of claim construction would effectively amount to rewriting claims and importing limitations from the specification into some of the claims, efforts that Federal Circuit precedent explicitly prohibits. See Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed.Cir.2009) (“The patentee is entitled to the full scope of his claims, and we will not limit him to his preferred embodiment or import a limitation from the specification into the claims.”).

 

19. As a second reason for requiring the “hinged panel” to be formed from the side panel, the defendant points to the prosecution history of the ‘583 patent. Whether statements in the prosecution history amount to a “clear and unmistakable disavowal” of claimed subject matter requires a detailed review of the context of the patentee’s statements. See Aria Diagnostics, Inc. v. Sequenom, Inc. ., 726 F.3d 1296, 1302 (Fed.Cir.2013). In undertaking this review, the Special Master is reminded of the Federal Circuit’s admonition that “because the prosecution history represents an ongoing negotiation between the PTO and the inventor, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” 3M Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed.Cir.2013) (citations and internal quotation omitted).

 

*23 20. The defendant initially points to the Supplemental Amendment and Response to Official Action Dated June 10, 2003, an d to the Suspension of Prosecution (Dec. 9, 2004) (“2004 Amendment”). The relevant portion of the 2004 Amendment responded to the USPTO examiner’s rejection based upon 35 U.S.C. § 103 for obviousness. The examiner’s rejection read in pertinent part:

 

Hastings has the side panel 30 hinged to access the bed, but lacks only from the claimed terminology the storage compartment mounted within the bed above the wheel well and extending into the bed no further than the wheel well extends into the bed, a detail known in this art as evidenced by the patent to Sisler at 21. As a result, It (sic) would have been obvious to one of ordinary skill to provide in Hastings a storage compartment accessible via a side panel of Hastings as taught by Sisler in order to store items within the bed, protecting same from environmental degredation.

 

Office Action of June 10, 2003, at 4 (‘583 Patent File History at A1356).

 

21. The applicant responded in part:

 

Like Hastings, Sisler does not address or even contemplate the problem of how to expand the storage capacity of a truck while building the storage into the contoured side panels of the truck. Nor does Sisler contemplate, much less teach a hinged opening in the side panel to provide access to the built in storage compartment.

 

In sum, the combination of Hastings with Sisler comes no where (sic) close to satisfying the test of [In re O’Farrell, 853 F.3d 894 (Fed.Cir.1998) ]: the references do not suggest—either expressly or in the problem they are addressing—that they be combined, nor do they teach anything about, much less provide enabling methodology for, building a storage compartment into the side panels of a truck such that the storage is accessible via a hinged portion of the side panel; and in light of these deficiencies, it necessarily follows that the combination of Hastings with Sisler simply cannot provide any indication that the invention of (sic) present claims would be successful.

 

2004 Amendment at 21 (emphasis in original) (‘583 Patent File History at A1410–11).

 

22. The defendant takes the position that this passage constitutes a “clear and unmistakable disavowal” by the patentee of the term “hinged panel,” indicating that it must be formed primarily from the side panel. Within the context of the examiner’s rejection, however, the patentee appears to be discussing the combination of the Hastings and Sisler references rather than placing limitations upon the scope of his invention. Stated differently, the patentee directed this discussion towards the teachings of the prior art references, individually and in combination, and nowhere restricted the scope of his own claims in a manner that restricted them. See, e.g., Grober v. Mako Prods., Inc., 686 F.3d 1335, 1342–43 (patentee’s “statements in reference to the prior art did not narrow the meaning of the patent.”).

 

*24 23. The defendant also points to a second document within the prosecution history as support for its position that the term “hinged panel” should be required to be formed primarily from the side panel. There the USPTO examiner had rejected certain claims within the ‘583 patent for lack of definiteness under 35 U.S.C. § 112(b), starting in part that “the term ‘the pickup has substantially the external appearance of a pickup without the built-in storage’ lacks frame of reference.” Office Action of January 28, 2005, at 3 (‘583 Patent File History at A1546). The patentee responded:

 

As described, for example, in paragraph [0012], the existing or conventional side panel or a portion thereof is hinged in order to provide access to the storage compartments. The hinged opening thus serves as a conventional side panel as well as a door that can be opened to reveal the storage compartment underneath. The claim language merely states that the overall appearance, and thus the side panel, maintain (sic) the look of a conventional pickup without the storage compartment. Appellant asserts, therefore that one of skill in the art would understand the language of the claims and the Examiner has offered no explanation of why that would not be so.

 

Clare Appeal Brief at 8 (Dec. 22, 2005) (‘583 Patent File History at A1566).

 

24. Once more, no “clear and unmistakable” disavowal of the scope’ of the claims of the ‘583 patent appears here. The passage instead explains that the specific structure discussed is exemplary, rather than exclusive, and ultimately directs the USPTO examiner towards the language of the claims. “For prosecution history to limit claim meeting, it must be clear and unmistakable that the patentee intended that limitation.” Aria Diagnostics, 726 F.3d at 1302. No such intention is evident here.

 

25. As noted, the plaintiffs propose either that no construction of the term “hinged panel” is required, or alternatively that the “hinged panel” should be defined as “a panel that is hinged and provides access to the storage box.” The Special Master is of the view that no construction of the term “hinged panel” is required. Hinges and panels are common pieces of hardware that are encountered on an everyday basis. Lay persons require no special definition to understand the meaning of these terms. Further, each of the pertinent claims already recites that the hinged panel provides access to the vehicle’s internal storage space. This mechanical arrangement need not be restated during claim construction. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.Cir.1997) (“Claim construction is a matter of resolution of disputed meanings and technical scope …. It is not an obligatory exercise in redundancy.”).

 

26. As a result, the preceding pages of legal analysis come to this: The Special Master recommends that no construction of the term “hinged panel” be provided to the trier of fact.

 

IV. “Substantially the External Appearance” Terms of the ‘583 Patent

*25 27. Many of the claims of the two asserted patents speak to the external appearance of the invention. In the ‘583 patent, independent claims 1, 22, 50, and 61 each state that “the bed being constructed such that the pickup has substantially the external appearance of a pickup without the built-in storage,” with independent claim 45 incorporating a nearly identical limitation.

 

28. Plaintiffs assert that the “substantially the external appearance” limitations require no construction, or alternatively that “the section or part of the side panel that is hinged blends into the pickup’s exterior.” In contrast, ‘the defendant argues that these limitations should be construed to mean that “the hinged portion is constructed such that the storage box is not apparent from the outward appearance of the pickup.” Judge Ward did not construe the “substantially the external appearance” limitations in Clare v. Ford Motor Co., 2003 WL 25782751 (E.D.Tex.2003). However, earlier in these proceedings, Magistrate Judge Payne issued a provisional order defining all of the “external appearance” limitations as “the hinged portion is constructed such that the storage box is not obvious from the outward appearance of the pickup.” Clare v. Chrysler Group LLC, Case No. 2:11–CV–503–JRG–RSP (E.D.Tex. Feb. 7, 2013) (Joint Claim Construction Appendix, Non–Confidential, at A649). That provisional order was vacated upon transfer of this lawsuit to this Court. Clare v. Chrysler Group LLC, Case No. 2:11–CV–503–JRG–RSP (E.D.Tex. Feb. 7, 2013) (E.D.Tex. Feb. 25, 2013) (Joint Claim Construction Appendix, Non–Confidential, at A657).

 

29. Upon his detailed review of the ‘583 patent and accompanying prosecution history, the Special Master agrees that the provisional construction of Magistrate Judge Payne should be reinstated. The following passages from the specification of the ‘583 patent are most salient with respect to the external appearance of the claimed vehicle:

 

This need has been filled by the present invention which involves the conversion of a conventional pickup truck bed into a storage/utility bed without altering the external appearance of the bed ….

 

The present invention involves a storage/utility system for a pickup truck bed and a method for conversion of a conventional pickup truck bed to a storage/utility bed without altering the external appearance of the bed, and without a significant reduction in the carrying capacity of the bed. The present invention reduces the theft potential from storage/utility beds by eliminating the appearance of such beds.

 

By the present invention, a conventional pickup truck bed is converted to a storage/utility bed …. Upon completion of the conversion, from a side view, the only difference between the converted bed and a nonconverted bed are two vertical lines or small spaces, one just back of the front of the bed and just one forward of the taillight section of the bed, where the side panel is cut …. Thus, one would not readily recognize the modification to the bed, and therefore those with intent to steal tools, etc. would not recognize the hidden storage arrangement.

 

*26 It has thus been shown that the present invention provides a hidden storage/utility arrangement … without altering the external appearance of the bed. While the invention has been described with respect to a pickup truck, it can be readily incorporated into trailer or full-sized truck beds having side panels without detracting from the appearance of the side panels, except for the two vertical cuts therein.

 

‘583 Patent., Col. 1, Lines 39–42; Col. 4, Lines 1–10 and 29–57; Col. 5, Lines 25–35.

 

30. In contrast to the ‘583 patent’s discussion of “hinged panels,” which is qualified as relating to certain embodiments, the disclosure of the external appearance of the claimed vehicle consistently refers to the “present invention.” The Federal Circuit has recognized that when a patent “describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.” Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed.Cir.2007). See also American Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1334 (Fed.Cir.2011) (“a statement in a specification that describes the invention as a whole can support a limiting constructon of a claim term.”); Honeywell Int’l,, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed.Cir.2006) (“On at least four occasions, the written description refers to the fuel filter as ‘this invention’ or ‘the present invention’ …. The public is entitled to take the patentee at his word and the word was that the invention is a fuel filter.”).

 

31. In view of the ‘583 patent’s consistent reference to “the present invention” as providing concealed storage intended to frustrate would-be thieves, the Special Master agrees with Magistrate Judge Payne’s provisional ruling as to the external appearance of the claimed vehicle. As a result, I recommend that the term “substantially the external appearance of a pickup with the built-in storage” should be construed as “the hinged portion is constructed such that the storage box is not obvious from the outward appearance of the pickup.”

 

32. The plaintiffs have voiced two primary objections to Magistrate Judge Payne’s provisional ruling. First, they assert that this construction inappropriately alters the analysis expressed in the claims—namely, comparing one truck to another to determine whether they appear substantially alike—to an analysis that determines whether the presence of the storage box is obvious from a visual inspection of a single truck. The Special Master instead believes that this proposed construction will assist the trier of fact by appropriately focusing attention upon the subject matter that the patentee identified as his invention. Further, the recommended construction will appropriately simplify future analysis by sparing the trier of fact from having to visualize three trucks as it conducts an infringement inquiry (namely the claimed truck, a pickup without built-in storage, and the accused infringement), not to mention three or more trucks as it conducts an analysis of prior art-based validity defenses (namely the claimed truck, a pickup without built-in storage, and one or more prior art trucks).

 

*27 33. Second, the plaintiffs assert that this construction is overly restrictive. In particular, the plaintiffs point to the prosecution history of the ‘583 patent. The USPTO examiner rejected each of the claims in the application that ultimately matured into the ‘583 patent for indefiniteness under 35 U.S.C. § 112(b). As noted previously, the examiner stated in part that the “term ‘the pickup has substantially the external appearance of a pickup without the built-in storage’ lacks frame of reference.” Office Action of January 28, 2005, at 3 (‘583 Patent File History at A1546). The patentee responded in part by stating that “the external shape of the inventive pickup truck is like a conventional pickup truck with side panels and not like utility bed vehicles with bulky rectangular storage boxes outboard of the frame substituted for side panels or pickup trucks that have the appearance of a bed with utility boxes or tool boxes bolted into or on the bed or side panels.” Clare Appeal Brief at 8 (Dec. 22, 2005) (‘583 Patent File History at A1566). According to the plaintiffs, this sentence indicates that the “external appearance” terms should be construed as “the section or part of the side panel that is hinged blends into the pickup’s exterior.”

 

34. The Federal Circuit has instructed, however that “[r]epresentations during prosecution cannot enlarge the content of the specification.” Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed.Cir.2003). As a result, any conflicts between the prosecution history and the specification must be resolved in favor of the latter. Id. The plaintiffs’ proposed construction, founded upon this statement within the prosecution history, conflicts with the repeated statements in the ‘583 patent concerning the concealed nature of the claimed vehicle’s storage. And more pointedly, this construction does not comport with the wording of claim 1 of the ‘583 patent. That claim recites, with emphasis added:

 

A pickup truck comprising a forward area with contoured sides and a bed; the bed comprising:

 

an open cargo area;

 

rear wheel wells,

 

two opposed side panels which are contoured and generally in line with the contoured sides of the forward area of the pickup truck,

 

a floor;

 

a first and a second inner wall, which are visually integrated into the bed to define the lateral sides of the open cargo area of the bed, at least the first inner wall being spaced laterally inwardly of its associated side panel; a storage compartment built into the bed between the first inner wall and its associated side panel, the storage compartment being located at least partially above the floor; and

 

a hinged panel providing access to the storage compartment,

 

the bed being constructed such that the pickup has substantially the external appearance of a pickup without the built-in storage.

 

35. As can be seen, claim 1 of the ‘583 patent calls for “two opposed side panels which are contoured and generally in line with the contoured sides of the forward area of the pickup truck.” But claim 1 also states that the pickup must also have “substantially the external appearance of a pickup without the built-in storage.” Because both limitations occur within the same claim, the “substantially the external appearance” limitation must mean more than that the side panels are merely contoured in line with or, stated somewhat differently, “blended into”—the vehicle’s exterior. See Phillips, 415 F.3d at 1314 (“the context in which a term is used in the asserted claim can be highly instructive. To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”).

 

*28 36. I therefore recommend that the term “substantially the external appearance of a pickup with the built-in storage” should be construed as “the hinged portion is constructed such that the storage box is not obvious from the outward appearance of the pickup .”

 

V. “The External Appearance of a Conventional Pickup Truck” Terms of the ‘ 795 Patent

37. In the ‘795 patent, dependent claims 7, 13, 21, and 28 each require that “the hinged portion is constructed such that the pickup truck has an external appearance of a conventional pickup truck free of storage box.” Dependent claim 46 includes a similarly worded limitation. Read in isolation, these limitations seem to require that the claimed invention must appear identically to a conventional pickup truck. Stated differently, the claimed vehicle’s storage capabilities must be completely concealed if the claimed vehicle is to have “an external appearance” of a pickup truck lacking those storage capabilities. See Sunovion Pharms., Inc. v. Teva Pharms. USA, 731 F.3d 1271, 1276 (Fed.Cir.2013) (“Claim terms are generally given their ordinary and customary meaning.”) (citation and internal quotation omitted).

 

38. This interpretation is seemingly buttressed by the fact that, as discussed above, the claims of the closely related ‘583 patent speak to a vehicle with “substantially the external appearance of a pickup without the built-in storage.” Numerous Federal Circuit cases indicate that the term “substantially” means “largely but not wholly that which is specified.” See, e.g., Aventis Pharms. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1377 (Fed.Cir.2013). Without words of similar qualification within the pertinent claims of the ‘795 patent, an identical appearance appears to be required.

 

39. Such an interpretation of the ‘795 patent is problematic, however, because it violates the canon of claim construction stating that a construction that excludes the preferred embodiment is unlikely to be correct. See Outside the Box Innovation LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1310 (Fed.Cir.2012) (“A claim construction that excludes a preferred embodiment is rarely the correct interpretation; such an interpretation requires highly persuasive evidentiary support.”) (internal quotation and citation omitted). As discussed previously in this Report and Recommendations, the specification of the ‘795 patent reveals that although some of the patent claims require “an external appearance” of a conventional pickup truck, the only embodiment disclosed in the two patents includes two cut lines on the side panel. ‘795 Patent, col. 5, lines 33–37.

 

40. Recognizing the seeming disconnect between the most natural reading of the relevant claims of the ‘795 patent and its disclosure, the USPTO examiner rejected them for lack of definiteness under 35 U.S.C. § 112(b). According to the examiner:

 

Claim 7 is not logically stated. A pickup truck with storage box is visibly distinct from one without from a rear or overhead view, for example. This depends on the location of the viewer, however, the claim is open ended in this regard. Further, the cut lines 20 and 21 render the appearance distinct.

 

*29 Office Action of January 31, 2002, at 2–3 (‘795 Patent File History at A1176–77).

 

41. The patentee responded by asserting that the USPTO examiner had adopted an overly cabined interpretation of the term “appearance.” He then explained:

 

Under the ordinary, accepted, and broader interpretation of “appearance,” the phrase at issue simply means that the claimed pickup truck—while not visibly indistinct from a conventional pickup truck that does not have a storage box—has outward aspects of a conventional pickup truck that does not have a storage box. Clare Appeal Brief at 11 (May 31, 2002) (‘795 Patent File History at A1210). The patentee then cited portions of the ‘795 patent’s disclosure discussing how the invention may be incorporated into vehicles “without detracting from the appearance of the side panels, except for the two vertical cuts.” Id. at 12 (‘795 Patent File History at A1211).

 

42. The USPTO examiner then explained within his “Reasons for Allowance”:

 

Applicant’s remarks concerning “external appearance of a conventional pickup truck” are’ noted and deemed to define over the 35 U.S.C. 112 rejection.

 

Notice of Allowability of June 21, 2002, at 2 (‘795 Patent File History at A1247).

 

43. In view of the meaning of “an external appearance” propounded in the specification and confirmed in the prosecution history, a pickup truck constructed in keeping with the claimed inventions of the ‘795 patent need not be wholly indistinguishable from a standard vehicle. Some visual distinction—in particular the existence of two vertical cuts—is contemplated within the scope of the patented invention. And, like the ‘583 patent with which the ‘795 patent shares the great majority of its specification, the extent of the difference is governed by the patent’s consistent reference to “the present invention” as providing hidden storage intended to thwart would-be thieves.

 

44. The Special Master therefore once more agrees with Magistrate Judge Payne’s provisional ruling as to the external appearance of the claimed vehicle of the ‘795 patent. As a result, I recommend that the term “the hinged portion is constructed such that the pickup truck has an external appearance of a conventional pickup truck free of storage box” should be construed as “the hinged portion is constructed such that the storage box is not obvious from the outward appearance of the pickup .”

 

45. The Special Master recognizes that under his recommended construction, the phrase “an external appearance” in the ‘795 patent and “substantially an external appearance” in the ‘583 patent have the same meaning. At first blush, this outcome may appear to be in tension with the notion that distinctly worded texts should bear different meanings, a fundamental precept of the interpretation of written instruments. See Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed.Cir.1999) (discussing the doctrine of claim differentiation). This construction follows, however, from (1) the patent law canon that calls for the preferred embodiment to be incorporated within the claim construction in most cases; (2) appropriate use of the prosecution history of the ‘795 patent to determine the meaning of the phrase “an external appearance of a conventional pickup truck free of storage box”; and (3) identical, unequivocal statements within the disclosure of both patents identifying the appearance of the patented invention.

 

VI. Summary of Recommendations

*30 46. For the convenience of the court and the litigants, the following chart summarizes the recommended claim constructions.

 

 

Relevant Patents

Term Construed

Recommended Construction

‘795 and ‘583

“hinged panel”

No construction.

‘583

“the bed being constructed such that the pickup has substantially the external appearance of a pickup without the built-in storage” and similar limitations

The hinged portion is constructed such that the storage box is not obvious from the outward appearance of the pickup.

‘795

“the hinged portion is constructed such that the pickup truck has an external appearance of a conventional pickup truck free of storage box” and similar limitations

The hinged portion is constructed such that the storage box is not obvious from the outward appearance of the pickup.

 

 

Date January 12, 2014.