Patent Law

Out of the Ditch

By Gary Odom and Jordan Kuhn

Cartner Jack got 5,197,284, claiming a deceleration circuit for a hydraulic motor. Cartner sued Alamo for infringement. Claim construction went poorly for Cartner. So poorly that Cartner stipulated, under the district court's construction, that the patent was "invalid for failure to meet the written description requirement of 35 U.S.C. § 112." There was no failure to appeal.

Jack O. Cartner and Motrim v. Alamo Group (CAFC 2009-1097) nonprecedential

After briefing and a Markman hearing, the district court construed numerous limitations in the claims of the '284 patent, including the "said flow control orifice being constantly operative" limitation. See Claim Construction, 2008 WL 2169005, at *7-15. In the Claim Construction order, the court rejected Cartner's proposed construction of the disputed limitation, which relied on the '284 patent's specification and prosecution history. The court determined that the specification was not instructive and that the statements in the prosecution history were "not explanatory." Id. at *14. In contrast, the court found Alamo's proposed construction, which relied on a dictionary definition, more appropriate. Id. The court also thought that Alamo's proposed construction provided meaning to every word in the claim--specifically, the word "even." Id. at *15. For those reasons, the district court accepted Alamo's proposed construction and construed the limitation "said flow control orifice being constantly operative" as meaning that "the flow control orifice continuously slows fluid when the first control valve is in the open or closed position." Id.

Cartner argues that the district court improperly construed the pertinent limitation because it discounted both the specification and prosecution history, instead relying heavily on the dictionary definitions of "constantly" and "operative." According to Cartner, the district court's construction, which requires the "flow control orifice" to slow fluid flow even when there is no fluid flow in the third fluid line, is inconsistent with the '284 patent's specification. Cartner also contends that the prosecution history provides a clear definition of "said control orifice being constantly operative" that is inconsistent with the district court's construction.

The CAFC agreed.

Contrary to the district court's conclusion, the statements and amendments in the prosecution history are highly explanatory about the proper construction of "said flow control orifice being constantly operative."

Taking into account the claim language, the specification, and the prosecution history as explained above, we construe "said flow control orifice being constantly operative" to mean "the flow control orifice continuously slows fluid flow when there is fluid flow in the third fluid line, whether the first control valve is in the open or closed position." Because we have revised the district court's claim construction, we vacate its judgment of invalidity of claims 5 and 12 pursuant to § 112. We therefore remand the case to the district court for further proceedings consistent with the claim construction we have set forth above.

Vacated and remanded.

Full post as published by The Patent Prospector on June 17, 2009 (boomark / email).