Mike Boyle (doing business as Surface Dynamix) has filed a response brief in the U.S. District Court of Oregon, Eugene division, arguing that GlasWeld’s proposed definitions for patent terms “fail to answer the questions that must be answered, and thus would leave the determination of claim meaning to the jury.”
“GlasWeld seeks to have its patent claims cover more than what its inventors conceived of, and more than they disclosed to the public in exchange for their right to exclude. … The court should reject this ploy,” Mike Boyle and his attorney claim in their response to GlasWeld’s Markman brief.
“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.
GlasWeld filed the alleged patent infringement lawsuit against Mike Boyle, doing business as Surface Dynamix, in late 2012. The company later added Christopher Boyle, Mike’s son, as a defendant in the lawsuit.
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.”
“The court has ‘the power and obligation to construe as a matter of law the meaning of language used in the patent claim. (Markman, 52 F.3d 967, 979) It must not shirk this responsibility by declining to construe even ‘ordinary’ or ‘plain’ words, and it must clearly decide the meaning of the words, not merely select a synonym or paraphrase that is equally ambiguous,” Mike Boyle claims.
A term in contention for its definition is “convertibility.”
“GlasWeld confuses two different questions about the phrase ‘having convertibility,’ which was added to the preamble of claim 1 during prosecution in order to secure allowance of the patent,” Mike Boyle claims. “The first question is properly addressed during construction: what does ‘having convertibility’ mean? The second question is whether the phrase limits the claim scope. GlasWeld argues the second question first, but that is putting the cart before the horse. One cannot say that the phrase ‘recites no structure’ or ‘does not give life, meaning and vitality to the claim’ until one has decided what the phrase means. Yet GlasWeld’s proposed construction only copies and paraphrases portions of the fourth claim element—turning ‘having convertibility’ into a mere [surplus].”
The court has not issued any new decisions and no new filings were available in the Pacer system at press time.
To read Mike Boyle’s full response brief, click here.
To read GlasWeld’s full response brief, click here.
For a full copy of Christopher Boyle’s brief, click here.
For Mike Boyle’s full brief, click here.
To view a copy of GlasWeld’s opening claim in the construction brief, click here.