-1- 

UNITED STATES DISTRICT COURT 

EASTERN DISTRICT OF MICHIGAN 

SOUTHERN DIVISION 

NORGREN AUTOMATION 

SOLUTIONS, LLC, 

Plaintiff, 

v. 

PHD, INC., 

Defendant. 

 / 

Case No. 14-cv-13400 

UNITED STATES DISTRICT COURT JUDGE

GERSHWIN A. DRAIN

UNITED STATES MAGISTRATE JUDGE

MONA K. MAJZOUB

OPINION AND ORDER OVERRULING PLAINTIFF’S OBJECTION [44], AND 

ADOPTING REPORT AND RECOMMENDATION OF SPECIAL 

MASTER ON PATENT CLAIM CONSTRUCTION [43]

I. INTRODUCTION

On September 3, 2014, Norgren Automation Solutions, LLC (“Norgren” or “Plaintiff”) 

commenced this patent infringement suit against PHD, Inc. (“PHD” or “Defendant”). The Court 

referred this matter to Special Master Richard D. Grauer for a Report and Recommendation 

regarding the appropriate construction of the patent claim terms at issue. See Dkt. No. 37. On 

June 22, 2015, the Special Master submitted his Report and Recommendation [43] with a 

recommended claim construction. On July 2, 2015, Norgren filed Objections to the Report and 

Recommendations of the Special Master [44]. This matter is now fully briefed. After conducting 

a de novo review of the Report and Recommendation, the Court finds that oral argument will not 

aid in the resolution of this matter. Thus, the Court cancels the September 29, 2015 hearing. See 

E.D. Mich. L.R. 7.1(f)(2). For the reasons discussed herein, the Court will OVERRULE

Norgren’s Objections [44], and ACCEPT and ADOPT the Special Master’s Report and 

Recommendation [43]. See 28 U.S.C. § 636(b)(1). The Court’s reasoning is set forth below.

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 1 of 15 Pg ID 1479
-2- 

II. BACKGROUND

A. The Patents-in-Suit 

Norgren accuses PHD of infringing two patents: (1) United States Reissued Patent No. 

RE39,786 (“the ‘786 Patent”) and (2) United States Reissued Patent No. RE41,223 (“the ‘223 

Patent”). See Dkt. No. 1. Both the ‘786 Patent and the ‘223 Patent (collectively “the patents-insuit”) have their origin in a single patent application filed on January 7, 1998, which matured 

into United States Patent No. 6,079,896 (“the ‘896 Patent”) granted on June 27, 2000. See Dkt. 

No. 43 at 6; Dkt. No. 40 at 5. Pursuant to 35 U.S.C. § 251, the ‘786 Patent and the ‘223 Patent 

were each later “reissued” from the ‘896 Patent at Norgren’s request on August 21, 2007 and 

April 13, 2010, respectively. See Dkt. Nos. 40-2, 40-3. 

Both patents-in-suit are entitled “Clamp With Improved Internal Cam Action.” Dkt. Nos. 

40-2, 40-3. As reissued, the patents-in-suit contain different claims. However, both patents relate 

to a “clamping apparatus” that moves objects from one location to another in manufacturing 

environments. See id. (“A clamping apparatus, for use with an actuator, has a housing with a 

guide track mounted on or formed in the housing.”). Specifically, Norgren alleges that PHD is 

infringing claims 7, 15, 18, 21-23, 27-35, and 39-42 of the ‘786 Patent, and claims 10-12, 17, 21, 

22, 25-28, and 31 of the ‘223 Patent. See Dkt. No. 1. 

B. The Claims 

Pursuant to the Special Master’s recommendation, Norgren reduced the number of 

asserted patent claims to the following ten representative claims: claims 15, 21, 27, 28, and 32 of 

the ‘786 Patent, and claims 11, 21, 22, 25, 26 of the ‘223 Patent. See Dkt. No. 40 at 6, n.2. 

Additionally, the Special Master instructed each party not to submit more than five claim terms 

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 2 of 15 Pg ID 1480
-3- 

for construction by the Court. In response, the parties submitted a list of “Joint Claim 

Construction Terms” that were disputed, including the following terms for construction: 

(1) “. . . having a guide track . . .[;]” 

(2) “. . . defined on opposing inner surfaces; . . .[;]” 

(3) “. . . a cam / a single cam . . .[;]” 

(4) “. . . an actuator / a fluid linear reciprocal actuator / a linear reciprocal, power 

operated, actuator . . .[;]”1

(5) “said clamping apparatus comprising: a support structure;” and 

(6) “. . . means for encasing . . .” 

Dkt. No. 38 at 3-8 (emphasis in original). 

 

C. Special Master’s Report and Recommendation 

The Special Master reviewed the briefs and exhibits of the parties and concluded that oral 

argument was not needed pursuant to Rule 7.1(f)(2) of this Court’s Local Rules. See Dkt. No. 43 

at 2. Thereafter, the Special Master put forth a comprehensive recommendation covering (1) the 

permissible number of patent claims that Norgren may assert, (2) the permissible number of 

claim terms that each party may submit for construction by the Court, and (3) the proper 

construction for the disputed claim terms. See generally Dkt. No. 43. 

Norgren objects to the following finding by the Special Master regarding the construction 

of the single claim term “actuator” as applied to all of the asserted claims: 

 1

 There was initially much debate about these three terms being construed as one claim term. Norgren contended 

“that the noted claim terms are separate and distinct from one another, thereby establishing three (3) different claim 

terms for construction which would make for a total of seven (7) claim terms” and requested “Defendant’s claim 

terms be reduced to five (5).” Dkt. No. 38 at 2. The Special Master directly addressed this point in his Report and 

Recommendation noting that “for purposes of [his] claim construction analysis, the three claim forms of this group 

distill down to ‘actuator,’ ‘fluid actuator,’ and ‘power operated actuator.’” Dkt. No. 43 at 17. The Special Master 

noted that Norgren’s argument that good cause should be shown for all seven terms was “without merit” after reexplaining his instructions for a good cause showing. See id. at 16 n.3. While Norgren ultimately disputes the 

construction of the single claim term actuator as applied to all of the asserted claims, it appears Norgren does not 

dispute the Special Master’s decision to begin with the one-word claim limitation “actuator” before moving on to the 

other two disputed “actuator” claim terms. See Dkt. No. 44 at 4 (“Norgren’s objection is limited to the construction 

of the single claim term “actuator” as applied to all of the asserted claims.”). Accordingly, the Court will deem this 

matter settled and address the Special Master’s decision to determine whether the other two disputed “actuator” 

claim terms presented non-duplicative and dispositive issues. 

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 3 of 15 Pg ID 1481
-4- 

3. The claim term “actuator” as it appears in every asserted claim is construed to 

mean “fluid-powered actuator.” Specifically, 

(a) In independent claims 15 of the ‘786 Patent and 11 of the ‘223 Patent, 

“actuator” means “fluid-powered actuator.” 

(b) In independent claims 21 and 32 of the ‘786 Patent, “fluid linear 

reciprocal actuator” means “ linear reciprocal, fluid-powered, actuator.” 

(c) In independent claims 21 and 26 of the ‘223 Patent, “linear reciprocal, 

power operated, actuator” means “linear reciprocal, fluid-powered, 

actuator.”

Dkt. No. 43 at 3 (emphases in original) (internal citations omitted). The parties do not dispute the 

Special Master limiting Norgren to ten patent claims it may assert, see Dkt. No. 34 at 3-6; 

limiting the parties to five claim terms for construction by the Court, see id.; (3) recommending 

that “means for encasing” means “a cover or side plate,” id. at 37-39; and (4) recommending that 

the remaining disputed claims do not require construction by the Court, see id. at 40-52. 

III. LEGAL STANDARD

Pursuant to Rule 53 of the Federal Rules of Civil Procedure, this Court is required to 

conduct a de novo review of those portions of the Special Master’s Report to which objections 

have been filed. See FED. R. CIV .P. 53(f)(3); see also Hochstein v. Microsoft Corp., 730 

F.Supp.2d 714, 717 (E.D. Mich. 2010), aff'd 430 F. App’x 898 (Fed. Cir. 2011) (citing FED. R.

CIV. P. 53(f) to note that “[t]he Court reviews de novo factual findings and legal conclusions of 

the Special Master to which a specific objection has been made.”). There is an exception to a de 

novo review where the parties have agreed that the Special Master’s findings shall be final or that 

review shall be for clear error. See FED. R. CIV .P. 53(f)(3). If no such agreement is had, the 

Court conducts a de novo review of those portions to which objections have been filed so that the 

Court may “‘accept, reject, or modify, in whole or in part the finding or recommendations’” of 

the Special Master. Chrimar Systems, Inc. v. Foundry Networks, LLC, No. 06–13936, 2010 WL 

3431569, at * 2 (E.D. Mich. Aug. 30, 2010) (quoting 28 U.S.C. § 636(b)(1)). 

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 4 of 15 Pg ID 1482
-5- 

IV. DISCUSSION

Here, the parties did not stipulate to the finality of the Special Master’s Report and did 

not agree to clear error review. Cf. FED. R. CIV .P. 53(f) (3). Accordingly, Norgren is within its 

right to object to the Special Master’s recommendation “that the claim term ‘actuator’ be given 

the construction ‘fluid-powered actuator[.]’” Dkt. No. 44 at 4. Norgren does not disagree with 

the Special Master’s finding that the specifications of the ‘786 and ‘223 Patents alone do not 

support restricting the term “actuator” to a specific-type of actuator. See id. at 4-5 (referencing 

Dkt. No. 43 at 23-24). Instead, Norgren focuses on the Special Master’s conclusion regarding the 

prosecution history of the ‘786 Patent arguing that “the Special Master’s construction of ‘fluidpowered actuator’ simply goes too far without sufficient support for doing so.” Id. at 5. Since 

Norgren specifically focuses on the Special Master’s use of the prosecution history to reach his 

conclusion, the Court will focus its de novo review on that portion of the Special Master’s 

analysis in reaching his conclusion. See FED. R. CIV .P. 53(f)(3). 

A determination of infringement requires a two-step analysis. Gentry Gallery, Inc. v. 

Berkline Corp., 134 F.3d 1473, 1476 (Fed. Cir. 1998). “First, the claim must be properly 

construed to determine its scope and meaning. Second, the claim as properly construed must be 

compared to the accused device or process.” Id . Claim construction is an issue of law. Markman 

v. West View Instruments, Inc., 517 U.S. 370, 388-90, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). 

In interpreting claims, a court “should look first to the intrinsic evidence of record, i.e., the patent 

itself, including the claims, the specification and, if in evidence, the prosecution history.” 

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). 

Absent an express intent to impart a novel meaning, “terms in a claim are to be given 

their ordinary and accustomed meaning.” Renishaw PLC v. Marposs Societa' per Azioni, 158 

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 5 of 15 Pg ID 1483
-6- 

F.3d 1243, 1249 (Fed. Cir. 1998). This is because it is the claims that measure the invention. SRI 

Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed.Cir.1985). Accordingly, claim 

construction always begins with the language of the claim and asks “how a person of ordinary 

skill in the art understands a claim term.” Phillips v. AKW Corp., 415 F.3d 1303, 1317 -18 (Fed. 

Cir. 2005). A “person of ordinary skill in the art 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. at 1313. It is “improper to read [a claim] term to 

encompass a broader definition” than the ordinary and customary meaning revealed by the 

context of the intrinsic record. Nystrom v. TREX Co., 424 F.3d 1136, 1145 (Fed. Cir. 2005). 

Indeed, “[c]laims cannot be of broader scope than the invention set forth in the specification.” Id.

The prosecution history “inform[s] the meaning of the claim language by demonstrating 

how the inventor understood the invention and whether the inventor limited the invention in the 

course of prosecution, making the claim scope narrower than it would otherwise be.” Phillips,

415 F.3d at 1317. The “purpose of consulting the prosecution history in construing a claim is to 

exclude any interpretation that was disclaimed during prosecution[:] . . . 

[W]here the patentee has unequivocally disavowed a certain meaning to obtain his 

patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary 

meaning of the claim congruent with the scope of the surrender. Such a use of the 

prosecutions history ensures that claims are not construed one way in order to 

obtain their allowance and in a different way against accused infringers. 

Chimie v. PPG Indus., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (emphasis added). Thus, pursuant to 

the Federal Circuit, a statement made by the patentee during prosecution history of a patent in 

the same family as the patent-in-suit can operate as a disclaimer. Microsoft Corp. v. Multi-Tech 

Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (finding that statement made during prosecution 

of related patent operated as a disclaimer with respect to a later-issued patent). 

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 6 of 15 Pg ID 1484
-7- 

 The crux of Norgren’s objection is that “the prosecution history is ambiguous at best and 

fails to show that Norgren clearly and unmistakably disavowed the ordinary and customary 

meaning of the claim term ‘actuator’” Dkt. No. 44 at 7. After reviewing the prosecution history, 

the Court disagrees. 

In this case, a patent examiner rejected the patentee’s assertion that “actuator” in asserted 

Claim 15 of the ‘786 Patent had its origin in Claim 11, amongst others, of the application 

pursuant to “35 U.S.C. 102(b) as being anticipated by Kraft U.S. patent 886,003.” See Dkt. No. 

42-4 at ¶5. In response to the Office Action, the patentee sent an Amendment to the examiner in 

an attempt to overcome the examiner’s rejection. See generally Dkt. No. 42-5. In the response, 

the patentee stressed that the rejected claims were allowable because the actuators of the subject 

patent application concerned power-operated clamps with fluid-operated actuators: 

The device in the subject application relates to a power clamp or gripper that is 

actuated by a conventional fluid operated cylinder actuator. 

The power linear actuators and the structural integrity of the clamps make for a 

rather heavy and expensive device that is not easily disassembled. Such powered 

clamps provide gripping forces that extend well beyond ‘ordinary requirements.’ 

The subject application has been currently classified in Classes 403/322.3; 

269/32; 403/31. These classifications relate to pneumatic or hydraulic means, or 

both, for holding and releasing and/or applying forces between a pair of jaws. 

Clearly, the actuation of a fluid actuator for engaging the jaws is nowhere related 

to the device described in the Kraft reference. 

The subject application utilizes fluid-operated actuators that provide quick 

actuation with high clamping and actuation forces. Therefore, Applicant has 

amended claims 21-42 to include fluid-operated actuators. 

Therefore, in light of the fact that the subject application relates to power fluid 

actuators for actuating jaws in an industrialized environment . . . it is readily 

apparent that one skilled in the power fluid actuation art would not look to the art 

surrounding the device described in Kraft to resolve their problems, thereby 

making Kraft non-analogous art. 

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 7 of 15 Pg ID 1485
-8- 

Id. at 21-22 (emphasis added). As the Special Master noted, these clear and unmistakable 

“‘power’ and ‘power-fluid’-based arguments were urged as a reason why all of the rejected 

claims were patentable, not just those claims that specifically called for that particular type of 

actuator.” Dkt. No. 43 at 25; cf. Dkt. No. 42-5 at 22 (“[I]n light of the fact that the subject 

application relates to power fluid actuators. . . .”). 

 Despite the clear and unmistakable arguments put forth regarding a power-fluid based 

actuator when prosecuting the ‘786 Patent, Norgren argues that there is “conflicting evidence in 

the present record as to whether the term ‘actuator’ was intended to be limited to a ‘fluidpowered actuator’ or that fluid-power actuators were merely a type of actuator that could be 

used.” Dkt. No. 44 at 8 (referencing Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 

1121, 1136 (Fed. Cir. 2011), and that case’s contention that the Federal Circuit has “found that 

use of the phrase ‘present invention’ or ‘this invention’ is not always so limiting, such as where 

the references to a certain limitation as being the ‘invention’ are not uniform, or where other 

portions of the intrinsic evidence do not support applying the limitation to the entire patent.”). 

To this point, Norgren emphasizes that during the prosecution of the ‘223 Patent, the 

patentee continued to argue for claims that did not include the “fluid-powered actuator” 

limitation. See Dkt. No. 47 at 7 (referencing Dkt. No. 42-6 at 11). However, when prosecuting 

the ‘223 Patent, the patentee again noted that the application related to a fluid-operated actuator: 

The device in the present application relates to a power clamp or gripper, that can

be actuated by a conventional fluid-operated cylinder actuator. 

A power operated linear actuator provides these devices with quick and powerful 

forces for actuating and locking the pivot arms of the gripper. 

The power operated linear actuators and the structural integrity of the clamps 

make for a rather heavy and expensive device that is not easily disassembled. 

Such power operated clamps provide gripping forces that extend well beyond 

‘ordinary requirements.’ 

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 8 of 15 Pg ID 1486
-9- 

The present application has been currently classified in Classes 403/322.3; 

269/32; 403/31. These classifications relate to pneumatic or hydraulic means, or 

both, for holding and releasing and/or applying forces between a pair of jaws. 

Clearly, the actuation of a power operated actuator for engaging the jaws is 

nowhere related to the device described in the Kraft reference. 

The present application uses power operated actuators that provide quick 

actuation with high clamping and actuation forces. Therefore, Applicant has 

added claims 21-31 to include power operated actuators. 

Dkt. No. 42-6 at 11-12. As the Special Master pointed out, the prosecution of the ‘223 Patent, by 

itself, does not provide sufficient basis for further restriction of “powered actuator” to “fluidpowered actuator.” See Dkt. No. 43 at 32. However, as a whole, this Court finds that the intrinsic 

evidence in the prosecution history of the patents-in-suit supports construing the term “actuator” 

to mean “fluid-powered actuator.” 

Here, the patentee’s statement that “[t]he device in the subject application relates to a 

power clamp or gripper that is actuated by a conventional fluid operated cylinder actuator[,]” 

Dkt. No. 42-5 at 21, could not be clearer. Cf. Dkt. No. 42-6 at 11 (“The device in the present 

application relates to a power clamp or gripper, that can be actuated by a conventional fluidoperated cylinder actuator.”). These statements were “made in an official proceeding in which 

the patentee had every incentive to exercise care in characterizing the scope of its invention.” 

Microsoft Corp., 357 F.3d at 1350. As the Federal Circuit has indicated “[t]he public is entitled 

to take the patentee at his word[.]” Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 

(Fed. Cir. 2006); see also Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. 

Cir. 2005) (holding party to their “blatant admission” to support a claim construction). 

Moreover, the Court would be remiss not to note that these patents share a familial 

relationship, as they both emanated from the ‘896 Patent and each relate to the same “clamping 

apparatus” that moves objects from one location to another in manufacturing environments. 

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 9 of 15 Pg ID 1487
-10- 

Notably, the patent specifications for both patents-in-suit unambiguously state that the actuator is 

a fluid cylinder. See Dkt. No. 40-2 at 10 (stating in the Summary of Invention for the ‘786 Patent 

that “[t]he present invention relates to a clamping apparatus having a conventional fluid operated 

cylinder actuator.”) (emphasis added); Dkt. No 40-3 at 10 (stating the exact same in the 

Summary of Invention for the ‘223 Patent); see also 40-2 at 10 (stating in the Summary of 

Invention for the ‘786 Patent that “[t]he fluid actuator drives the roller or cam follower 

reciprocally between the first and second positions in order to move the clamp arm from the 

clamped position to the released position.”); Dkt. No. 40-3 at 10 (stating the exact same in the 

Summary of Invention for the ‘223 Patent). Critically, no other type of actuator is described 

anywhere in the patents-in-suit nor in the prosecution history of the patents-in-suit. 

This is critical because it undermines Norgren’s position that there is conflicting evidence 

in the present record as to whether the term “actuator” was intended to be limited to a “fluidpowered actuator” or whether fluid-powered actuators were merely a type of actuator that could 

be used. For example, when trying to emphasize that the fluid-powered actuator was merely a 

type of actuator that could be used, Norgren emphasizes that during the prosecution of the ‘223 

Patent the patentee indicated that “[t]he device in the present application relates to a power 

clamp or gripper, that can be actuated by a conventional fluid-operated cylinder actuator.” Dkt. 

No. 42-6 at 11. Norgren emphasizes that the patentee indicated “the clamp ‘can’ be actuated by a 

conventional fluid-operated actuator as opposed to must be actuated by a conventional fluidpowered actuator.” Dkt. No. 47 at 7 (emphasis in original) (internal citations omitted). However, 

this argument does not hold water because the patentee only instructed the public that the subject 

invention involved a fluid operated cylinder actuator. See Laitram Corp. v. Morehouse Indust., 

Inc., 143 F.3d 1456, 1462 (Fed. Cir. 1998) (explaining the general idea that disavowal takes 

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 10 of 15 Pg ID 1488
-11- 

place once the applicant places the argument in the public record, as it reflects what the applicant 

believes its claims mean: “Regardless of the examiner’s motives, arguments made during 

prosecution shed light on what the applicant meant by its various terms.”). 

In both the patents-in-suit, the patentee indicated that the subject application was 

classified “in Classes 403/322.3; 269/32; 403/31” and that those classifications “relate to 

pneumatic or hydraulic means, or both, for holding and releasing and/or applying forces between 

a pair of jaws[.]” Dkt. No 42-5 at 22; Dkt. No. 42-6 at 12. In prosecuting the ‘786 Patent, the 

patentee then argued in no uncertain terms that the application only related to a hydraulic means 

as the patentee indicated that “[c]learly, the actuation of a fluid actuator for engaging the jaws is 

nowhere related to the device described in the Kraft reference” and the patentee clarified that 

“the subject application utilizes fluid-operated actuators.” Dkt. No 42-5 at 22. 

That the patentee later spoke in broad terms is of no consequence, especially considering 

the fact that this Court finds the later prosecution history does not conflict with the 

characterization of a fluid operated cylinder actuator. See Southwall Technologies, Inc. v. 

Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir. 1995) (citing Fonar Corp. v. Johnson & 

Johnson, 821 F.2d 627, 632, 3 USPQ2d 1109, 1113 (Fed. Cir. 1987), cert. denied, 484 U.S. 

1027, 108 S.Ct. 751, 98 L.Ed.2d 764 (1988), to state: “[C]laim terms must be interpreted 

consistently.”); see also Autogiro Co. of Am. v. United States, 384 F.2d 391, 404 (Ct. Cl. 1967) 

(“Claim differentiation is a guide, not a rigid rule. If a claim will bear only one interpretation, 

similarity will have to be tolerated.”).2

 

2

 Indeed, a “fluid-powered actuator” is a type of “powered actuator.” The Court simply disagrees with Norgren’s 

contention that “[a] competitor would [] quickly realize that Norgren intended to provide coverage for various types 

of actuators, including fluid-powered actuators.” Dkt. No. 44 at 9. Competitors could have come to the conclusion 

that Norgren intended to provide coverage for various types of actuators if the patentee did not expressly disavow 

other types of actuators by limiting the scope of the actuator at issue to a fluid-powered actuator. The way the 

patentee presented his arguments to overcome the examiner’s rejection simply eliminated any reasonable ambiguity 

that one can reach. After stating explicitly in the prosecution of the ‘786 Patent that “[t]he device in the subject 

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 11 of 15 Pg ID 1489
-12- 

The patentee’s “explicit[] characteriz[ation of] an aspect of his invention in a specific 

manner to overcome prior art” leads this Court to find that the patentee limited “the meaning of a 

claim term by making a clear and unmistakable disavowal of scope during prosecution.” Purdue 

Pharma L.P. v. Endo Pharm. Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006) (citations omitted). The 

Federal Circuit has made it clear that it is entirely appropriate to limit claims when required by 

the prosecution history. Cultor Corp. v. A.E. Staley Mfg. Co., 224 F.3d 1328, 1330 (Fed. Cir. 

2000) (“Whether a claim must, in any particular case, be limited to the specific embodiment 

presented in the specification, depends in each case on the specificity of the description of the 

invention and on the prosecution history.”); Watts v. XL Sys., 232 F.3d 877, 881-83 (Fed. Cir. 

2000) (ruling that prosecution history supported limiting construction to preferred embodiments); 

Alloc, Inc. v. ITC, 342 F.3d 1361, 1368-1371 (Fed. Cir. 2003) (ruling prosecution history 

supported limiting construction to preferred embodiments).3

 

application . . . is actuated by a . . . fluid operated cylinder actuator,”—which, for all intents and purposes is a 

“powered actuator”—the patentee asserted in the prosecution of the ‘223 Patent that “[t]he device in the present 

application . . . can be actuated by a conventional fluid-operated cylinder actuator.” This merely reaffirmed that the 

device is a powered actuator that was powered by a fluid-operated cylinder actuator. The patentee did not state “the 

device in the present application can be actuated by fluid-operated cylinder actuators and air-operated cylinder 

actuators or other variants of pneumatic actuators. Instead, the patentee was specific; just as he was specific 

previously when he stated that the actuator is powered, and it is powered by a fluid-operated cylinder actuator. As 

mentioned above, it is “improper to read [a claim] term to encompass a broader definition” than the ordinary and 

customary meaning revealed by the context of the intrinsic record. See Nystrom, 424 F.3d at 1145. 

3

 Indeed, the very authority relied upon by Norgren supports the notion that Norgren should be estopped from using 

a broader claim than “fluid-powered actuator.” See Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1054 

(Fed. Cir. 1989) (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 

(1950), to note that “[t]here are, of course, situations in which what an attorney says or does during prosecution may 

be held against a patentee on the theory of estoppel. For example, when a patentee attempts to expand the literal 

meaning of a claim under the patent law doctrine of equivalents and the prosecution history shows that the expanded 

scope would be inclusive of subject matter the attorney had represented to the examiner was not intended to be 

included in order to get the claim allowed, the patentee may be estopped to contend otherwise.”). Though Norgren 

may disagree, that is exactly what was done here; the patentee limited the scope of the term to fluid-powered 

actuators to get the claim allowed. See Dkt. No. 42-5 at 21 (explaining in multiple iterations that “the distinctions 

between the subject matter surrounding the Kraft reference and that of the subject application are rather striking[,] 

after stating “[t]he device in the subject application relates to a power clamp or gripper that is actuated by a 

conventional fluid-operated cylinder actuator.”). Accordingly, Norgren will be estopped from contending otherwise. 

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 12 of 15 Pg ID 1490
-13- 

The Court reiterates that “any statement of the patentee in the prosecution of a related 

application as to the scope of the invention [is] relevant to claim construction[.]”Microsoft Corp.,

357 F.3d at 1350. Here “the relevance of the statement made in this instance is enhanced by the 

fact that it was made in an official proceeding in which the patentee had every incentive to 

exercise care in characterizing the scope of its invention.” Id. “[T]he prosecution history of one 

patent is relevant to an understanding of the scope of a common term in a second patent 

stemming from the same parent application.” Id. at 1349 (citing, inter alia, Jonsson v. Stanley 

Works, 903 F.2d 812, 818 (Fed. Cir. 1990)); see also Laitram Corp., 143 F.3d at 1460 n. 2 

(applying the prosecution histories of two sibling patents, which shared a common written 

description, to one another). 

Taking these standards into consideration, the Court finds that the claim construction 

established for “actuator” as it appears in claim 15 of the ‘786 Patent and claim 11 of the ‘223 

Patent must hold for “actuator” in every other claim of both patents because the patentee 

explicitly disavowed a broad construction of the term “actuator” in favor of a “fluid-powered 

actuator” and “claim terms must be interpreted consistently.” Southwall Technologies, Inc., 54 

F.3d at 1579; cf. Snow v. Lake Shore & Mich. S. Ry. Co., 121 U.S. 617, 629–30, 7 S.Ct. 1343, 30 

L.Ed. 1004 (1887) (“It is not admissible to adopt the argument made on behalf of the appellants, 

that this language is to be taken as a mere recommendation by the patentee of the manner in 

which he prefers to arrange these parts of his machine. There is nothing in the context to indicate 

that the patentee contemplated any alternative for the arrangement of the piston and pistonrod.”). Accordingly, the Court will overrule Norgren’s objection that the claim term “actuator” as 

it appears in every asserted claim should not be construed to mean “fluid-powered actuator.”

 

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 13 of 15 Pg ID 1491
-14- 

V. CONCLUSION

Having conducted a de novo determination of those portions of the Reports and 

Recommendations to which objection is made, the Court HEREBY OVERRULES Norgren’s 

Objections [44], and ACCEPTS and ADOPTS the claim constructions and other 

recommendations recommended by the Special Master in his Report and Recommendation [43]. 

IT IS HEREBY ORDERED that 

1. Norgren must limit the total number of claims asserted in this lawsuit to ten. 

Norgren may, in the future, upon a showing of good cause (e.g., cancellation of a 

selected claim in a USPTO proceeding, or newly discovered evidence) replace 

any of the selected ten claims with a comparable number of substitute claims, or 

add additional claims upon a showing that such claims present unique 

infringement or validity issues. 

2. Each party may submit no more than five claim terms for construction by the 

Court. If any party believes that there are claim terms in addition to the five herein 

allowed for submission to the Court, it can include a maximum of three additional 

terms with its submissions, along with a showing of why and how the proposed 

construction of each additional term is potentially dispositive of claim validity or 

infringement and presents issues non-duplicative of those raised by the other five 

claim terms.

3. The claim term “actuator” as it appears in every asserted claim is construed to 

mean “fluid-powered actuator.” Specifically, 

(a) In independent claims 15 of the ‘786 Patent and 11 of the ‘223 Patent, 

“actuator” means “fluid-powered actuator.” 

(b) In independent claims 21 and 32 of the ‘786 Patent, “fluid linear 

reciprocal actuator” means “linear reciprocal, fluid-powered, actuator.” 

(c) In independent claims 21 and 26 of the ‘223 Patent, “linear reciprocal, 

power operated, actuator” means “linear reciprocal, fluid-powered, 

actuator.” 

4. The claim term “means for encasing” in claim 15 of the ‘786 Patent means “a 

cover or side plate.” 

5. The claim term “guide track” in independent claim 15 of the ‘786 Patent and 

independent claims 11 and 26 of the ‘223 Patent does not require construction by 

the Court. 

 

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 14 of 15 Pg ID 1492
-15- 

6. The claim term “opposing [or opposed] inner surfaces” in independent claim 15 

of the ‘786 Patent and independent claims 11 and 26 of the ‘223 Patent does not 

require construction by the Court. 

7. The claim term “cam” in independent claim 15 of the ‘786 Patent and 

independent claims 11, 21 and 26 of the ‘223 Patent, and the claim term “single 

cam” in claims 21and 32 of the ‘786 Patent do not require construction by the 

Court. 

8. The claim term “support structure” in independent claim 21 of the ‘223 Patent 

does not require construction by the Court. 

IT IS SO ORDERED. 

Dated: September 28, 2015 /s/Gershwin A Drain 

Detroit, MI HON. GERSHWIN A. DRAIN 

 United States District Court Judge

2:14-cv-13400-GAD-MKM Doc # 53 Filed 09/28/15 Pg 15 of 15 Pg ID 1493