Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 1 of 14 UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF TEXAS WICHITA FALLS DIVISION ALTO-SHAAM, INC., Plaintiff VS. THE MANITOWOC COMPANY, et al., Defendants CIVIL ACTION NO. 7:09-cv-00018-O BRIEF IN SUPPORT OF ALTO-SHAAM, INC. S PROPOSED CLAIM CONSTRUCTION TO THE HONORABLE JUDGE OF SAID COURT: Plaintiff Alto-Shaam, Inc. ( Alto-Shaam ) files this its Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction and for support would show the Court: I. INTRODUCTION In accordance with this Court s scheduling order, the parties have exchanged proposed terms and claim elements for construction. The parties have also exchanged their preliminary claim constructions. Alto-Shaam asserts that the claim terms in its patents should be construed according to their ordinary meaning, since they are all non-technical terms used every day by non-technically trained judges and jurors. Defendants, on the other hand, argue that the Court should construe the claims using means-plus-function analysis under 35 U.S.C. 112. Whether the Court applies ordinary meaning or means-plus-functions analysis, however, the outcome is the same: Alto-Shaam is entitled to judgment as a matter of law that Defendants have infringed Alto-Shaam s patents. Therefore, because entry of summary judgment in Alto-Shaam s favor is proper under either Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 1
Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 2 of 14 proposed claim construction, there is no need for a claim construction hearing. To the extent the Court determines that any claim construction is necessary, however, this Court may construe claims within the context of Alto-Shaam s Motion for Summary Judgment. See, e.g., Bd. of Regents of the Univ. of Texas Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1369 (Fed. Cir. 2009) (construing claims in a summary judgment proceeding). II. ARGUMENT AND AUTHORITIES Defendants model OES-6.20SMK combination smoker oven directly and literally infringes Claim 11 of the 668 Patent and Claim 1 of the 173 Patent. Every limitation of the Claim 11 and Claim 1 of Alto-Shaam s patents can be found in the OES-6.20SMK combination smoker oven. A. Claim language is the most important indicator of claim meaning. Claim terms should be given their ordinary and customary meaning as understood by a person of ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). To that end, the words used in a claim are generally given their ordinary and customary meaning. Id. This principle of patent law flows from the recognition that inventors are usually persons who are skilled in the field of the invention. The patent is addressed to and intended to be read by others skilled in the particular art. Id. Further, the claim language is the most important indicator of the meaning of the claim and should therefore be the central focus of the analysis. Id. at 1312; Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1387 (Fed. Cir. 2002). In SRI Int l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (plurality opinion), the Federal Circuit explained that [i]t is the claims that measure the invention. (emphasis in the original). See Ferlep v. Brinkman Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005) ( The construction of claims is simply a way of elaborating the normally terse claim language in order to understand and explain, but not to Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 2
Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 3 of 14 change, the scope of the claims. ) B. It is improper to import limitations from the specification. While the specification can act as a dictionary for the terms in the claims where it defines those terms, courts do not incorporate additional features into the claims merely because those features are discussed or illustrated in the specification. See, e.g., CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) ( [T]his court will not at any time import limitations from the specifications into the claim. ); NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1310 (Fed. Cir. 2005) ( If we once begin to include elements not mentioned in the claim in order to limit such claim... we should never know where to stop. ); Laitram Corp. v. Cambridge Wire Cloth Co., 863 1 F.2d 855, 856 (Fed. Cir. 1988). The Phillips court, citing Gemstar-TV Guide Int l, Inc. v. Int l Trade Commission, 383 F.3d 1352, 1366 (Fed. Cir. 2004), also confirmed that even if there is only a single embodiment disclosed in a patent, this does not require the claims of the patent to be construed as being limited to that embodiment. Phillips, 415 F.3d at 1323. That is not just because section 112 of the Patent Act requires that the claims themselves set forth the limits of the patent grant, but also because persons of ordinary skill in the art rarely would confine their definitions of terms to the exact representations depicted in the embodiments. Id. C. Defendants combination smoker oven infringes Alto-Shaam s patents. The terms in Alto-Shaam s patents are non-technical terms used every day by non-technically 1 The Federal Circuit has repeatedly warned that courts must be mindful to avoid importing limitations from the specification into the claims. Nazomi Commc ns, Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005) (claims may embrace different subject matter than is illustrated in the specific embodiments in the specification ); Leibel-Flarsheim v. Medrad, Inc., 358 F.3d 898, 906-08 (Fed. Cir. 2004); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002); Comark Commc n., Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998); SRI Int l v. Matsushita Elec. Corp. Of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985). Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 3
Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 4 of 14 trained judges and jurors. There is nothing to indicate that these terms, as used in the patents, have meanings other than their common and ordinary meanings to the ordinary person with no skill in the art. Using the ordinary meaning of the claim terms, Defendants model OES-6.20SMK combination smoker oven directly and literally infringes Claim 11 of the 668 Patent and Claim 1 of the 173 Patent. Every limitation of the Claim 11 and Claim 1 of Alto-Shaam s patents can be found in the OES-6.20SMK combination smoker oven as set forth in claim chart format as follows: U.S. Patent 7,157,668 Claim 11 An oven capable of preparing food product utilizing a first and second food preparation process, the oven comprising: a heating cavity defining an interior including an apparatus for supporting food product disposed therein, and a door providing selective access to the interior; a first food preparation assembly operable to prepare raw food product using steam and at least one of radiating heat and forced air convection; Defendants OES 6.20SMK The OES-6.20SMK is a combination ovensteamer with an automatic smoking feature capable of preparing food product utilizing a sequence of operations consisting of first and second food preparation processes. (App 13-17) 2 The OES-6.20SMK is a combination ovensteamer that includes a heating cavity consisting of an inner shell, pan racks to support food product, and a door providing access to the interior of the oven. (Id.) The OES-6.20SMK includes electronic programmable controls to allow for various sequences of operations to prepare raw food product using steam, radiating heat, forced hot air convection, and combination cooking modes. (Id.) 2 For brevity, all references to factual assertions in Alto-Shaam s Brief will be designated by App followed by the specific page number where the evidence supporting Alto-Shaam s assertion may be found in Alto-Shaam s Combined Appendix. Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 4
Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 5 of 14 a smoking assembly configured to deliver heat to an aromatic smoke producing media that emits smoke into the heating cavity in response to the delivered heat; and a closed venting system that drains liquids produced during food preparation from the interior while preventing gasses from escaping from the interior when the interior is pressurized below a threshold pressure; wherein the oven is capable of operating the first food preparation assembly simultaneously with the smoking assembly or separately from the smoking assembly; wherein the heating cavity is configured to be a closed system so that air inside the heating cavity is not continuously in direct communication with air outside the oven. The OES-6.20SMK includes an automatic smoking feature configured to deliver heat to an aromatic smoke producing media that emits smoke into the heating cavity in response to the heat delivered by the heating element. (Id.) The OES-6.20SMK has a closed venting system consisting of an inner shell, a sealed door, an oven door seal, a negative pressure safety vent, and a condenser assembly that drains liquids from the oven interior while preventing gasses from escaping from the interior when the interior is pressurized below a threshold pressure. (Id.) The OES-6.20SMK is capable of operating the first food preparation assembly simultaneously with the smoking assembly or separately from the smoking assembly. The smoke producing media continues to smolder and produce smoke even after the heating element is turned off. Thus, the smoking assembly is capable of operating simultaneously with the first food preparation assembly. (Id.) The OES-6.20SMK consists of an advanced closed system that includes a sealed door, an inner shell and a negative pressure safety vent preventing air inside the heating cavity from continuously communicating with air outside the oven. (Id.) U.S. Patent 7,317,173 Claim 1 A combination oven capable of preparing food product, the combination oven comprising: Defendants OES 6.20SMK The OES-6.20SMK is a combination ovensteamer capable of preparing food product. (Id.) Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 5
Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 6 of 14 a heating cavity defining an interior including an apparatus for supporting food product disposed therein; a door providing selective access to the interior; a first food preparation assembly comprising a steam assembly selectively providing steam into the interior to prepare food and a heat assembly selectively heating the interior to prepare food using at least one of radiating heat and forced air convection; the heat assembly comprising a heating element disposed in the heating cavity and an air mover capable of forcing incoming air across the heating element to produce heated air that is delivered to the interior of the heating cavity; the steam assembly comprising a steam producing assembly capable of delivering liquid across the heating element that transforms the liquid into steam that is delivered to the interior of the heating cavity; and a smoking assembly selectively delivering smoke into the interior independently of the first food preparation assembly; and a drain system configured to drain liquids produced during food preparation from the interior while preventing gasses from escaping from the interior when the interior is pressurized below a threshold pressure; The OES-6.20SMK is a combination ovensteamer that includes a heating cavity consisting of an inner shell, pan racks to support food product, and a door providing access to the interior of the oven. (Id.) The OES-6.20SMK includes electronic programmable controls to allow for any sequence of operations to prepare food using steam, radiating heat, forced hot air convection, and combination cooking modes. (Id.) The OES-620SMK includes a heat assembly comprising a tubular heating element disposed in the oven cavity and a blower wheel that forces incoming air across the heating element to produce heated air that is delivered to the inner shell of the oven cavity. (Id.) The OES-6.20SMK includes a steam assembly capable of delivering liquid across the heating element that transforms the liquid into steam that is delivered to the interior of the heating cavity. (Id.) The OES-6.20SMK includes an automatic smoking feature which can selectively deliver smoke into the interior independently of the first food preparation assembly. (Id.) The OES-6.20SMK includes an inner shell, a sealed door, an oven door seal, a negative pressure safety vent, and a condenser assembly that drains liquids from the oven interior while preventing gasses from escaping from the interior when the interior is pressurized below a threshold pressure. (Id.) Therefore, using the ordinary meaning of the claim terms, the only conclusion a reasonable fact-finder could reach is that Defendants model OES-6.20SMK combination smoker oven directly Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 6
Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 7 of 14 and literally infringes Claim 11 of the 668 Patent and Claim 1 of the 173 Patent because every limitation of the Claim 11 and Claim 1 can be found in Defendants OES-6.20SMK combination smoker. D. The Court should reject Defendants proposed claim construction because Defendants have applied the wrong analysis. Despite the simplicity of Alto-Shaam s invention, Defendants seek to make the Court s analysis needlessly complicated. Defendants assert that certain claim limitations in Alto-Shaam s patents are written in means-plus-function language and are therefore governed by 35 U.S.C. 112, 6. Section 112, 6 provides: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Thus, [m]eans-plus-function claiming applies only to purely functional limitations that do not provide the structure that performs the recited function. Welker Bearing Co. v. PDH, Inc., 550 F.3d 1090, 1095-96 (Fed. Cir. 2008) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1311 (Fed. Cir. 2005)). The task of determining whether the limitation in question should be regarded as a meansplus-function limitation, like all claim construction issues, is a question of law for the court.... Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). 1. Defendants ask this Court to apply means-plus-function analysis to claims that are presumptively not means-plus-function claims. Defendants urge this Court to apply means-plus-function analysis in construing the following claim limitations: Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 7
Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 8 of 14 Claim 11, U.S. Patent No. 7,157,668 a first food preparation assembly operable to prepare raw food product using steam and at least one of radiating heat and forced air convection; a smoking assembly configured to deliver heat to an aromatic smoke producing media that emits smoke into the heating cavity in response to the delivered heat; Claim 1, U.S. Patent No. 7,317,173 a steam assembly selectively providing steam into the interior to prepare food... the steam assembly comprising a steam producing assembly capable of delivering liquid across the heating element that transforms the liquid into steam that is delivered to the interior of the heating cavity; a smoking assembly selectively delivering smoke into the interior independently of the first food preparation assembly; (App 1551-53) None of these limitations, however, are written in means-plus-function form because none use the term means. Where a claim limitation actually uses the term means, a rebuttable presumption arises in favor of applying means-plus-function analysis. Lighting World, 382 F.3d at 1358. By contrast, a claim term that does not use means will trigger the rebuttable presumption that 112 6 does not apply. Id. (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002)); see also Duratech Indus. Int l, Inc. v. Bridgeview Mfg., Inc., 292 Fed.Appx. 931, 933 (Fed. Cir. 2008). The use of the term means is central to the analysis... because the term means, particularly used in the phrase means for, is part of the classic template for functional claim elements,... and has come to be closely associated with means-plus-function claiming. Lighting World, 382 F.3d at 1358 (internal citations omitted). Defendants can only overcome the presumption that 112 6 does not apply if they are able to demonstrate that the claim term fails to recite sufficiently definite structure or recites function Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 8
Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 9 of 14 without reciting sufficient structure for performing that function. Id. Defendants bear the burden of overcoming the presumption against applying means-plus-function analysis, but this presumption is a strong one that is not readily overcome. Id.; Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1319-20 (Fed. Cir. 2004). 2. It would be error to apply means-plus-function analysis in construing Alto- Shaam s patent claims. The only terms that could even arguably describe a means for performing a specified function in the claim limitations identified by Defendants are (1) first food preparation assembly, (2) smoking assembly, and (3) steam assembly. After an exhaustive search, Alto-Shaam has found no case where the Federal Circuit has construed the term assembly as a means-plus-function term invoking section 112, 6. In Lighting World, the district court construed the term connector assembly as a means-plus-function limitation. The court concluded that the presumption had been successfully rebutted because the term was not sufficiently structural as it covered every conceivable structure that could connect two elements and pivot. Id. On appeal, the Federal Circuit disagreed and determined that the district court committed errors of claims construction. Id. at 1358-59. According to the Federal Circuit, a claim term is not required to denote any specific structure to avoid the application of section 112, 6. Id. at 1359. Instead, the court held that it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function. Id. at 1359-60. Consequently, a structural claim term can cover a broad class of structure and even identify the structure by its function and still not denote a meansplus-function type limitation. Id. As the Federal Circuit cautioned: Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 9
Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 10 of 14 [I]t is not surprising that we have seldom held that a limitation not using the term means must be considered to be in means-plus-function form. In fact, we have identified only one published opinion since Greenburg [v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996)] in which we have done so, and that case provides a useful illustration of how unusual the circumstances must be to overcome the presumption that a limitation lacking the word means is not in means-plus-function form. Id. at 1362. In Lighting World, the Federal Circuit refused to construe connector assembly any differently than any other terms routinely treated as structural by patent practitioners and courts, and therefore found that the trial court s use of section 112, 6 to construe the term was in error. Id. at 1361. None of the limitations Defendants ask this Court to construe are written in standard meansplus-function format. In fact, not a single claim limitation in either of the 668 or 173 Patents is written in means-plus-function form. Therefore, the claim terms are presumptively not subject to the means-plus-function analysis under section 112, 6. For that analysis to be applied, Defendants must produce evidence to rebut the presumption. Because Defendants cannot overcome this presumption, it would be error for this Court to use section 112, 6 to construe any claims. First, the patents clearly use the terms smoking assembly, steam assembly, and first food preparation assembly to denote structure. Those particular terms and variants thereof, such as smoker assembly and steam production assembly, appear more than 60 times in the 668 and 173 Patent specifications. Those terms also appear more than 30 times in Alto-Shaam s original patent application. Each time these terms appear in the specifications or the application the context clearly indicates that these terms are not used in a manner designed to invoke section 112, 6. Rather, they describe structure that is generally understood by persons of skill in the art. (App 0017) See Lighting World, 382 F.3d at 1361 (context of patentee s use of the term connector assembly Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 10
Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 11 of 14 in the patent specifications and application demonstrated that patentee used the term to denote structure, and not as a purely functional term). For example, the specifications in both patents recite: Smoker assembly 62 includes a smoking media tray 64 having a base 66, upstanding side walls 68 and end walls 70 and 71 that collectively define an internal cavity having an open upper end. * * * Steam producing assembly 92 operates in combination with a pressure compensation tank 124... [and]... includes a fluid intake line 122 having a first end connected to a fluid source, such as a conventional faucet or the like, a main body portion extending through the left side wall 22, and a second end connected to an inlet 125 formed in a sidewall of pressure compensation tank 124. Conduit 112 thus enables water to travel from the tank 124 to fan 98, where it is forced across heating elements 96 and vaporized into steam... [A]n alternative to the steam assembly 92 can be provided by including a steam-generating water tank 135 that is either located external to the oven 20, or mounted inside cabinet 41. (App 0166-67; 0193-94; 0168; 0195) With regard to the first food preparation assembly, the patent claims themselves recite sufficient structure for performing the function of preparing raw food product using steam and at least one of radiating heat and forced air convection. The 668 Patent defines first food preparation assembly as compris[ing] an air mover that forces incoming air across a heating element to produce heated air that is delivered to the interior of the heating cavity [, ]... a steam producing assembly capable of delivering a liquid across a heating element that evaporates the liquid into steam that is delivered into the interior of the heating cavity... [and]... a rotisserie assembly with a rotatable spit assembly disposed in the cavity capable of bringing supported food into momentary proximity with a radiating heat element. (App 0170-71) The Federal Circuit has encouraged courts to look to the dictionary to determine if a disputed term has achieved recognition as a noun denoting structure, even if the noun is derived from Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 11
Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 12 of 14 the function performed. Lighting World, 382 F.3d at 1360. An assembly has been defined as a collection of objects; esp. a number of component pieces fitted together to form a whole; a device consisting of numerous parts. SHORTER ENGLISH OXFORD DICTIONARY 133 (5th ed. 2002). (App 1746) Thus, the term assembly has achieved recognition as a noun denoting structure and is commonly understood to refer to a structural element. Furthermore, one of ordinary skill in the art of combination oven design would understand that these terms actually denote key structural components of Alto-Shaam s invention. See Lighting World, 382 F.3d at 1360 (noting that [w]hat is important is whether the term is one that is understood to describe structure, as opposed to a term that is simply a nonce word or a verbal construct that is not recognized as a name of structure and is simply a substitute for the term means for ). A person of ordinary skill provided with nothing more than Alto-Shaam s patents would recognize that the smoking assembly is a number of component pieces fitted together to form a whole capable of delivering heat to an aromatic smoke producing media. (App 0017; 1877) A skilled artisan would also easily determine that the steam producing assembly is a number of component pieces fitted together to form a whole capable of delivering liquid to a heat source which transforms the liquid into steam. (Id.) A person of ordinary skill in the art of combination oven design is aware that combination ovens utilize multiple cooking processes to prepare food. (Id.) Therefore, a person of ordinary skill would also understand that the first food preparation assembly is a number of component pieces fitted together to form a whole capable of cooking food using one cooking process in this case convection heat, steam, and/or radiant heat before a second food preparation process, such as smoke, is engaged to continue the cooking process. (Id.) For the reasons stated, the Court should reject Defendants proposed construction of the claims limitations Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 12
Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 13 of 14 under means-plus-function analysis and construe the claim terms according to their plain and ordinary meaning. III. CONCLUSION For the reasons stated, Alto-Shaam, Inc. respectfully requests that the Court reject Defendants proposed claims construction and construe the claim terms in Alto-Shaam s patents according to their ordinary meanings. Respectfully Submitted, /s/ Joseph F. Cleveland, Jr. Joseph F. Cleveland Jr. State Bar No. D. Alexander Harrell State Bar No. 24055624 BRACKETT & ELLIS A Professional Corporation 100 Main Street Fort Worth, TX 76102-3090 Telephone: 817/338-1700 Facsimile: 817/870-2265 ATTORNEYS FOR PLAINTIFF ALTO-SHAAM, INC. Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 13
Case 7:09-cv-00018-O Document 67 Filed 01/22/2010 Page 14 of 14 CERTIFICATE OF SERVICE nd I hereby certify that on the 22 day of January, 2010, I served a copy of the foregoing in accordance with the Federal Rules of Civil Procedure, on the following counsel-of-record: David G. Wille Baker & Botts, LLP 2001 Ross Avenue Dallas, Texas 75201 /s/ Joseph F. Cleveland, Jr. Joseph F. Cleveland, Jr. Brief in Support of Alto-Shaam, Inc. s Proposed Claim Construction Page 14