The parties involved in one of the most famous industry lawsuits filed their Markman briefs late last week. In the briefs, GlasWeld, Mike Boyle (doing business as Surface Dynamix) and Christopher Boyle (Mike’s son) laid out their interpretations of the terminology at the heart of the patent infringement case.
“A Markman hearing (also known as a claim construction hearing) is a court hearing in which a judge determines the meaning of words from patent claims that are in dispute in a patent infringement lawsuit. The determination of the meaning of words in patent claims is known as claim construction. Inventions are defined by the precise wording of the patent claims, and the definition of these words play a key role as to whether the jury will ultimately determine that patent infringement has occurred,” according to www.markmanhearing.org.
The patents referenced in the complaint are U.S. patent No. 5,670,180 (`180 patent), “Laminated Glass and Windshield Repair Device,” and U.S. patent No. 6,898,372 (`372), “Lamp System for Curing Resin in Glass,” issued to GlasWeld in September 1997 and May 2005, respectively. While Mike Boyle was named as an inventor on the `372 patent, GlasWeld officials allege that he assigned all of his rights of ownership to the company and “has no right to practice the technology claimed in the `372 patent.”
In his brief, Mike Boyle’s attorney moved for an order defining the meaning of a number of “ambiguous claim terms.” He rejects GlasWeld’s proposed definitions and also explains the automotive glass repair process.
“The ‘180 patent states that ‘[w]hat is claimed is: 1. A device for repairing cracks in laminated glass having convertibility between repairing sub-surface and surface cracks, comprising: [a number of features].’ … (Mike) Boyle’s proposed construction for ‘having convertibility’ is ‘capable of being placed in more than one different physical configuration, said configurations operating differently from one another in a way that is relevant to the type of crack being repaired,’” Mike Boyle’s attorney writes in the brief. “The phrase is not defined in the patent specification or file history, so one must turn to extrinsic sources to find its meaning. The Oxford dictionary provides a useful definition of convertible: ‘able to be changed in form, function or character.’ (Mike) Boyle proposes the ‘different physical configuration’ construction because a device that does not change physical form but can nevertheless perform multiple operations is typically called ‘multi-purpose’ or ‘multifunction,’ rather than ‘convertible.’”
For Mike Boyle’s full brief, click here.
GlasWeld’s attorneys responded by arguing that Mike Boyle has avoided answering discovery questions and has not made a strong argument that his products produced under the Surface Dynamix brand do not infringe.
In their request for summary judgment, GlasWeld’s attorney show the GlasWeld and Surface Dynamix products side-by-side, claiming that they are similar.
“In civil actions in federal court, either party may make a pre-trial motion for summary judgment. To succeed in a motion for summary judgment, a movant must show 1) that there are no disputed material issues of fact, and 2) that the movant is entitled to judgment as a matter of law,” according to www.law.cornell.edu/wex/summary_judgment.
“Summary judgment on the issue of patent infringement is appropriate in this case because there is no factual dispute with regard to the structure of the accused products. The only dispute between the parties is with respect to the meaning of the claim terms, which the court will decide as a matter of law. As discussed in greater detail below, summary judgment of patent infringement by the Boyles is appropriate as to claim 1 of the ‘180 Patent and claims 1 and 14 of the ‘372 Patent irrespective of what constructions the court adopts for the claim terms in dispute,” GlasWeld’s attorneys claim.
“The only notable difference between the accused products and the GlasWeld product is that the plunger in the accused products is a hex screw rather than thumb screw as in the GlasWeld Products. However, there is nothing in the patent specification or file history to support a disclaimer or exclusion of hex screws as plungers within the scope of the claimed invention. To the contrary, the ‘180 Patent expressly states that ‘[o]ther types of plungers may be utilized as well that become engaged and disengaged with the piston,’” attorneys continue.
To read GlasWeld’s argument, click here.
In another brief, GlasWeld’s attorneys also dispute the need for definitions of the terminology in the patents, arguing that that language is self-explanatory.
“The claims of U.S. patents ‘180 and ‘372 patent … are straight-forward and use terminology that has well understood, ordinary and plain English meaning. Under such circumstances there is no need for the court to interpret such terminology. The written description and the prosecution history (i.e. the intrinsic evidence) confirm that the claim terms mean what they say. As such, in virtually every instance, the scope and meaning of the claims is manifest, and the claim terms require no further interpretation by the court.”
To view a copy of GlasWeld’s opening claim in the construction brief, click here.
The court has not issued any new decisions at press time.
GlasWeld filed the alleged patent infringement lawsuit against Mike Boyle, doing business as Surface Dynamix, in late 2012. The company later added Christopher Boyle as a defendant in the lawsuit.