Free Trial Brief - District Court of Connecticut - Connecticut

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UNITED STATES DISTRICT COURT FOR THE DISTRICT OF CONNECTICUT

EASCO HAND TOOLS, INC., ARMSTRONG TOOLS, INC., KINGSLEY TOOLS, INC., LEA WAY HAND TOOL CORPORATION and MATCO TOOLS CORPORATION Plaintiffs, vs. HU, HOU-FEI a/k/a BOBBY HU Defendant.

: : : : : : : : : : : : :

CIVIL ACTION NO. 3:02 CV1723 (AVC) Consolidated with Civil Action No. 3:02 CV 1747 (AVC)

April 30, 2004

PLAINTIFFS' CLAIM CONSTRUCTION MEMORANDUM OF LAW

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TABLE OF CONTENTS Page INTRODUCTION AND TECHNICAL BACKGROUND TO THE PATENT............................ 1 THE `387 PATENT AND ITS CLAIMS..................................................................................... 4 ARGUMENT ............................................................................................................................. 5 I. THE LAW OF CLAIM CONSTRUCTION PROVIDES THAT THE ORDINARY AND CUSTOMARY MEANING OF CLAIM TERMS TO ONE SKILLED IN THE ART IS FOUND IN THE INTRINSIC EVIDENCE ......................... 5 A. B. C. II. A. The Patent Claims................................................................................................ 6 The Patent Specification ...................................................................................... 8 The Prosecution History And Cited Prior Art ..................................................... 10 Easco's Proposed Construction Reflects The Ordinary And Customary Meaning Of The Term To One Skilled In The Art And Is The Correct Construction Based On The Intrinsic Evidence .................................................. 11 Hu's Proposed Construction Is Not Supported By The Intrinsic Evidence .......... 12 The Intrinsic Evidence Supports Easco's Construction....................................... 18 1. The Claim Language .............................................................................. 18 a. b. 2. a. "Drive" means a shaft that turns a socket .................................... 18 "Member" also means shaft or column........................................ 19 The Specification Consistently Refers to "Drive Member" as a Shaft or Shaft-Like Structure Extending Beyond the Compartment .............................................................................. 20 The Proper Definition of "Drive Member" Does Not "Import" Limitations from the Specification ............................... 24

"RATCHETING TOOL"............................................................................................... 11

B. III. A.

"DRIVE MEMBER" ..................................................................................................... 17

The Patent Specification......................................................................... 20

b. 3. B. C.

The Prosecution History And Cited Prior Art Support Easco's Proposed Construction ........................................................................... 28

Claim Differentiation Principles Do Not Change The Proper Construction Of "Drive Member" ........................................................................................... 30 Hu's Proposed Construction Of "Drive Member" Requires The Court To Define Structural Limitations From The Specification As A Matter Of Law ................................................................................................................... 31

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TABLE OF CONTENTS (continued) Page 1. 2. IV. A. B. V. A. B. VI. Drive Member Cannot Be Defined Solely According To Its Function................................................................................................. 32 Courts Defining "Member" Identify Structural Characteristics ............... 33

"MOUNTED" ............................................................................................................... 35 The Claim Language And Specification Utilize "Mounted" As Meaning "Attached To Or "Held In Position" ................................................................... 35 Hu's Proposed Construction Renders "Mounted" Superfluous ........................... 38 The Intrinsic Evidence Discloses A Reactive Force Created When the Pawl "Bears" Against A Point............................................................................ 39 Hu Ignores The Intrinsic Evidence And Proposes A Vague And Ambiguous Construction ................................................................................... 39

"BEARING" ................................................................................................................. 39

CONCLUSION............................................................................................................. 40

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TABLE OF AUTHORITIES CASES AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239 (Fed. Cir. 2001)............................... 7, 8, 13, 18 Abbot Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343 (Fed. Cir. 2003) ................................ 18 Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308 (Fed. Cir. 1999)................................................. 32 Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003).......................... 21 Andersen Corp. v. Fiber Composites, LLC, No. 00-2548 (RHK/AJB), 2002 U.S. Dist. LEXIS 6233 (D. Minn. Apr. 9, 2002)........................................................................................ 34 Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364 (Fed. Cir. 2003)........................................ 19 Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042 (Fed. Cir. 2000) .............................. 10 Bausch & Lomb, Inc. v. Moria S.A., 222 F. Supp. 2d 616 (E.D. Pa. 2002)................................ 34 Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258 (Fed. Cir. 2001) .......................................................................................................................... 7 CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002). ...............6, 20, 21, 29, 34 Colassi v. Cybex Int'l, Inc., No. 02-11909-RWZ, 2004 U.S. Dist. LEXIS 2950 (D. Mass. Feb. 27, 2004)........................................................................................................................... 34 Cole v. Kimberly-Clark Corp., 102 F.3d 524 (Fed. Cir. 1996)................................................... 32 David Nichols & Nichols Lures v. Strike King Lure Co., No. 3:99-CV-1950-BC, 2000 U.S. Dist. LEXIS 15781 (N.D. Tex. Oct. 25, 2000)................................................................... 26 E-Pass Techs., Inc. v. 3COM Corp., 343 F.3d 1364 (Fed. Cir. 2003)..................................... 9, 26 Elekta Instr. S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d 1302 (Fed. Cir. 2000) ...................... 38 Embrex, Inc. v. Serv. Eng'g Corp., 216 F.3d 1343 ( Fed. Cir. 2000) .......................................... 21 Engineered Prods. Co. v. Donaldson Co., 165 F. Supp. 2d 836 (N.D. Iowa 2001) ..................... 34 Globetrotter Software, Inc. v. Elan Computer Group, Inc., No. 03-1179, 2004 U.S. App. LEXIS 5428 (Fed. Cir. Mar. 23, 2004)........................................................................................ 9

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Graham v. John Deere Co., 383 U.S. 1 (1966)........................................................................... 10 Harris Corp. v. IXYS Corp., 114 F.3d 1149 (Fed. Cir. 1997)..................................................... 21 Hemphill v. MCNEIL-PPC, Inc., 25 Fed. Appx. 915 (Fed. Cir. 2001)....................................... 34 Honeywell, Inc. v. Victor Co. of Japan, Ltd., No. 99-1607 (DWF/AJB), 2003 U.S. Dist. LEXIS 7148 (D. Minn. Apr. 25, 2003)...................................................................................... 34 IGC-Med. Advances, Inc. v. United States Instruments, Inc., 34 Fed. Appx. 715 (Fed. Cir. 2002) ................................................................................................................................. 21 Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308 (Fed. Cir. 2003).......................................................................................................... 14, 32 Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323 (Fed. Cir. 2001)..................... 8 Inverness Med. Switz. GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365 (Fed. Cir. 2002) ........................................................................................................................................ 35 JVW Enters. v. Interact Accessories, Inc., No MJG-00-1867, 2003 U.S. Dist. LEXIS 16221 (D. MD. May 6, 2003).................................................................................................... 34 Jepson v. Egly, 231 F.2d 947 (C.C.P.A. 1956) .................................................................... 20, 34 Johnson Worldwide Assocs, Inc. v. Zebco Corp., 175 F.3d 985 (Fed. Cir. 1999)....................... 26 K-2 Corp. v. Salomon S.A., 191 F.3d 1356 (Fed. Cir. 1999) ....................................................... 6 Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968 (Fed. Cir. 1999) ............................ 31 Kinik Co. v. ITC, No. 02-1550, 2004 U.S. App. LEXIS 5543 (Fed. Cir. Mar. 25, 2004) .......................................................................................7, 9, 21, 25, 26 Kis, S.A. v. Foto Fantasy, Inc., 60 Fed. Appx. 319 (Fed. Cir. 2002) .......................................... 15 Kohus v. Cosco, Inc., No. C-1-97-968, 1999 U.S. Dist. LEXIS 23010 (S.D. Ohio Aug. 17, 1999) .................................................................................................................................. 34 Kothmann & Kothmann, Inc. v. Trinity Indus., 287 F. Supp. 2d 673 (S.D. Tx. 2003)................ 15 Kraft Foods, Inc. v. Int'l Trading Co., 203 F.3d 1362 (Fed. Cir. 2000)................................. 30, 31 Kudlacek v. DBC, Inc., 115 F. Supp. 2d 996 (N.D. Iowa. 2000)................................................ 34 Kumar v. Ovonic Battery Co., Inc., 351 F.3d 1364 (Fed. Cir. 2003).................................... 10, 28 -iv-

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Leoutsakos v. Coll's Hosp. Pharm., Inc., No. 02-434-m, 2003 U.S. Dist. LEXIS 12591 (D. NH. July 8, 2003)................................................................................................................ 34 Liebel-Flarsheim Co. v. Madrad, Inc., 358 F.3d 898 (Fed. Cir. 2004)........................................ 26 Liebscher v. Boothroyd, 258 F.2d 948 (C.C.P.A. 1958) .......................................................... 8, 9 Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) ....................................... 6 Mas-Hamilton Group v. LaGard, 156 F.3d 1206 (Fed. Cir. 1998) ............................................. 33 Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473 (Fed. Cir. 1998) ........................... 10 Norian Corp. v. Stryker Corp., No. 02-1490, 2004 U.S. App. LEXIS 6545 (Fed. Cir. Apr. 6, 2004) .................................................................................................................................... 26 PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235 (Fed. Cir. 2002)............................................. 9 Pfund v. U.S., 831 F.2d 1017 (Fed. Cl. 1998)............................................................................ 38 Phillips v. AWH Corp., No. 03-1269, 2004 U.S. App. LEXIS 6758 (Fed. Cir. Apr. 8, 2004) .................................................................................................................................... 8, 32 Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) ............................. 11 Quigley v. Zimmerman, 22 C.C.P.A. 713 (C.C.P.A. 1934).................................................. 20, 34 Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243 (Fed. Cir. 1998)........................ 15 Rexnord Corp. v. Lairtram Corp., 274 F.3d 1336 (Fed. Cir. 2001)............................................... 6 Risdon Iron & Locomotive Works v. Medart, 158 U.S. 68 (1895)............................................. 32 Scimed Life Sys. v. Johnson & Johnson, 225 F. Supp. 2d 422 (D. Del. 2002) ........................... 34 Smithkline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878 (Fed. Cir. 1988)..................... 6 St. Flyers LLC v. Gen-X Sports, Inc., No. 01 Civ. 9669 (MBM), 2003 U.S. Dist. LEXIS 14597 (S.D.N.Y. Aug. 19, 2003)............................................................................................... 34 Superguide Corp. v. DirecTV Enters., 358 F.3d 870 (Fed. Cir. 2004).......................................... 9 Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357 (Fed. Cir. 2002) ........................................................................................................................................ 28

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Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313 (Fed. Cir. 2002)........................................ 7 Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) ...................... 6, 7, 14, 18 Toro Co. v. White Consol. Indus., 199 F.3d 1295 (Fed. Cir. 1999).............................................. 7 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) .................................... 6, 13 Watts v. XL Sys., Inc., 232 F.3d 877 (Fed. Cir. 2000) ........................................................... 9, 10 STATUTES 35 U.S.C. § 8 ........................................................................................................................ 16

35 U.S.C. § 112, ¶ 6...................................................................................................... 32, 33, 35

37 C.F.R. § 1.73 ....................................................................................................................... 21 MISCELLANEOUS American Heritage® Dictionary of the English Language 1-2 (4th ed. 2002) ...................... 37, 39 Franklin D. Jones & Paul B. Schubert, Engineering Encyclopedia, A Condensed Encyclopedia and Mechanical Dictionary for Engineers, Mechanics, Technical Schools, Industrial Plants, and Public Libraries 1041-43 (3d ed. 1963).................................................... 12 McGraw-Hill Dictionary of Scientific and Technical Terms 1751 (6th ed.)......................... 11, 37 Dictionary of Automotive Terms and Abbreviations ................................................................. 18 Joseph Lawrence Nayler, Dictionary of Mechanical Engineering 246 (4th ed.) ......................... 19 TAB Handbook of Hand & Power Tools, at 92 ......................................................................... 18

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EXHIBIT LIST

Exhibit A................................. Exhibit B................................. Exhibit C................................. Exhibit D.................................

U.S. Patent No. 6,457,387 Joint Claim Construction of `387 Patent Copies of Unreported Cases Defendant's Disclosure of Claim Terms Believed to Require Construction McGraw-Hill Dictionary of Scientific and Technical Terms (6th ed.) Franklin D. Jones and Paul B. Schubert, Engineering Encyclopedia, A Condensed Encyclopedia and Mechanical Dictionary for Engineers, Mechanics, Technical Schools, Industrial Plants, and Public Libraries (3d ed. 1963) 35 U.S.C. 8; Manual of Patent Examining Procedure MPEP § 903.01; Manual of Patent Examining Procedure MPEP § 904.01(c) U.S. PTO Manual of Classification TAB Handbook of Hand & Power Tools Dictionary of Automotive Terms and Abbreviations Joseph Lawrence Naylor, Dictionary of Mechanical Engineering (4th ed.) 37 C.F.R. 1.73; Manual of Patent Examining Procedure § 608.01(d) U.S. Patent No. 6,282,991 U.S. Patent No. 6,282,992 The American Heritage® Dictionary of the English Language (4th ed. 2002)

Exhibit E.................................

Exhibit F..................................

Exhibit G.................................

Exhibit H................................. Exhibit I.................................. Exhibit J.................................. Exhibit K.................................

Exhibit L.................................

Exhibit M................................. Exhibit N................................. Exhibit O.................................

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INTRODUCTION AND TECHNICAL BACKGROUND TO THE PATENT This Court has ordered briefing and a hearing on the claim construction for U.S. Patent No. 6,457,387 ("the `387 patent") (Ex. A attached hereto.) (December 4, 2003 Scheduling Order.) Plaintiffs Easco Hand Tools, Inc., Armstrong Tools, Inc., Kinglsey Tools, Inc., Lea Way Hand Tool Corporation, and Matco Tools Corporation (collectively "Easco") provide this memorandum supporting their proposed constructions of the four disputed claim terms of the `387 patent and explaining why defendant Hu's proposed constructions are erroneous.1 Ratchet tools or devices come in many well-known types, including socket tools and boxend tools. The similarities and differences of these tool types are central to this case. Socket tools contain shafts, commonly referred to as drives, extending from the tool, onto which sockets of different sizes can be fitted. Sockets have one side designed to receive the shaft or drive and the other side with a shaped recess to grab a fastener such as a nut or bolt. The `387 patent is directed to socket tools with a particular ratcheting mechanism having a certain pawl design. Each of the `387 patent claims at issue requires a "drive member," which, as discussed herein, is the shaft or shaft-like structure ordinarily associated with a socket tool. The "drive member" is shown in Figures 1 (23) and 2 (20) of the `387 patent.

On December 7, 2003, this Court ordered the consolidation of cases 3:02 CV 1723, which addressed defendant Hu's U.S. Patent No. 6,282,992 and 3:02 CV 1747, which addressed defendant Hu's U.S. Patent No. 6,457,387. On February 27, 2004, Hu moved to dismiss the original 1723 case. Due to Hu's motion, the parties provided a Joint Claim Construction Statement for claim terms of the `387 patent only. (Ex. B attached hereto.) Easco therefore directs its arguments solely to the `387 patent. -1-

1

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(`387 patent, Figs. 1 and 2.) In Figure 1, the shaft end of the drive member (23) is shown extending beyond the compartment. In Figure 2, an entire drive member (20) is shown, with the pawl (30) interfacing with a gear wheel (21)and the drive member's shaft (23) to drive a socket. (`387 patent, col. 6, ll. 2-6; col. 6, ll. 61-62.) Hu has accused one model of Easco's socket wrench tools of infringing the `387 patent.2 Easco also manufactures box-end type reversible ratchet wrench tools. The `387 patent does not disclose or teach a box-end ratchet. Accordingly, the following illustration of a box-end tool is from another of defendant Hu's patents, the one he no longer asserts in this action, U.S. Patent No. 6,282,992.

Easco has denied infringement of the `387 patent, and has also claimed that the `387 patent is invalid based in part on certain prior art, and is unenforceable due to the inequitable conduct of Hu and his prosecuting attorney. -2-

2

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(`992 patent, Fig. 1.) Box-end ratchet tools, unlike socket tools, have a through-hole in the head of the wrench that fits around a nut or bolt. Box-end tools do not have drive members. Rather, the inside of the gear wheel (24) in a box-end ratchet is notched to grasp the nut or bolt. Despite the `387 patent's silence regarding box-end tools, Hu has repeatedly attempted to include Easco's box-end wrench tools in this lawsuit. Hu first accused them of infringing his `992 patent. Hu then voluntarily surrendered all of those accusations under the `992 patent. (See Hu's Mo. to Dismiss, at 2-3.) Left with only his `387 patent in the case, Hu now attempts to have this Court improperly expand the scope of the `387 patent to cover box-end wrenches.3 Hu's proposed claim constructions and arguments reveal his result-driven approach. Hu consults the proper sources of evidence relevant to claim construction, but then improperly manipulates them to reach his desired end. First, Hu seeks to define the claim terms by referring to dictionaries, but does not refer to technical dictionaries that define the terms according to their use by those of ordinary skill in the art of tool design. Instead, Hu looks only to standard

Hu accuses 8 box-end wrenches produced by Easco in response to Hu's Request For Production of Documents and Things of infringing the `387 patent. -3-

3

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language dictionaries, pulling definitions out of context. Then, Hu exacerbates his error, modifying these general dictionary definitions to fit his litigation strategy. Similarly, Hu improperly manipulates the `387 patent specification and intrinsic evidence depending on the result he seeks. With the disputed term "ratcheting tool," Hu seeks a narrow definition to avoid prior art.4 To facilitate this narrowing, Hu argues that the patent specification limits the claims to handheld devices. (See Hu Br. at ll-12.) The specification, however, contains no actual language limiting the patent to such a narrow context. With the term "drive member," Hu seeks an expansive definition to support his infringement claims over Easco's boxend wrench tools. Although Hu purports to refer to the patent specification, in truth he ignores the specification's multiple references placing the invention within the context of socket tools with shafts or columns. (See id. at 17-18.) Hu also ignores that the specification makes absolutely no reference to covering box-end tools. (See id.) In contrast, Easco consistently adheres to the claim construction principles specified by the United States Court of Appeals for the Federal Circuit. Easco's proposed constructions are grounded in the ordinary meaning of the terms attributed them by one of ordinary skill in the art as shown by technical dictionaries and treatises, and also by the intrinsic evidence including the patent claims, the patent specification, and the cited prior art. Thus, Easco proposes the proper construction of the four claim terms in dispute, and the Court should adopt those proposals. THE `387 PATENT AND ITS CLAIMS Hu alleges that Easco infringes independent Claim 17 and dependent Claims 18-23 and 25 of the `387 patent. The four disputed claim terms at issue are: (1)"ratcheting tool"; (2)"drive
4

In particular, Hu's proposals seek to limit his claims to handheld tools, thereby trying to avoid prior art produced by plaintiffs featuring reversible ratcheting mechanisms in other tools. -4-

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member"; (3)"mounted"; and (4)"bearing". (See Ex. B.) Claim 17 is representative of the claims containing the first two terms, and Claim 22 represents those containing the latter two: 17. A ratcheting tool comprising: a rotatably mounted drive member including a gear wheel having an outer periphery with a plurality of first teeth; and .... (`387 patent, col. 9, ll. 51-54 (emphasis added).) 22. The ratcheting tool as claimed in claim 17, with the pawl mounted in a compartment section defined by a wall, with the pawl being moveable in a radial direction relative to the drive member, with the pawl bearing against a first point of the wall when the pawl is in the first ratcheting position and bearing against a second point of the wall when the pawl is in the second ratcheting position, with the second point being spaced from the first point.

(`387 patent, col. 10, ll. 32-39 (emphasis added).) Easco proposes the following constructions of the disputed terms: Ratcheting Tool: A tool having a mechanism that consists of a bar or wheel having inclined teeth with which a pawl interacts so that motion can be imparted to the wheel or bar. A shaft or shaft-like structure extended beyond the compartment. Attached to, or held in position. Touching sufficient to create a reactive force.

Drive Member: Mounted: Bearing: (See Ex. B.)

ARGUMENT I. THE LAW OF CLAIM CONSTRUCTION PROVIDES THAT THE ORDINARY AND CUSTOMARY MEANING OF CLAIM TERMS TO ONE SKILLED IN THE ART IS FOUND IN THE INTRINSIC EVIDENCE. Any patent infringement or invalidity analysis requires two steps. "First a court must determine as matter of law the correct scope and meaning of a disputed claim term. ... Second, the analysis requires a comparison of the properly construed claims to the accused device, to see -5-

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whether the device contains all the limitations, either literally or by equivalents, in the claimed invention." CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1365 (Fed. Cir. 2002) (citations omitted). The first step, claim construction, is a question of law for the Court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc) ("[T]he court has the power and obligation to construe as a matter of law the meaning of the language used in the patent claim."). The axiomatic objective of claim construction is to determine how a hypothetical person possessing ordinary skill in the relevant art would understand the patent. Smithkline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 882 (Fed. Cir. 1988). Rexnord Corp. v. Lairtram Corp., 274 F.3d 1336, 1342-43 (Fed. Cir. 2001). "Intrinsic evidence" refers to the socalled patent documents ­ the claims, the written patent specification, its drawings/illustrations, and the patent's prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The intrinsic evidence is "the most significant source of the legally operative meaning of disputed claim language." Id. A. The Patent Claims.

In examining the intrinsic evidence, the court must begin with the words of the claims themselves. Vitronics, 90 F.3d at 1582. "`In construing claims, the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to `particularly point [] out and distinctly claim [] the subject matter which the patentee regards as his invention.'" Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1201-02 (Fed. Cir. 2002) (citations omitted). There is a "heavy presumption" that the terms used in a claim "mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art." Id. at 1202 (emphasis added); see also K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1365 (Fed. Cir. 1999) (noting that claim -6-

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construction "is firmly anchored in reality by the understanding of those of ordinary skill in the art."). The ordinary meaning to persons skilled in the relevant art is determined in the context of how the term is used in the patent documents. Kinik Co. v. ITC, No. 02-1550, 2004 U.S. App. LEXIS 5543, at *15-16 (Fed. Cir. Mar. 25, 2004)5; see also Toro Co. v. White Consol. Indus., 199 F.3d 1295, 1299 (Fed. Cir. 1999) ("[T]he court must determine how a person of experience in the field of this invention would, upon reading the patent documents, understand the words used to define the invention."). Federal Circuit precedent repeatedly recognizes that dictionaries, encyclopedias and treatises are valuable resources in claim construction and may be used to determine the ordinary meaning of the claim terms. Texas Digital, 308 F.3d at 1202; see also Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) ("The ordinary meaning of a claim term may be determined by reviewing a variety of sources, including ... dictionaries and treatises ...." (citations omitted)).6 Not all dictionaries, however, are created equal. Scientific dictionaries should generally be used for defining technical terms. AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 124748 (Fed. Cir. 2001). Indeed, the Federal Circuit has strongly cautioned against the use of nonscientific dictionaries for defining technical words, holding that "`a general definition is secondary to the specific meaning of a technical term as it is used and understood in a particular technical field.'" Id. (citations omitted); see also Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001) (cautioning "against the use of non-scientific dictionaries, `lest dictionary definitions ... be converted into technical terms of
5 6

Copies of any unreported cases are included as Ex. C.

Dictionaries, encyclopedias and treatises are intrinsic evidence or aids thereto, and not extrinsic evidence or even a special form of extrinsic evidence. Texas Digital, 308 F.3d at 1203. -7-

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art having legal, not linguistic significance.'") (citations omitted); Vitronics, 90 F.3d at 1584 n.6 ("[T]echnical treatises and dictionaries ... are worthy of special note.") Moreover, the Federal Circuit has instructed that "[a] trial court, when construing a term of art, must define the term in a manner consistent with the scientific and technical context in which it is used in the patent. Only when the context is unclear, or it appears that the term is not being used in a technical manner, should the trial court rely upon a general purpose dictionary for construing the term." AFG Indus., 239 F.3d at 1248. (holding trial court's incorrect definition of a technical term resulted from improper reliance on a general dictionary definition). B. The Patent Specification.

The second type of intrinsic evidence the trial court is required to examine when construing disputed claim terms is the patent specification. A court must consult the specification, because it is "always highly relevant to the claim construction analysis [and] is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582; see also Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (noting that even where the claim language is clear the specification should still be consulted to determine if any definitions should be modified). Just this month the Federal Circuit reaffirmed that courts "look to the specification `to ascertain the meaning of a claim term as it is used by the inventor in the context of the entirety of his invention.'" Phillips v. AWH Corp., No. 03-1269, 2004 U.S. App. LEXIS 6758, at * 12 (Fed. Cir. Apr. 8, 2004) (quoting Comark Communications v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)). The patent specification, and the context and scope it provides to disputed terms, also allows the court to choose the best among multiple dictionary definitions. Indeed, the Federal Circuit has long cautioned that "[i]ndiscriminate reliance on definitions found in dictionaries can often produce absurd results." Liebscher v. Boothroyd, 258 F.2d 948, 951 (C.C.P.A. 1958). -8-

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"Words are used in many senses and often have diametrically opposed meanings, depending upon the senses in which they are used." Id. [T]he words in which a claim is couched may not be read in a vacuum. One need not arbitrarily pick and choose from the various accepted definitions of a word to decide which meaning was intended as the word is used in a given claim. The subject matter, the context, etc., will more often than not lead to the correct conclusion. Id.; see also E-Pass Techs., Inc. v. 3COM Corp., 343 F.3d 1364, 1368 (Fed. Cir. 2003) (holding that "[w]hen determining a claim term's ordinary meaning, we also look to the usage of the disputed claim term in context."); PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1244 (Fed. Cir. 2002) (holding that the construction of a term in a patent is a highly contextual exercise that is dependent upon the content of the particular patent in which the term appears). While construing the claim language is aided by the explanations contained in the specification, limitations not present in the claims should not be "added" to the claims through the construction process. Superguide Corp. v. DirecTV Enters., 358 F.3d 870, 875 (Fed. Cir. 2004). However, "[p]atent claims are directed to the invention that is set forth in the specification." Kinik, 2004 U.S. App. LEXIS 5543, at *13. For example, in Globetrotter Software, Inc. v. Elan Computer Group, Inc., No. 03-1179, 2004 U.S. App. LEXIS 5428, at *11 (Fed. Cir. Mar. 23, 2004) the court looked to the specification to construe the phrase "a message preventing" as it applied to a license management system. Id. at *36. The court first looked to dictionaries to determine the ordinary and customary meaning of the term "prevent." Id. at 3637. The court concluded that even after consulting the dictionaries, the language of the claim was ambiguous and looked to the specification in order to "shed light on the meaning" of the disputed claim term. Id. at 37. In Watts v. XL Sys., Inc., 232 F.3d 877 (Fed. Cir. 2000) the court looked to the specification to limit the term "sealingly connected" as it applied to the connecting sections of oil well pipes. Watts, 232 F.3d at 882. The court limited the term to connections by -9-

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misaligned taper angles, because the patent specification described only that one method ­ misaligning the taper angles of the internal and external threads ­ to achieve the sealing connection. Id. at 882-83. C. The Prosecution History And Cited Prior Art.

In addition to the claim language and patent specification, the courts may also consult the prosecution history and the prior art that it cites in performing claim construction. Vitronics, 90 F.3d at 1582; Kumar v. Ovonic Battery Co., Inc., 351 F.3d 1364, 1367-68 (Fed. Cir. 2003) (noting that prior art may shed light on the meaning of claim term); Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1044-45 (Fed. Cir. 2000) (construing Time-Space-Time switch by looking to the prior art"); Graham v. John Deere Co., 383 U.S. 1, 33 (1966) ("It is, of course, well settled that an invention is construed not only in the light of the claims, but also with reference to the file wrapper [specification and cited art]...."). The prosecution history helps inform construction of disputed claim terms, because it "reveals how those closest to the patenting process ­ the [patentee] and the patent examiner ­ viewed the subject matter." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998). At bottom, after consulting the language of the claims themselves, the patent specification, and the prosecution history with its cited prior art, the court should construe the claim terms giving them the customary definition used and understood by persons of ordinary skill in the relevant art (here the art of tool design) as viewed in the context of the patent documents.

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II.

"RATCHETING TOOL" A. Easco's Proposed Construction Reflects The Ordinary And Customary Meaning Of The Term To One Skilled In The Art And Is The Correct Construction Based On The Intrinsic Evidence.

The customary meaning to those of ordinary skill in the art of tool design of the term "ratcheting tool" is "a tool having a mechanism that consists of a bar or wheel having inclined teeth with which a pawl interacts so that motion can be imparted to the wheel or bar." (See Ex. B.)7 Hu proposes "a contrivance held in and worked by the hand for performing or facilitating mechanical operations engaging a toothed wheel with a pawl." (See Ex. B.) Both constructions define the ratcheting operation similarly. However, Hu also seeks to have the Court manufacture and add a limitation ­ that the device must be "held in and worked by the hand" ­ not present in the claim language and not supported by the intrinsic evidence. Turning first to the claims themselves, the claim language does not define "ratcheting tool." (`387 patent, col. 9, l. 51.) "Ratchet," is a technical term to those of ordinary skill in the art of tool design. Its customary meaning in the art is "a wheel, usually toothed, operating with a catch or pawl so as to rotate in only a single direction." McGraw-Hill Dictionary of Scientific and Technical Terms 1751 (6th ed.) (Ex. E. attached hereto); see also Franklin D. Jones & Paul B. Schubert, Engineering Encyclopedia, A Condensed Encyclopedia and Mechanical Dictionary

Easco proposes a construction for "ratcheting tool" because Hu initially disclosed the term as requiring construction. (See Def's. Disclosure of Claim Terms Believed to Require Construction, attached hereto as Ex. D.) Easco does not agree, however, that "ratcheting tool" is a limitation of Claim 17, as Hu wrongly presumes. (See Hu Br. at 8 n. 7.) A term within the preamble is considered a limitation only if it "is `necessary to give life, meaning, and vitality' to the claim". Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (citations omitted). The preamble is not limiting if the claim sets forth the complete invention and the preamble simply serves to set forth "the purpose or intended use of the invention". Id. The structure of Hu's invention is fully described in the body of Claim 17. The term "ratcheting tool" describes only the intended use of the invention, the use of the reversible ratcheting pawl technique to turn a drive member in a ratcheting tool, and thus is not a claim limitation. -11-

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for Engineers, Mechanics, Technical Schools, Industrial Plants, and Public Libraries 1041-43 (3d ed. 1963) (defining "ratchet gearing" as consisting of a toothed ratchet wheel and a pawl or detent used to transmit intermittent motion or to prevent relative motion between two parts except in one direction.). (See Ex. F.) This ordinary and customary meaning is not limited to hand tools with ratcheting mechanisms. (See id.) The `387 patent specification confirms that the correct construction of "ratcheting tool" is not limited to handheld instruments. The specification consistently and repeatedly describes tools with a drive member and a wheel having inclined teeth with which a pawl interacts so that motion can be imparted to the wheel. (See `387 patent col. 6, ll. 2-6, ll. 44-47.) The specification does not state the tools in question must be handheld, does not use the term "handheld," and contains no restrictions or limitations to handheld tools. Thus, Easco's definition properly encompasses "ratcheting tool[s]" as Hu describes his invention, and is not artificially limited to handheld tools. 8 B. Hu's Proposed Construction Is Not Supported By The Intrinsic Evidence.

Hu's proposed limitation of "ratcheting tool" to those tools "held in and worked by the hand" does not appear in the language of the claim. (See `387 patent, col. 7, l. 61 ­ col. 10, l. 54.) Hu's attempt to read this limitation into the claim is legally flawed because (1) Hu wrongly employs general dictionary definitions different from technical definitions in the tool design context and then arbitrarily modifies those general definitions to suit his purpose, and (2) the proposed narrowing language "held in and worked by the hand" is neither addressed in nor supported by the intrinsic evidence.
8

Hu criticizes Easco's proposed construction because it is "longer and more difficult to comprehend than Hu's." (See Hu Br. at 14.) Easco disagrees, but more importantly, the appropriate construction of a disputed term is the term's ordinary and customary meaning to one skilled in the art, regardless of its perceived complexity. -12-

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Ignoring Federal Circuit precedent, Hu does not use a technical dictionary to determine the ordinary and customary meaning of the technical term "ratcheting tool." See e.g. AFG Indus., 239 F.3d at 1248 (explaining that a general dictionary definition is secondary to the specific meaning of a technical term as it is used and understood in a particular technical field) (citations omitted); Vitronics, 90 F.3d at 1584 n.6 ("[T]echnical treatises and dictionaries ... are worthy of special note"). Hu instead looks to Webster's Unabridged Dictionary where he finds general English definitions of the terms "ratchet" and then "tool" divorced from the patent's context. (See Hu Br. at 8,10.) Several problems then flow from Hu taking these general definitions and attempting to force them into the patent's context. As an initial matter, none of the general definitions helps Hu because none limit a tool to something "held in and worked by the hand." (See Hu Br. at 10.) Specifically, Hu's chosen definition, No. 1, defines a tool as "an implement, especially one held in the hand," but does not state that only handheld devices are "tools." (See id.) 9 Even if this definition did limit all "tools" to hand held devices, which it does not, Hu provides no legitimate basis to employ this definition and exclude all others. Hu claims that "only definition 1 is pertinent to the use of the "tool" in the `387 patent," (see Hu Br. at 10), however definitions 2 through 5 are also pertinent to the mechanical and manual contexts of
9

Unsuccessful in his search amongst the dictionary definitions for one expressly limiting tools to handheld devices, Hu turns to a "synonym addendum" where one synonym describes a tool as "a contrivance held in and worked by the hand." (See Hu Br. at 10.) Again, nothing here states that only handheld devices are tools. In fact, other synonyms more broadly refer to "any tool or contrivance designed or used for a particular purpose" or "anything used in doing a certain work." (See id.) Thus, Hu manipulates one definition to bring it into line with his views. Without any explanation or citation, Hu chooses one definition and converts its disjunctive "or" to the conjunctive "and." (Compare Hu Br. at 10 ("the term `tool' is a contrivance held in and worked by the hand") with Hu Br. at 10 n.14 ("tool" is ... "an instrument ... used or worked by hand" and even more generally, any "instrument used by a handicraftsman or laborer in his work.") (emphasis added)). -13-

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the`387 patent. (See id.) These alternate definitions encompass a broad list of tools, instruments and mechanical means, yet Hu ignores them. (See id.) Hu excludes these broader definitions based solely on his contention that the patent specification limits the use of "tool" to a handheld context. (See Hu Br. at 11.) The specification of the `387 patent, however contains no handheld limitation. It is proper to use the patent specification to choose amongst dictionary definitions and provide the appropriate context for claim terms. Texas Digital, 308 F.3d at 1203 (explaining that consulting the specification is particularly important to "identify which of the different possible dictionary meanings of the claim terms in issue is most consistent with the use of the words by the inventor"); Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1315 (Fed. Cir. 2003) (stating that "because words often have multiple dictionary definitions, some having no relation to the claimed invention, the intrinsic record must always be consulted to identify which of the different possible dictionary meanings of the claim terms in issue is most consistent with the use of the words by the inventor"). Hu, however, attempts to stretch the words of the `387 patent specification into stating something they simply do not say. (See Hu Br. at 11-12.) Neither of the two portions of the specification Hu quotes limit the patented invention to handheld tools: The present invention relates to a reversible ratcheting tool having a smaller head and improved driving torque for convenient use in a limited space. It is the primary object of the present invention to provide a reversible ratcheting tool with a small head while providing improved driving torque for convenient use in a limited space.

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(Id. (quoting `387 patent, col. 1, ll. 7-9, col. col. 2. ll. 17-20).) Neither quotation uses the term handheld or explains why the smaller mechanics of the patent's ratcheting mechanism are not applicable in non-handheld ratcheting mechanisms.10 In fact, nothing in the patent specification limits the purported invention to a handheld tool. The term "ratcheting tool" (or ratchet tool) is used twenty-five (25) times in the claims and nineteen (19) times in the specification. None are limited to a handheld tool or one that is "held in and worked by the hand." Therefore, the patent specification provides no basis to support Hu's strategically chosen and modified definition and no basis to restrict "ratcheting tool" to handheld tools. See Kis, S.A. v. Foto Fantasy, Inc., 60 Fed. Appx. 319, 323 (Fed. Cir. 2002) (rejecting the proposed requirement for two monitors displaying different images at the same time, because nothing in the claim language or written description stated or even implied the requirement); Kothmann & Kothmann, Inc. v. Trinity Indus., 287 F. Supp. 2d 673, 690 (S.D. Tx. 2003) (rejecting proposed construction because the specification did not contain a limitation that the "impact head" contain mechanical interlocking properties). For this reason, the `387 patent specification differs significantly from the specification in Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243 (Fed. Cir. 1998). (See Hu Br. at ll-12.) In Renishaw, the specification helped define the term "when" because it required timing very soon after an event. (Id.) Here, in contrast, nothing in the `387 patent specification requires that for the invention's
10

For example, if the prior art ratcheting mechanisms placed in wrenches were measured in millimeters, then the invention's mechanism would reduce the original wrench size by a certain number of millimeters and allow for a smaller wrench head. Similarly, if the prior art ratcheting mechanisms were placed in a car jack measured in inches, then the invention's mechanism would reduce the required jack size by a corresponding number of inches and allow for a smaller jack head capable of fitting under lower-riding cars. The size benefits of the invention relate equally to larger ratcheting tools, such as car jacks in this example, as they do to a wrench, contrary to Hu's unsupported claim that the invention "does not make sense in the context of larger machinery." (See Hu Br. at 12.) -15-

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ratcheting mechanism to work it must be contained in a tool held in and worked by a handheld ratcheting wrench. (See generally `387 patent.) Hu's reliance on Renishaw, therefore, is misplaced. Hu similarly misinterprets the prosecution history in contending that it "indicates that the term "tool" is limited to a handheld contrivance." (See Hu Br. at 12.) Hu bases this argument on the fact that the examiner searched for prior art in subclasses 60-63, 63.1, and 63.2 within class 81. Hu provides no authority that prior art classifications searched by the examiner limit the scope of the invention.11 More importantly, not all of the prior art cited by Hu during prosecution was within the classes referenced in his brief. Indeed, art Hu cited falls within classes beyond hand tools.12 Hu is trying artificially to narrow the scope of "ratcheting tool" to avoid certain prior art that could render the `387 patent invalid. In so doing, Hu wrongly ignores the meaning of this technical term of art to those of ordinary skill in favor of his own modified definition

The purpose of the patent classification system is to allow "determining with readiness and accuracy the novelty of inventions for which applications for patent are filed." 35 U.S.C. § 8; (Manual of Patent Examining Procedure MPEP § 903.01 (Ex. G attached hereto)). The system doesn't limit the scope or application of inventions. See id. The patent classification system is used by the patent examiners to develop fields which will be searched for prior art. (MPEP § 904.01 (c).) (See Ex. G.) Importantly, that prior art search is not limited to only that art within the same classification as the claimed invention. Id. The fact that the examiner is required to search other classifications for applicable art shows that the classification of the claimed invention does not define the invention's scope. Hu cites prior art in classifications 7, Compound Tools; 16, Miscellaneous Hardware; 24, Buckles, Buttons, Clasps; 73, Measuring & Testing; 74, Machine Element or Mechanism; 192, Clutches & Power-Stop Control and 464, Rotary Shafts, Gudgeons, Housings & Flexible Couplings For Rotary Shafts. (U. S. PTO Manual of Classification attached hereto as Ex. H.) -1612

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disconnected from the context of the patent's claim language, specification, and prosecution history. Easco respectfully requests that the Court reject Hu's legally erroneous construction.13 III. "DRIVE MEMBER" "Drive member" should be given its customary meaning to one of ordinary skill in the art ­ "a shaft or shaft-like structure extended beyond the compartment." (See Easco's Proposed Construction Ex. B.) Technical dictionaries and case law construing comparable terms establish that Easco's proposed construction reflects ordinary meaning to a person skilled in the art. Moreover, every description, depiction and embodiment of the purported invention in the `387 patent establishes that "drive member" is a shaft extended beyond the compartment. Hu proposes construing "drive member" as "a constituent part of any structural unit or composite whole that causes something to move by force or compulsion in a direction." (See Ex. B.) Hu's construction is not found in any technical dictionary, but rather is based on a modification of a general dictionary definition unrelated to the customary meaning of this technical term. Hu's definition has no support in the claim language or intrinsic evidence. Furthermore, Hu's construction is expressed completely in functional terms, devoid of any structural characteristics. Thus, Hu attempts to capture with his proposed construction any possible structural component that performs the stated function, rather than only the structures contemplated in the `387 patent. Such sweeping coverage is legally impermissible, and should be rejected.

Easco disagrees with Hu's assertion that Easco has failed to offer a construction of "tool" as required by the Court's Scheduling Order. (See Hu Br. at 15.) Pursuant to the Parties Joint Claim Construction Statement, the term to be construed is "ratcheting tool," a technical term of art in the tool design field, not, as Hu would have this Court believe, the singular term "tool." (See Ex. B.) Easco has provided a construction for the complete term "ratcheting tool" as required based upon applicable definitions and the usage of the entire term in the `387 patent. See, supra, § II.A. -17-

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A.

The Intrinsic Evidence Supports Easco's Construction. 1. The Claim Language.

Claim 17 uses but does not define the technical claim term "drive member".14 As used by a person skilled in the art of tool design and defined in tool design and mechanical engineering dictionaries, treatises and encyclopedias, both words in the term "drive member" mean a shaft, beam or column with an extended end. a. "Drive" means a shaft that turns a socket.

The term "drive" specifically refers to the shaft structure of a ratcheting tool used to drive a socket. TAB Handbook of Hand & Power Tools, at 92 ("[t]he stud on the handle is called a drive.").15 (See Ex. I.) A "drive" is: "a tool which has a square end (1/4 inch, 3/8 inch, or ½ inch) which fits into a recess in a corresponding socket for the installation or removal of nuts and bolts." The Dictionary of Automotive Terms and Abbreviations (Ex. J. attached hereto.) Hu incorrectly ignores these technical dictionaries and treatises as the proper source of the ordinary and customary meaning of "drive member" in the context of the tool design art. See AFG Indust., 239 F.3d at 1248 (explaining that only when the patent's context is unclear, or it appears that the term is not being used in a technical manner, should the court rely upon a general dictionary definition for construing the term).16 Instead, Hu attempts to cobble together a

Claim 17 states: "... a rotatably mounted drive member including a gear wheel ...." The parties have agreed on the construction of the terms "including" and "gear wheel." (`387 patent, col. 9, 11. 53; Ex. B.) Notably, the TAB Handbook also defines box-end wrenches. The Handbook states, in relevant part, that box end wrenches have a closed, circular opening at the end of a handle. There is no reference to drive member in the discussion of box-end wrenches. (See Ex. I at 9091.) See also Abbot Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1354 (Fed. Cir. 2003) (relying on Fundamentals Of Analytical Chemistry (7th ed. 1996), to define "analyte"); Texas Digital, 308 F.3d at 1206 (relying on the Modern Dictionary Of Electronics to define -1816 15

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broader definition from definitions he finds in general English dictionaries. (See Hu Br. at 1518.) From thirty-nine general definitions, Hu selects the following two definitions of "drive": 1. To send, expel, or otherwise cause to move by force or compulsion: to drive away the flies; to drive back an attacking army; to drive a person to desperation; To cause and guide the movement of (a vehicle, an animal, etc.): to drive a car; to drive a mule.

2.

(Id. at 15-16.) On their face, these definitions are inapplicable to tool design. The context of the `387 patent is completely different from driving an army, car or mule. (See `387 patent.) Hu tries to buttress using his definitions by claiming they are consistent with the patent specification. (See Hu Br. at 16-17.) Contrary to Hu's assertions, the `387 patent is not consistent with such broad and unrelated definitions. Rather, the specification uses drive in a much more specific sense ­ a tool design with a shaft turning a socket. Indeed, the only patent language quoted by Hu as providing the relevant context for "drive" expressly acknowledges this specific definition: Thus, the teeth 31 of the pawl 30 is forced to engage with the teeth 211 of the gear wheel 21 of the drive member 20, best shown in FIG 6. The ratcheting tool is now in a status for driving a socket (not shown) or the like clockwise. (`387 patent, col. 6, ll. 4-6.) (See Hu Br. at 17 (emphasis added).) b. "Member" also means shaft or column.

"Member" is defined to have a similar structural meaning. "When construing the design of a mechanism or structure, a member is taken to be a single definable part, such as beam, plate or column which can be easily analyzed and stressed." Joseph Lawrence Naylor, Dictionary of Mechanical Engineering 246 (4th ed.). (See Ex. K. attached hereto.) Consistent with this

"activate"); Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir. 2003) (using the Dictionary Of Computing to define "circuit"). -19-

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technical definition, courts have construed the term "member" to be a shaft or beam structure. In CCS Fitness, for example, the Federal Circuit construed the term "reciprocating member" and concluded that the term "member" "denotes a beam-like structure that is a `single unit in a larger whole.'" CCS Fitness, 288 F.3d at 1367 (emphasis added). See also Jepson v. Egly, 231 F.2d 947, 950 (C.C.P.A. 1956) (concluding that "drive member" was "the shaft which drives one of the rollers"); Quigley v. Zimmerman, 22 C.C.P.A. 713, 715 (C.C.P.A. 1934) (using the term "flexible drive shaft" interchangeably with the term "flexible drive member"). In contrast, Hu's proposed definition of "member" ignores the technical sources and legal precedent, trying instead to force upon the patent a general architectural usage: A constituent part of any structural or composite whole as a subordinate architectural feature of a building. (See Hu Br. at 17-18.) The `387 patent does not use this broad language, but rather employs "member" in a precise way known in the art of tool design ­ as a shaft or column ­ as shown again by the patent language Hu himself quotes: Rotatably mounted in the head 12 is a drive member 20 having an upper end 22, a drive column 23 on a lower end thereof, and a gear wheel 21 formed in an intermediate portion thereof. (`387 patent, col. 4, ll. 16-19.) (See Hu Br. at 18 (emphasis added).) In the `387 patent, a "member" is not any conceivable component part (as Hu proposes), but rather one having a shaft at one end. 2. The Patent Specification. a. The Specification Consistently Refers to "Drive Member" as a Shaft or Shaft-Like Structure Extending Beyond the Compartment.

Not only do the two patent references quoted by Hu utilize "drive member" in the structural sense known to tool designers, but the entire `387 patent consistently refers to a drive

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member as a shaft with an extended end. Indeed, Hu himself described these features as necessary components of his invention: 17 A ratcheting tool in accordance with the present invention comprises: a handle; a head extended form the handle and having a compartment therein; a drive member including a first end extended beyond the compartment, a second end extended beyond the compartment, and a gear wheel formed between the first end and the second end, ...; (`387 patent col. 2, ll. 21-30, Summary of the Invention (emphasis added).) The purpose of the Summary of the Invention is to apprise the public of the nature of the invention. 37 C.F.R. § 1.73; (Manual of Patent Examining Procedure MPEP § 608.01(d).) (See Ex. L attached hereto.) "The summary should be directed to the specific invention being claimed, in contradistinction to mere generalities that would be equally applicable to numerous preceding patents." (MPEP § 608.01(d).) The Summary is of material assistance in aiding ready understanding of the invention. (Id.) The Federal Circuit has repeatedly relied on the Summary of the Invention when construing a disputed claim term. In Kinik Co., although not present in any dictionary definition of the term "mixture," the Court relied on the statement in the Summary that "the volume of the binder composition or binder phase in the mixture substantially exceeds the volume of the powdered composition" in construing the term "mixture" to require more of one component than the other. Kinik Co., 2004 U.S. App. LEXIS 5543, at *11. See also CCS Fitness, 288 F.3d at 1364 (relying on the Summary in construing "reciprocating member"); IGC - Med. Advances,
17

Using the word "comprising" in a patent means "is necessarily included." Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1344-45 (Fed. Cir. 2003) (explaining that "[c]omprising is a term of art used in claim language which means that the named elements are essential ....") (internal citation omitted). -21-

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Inc. v. United States Instruments, Inc., 34 Fed. Appx. 715, 719 (Fed. Cir. 2002) (relying on the Summary to construe "arched supports"); Embrex, Inc. v. Serv. Eng'g Corp., 216 F.3d 1343, 1348 ( Fed. Cir. 2000) (relying on the Summary to construe "controlling an immunizable disease"); Harris Corp. v. IXYS Corp., 114 F.3d 1149, 1153 (Fed. Cir. 1997) (relying on Summary in construing a device that did not latch under any conditions). In addition to the Summary of the Invention, the `387 patent specification confirms Easco's proposed construction. The diagrams of the `387 patent refer solely to a ratcheting tool with a shaft or shaft-like structure extended beyond the compartment. Figure 1 is a perspective view of a reversible ratcheting tool in accordance with the `387 invention. (`387 patent, col. 3, ll. 16-17.) It discloses a shaft or shaft-like structure extended beyond the compartment. Figure 2 is an exploded perspective view of the reversible ratcheting tool, disclosing a drive member 20 comprising a shaft or shaft-like structure extended beyond the compartment. (`387 patent col. 3, ll. 18-19.)

Fig. 1

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Figures 6 and 7 are both sectional views of the head of the ratcheting tool. (`387 patent, col. 3, ll. 51-54.) In both, the drive member 20 is disclosed as a shaft or shaft-like structure extended beyond the compartment.

The textual references to "drive member" in the `387 patent specification further support Easco's proper construction. Numerous references describe the above Figures as disclosing the drive member as a column or some other form of shaft-like structure extended beyond the compartment:
`387 patent specification `387 patent, col. 6, ll. 2-4 Reference (emphasis added) "Thus, the teeth 31 of the pawl 30 is forced to engage with the teeth 211 of the gear wheel 21 of the drive member 20, best shown in FIG. 6." "Thus, the teeth of the pawl 30 are forced to reengage with the teeth 211 of the gear wheel 21 of the drive member 20 (see FIG. 6). The ratcheting tool is now in a status for driving the socket counterclockwise." Referring to Figs. 1, 2, 6 "the drive member 20 further includes a central through hole 24 with a shoulder portion 241...." Referring to Figs. 1, 2, 6 "a pushpin 25 is mounted in the throughhole 24 of the drive member 20." Still referring to Figs. 1, 2, 6 "into the annular groove 222 of the drive member 20."

`387 patent, col. 6, ll. 60-63

`387 patent, col. 4, ll. 25-27 `387 patent, col. 4, ll. 28-29 `387 patent, col. 5, ll. 62-63

Other references expressly refer to a drive member with a first and/or second end establishing the drive member as a column or some other form of shaft-like structure extending beyond the compartment: -23-

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`387 patent specification `387 patent, col. 4, ll. 16-19 `387 patent, col. 4, ll. 21-24

Reference (emphasis added) "Rotatably mounted in the head 12 is a drive member 20 having an upper end 22, a drive column 23 on a lower end thereof ...." "The upper end 22 of the drive member 20 includes an engaging groove 221, and an annular groove 222 is defined in a side of gear wheel 21." "A ring 40 is pivotally mounted around the upper end 22 of the drive member 20." "A reversing plate 50 is mounted around the upper end 22 of the drive member 20 and includes a hole 51 and a thumbpiece 52." "A C-clip 53 is mounted around a portion of the engaging groove 221 of the upper end 22 of the drive member 20, thereby retaining the upper end 22 of the drive member 20 to the top face of the head." "In addition, the positioning piece 511 is extended into the remaining portion of the engaging groove 221 of the drive member 20. Thus the reversing plate 50 is pivotally engaged with the upper end 22 of the drive member 20." "As the pin 5211 is retained in place and the positioning piece 511 of the reversing plate 50 is engaged with the engaging groove 221 of the drive member 20, the reversing plate 50 is securely yet pivotally engaged with the upper end 22 of the drive member 20."

`387 patent, col. 4, ll. 60-61 `387 patent, col. 5, ll. 1-3 `387 patent, col. 5. ll. 11-15

`387 patent, col. 5, ll. 16-20

`387 patent, col. 5, ll. 49-53

The specification also refers to multiple embodiments of the alleged invention. (See `387 patent col. 4, ll. 47-49 ("Referring to Fig. 2A, the side of the pawl 30 has a plurality of teeth (ten teeth in this embodiment) for engaging with the gear wheel teeth 211"); `387 patent col. 5, ll. 5459 ("A transmission member 70 is provided to convert manual pivotal movement of the reversing plate 50 into pivotal movement of the pawl 30 about the rotational axis of the gear wheel 21. In this embodiment, the transmission member 70 is in the form of a