UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION

Transcription

1 Peter R. Afrasiabi, Esq. (Bar No. ) Christopher W. Arledge, Esq. (Bar No. 00) TURNER GREEN AFRASIABI & ARLEDGE LLP Anton Boulevard, Suite 0 Costa Mesa, California Telephone: (1) -0 Facsimile: (1) - Attorneys for Plaintiff and Cross-Defendant RANDALL MAY INTERNATIONAL, INC., and Cross-Defendant RANDALL MAY UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION RANDALL MAY INTERNATIONAL, INC., a California corporation, v. Plaintiff, DEG MUSIC PRODUCTS, INC., a Wisconsin corporation, and DYNASTY USA, an unknown business entity, Defendants. DEG MUSIC PRODUCTS, INC., a Wisconsin corporation, v. Cross-Complainant, RANDALL MAY INTERNATIONAL, INC., a California corporation and RANDALL MAY, an individual, Cross-Defendants. Case No. SACV 0- TJH (CFEx) PLAINTIFF S CLAIM CONSTRUCTION BRIEF REGARDING,1, PATENT [Declaration of Peter Afrasiabi filed concurrently herewith] Markman Hearing Date: 1/1/0 at :00 a.m. PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.) i

2 TABLE OF CONTENTS I. INTRODUCTION...1 II. CLAIM CONSTRUCTION PRINCIPLES...1 A. Claims are construed based upon their ordinary meaning... 1 B. Courts must avoid the danger of importing limitation from the patent specification s description of particular documents embodiments into the claims... C. Claim differentiation principles preclude narrowing an independent claim to be coterminous with a dependent claim... III. SUMMARY OF THE ISSUE IN DISPUTE... IV. CLAIM CONSTRUCTION OF CLAIMS AND OF THE PATENT Claim claims a device with three components.... Construction of claim limitation in dispute... a. Shoulder Supporting Members... (i). The parties contentions... (ii). Claim construction... (A) The entire welded upper-body section, minus the back member, should be considered shoulder supporting members... (B) The term shoulder supporting members cannot be limited to mere shoulder straps that are independently removable or changeable... (i). The claim language differentiates between shoulder supporting members and shoulder straps... (ii). The specification cannot be imported to narrow the claims as DEG urges... b. Changeable...1 (i). The specification is clear that the shoulder supporting members can be changed or adjusted even though welded to the back members...1 (ii). Claim specifically contemplates that the shoulder supporting members are changeable or adjustable along with other parts of the harness assembly... (iii). Other intrinsic evidence confirms that shoulder straps (or shoulder supporting members) do not need to be independently removable to be considered shoulder straps...1 c. Are the shoulder supporting members adjustable?... d. Securing mechanism locks the orientation of the shoulder supporting members and the back member...1 PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.) ii

3 IV.. Claim construction issues not in dispute... a. a shoulder supported carrier structure for supporting percussion instruments... b....for securing said structure of the shoulders of a user... c. a back member that spans across and is secured to each of the shoulder supporting members... CONCLUSION... PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.) iii

4 Cases TABLE OF AUTHORITIES Abbott Labs v. Andrx Phaarms., Inc., F.d 1, (Fed. Cir. 00)... Arlington Industries, Inc. v. Bridgeport Fittings, Inc., F.d 1, (Fed. Cir. 00)... Arminak & Associates, Inc. v. Saint-Gobain Calmar, Inc., 01 F.d, 1-0 (Fed. Cir. 00)...1 Comark Comm., Inc. v. Harris Corp., F.d 1, (Fed. Cir. )... Demand Machine Corp. v. Ingram Indus., Inc., F.d, 1 (Fed Cir. 00).. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., F.d (Fed. Cir Gillette Co. v. Energizer Holdings, Inc., 0 F.d, 1 (Fed. Cir. 00)... Kraft Foods, Inc. v. Int l Trading Co., 0 F.d 1, 1 (Fed. Cir. 000)... Kumar v. Ovonic Battery Co., Inc.,. 1 F.d 1 (Fed. Cir. 00)...1 Markman v. Westview Instr., Inc., F.d (Fed. Cir. )...1 Modine Mfg. Co. v. U.S. Int l Trade Comm n, F.d, 1 (Fed. Cir.... Phillips v. AWH Corp., F.d, -1 (Fed. Cir. 00)...1 Renishaw PLC v. Marposs Societa per Azioni, F.d 1, (Fed. Cir. ). Saunders Group, Inc. v. Comfortrac, Inc., F.d 1, -1 (Fed. Cir. 00)... V-Formation V. Bennetton Group SpA, 01 F.d, 1 (Fed. Cir. 00)...1 Vitrionics Corp. v. Conceptronic, Inc., 0 F.d (Fed. Cir. )...1 Xerox Corp. v. Com Corp., F.d, 1- (Fed. Cir. 001)... PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.) iv

5 I. INTRODUCTION Plaintiff Randall May International, Inc. ( RMI ) is a small family owned and operated business, which invents, makes and sells marching band equipment specifically the devices worn by musicians to carry drums while marching. RMI will not restate the factual background already discussed at length in the previously filed summary judgment motions. Two of RMI s patents are at issue in this case, and this claim construction brief addresses only United States Patent No.,1, ( the patent ). 1 See Afrasiabi Decl., Exh. 1 at p.1 (all Exhibits are chronologically numbered starting with the notation Page 1 in the lower right hand corner). II. CLAIM CONSTRUCTION PRINCIPLES The Federal Circuit s most recent en banc explanation of the principles underlying claim construction is Phillips v. AWH Corp., F.d, -1 (Fed. Cir. 00) (en banc). Phillips reaffirms the basic principles of claim construction outlined in important Federal Circuit cases from Markman v. Westview Instr., Inc., F.d (Fed. Cir. ) (en banc), aff d, U.S. 0 (), to Vitrionics Corp. v. Conceptronic, Inc., 0 F.d (Fed. Cir. ). Id. at. A. Claims are construed based upon their ordinary meaning As Phillips explains, in construing claim language the Court begins with the principle that words of the claims are given their ordinary and customary meaning and that this ordinary and customary meaning is the meaning that the claim term would have to a person of ordinary skill in the art in question at the time of the invention. Id. at -1. And the person of ordinary skill is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. Id. Because the claims and the specification are part of a fully integrated written 1 For ease of reference, all citations to the patent shall hereinafter be as follows: Col. x:y, where the x refers to the column of the patent, and the y refers to the line in that column of the patent. PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.) 1

6 instrument, Markman, F.d at, the specification is the single best guide to the meaning of a disputed term. Vitronics, 0 F.d at. Indeed, [u]sually, it is dispositive. Id Accordingly, claim language cannot be divorced from the specification, Phillips, F.d at 1-, because the claims do not stand alone and must be read in view of the specification, of which they are a part. B. Courts must avoid the danger of importing limitations from the patent specification s description of particular embodiments into the claims In analyzing the specification, courts must avoid the critical danger of reading limitations from the specification into the claims. Id. at 1. Thus, the Federal Circuit has expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment. Id. That is, although described embodiments may assist the Court, as a matter of law they are not the exclusive embodiments of the patented technology. See Arlington Industries, Inc. v. Bridgeport Fittings, Inc., F.d 1, (Fed. Cir. 00) (error to import limitations from preferred embodiments to restrict claim terms); Renishaw PLC v. Marposs Societa per Azioni, F.d 1, (Fed. Cir. ) (same). This is particularly true where, as here, the patentee has not defined the invention to be coterminous with the preferred embodiment. Specifically, if the patentee specifically defines the invention to be limited to the preferred embodiment, then the claims are not necessarily entitled to a broader scope than that embodiment. Modine Mfg. Co. v. U.S. Int l Trade Comm n, F.d, 1 (Fed. Cir. ( when the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment ), abrogated on other grounds by Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., F.d (Fed. Cir But here, the patentee specifically defined the invention to not be limited to the disclosed embodiments: It should be PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

7 apparent however to those skilled in the art that many more modifications besides those described are possible without departing from the inventive concepts herein. Col.:1-. This means the few embodiments disclosed cannot be the sum total of the invention. C. Claim Differentiation Principles Preclude Narrowing an Independent Claim to be Coterminous with a Dependent Claim. Under the doctrine of claim differentiation, two claims of a patent are presumptively of different scope. Kraft Foods, Inc. v. Int l Trading Co., 0 F.d 1, 1 (Fed. Cir. 000). And the difference between the scope of claims is significant. Comark Comm., Inc. v. Harris Corp., F.d 1, (Fed. Cir. ) ( there is presumed to be a difference in meaning and scope when different words or phrases are used in separate claims... the doctrine of claim differentiation states the presumption that the difference between claims is significant. ). For these reasons, the Federal Circuit has repeatedly rejected claim constructions that construe independent claim language to be coterminous with dependent claim language. See Phillips, F.d at -, 1 ( The inclusion of such a specific limitation on the term baffles in claim makes it likely that the patentee did not contemplate that the term baffles already contained that limitation. ); Saunders Group, Inc. v. Comfortrac, Inc., F.d 1, -1 (Fed. Cir. 00) (holding that pneumatic cylinder of independent claim could not be construed to be a pressure activated seal because dependent claim specifically called out pressure activated seal. ); Abbott Labs v. Andrx Phaarms., Inc., F.d 1, (Fed. Cir. 00) (holding that claim differentiation principles preclude construing independent claim pharmaceutically acceptable polymer as being the same as the narrower dependent claim term hydrophilic water soluble polymer and so the independent claim had to be broader than the dependent one). PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

8 III. SUMMARY OF THE ISSUE IN DISPUTE This case concerns carriers for percussion instruments that is, the devices that a member of a marching band would wear in order to carry a drum, for example. Plaintiff RMI and Defendant DEG both make such devices. The DEG devices at issue in this lawsuit are DEG s P0 welded products (product numbers P0-DAST, P0-DAB1 and P0-DAQV). One such welded carrier is pictured to the right. (Afrasiabi Decl., Exh. at p.1.) RMI owns various patents for drum-carrier devices, including the patent at issue here. The nub of this dispute is RMI s contention that P0 products infringe independent claim and dependent claim of the patent. Although DEG denies RMI s assertions, DEG has conceded that its device satisfies virtually all of the claim language, with the exception of the language highlighted below: The only matter truly at issue, then, is whether DEG s P0 products have changeable or adjustable shoulder supporting members. DEG s admissions are located in the record as Exhibit to the Declaration of Peter Afrasiabi filed in support of RMI s MSJ re Infringement of the patent (District Court Docket Entry Number 1), which Exhibit is DEG s Responses to RMI s RFA s. Finally, this claim construction brief does not address RMI s claims that the DEG products at issue also infringe under the doctrine of equivalents, a matter this PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

9 IV. CLAIM CONSTRUCTION OF CLAIMS AND OF THE PATENT 1. Claim claims a device with three components The preamble phrase shoulder supported harness assembly for supporting percussion instruments, comprising is a statement of the invention itself and not an actual claim limitation. In other words, it is an introduction to the general field of the claim. On Demand Machine Corp. v. Ingram Indus., Inc., F.d, 1 (Fed Cir. 00). That general field of the invention is a harness assembly invention comprised of (at least) the following elements: (1) a vest or other frontal piece; () a shoulder piece; and () a back member. Those three pieces of the invention are claimed structurally in Claim : (1) the frontal piece or vest (or other embodiment) is described as the shoulder supported carrier structure, minus the shoulder supporting members ; () the shoulder piece is described in the first sub-paragraph as the shoulder supporting members ; and () the back member is described using the same words in the last paragraph of Claim : That those three pieces constitute the scope of the invention is also addressed in the patent specification which details (1) a vest/frontal piece () a shoulder piece, and () a back member. See Col.:-(vest); :- (T-bar). Court has left for a jury to decide in light of the denial of the cross-summary judgment motions, and which issues RMI fully reserves all of its rights under. PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

10 Finally, a claim to a combination comprising A + B is infringed by a product having A + B + C, or any other combination which includes the elements A + B. See Gillette Co. v. Energizer Holdings, Inc., 0 F.d, 1 (Fed. Cir. 00) (a razor comprising... a group of first, second, and third blades did not exclude a razor having four blades because [t]he word comprising transitioning from the preamble to the body signals that the entire claim is presumptively open-ended.... The addition of elements not recited in the claim cannot defeat infringement. ). As such, here the use of the word comprising means the invention includes at least the elements claimed after the word comprising, specifically: [1] a carrier structure (shoulder supporting piece and vest/frontal supported piece) and [] a back member.. Construction of claim limitations in dispute The crux of the dispute between the parties concerns the meaning of the claim language changeable or adjustable shoulder supporting members as well as the meaning of dependent claim s securing mechanism. The language changeable or adjustable shoulder supporting members is addressed in sections a, b and c below and the dependent claim securing mechanism is addressed in section d below. As indicated, DEG has conceded that its P0 devices satisfy all of the other claims limitations of Claims and and those claim limitation for a full claim construction are provided in Section below. a. shoulder supporting members (i). The parties contentions Pictured to the right is the welded upper-body section found in DEG s P0 products. (Afrasiabi Decl. Exh. at p.1.) There is no dispute that the back member attached to that section (and indicated by the red arrow) is not a shoulder PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

11 supporting member within the meaning of the patent. However, there remains a dispute as to what remaining portions constitute shoulder supporting members. According to DEG, this Court should not consider the welded upper-body section to be shoulder supporting members. See DEG s Motion for Summary Judgment ( DEG s MSJ ) at -0. Rather, DEG distinguishes between the two long metal strips that stretch over the user s shoulders (which DEG describes as the shoulder straps ) and the center piece to which they are welded (which DEG describes as a V-bar). Id. According to DEG, only the shoulder straps can be the shoulder supporting members, id., and because the straps are welded to another piece (what DEG calls a V-bar), DEG s P0 products lack changeable or adjustable shoulder supporting members. shoulder supporting members as it is performing the supporting function construction then runs afoul of basic claim canons that preclude eliminating claim // DEG s argument is flawed for numerous reasons. First, the entire welded upperbody section is holding the device on the user s shoulders and therefore must be the regardless of welding between the shoulder strap and V-bar. Indeed, DEG s construct ignores the word supporting as a descriptor of the shoulder piece and DEG s words from consideration. Second, the patent itself treats the term shoulder supporting members more broadly than mere shoulder straps. // // All these issues are addressed in turn. As discussed above, the back member cannot be a shoulder supporting member because by definition in the patent, they are different portions of the harness assembly. According to the patent, the harness assembly is comprised of a carrier structure and a back member. The shoulder supporting members are described as being a part of the carrier structure portion of the device not a part of the back member part of the device. This is not disputed. PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

12 (ii). Claim construction (A) The entire welded upper-body section, minus the back member, is the shoulder supporting members Structurally, shoulder supporting members are a part of the shoulder supported carrier structur e as evidenced by the latter being defined to have ( having ) the former. Shoulder supporting members are described in the patent specification. They include those portions of the invention that hang on the shoulders (shoulder straps in the embodiment described), and rest on the front of the user. See Col. :- 1. They also rest on the back of the user and connect to the back member at that point. See Col. :-. In certain embodiments, the shoulder supporting members can be shoulder straps. However, as discussed above, even illustrations used in a patent are not the exclusive embodiments of the patented technology. See Arlington Industries, Inc., F.d at ; Renishaw PLC, F.d at. Most importantly, those shoulder supporting members can be identified by their function; namely, supporting the entire invention, and securing it on the shoulders of the user. See Col. 1:-; Col. :-0. Thus, the shoulder supporting members for any particular embodiment of harness assembly can be identified according to that function holding the rest of the device up on the user s shoulders. Identifying what part of the carrier device is holding everything else up may be accomplished by common sense gravity. Specifically, all of the bolts are removed from a drum carrier being worn by a user. Those portions of the drum carrier that do not fall to the ground must be holding everything else up (i.e., supporting the rest of the device). Thus, those portions remaining on the user s shoulders must be the shoulder supporting members, since they were supporting the balance of the device. Everything that falls to the ground must have been the supported part of the device. PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

13 In this case, the shoulder supporting members of DEG s P0 products are outlined in red. (Afrasiabi Decl. Exh. at p.). A user need only unscrew the first available two bolts (identified by blue arrows) for everything except the portion outlined in red to fall to the ground. Id. Thus, the portions remaining on the user s shoulders must have been supporting the rest of the device. Therefore, they are the shoulder supporting members. (B) The term shoulder supporting members cannot be limited to mere shoulder straps that are supporting members must be interpreted more broadly than mere shoulder straps. shoulder supporting members and shoulder straps claim 1 s shoulder supporting members (exact same claim language in claim ) as being shoulder straps : independently removable or changeable Two polestar principles of claim construction confirm that the phrase shoulder Each is considered in turn. (i) The claim language differentiates between First, the claims of the patent uses the phrases shoulder straps and shoulder supporting members differently. In particular, dependent claim in the patent (Exh. 1 at 1) specifically offers a narrower definition of independent The Federal Circuit has repeatedly rejected claim constructions that render claims redundant by way of claim constructions that construe independent claim language to be coterminous with dependent claim language. See Phillips, F.d at PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

14 , 1 ( The inclusion of such a specific limitation on the term baffles in claim makes it likely that the patentee did not contemplate that the term baffles already contained that limitation. ); Saunders, F.d at -1 (holding that pneumatic cylinder of independent claim could not be construed to be a pressure activated seal because dependent claim specifically called out pressure activated seal. ); Abbott Labs, F.d at (holding that claim differentiation principles preclude construing independent claim pharmaceutically acceptable polymer as being the same as the narrower dependent claim term hydrophilic water soluble polymer and so the independent claim had to be broader than the dependent one). By definition of the claim language and claim construction principles, although shoulder supporting members can be shoulder straps they are by definition broader than mere shoulder straps. To hold otherwise would render shoulder supporting members coterminous with shoulder straps where shoulder straps are specifically defined in the dependent claim to be a narrower version of shoulder supporting members as presented to the PTO and considered by the examiner thus allowing the differentiated claim language. With allowance of the dependent claim, the examiner obviously endorsed the broadness of the independent claim. Moreover, it is critical to note that dependent claim specifically claims rigid shoulder straps that are removable. As a result, by definition the shoulder supporting members of the independent claim are not required to be removable shoulder straps. Therefore, claim differentiation principles mandate that shoulder supporting members are not required to be independently removable shoulder straps. demonstrates that DEG s argument that shoulder supporting members are This independently removable shoulder straps is flat wrong, because DEG s construct of should er supporting members is specifically claimed in a narrow dependent claim. Finally, DEG s belated response contention (first articulated in response to RMI s MSJ s claim construction, see DEG MSJ Opposition at :-) that dependent claim in fact equates shoulder supporting members with shoulder PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

15 straps and only narrows shoulder supporting members/shoulder straps to a rigid requirement is facially impossible in light of dependent claims & which specifically call out the rigid requirement but do so for shoulder supporting members, not shoulder straps. Were DEG s nonsensical construct correct, then dependent claims & are utterly superfluous because, per DEG, dependent claim has already called out shoulder supporting members as rigid shoulder straps (which equates shoulder supporting members with shoulder straps). Moreover, DEG s argument about its alternative meaning to dependent claim makes no sense because if the narrowing focus were only rigidity, then the patentee would have claimed said shoulder supporting members are rigid, period, without shoulder straps following the word rigid. Fundamentally, different word usage means the words have different meanings. See Xerox Corp. v. Com Corp., F.d, 1- (Fed. Cir. 001). And this principle forecloses DEG s construction. Accordingly, Claim, like claim 1, does not limit the term shoulder supporting members to mere shoulder straps. Indeed, the law is very clear that where a dependent claim narrows a limitation from the independent claim, the Court cannot construe that phrase in the independent claim to be coterminous with the dependent claim. See Phillips, F.d at -. Thus, by definition of the claim language and claim construction law, although shoulder supporting members can be shoulder straps they are by definition broader than just individual shoulder straps and under these claim differentiation principles it is impossible to construe shoulder supporting members to be just independently removable shoulder straps because dependent claim specifically calls that out as a dependent claim. (ii) The specification cannot be imported to narrow the claims as DEG urges Second, the fact that the specification and figures disclose one embodiment of the invention as possessing shoulder straps does not mean shoulder supporting PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

16 members are therefore equated with shoulder straps. Indeed, equating the two, as DEG urges, would violate another cardinal claim construction principle, since the Court would be importing limitations from preferred embodiments and the specification into Claim. See Arlington Industries, Inc., F.d at ; Renishaw PLC, F.d at. Therefore, this Court should conclude that shoulder supporting members, while including shoulder straps, are not necessarily limited to straps but also includes any combined unitary shoulder structure that sits on the user s shoulders and perform the function of supporting. Related to this point, here the patentee expressly stated in the patent that certain embodiments had been disclosed but that those embodiments were not the sum total of the invention. Col. :1-. This is important, because it demonstrates an unambiguous and clear statement that the embodiments described were in fact not the sum total of embodiments of the invention. As a result, under Modine, F.d at 1, the claim language cannot be deemed to be limited to the embodiments disclosed in the patent. At the end of the day, DEG seeks to eliminate these canons of claim construction so as to in effect treat the patent not as a utility patent that receives the benefit of these basic canons of claim construction discussed herein, but as a narrow design patent limited to a drawing depicted in the patent as if the patent only covered that drawing. See, e.g., Arminak & Associates, Inc. v. Saint-Gobain Calmar, Inc., 01 F.d, 1-0 (Fed. Cir. 00) (design patents are patents on drawings and the scope of coverage is akin to the drawing). Accordingly, this Court should construe this claim limitation to be the shoulder members piece that performs the function of supporting the balance of the carrier structure on the user and which secures the carrier structure on the user s shoulders. This certainly includes shoulder straps, but is not limited to only two parallel straps. The portion of the device that is supported by the shoulder supporting members piece is by definition not part of the shoulder supporting members, i.e., the vest/frontal piece 1 PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

17 of the assembly. Thus, the shoulder supporting members are by definition supporting the balance of the carrier device (and the shoulder supporting members do not include the back member by definition of the claim language and as a matter of practical fact since the back member simply connects to the shoulder supporting members and spreads the load across the back). Therefore, the shoulder supporting members is the piece of the device that connects on the user s back to the back member and which piece then sits on the user s shoulders and performs the function of supporting the balance of the device on the front side. Finally, as discussed below, this shoulder supporting members piece must also have the additional capacity to be changed or adjusted and tho se limitations are discussed below. b. changeable The ordinary and customary meaning of change is apparent from a review of the patent specification. The patent specification literally discusses the concept of removing the shoulder supporting members and substituting new ones of different sizes to accommodate different sized users. Col. 1:-; Col. :-; Col. :1-, -. This Court should, therefore, construe the word changeable as used in Claim according to its ordinary meaning. Thus, changeable... shoulder supporting members refers to the ability to replace, remove or substitute one set of shoulder supporting members with another. Thus, the shoulder supporting members in DEG s P0 products are changeable. // // PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.) 1

18 // Despite DEG s admission in sworn deposition testimony that its products shoulder supporting members are changeable, DEG s attorneys now argue that the shoulder supporting members in DEG s P0 products are neither changeable nor adjustable. DEG s MSJ at 1-. According to DEG, Claim is satisfied only if the shoulder supporting members alone can be changed (and where Deg assumes those shoulder supporting members are no more than two parallel shoulder straps). See DEG s MSJ at 0:-, :-. This claim construction advanced by DEG s lawyers is wrong as we now address (but even if it were correct, DEG s shoulder supporting members are changeable alone under the correct construction of shoulder supporting members). (i) The specification is clear that the shoulder supporting members can be changed or adjusted even though welded to the back members Nothing in Claim says that in order to effect a change in the shoulder supporting members only the shoulder supporting members must be changed and that Q. Let s say I bolted this on here? [In video, bolting the new Silver Shoulder Supporting Members to the original P0 product.] A. Yes. Q. Have I now changed the shoulder supporting members? A. It is different from what normally comes with the carrier, yes. Q. So that s a yes? A. Yes.... Q. When this attaches here [attaching the Silver Shoulder Supporting Members shown above to the original P0 product], do we have new shouldersupporting members that have been attached to the rest of the device by virtue of the bolting on this vertical bar here? A. Yeah. We have a new assembly of parts. Afrasiabi Decl. Exh. at p., internal deposition pages 1:1-: and 1:-1. 1 PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

19 nothing else maybe changed at the same time. In fact, it simply states that the harness assembly must have changeable (or adjustable) shoulder supporting members. Notably, the specification specifically discusses the embodiment of the device that has a welded back member to shoulder straps. Col.:-0. There, the specification discusses how there are changeable or adjustable shoulder straps where the back member is welded to those shoulder straps. Col.-0. This demonstrates that the very patent specification understands there to be changeable or adjustable shoulder supporting members (or straps) even where there is welding of those members to the back bar such that those members obviously cannot be changed or adjusted completely independent from any other portion of the device. Further, the patent specifically claims that the shoulder supporting members described in Claim may be changed along with other portions of the harness assembly that are permanently affixed to the shoulder supporting members, as specifically claimed in Dependent Claim, to which we now move. (ii) Claim specifically contemplates that the shoulder supporting members are changeable or adjustable along with other parts of the harness assembly Aside from the Dependent Claim argument above, Dependent Claim in the - patent describes a further limitation of Claim which has all the characteristics found in Claim, but where the back member is necessarily locked to the shoulder supporting members (i.e., welded ): The patent specification specifically states that the [b]ack member may be fixed as by welding or the like. Col. :-. See also Col. :-0 (locking of orientation by welding discussed in patent specification). PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

20 As a result, any removal, substitution or change of the shoulder supporting members would necessarily also require removal of other portions of the device that are specifically not part of the shoulder supporting members namely the back member that is welded to them. Nonetheless, under Claim, the shoulder supporting members are still changeable or adjustable, because the carrier described by dependent Claim as a matter of law has all of the characteristics of independent Claim changeable or adjustable shoulder supporting members upon which it is based. Id. The patent specification confirms this. Col.:-0. In other words, even though the shoulder supporting members are changed along with something else in the harness assembly namely, the welded back member those shoulder supporting members are still by definition changeable or adjustable. Id. Consequently, if this Court concluded that the shoulder supporting members must be changeable by themselves and not in combination with anything else in the device, then such an interpretation would nullify the specific language of dependent Claim that envisions changeable shoulder supporting members that are welded to another piece and hence not changeable alone. This, of course, would violate basic claim construction principles. See Phillips, F.d at -. Thus, there is no requirement that the shoulder supporting members be changeable or adjustable by themselves alone and independent from every other component of the assembly. (iii). Other intrinsic evidence confirms that shoulder straps (or shoulder supporting members) do not need to be independently removable to be considered shoulder straps The prior art cited by the patent specification is also intrinsic evidence that the Court reviews in the claim construction process. See V-Formation V. Bennetton Group SpA, 01 F.d, 1 (Fed. Cir. 00); Kumar v. Ovonic Battery Co., Inc., 1 F.d 1, (Fed. Cir. 00) ( When prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.) 1

21 construction of the term to persons skilled in the art, but also that the patentee intended to adopt that meaning. ) (internal quotations omitted). Here, two of the prior art patents cited in the specification shed light on the fact that the appropriate claim construction of shoulder supporting members/shoulder straps does not require that for something to be deemed shoulder straps it must be independently removable from every other portion of the device. First, patent number,, in Figure 1 depicts a vest with shoulder straps (number ) which shoulder straps are not removable from the body of the vest. (Afrasiabi Decl., Exh at p..) Yet they are still deemed shoulder straps even though they are indivisibly connected to the vest and with the vest there is one unitary piece. Figure 1 and the text describing number on Figure 1 are provided below:, Col. :-1 (Exh. ) Second, U.S. Patent Number,0,, also a Randall May patent cited in the prior art specification section of the patent (as well as being part of the heritage of the patent), teaches a vest with shoulder straps that are not independently removable from an upper frontal vest portion (). (Afrasiabi Decl. Exh. at p.0.) These are still referred to as shoulder straps even though they are indivisibly connected to the upper vest portion and, if changed would be changed along with the upper vest portion. Moreover, this very device with the shoulder straps (or shoulder supporting members) connected to an upper vest portion is specifically referred to as an adjustable vest. Figure from the patent and the accompanying text are shown here: PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

22 Col., Col. 0:-1 (Exh. ) These cited prior art patents in the specification are intrinsic evidence that further shed light on the claim construction issues raised here, and, specifically, these references demonstrate that shoulder supporting members or shoulder straps do not need to be independently removable or changeable apart from all other pieces of the carrier assembly in order to be considered shoulder supporting members or shoulder straps that are changeable or adjustable. Accordingly, changeable... shoulder supporting members refers to the ability to replace, remove or substitute one set of shoulder supporting members with another and there is no requirement that the shoulder supporting members be changeable by themselves alone and independent from every other component of the harness assembly. // // // PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

23 c. Are the shoulder supporting members adjustable? The patent specification describes adjustability by way of bolts or screws that connect the shoulder piece to the front of the device. Col. :-0; Col. :-. That adjustability allows the vest or other frontal piece to be moved up or down relative to the shoulder supporting members and permits adjustment of the straps () relative to vest portion (). This adjustment improves the user s comfort, and improves the utility of the device, to allow multiple users of different sizes to size the carrier structure for proper fit first, prior to adjusting the drum hardware independent of the carrier structure to achieve like playing height of the drums through out the entire drum line. Col. 1:-0, -; Col. :1-, -. The dictionary is the same. (Afrasiabi Decl. Exh. [ adjust as follows: to bring the parts of to a true or more effective relative position. ]). There is no requirement in either the claim language or the specification that the adjustability occur on the physical shoulder members themselves. First, dependent claim covers adjustable shoulder supporting members that were locked in orientation to each other by definition of the welding at the back bar. But they are still adjustable relative to the rest of the device which is the very point of the invention while encompassing a back member. Col.:-0. Next, the Randall May patent, part of the prior art cited in the specification, specifically teaches that adjustability of shoulder straps occurs by virtue of an adjusting mechanism on the rest of the device, not the shoulders. Specifically, claims 0 and 1 teach supporting members (such as a T-bar style as in Fig. ) that PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

24 are designed to adjust the position of the shoulder straps relative to the supporting member. See Afrasiabi Decl. Exh., Patent, Claims 0 & 1. In other words, the shoulder straps () are adjusted by virtue of the supporting member being adjusted itself (pieces and that slide together, from Figure below) which in turn necessarily adjusts the relative relationship between the belly plate and the shoulder straps. And all the adjustment occurs on the supporting member portion, never the shoulder straps. Accordingly, given the ordinary use of the word adjust in the patent specification and given the prior art cite din the specification, the Court should conclude that the term adjustable as used in Claim refers to the ability to bring the parts of the carrier structure to different relative positions, in order to accommodate the user s comfort, size, weight, or other features, and that the shoulder members are adjustable even if the adjustment occurs on the vest or other portion so long as the relative relationship between the shoulder members and the lower portion is affected, that is, adjusted. There is no requirement that the shoulder supporting members be adjustable by themselves alone and independent from every other component of the harness assembly. 0 PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

25 d. securing mechanism locks the orientation of the shoulder supporting members and the back member Claim in the patent specifically contemplates shoulder supporting members being welded to the back member (or otherwise permanently affixed such that the orientation of the two is locked): That orientation can be locked by welding or the like, as is established in the patent specification. Col. :- ( [b]ack member may be fixed as by welding or the like ). See also Col. :-0 (locking of orientation by welding discussed in patent specification). That the securing mechanism in claim refers to the secured phrase in the second paragraph of claim is beyond any legitimate question (as the Court knows form the demonstrative exhibits and the pictures, DEG s P0 carriers incorporate a welded back bar to the shoulder supporting members, although DEG has seemingly asserted that claim s securing mechanism may refer to the securing phrase in the first paragraph of claim. DEG s argument is meritless. Claim makes clear that the securing mechanism is the one that operates as between the back member and the shoulder supporting members and only the second paragraph of claim involves both of those pieces of the invention. In other words, dependent claim modifies claim in that the shoulder supporting members are welded or otherwise affixed to have a locked orientation 1 PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

26 into one piece with the back member. Any locking of orientation means exactly that: the orientation of the two (back member and shoulder supporting members) is locked such that they cannot be adjusted relative to each other but they can be adjusted of course relative to the carrier structure. Thus, even though the shoulder supporting members are changed or adjusted along with something else in the harness assembly namely the welded back member those shoulder supporting members are still by definition considered to be changeable or adjustable. Finally, and of importance to the claim construction, dependent claim s proviso for permanently welding the back bar to the shoulder supporting members demonstrates that there is by definition the existence of shoulder supporting members even though there is one unitary welded piece. This is important because DEG has argued that the act of welding the shoulder straps to another piece of the device causes the device to lack shoulder supporting members because there is no plurality of parts post-welding and because post-welding the parties a unitary one (in other words a member without the s ). See DEG s Opp. To RMI s MSJ at :- :1. Obviously, in light of claim, the act of welding the distinct parts of the device together into one unitary piece (exactly what DEG has done in its welded P0) does not eliminate the existence of the shoulder supporting members any more than the fact that we have two shoulders even though they are indivisibly connected together. Likewise, a person wears pair of pants even though it refers to one unitary article of clothing and a person looks through a pair of eyeglasses even though the glasses are one unitary piece. Accordingly, this claim should be construed to mean that a locking mechanism has been applied to the back member and shoulder supporting members such that they are affixed together in a manner that precludes any change in orientation, i.e., they are welded together. Moreover, this then necessarily means that shoulder supporting members can be permanently welded to distinct, other portions of the device yet they PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

27 still exist as and constitute changeable or adjustable shoulder supporting members from claim by definition.. Claim construction issues not in dispute DEG does not dispute that its product satisfy these limitations of claim but RMI provides this construction to afford the Court a full construction of the claim. a. a shoulder supported carrier structure for supporting percussion instruments As discussed above, the shoulder supported carrier structure is by definition the entire harness assembly minus the back member. Shoulder supported carrier structure refers to the fact that the carrier structure itself (the harness assembly minus the back member) is supported on the user by way of the user s shoulders that is, is shoulder supported, Col. 1:1-; Col. :- and for supporting percussion instruments refers to the fact that the shoulder supported carrier structure performs the function of supporting or carrying percussion instruments such as drums, cymbals or the like. Col. 1:1-; :1-1; Col. :-. This function is performed by way of a vest, T-bar, or PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

28 other frontal piece. See Col. :-; Fig. vest embodiment) Col. :-; Fig. T- bar embodiment. Examples of the shoulder supported carrier structure are found in Figures and, pictured above, where that portion of the invention is everything in the pictures less the back member. As explained previously, however, these pictures represent only illustrative embodiments of potential carriers. Illustrations used in a patent are not the exclusive embodiments of the patented technology. See Arlington Industries, Inc., F.d at ; Renishaw PLC, F.d at. This is especially true where the patentee expressly state in the patent that the embodiments described were not the exclusive embodiments of the invention. Col.:1-. Accordingly, this claim limitation should be construed to mean that portion of the shoulder supported harness assembly that (1) does not include the back member, () is supported by the user s shoulders, and () performs the function of supporting percussion instruments. b.... for securing said structure on the shoulders of a user The phrase for securing said structure on the shoulders of the user facially means that the shoulder supporting members performs the function of securing the entire carrier structure on the user s shoulders. The language is clear and the specification confirms this function. Col. 1:-; Col. :-0. Accordingly, the Court should construe this language to mean that the shoulder supporting members enable or perform a function of securing the carrier structure on the user s shoulders. PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

29 c. a back member that spans across and is secured to each of the shoulder supporting members As discussed above, the back member is that second portion of the assembly invention that does not include the carrier structure (the supporting and supported portions in the first paragraph of Claim ). The specification describes the back member in various ways: (1) as a contoured plate that wraps around the back of the user as in Figure 1, Col.-1; () as a back bar as in Figures and. In any embodiment, that back member must connect to the shoulder supporting members. Specifically, the specification teaches it is secured to the shoulder supporting members by being affixed that is, attached to the ends of those shoulder supporting members. Col. 1:-; Col. :-; :-0. Moreover, Claim does not require that the back member be secured in a permanent manner to the shoulder supporting members, although Claim discussed below narrows the claimed back member to one that is so permanently affixed to the shoulder supporting members. Accordingly, the Court should construe this language to mean a back member or back bar that is connected to the shoulder supporting members and which back piece spans across the user s back to connect to the shoulder supporting members. IV. CONCLUSION For all the foregoing reasons, Plaintiff respectfully requests that the Court adopt the above-described claim construction of Claims and of the patent. Dated: December 1, 00 By: Peter Afrasiabi, counsel for Plaintiff RMI PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.)

30 CERTIFICATE OF SERVICE I hereby certify that on December 1th, 00, I caused to be electronically filed the foregoing PLAINTIFF S CLAIM CONSTRUCTION BRIEF REGARDING,1, PATENT with the Clerk of the Court using the CM/ECF system which will send notification of such filing to the following addresses of the other counsel in this case, identified below: Douglas E. Warren, Esq. dewarren@charter.net Chesterfield Business Parkway Chesterfield, MO 00 Attorney for DEG Music Products, Inc. and Dynasty USA Attorneys for Plaintiff and Counter-defendants Wilmore F. Holbrow, III Bill_Holbrow@bstz.com Blakely, Sokolof, Taylor & Zafman, LLP 0 Wilshire Boulevard,, th Floor Los Angeles, CA 00 Attorney for DEG Music Products, Inc. and Dynasty USA /s/ Peter Afrasiabi PLAINTIFF RANDALL MAY INTERNATIONAL, INC. s CLAIM CONSTRUCTION BRIEF REGARDING PATENT (.) iii