Toro Co. v. INGERSOLL-RAND CO., LTD.

Citations: 545 F. Supp. 2d 933; 2008 U.S. Dist. LEXIS 32720; 2008 WL 1797201Docket: Civil File 06-3073 (MJD/AJB)

Court: District Court, D. Minnesota; April 20, 2008; Federal District Court

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The case involves The Toro Company, a Delaware corporation, suing Ingersoll-Rand Company Limited, a Bermuda company, and its subsidiary Clark Equipment Company, also a Delaware corporation, for patent infringement in the United States District Court for Minnesota. The patent in question is U.S. Patent No. 6,709,223, which pertains to a "Tracked Compact Utility Loader" that can be operated by a walk-behind operator in outdoor settings. Toro claims that Bobcat's products (MT50, MT52, and MT55) infringe claim 3 of the '223 Patent, asserting that these products contain all elements of the claim. Bobcat admits to elements (a) through (f) but disputes the presence of element (g), which requires an actuator for pivoting attachments, and contests the clarity of element (h), arguing it renders the claim invalid. Bobcat has counterclaimed for a declaratory judgment seeking to declare the patent invalid and unenforceable, citing Toro's alleged inequitable conduct by failing to disclose prior art and claiming a pre-critical date sale of a prototype that violated patent law. A Markman hearing was held on October 10, 2007, with the court previously barring extrinsic evidence. The five disputed terms central to the claim's interpretation are specified, though the text of claim 3 itself is not included in the excerpt.

A walk-behind loader is defined by several key components: it features a frame with front and rear sections and laterally spaced uprights at the rear; it is powered by an internal combustion engine enclosed beneath a hood; it has left and right endless drive tracks for movement in both forward and reverse directions; and it includes loader arms pivotally connected to the uprights, capable of being raised or lowered and designed to fit around the engine hood when in the lowermost position. The loader arms provide an open space for unobstructed viewing in elevated positions. Additionally, a ground grooming or working attachment is pivotally connected to the front ends of the loader arms. Actuators enable the pivoting of the loader arms and attachment. A control system, located at the rear of the frame, includes a control handle accessible to an operator walking behind the loader, allowing for comfortable manipulation while in motion.

The legal framework for patent claim construction is established, emphasizing that interpretation is a matter of law for the Court, not a factual determination. The Markman hearing is utilized to clarify claim language as necessary to resolve disputes. Claim terms are interpreted based on their ordinary and customary meanings, as understood by a person of ordinary skill in the relevant field at the time of the invention, considering the entire patent context.

The ordinary meaning of claim language may be clear to lay judges, allowing for straightforward claim construction using widely accepted definitions, often aided by general purpose dictionaries. However, when the meaning is not immediately evident, especially due to idiosyncratic usage by patentees, courts rely on various sources to discern how a person skilled in the art would interpret the terms. These sources include the claims themselves, the specification, the prosecution history, and extrinsic evidence relating to scientific principles and technical terms.

Intrinsic evidence, particularly the claims and specification, plays a crucial role in understanding disputed terms. Claims are typically consistent in their usage, and the meaning of a term in one claim can clarify its meaning in others. The specification is central to claim construction, often serving as the best guide to a term's meaning, especially if it provides a special definition or indicates a disclaimer of scope by the inventor. The prosecution history, documenting the patent's examination process, also offers insights into the understanding of the patent, although it may be less clear than the specification due to its nature as a negotiation record.

Resort to extrinsic evidence is permissible only when ambiguity exists after reviewing intrinsic evidence. Testimony from inventors and their attorneys regarding claim construction is generally given minimal weight, as it often reflects self-serving interpretations rather than the original patent application intent. Claims should not be construed based on the accused device. The Court did not rely on extrinsic evidence in this case. The discretion to use expert testimony in claim construction lies with the district court, which may exclude it as deemed appropriate.

The parties have identified five claim limitations for the Court's interpretation. Toro contends that Bobcat has included three irrelevant claim terms, two of which were disclosed late. According to the Court's Pretrial Scheduling Order, parties were to exchange claim terms by April 15, 2007, and conduct a conference by April 29, 2007. Toro argues that element (d), which Bobcat previously acknowledged exists in the accused loaders, is not in dispute and requires no court construction, rendering Toro's argument moot.

Toro also objects to Bobcat introducing two claim terms for construction on the day of the conference, which Bobcat did not include in its prior disclosures. These terms—"left and right endless drive tracks" and "substantially unobstructed viewing"—were acknowledged by Bobcat to be present in the accused loaders. Bobcat claims it only became aware of the dispute over these terms shortly before the conference after deposing Toro’s lead inventor. Subsequently, the parties attempted to agree on Joint Claim Construction Statements but could not reach consensus on the meanings of the disputed terms.

The Court's Order mandates that the parties identify disputed claim terms and engage in discussions to finalize these terms for presentation before the Markman hearing. The Order allows for modifications to the initial list of disputed terms. Toro has not provided evidence of bad faith from Bobcat regarding the identification of two terms at the claim construction conference. Any potential prejudice to Toro was resolved during later discussions about the Joint Claim Construction Statement. 

The first disputed term, "walk-behind loader," is addressed in detail. Toro argues that the term is clear and does not require construction, but alternatively defines it as a loader that an operator can walk behind, similar to a walk-behind lawn mower. Bobcat suggests a construction that includes the ability for an operator to reach the loader's controls while walking behind it.

The debate includes whether the term in the preamble limits the claim. Bobcat contends it does not require construction as it is merely a preamble, while Toro argues it is an essential claim limitation based on the specification, prosecution history, and drafter's intent. The standard for determining if a preamble limits a claim involves analyzing whether it conveys a necessary aspect of the invention or is merely introductory. The Federal Circuit has indicated that while preamble language is often nonlimiting, it can be treated as limiting if it recites essential structures integral to the invention or is relied upon during prosecution to distinguish the invention from prior art.

A preamble in a patent claim is generally not limiting unless it is necessary for understanding the structure or steps of the invention. If the claim body is structurally complete, the preamble's language, especially if it only highlights benefits, does not limit claim scope unless there is clear reliance on it as significant. In the case at hand, Bobcat argues that the preamble "walk-behind loader" is non-limiting and merely indicates purpose. However, Toro references multiple instances where the "walk-behind" feature is discussed in the patent’s specification and prosecution history, asserting that it was used to differentiate the invention from prior art, particularly the Rayner Patent.

Claim 10 from the parent application was initially rejected for being anticipated by the Rayner Patent, but the inventor successfully argued that the Rayner Patent did not depict a loader operable while walking behind it. This argument was reiterated during the prosecution of the '223 Patent. Bobcat contends that Toro could not have relied on the "walk-behind" distinction because the PTO viewed Rayner as potentially encompassing such a loader, but this was based on a later patent's prosecution, which is extrinsic to the '223 Patent. Therefore, the statement does not affect Toro's reliance on the "walk-behind" terminology to distinguish its invention during the prosecution of the '223 Patent.

The Federal Circuit's general rule that preambles are not limiting does not apply here, as Toro used the "walk-behind" distinction during prosecution to differentiate from prior art, making it a necessary claim limitation that requires judicial interpretation.

Toro interprets "walk-behind loader" as a device where the operator walks behind during operation, akin to a walk-behind lawn mower, emphasizing that the operator does not ride on or is carried by the loader. Bobcat contends this interpretation is ambiguous and not exclusive to the walking mode, highlighting that the specification allows other operational modes, including the possibility of the operator being seated or standing on the loader. Bobcat further notes that Toro's argument against the Rayner Patent implies an understanding that walking behind is not the sole operational method for its invention. Both parties agree that claim 3 is not limited to a single mode of operation. The Court adopts Toro's construction, clarifying that "walk-behind loader" refers to a loader the operator can walk behind without being carried or riding on it.

In addition, the term "left and right endless drive tracks" in claim 3 is specified as a feature for propelling the loader. Toro believes no construction is necessary, while Bobcat argues that the term allows for other propulsion methods, such as wheels, and questions whether the tracks are required to be durable. Bobcat claims the term "durable" is ambiguous and not suitable as a limitation. Toro does not provide an alternative construction but contests the validity of Bobcat's arguments.

Bobcat asserts two justifications for the necessity of construction regarding the limitation on "rubber over tire tracks" machines: (1) the acknowledgment of this limitation in prior art, and (2) Toro's claim that its experimental use included testing for durability in challenging outdoor environments. Toro contends that the prior art statement confirms this limitation's presence and argues that durability claims were made to counter Bobcat's assertion of an on-sale bar under 35 U.S.C. § 102(b). The legal precedent indicates that public use or sale primarily for experimental purposes may counter claims of invalidity. Toro maintains that such durability testing does not equate to a commercial sale and that inherent features of the invention do not necessitate court construction of claim limitations.

In addressing the dedicated tracks issue, Bobcat interprets claim 3, which describes a walk-behind loader with "left and right endless tracks," to mean that while these tracks are essential, other propulsion methods may also be included, as per the definition of "comprise." Bobcat references the specification which suggests the inventors considered alternative propulsion methods, such as wheels. Despite Toro's acknowledgment of "left and right endless tracks" in prior art, Toro argues that Bobcat's interpretation improperly includes wheel-only loaders, which would render the term "tracks" meaningless. The court agrees that an interpretation should maintain the significance of all claim terms, concluding that Bobcat's proposed construction appropriately indicates that tracks are a method of propulsion but does not exclude other methods like wheels.

The Court determines that the proposed construction of "endless drive tracks" will not mislead the jury, as it clarifies that tracks are at least one method of propelling the loader, while also allowing for the possibility of other propulsion methods. The issue of durability arises from Bobcat's on-sale bar defense. Toro argues that its testing of prototypes, including durability tests, does not equate to a commercial sale, citing that durability is an inherent feature of the invention rather than a claim limitation. Bobcat contends that the term "left and right endless drive tracks" does not imply a durability requirement and seeks to have the Court adopt language excluding durability from the claim construction. The Court concludes that the durability issue should be addressed on the full record, not during claim construction, and adopts Bobcat's initial construction of "endless drive tracks" but excludes any reference to durability.

In relation to the term "substantially unobstructed viewing" in claim 3, the parties agree that "open space between the loader arms" is clear, but disagree on the meaning of "substantially unobstructed viewing." Toro argues that the term is unambiguous and suggests it requires the operator to have good sight lines, supported by the specification that highlights the need for improved visibility in loader design. In contrast, Bobcat proposes a construction that allows for a view that is either entirely unobstructed or largely unobstructed. The Court acknowledges the context from the specification regarding the visibility issues posed by existing loader designs.

Toro argued that the [Maximan] loader's upward pivoting arms obstruct the operator's view, while Bobcat countered that Toro's use of the term "good sight lines" is subjective and lacks an objective standard, violating 35 U.S.C. § 112's definiteness requirement. Bobcat asserted that the ambiguity of "good" would hinder public understanding of the patent's scope. Bobcat proposed using the ordinary meaning of "substantially," which aligns with previous Federal Circuit definitions, leading the Court to conclude that "good sight lines" is overly vague. The Court adopted Bobcat's construction, defining "providing substantially unobstructed viewing" as offering a view that is largely but not wholly unobstructed.

Regarding claim 3's element (g), which requires "at least one actuator extending between the loader arms and the attachment for pivoting," Toro suggested no construction or defined it broadly as a mechanical device for movement. In contrast, Bobcat defined it as an actuator that directly connects the loader arms and attachment without intervening structures. While both parties agreed on the definition of "actuator," the Court adopted Toro's definition, finding it clear and accurate.

The dispute centers on the interpretation of "extending between" in the context of the claim language. Bobcat argues that this phrase should be understood based on its ordinary meaning, which is generally accepted as “to stretch out in distance, space, or time,” as per Merriam-Webster's dictionary. While both parties agree that "extend" is a non-technical term, they diverge on whether this definition allows for intervening structures, such as a cross member. Bobcat maintains that "extending" and "connecting" have distinct meanings, with "connecting" implying the need for something intervening.

Claim 3 of the '223 Patent specifies the requirement of two actuators: a loader arm actuator (element (f)) and an attachment actuator (element (g)). The loader arm actuator is described as extending "between the loader arms and the frame," while the attachment actuator extends "between the loader arms and the attachment." Bobcat asserts that the loader arm actuator must directly extend between the loader arms and the attachment without any intervening structures. It refers to Figure 1 of the patent, which illustrates two actuators—one for the loader arms and one for the attachment—arguing that the loader arm actuator occupies the space directly between the frame and the loader arms.

Bobcat claims that the plate and pin assembly connecting the actuator to the loader arm is part of the loader arm, and therefore, does not constitute an intervening structure. However, the Court disagrees, noting that this assembly is indeed an intervening structure, akin to a cross member, and thus rejects Bobcat's interpretation. The focus shifts to element (g), which, according to the Court, shows the attachment actuator extending between the loader arms and the attachment with the aid of a cross-member. Additionally, Bobcat identifies two embodiments in the patent's specification related to the attachment actuator, reinforcing its argument regarding the structure and function of the actuators.

A hydraulic tilt cylinder (18) connects attachment (16) to a cross-member (19) between loader arms (12), allowing for adjustment of the attachment's angle. Bobcat asserts that its construction aligns with at least one embodiment of the patent, noting that claim construction must include at least one disclosed embodiment per Johns Hopkins Univ. v. CellPro, Inc. The court finds that the '223 Patent specifies only one preferred embodiment, referenced in the specification, which includes an actuator extending between the loader arms and the attachment, supported by an intervening crossbar. Bobcat’s proposed construction is deemed incorrect as it would exclude this preferred embodiment, contradicting established legal principles that avoid interpretations excluding disclosed embodiments, as seen in Oatey Co. v. IPS Corp. The court also addresses Bobcat's claim that the inclusion of "connecting" in Toro’s proposal renders dependent claim 7 meaningless. The court clarifies that claim 7 necessitates an actuator that extends and connects to both the loader arms and the frame, emphasizing that limitations of one claim do not negate those in others, referencing Tandon Corp. v. U.S. Intern. Trade Com'n. Lastly, Bobcat contends that Toro's construction removes limitations by suggesting that the actuator is "directly or indirectly" connected to both the attachment and loader arms, implying all components are universally interconnected.

Bobcat contends that Toro's interpretation of the phrase "directly or indirectly" is improper, referencing the case Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., where the Federal Circuit ruled that "connected to" should not be broadly interpreted to encompass distant elements linked by intervening structures. Although Ethicon acknowledged that "connected to" could be broadly construed in other contexts, the court found no intrinsic evidence to support such a broad interpretation in that case. Ethicon's specific context involved a restraining member and longitudinal slots that needed to be directly related for proper function. 

Subsequent case law indicates that Ethicon's ruling may not apply when intrinsic evidence supports a "direct or indirect" connection. For instance, in Silicon Graphics, Inc. v. n Vidia Corp., the term "coupled" was interpreted to mean "directly or indirectly connected," based partly on the preferred embodiment showing intervening structures. Bobcat's proposed interpretation conflicts with the sole preferred embodiment in the patent and lacks a supporting dictionary definition for "extending between," which does not exclude intervening structures. Conversely, Toro's definition logically aligns with the intrinsic evidence, and the court finds it clear and reasonable. Therefore, the court adopts Toro's interpretation, defining the phrase "at least one actuator extending between the loader arms and the attachment for pivoting the attachment relative to the loader arms" as referring to a mechanical device that connects directly or indirectly the loader arms and the attachment.

In addition, the court addresses Element (h) of claim 3, which stipulates a control system positioned at the rear of the frame. This system must include a control handle that allows a standing operator to comfortably manipulate it while walking behind the loader, with the design facilitating operation with arms bent at the elbow.

The term "comfortably" is contested by the parties, with Toro claiming it is clear and requires no further construction, while Bobcat argues it is indefinite and subjective, failing to adequately inform the public of the scope of claim 3. Under 35 U.S.C. § 112, patent claims must distinctly claim the invention's subject matter, ensuring clarity for public notification of the patentee's exclusion rights. The definiteness requirement does not demand absolute clarity, as only claims that are not amenable to construction or are insolubly ambiguous are considered indefinite. Close questions of indefiniteness should favor the patentee. Bobcat's reliance on extrinsic evidence, such as inventor and attorney testimony, is given minimal weight. The court finds that the claim language, specification, and prosecution history clarify how "comfortably" is achieved through arm positioning during operation. The court concludes that "comfortably" is clear and definite in the context of claim element (h) and does not require construction. The original claim language was amended to clarify comfort, distinguishing it from prior art. Thus, Bobcat's indefiniteness argument is rejected, and the claim is to be construed as per the court's definitions.