Defendant Kett Tool Company Inc.’s

Opening Claim Construction Brief - 1

WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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THE HONORABLE BENJAMIN H. SETTLE

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF WASHINGTON

AT TACOMA

PACTOOL INTERNATIONAL LTD., )

a Washington corporation, )

)

Plaintiff, )

)

v. )

)

KETT TOOL COMPANY INC., et al. )

)

Defendants. )

____________________________________)

CASE NO. 3:06-cv-05367-BHS

DEFENDANT KETT TOOL

COMPANY INC.’S OPENING CLAIM

CONSTRUCTION BRIEF

NOTE ON MOTION CALENDAR:

March 18, 2011

ORAL HEARING REQUESTED

Defendant Kett Tool Company Inc. (“Kett”) submits this opening claim construction

brief per the Court’s Order [Doc. No. 143] dated January 21, 2011.

I. CLAIM TERMS TO BE CONSTRUED

The parties dispute the construction to be given several of the terms appearing in the

two patents-in-suit, U.S. Patent No. 5,993,303 (“the ‘303 patent,” copy attached as Exhibit 1)

and U.S. Patent No. 6,250,998 (“the ‘998 patent,” copy attached as Exhibit 2), along with

their respective Reexamination Certificates, 5,993,303 C1 (“the ‘303 C1 Certificate”) and

6,250,998 C1 (“the ‘998 C1 Certificate”) (copies attached as Exhibits 3 and 4). The claims at

issue are claims 2, 3, 4, 8, 11, 12, 16, 21, 23, 24 and 25 of the ‘303 patent and ‘303 C1

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Defendant Kett Tool Company Inc.’s

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WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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Certificate, and claims 1, 2, 3, 7, 10, 12, 13, 15, 16, 18, 19, 21, 22 and 24 of the ‘998 patent

and ‘998 C1 Certificate. A Joint Claim Chart identifying the disputed claim terms and the

parties'proposed construction of those terms was filed with the Court on February 25, 2011

[Doc. No. 164-1] and is attached hereto as Exhibit 5.

II. LEGAL STANDARDS FOR CONSTRUING CLAIMS

A. The Claims Are The Primary Resource For Claim Construction

In construing claims, the Court must look first to the language of the claims

themselves. See, e.g. Middleton, Inc. v. Minnesota Mining & Mfg. Co., 311 F.3d 1384, 1387

(Fed. Cir. 2002). Both the asserted claims, and any claims that are not asserted, should be

considered. Trading Techs. Int'l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed Cir. 2010)

(“In addition, ‘other claims of the patent . . . can also be valuable sources of enlightenment as

to the meaning of a claim term.’”). Id. (citing Vitronics Corp. v. Conceptronics, Inc., 90 F.3d

1576, 1582 (Fed. Cir. 1996)).

For purposes of claim construction, “the words of a claim ‘are generally given their

ordinary and customary meaning...’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.

2005) (en banc) (quoting Vitronics, 90 F.3d at 1582). The ordinary and customary meaning

“is the meaning that the term would have to a person of ordinary skill in the art in question at

the time of the invention, i.e., as of the effective filing date of the patent application.” Id. at

1313.

A claim construction that renders a claim term meaningless is improper. See Cat

Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 885 (Fed. Cir. 2008) (refusing to adopt a claim

construction which would render a claim limitation meaningless). Otherwise stated, if a

party proposes a claim construction that would make a claim term superfluous, it should not

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Defendant Kett Tool Company Inc.’s

Opening Claim Construction Brief - 3

WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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be adopted. Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1305-07

(Fed. Cir. 2000) (refusing to adopt a claim construction which would render claim language

superfluous).

B. The Specification Provides Context For The Invention And Claim Terms

The claims, however, do not stand alone, and “must be read in view of the

specification of which they are a part.” Phillips, 415 F.3d at 1315 (quoting Markman v.

Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370

(1996)). “[T]he specification is always highly relevant to the claim construction analysis.”

Vitronics, 90 F.3d at 1582. However,

it is improper to import limitations from the specification into

the claims where there is no indication that the specific

examples in the specification are intended to be strictly

coextensive with the claim.

Phillips, 415 F.3d at 1323; see also Kinetic Concepts, Inc. v. Blue Sky Med. Group, Inc., 554

F.3d 1010, 1027 (Fed. Cir. 2009).

C. The Prosecution History

In addition to the claim language and the specification, the court may also consider

the patent’s prosecution history. Phillips, 415 F.3d at 1317. The prosecution history, which

is part of the “intrinsic evidence,” consists of the complete record of the proceedings before

the PTO and includes the prior art cited during the examination of the patent. Id. Because

the patentee creates the prosecution history in attempting to explain and obtain the patent,

“the prosecution history can often inform 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

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Defendant Kett Tool Company Inc.’s

Opening Claim Construction Brief - 4

WOOD, HERRON & EVANS, L.L.P.

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otherwise be.” Id.

D. Extrinsic Evidence Such As Dictionaries May Be Utilized

Extrinsic evidence “consists of all evidence external to the patent and prosecution

history, including . . . , dictionaries, and learned treatises.” Markman v. Westview

Instruments, Inc., 52 F.3d 967, 980 (Fed Cir. 1995), aff’d, 517 U.S. 370, 116 S. Ct. 1384, 134

L. Ed. 2d 577 (1996). A dictionary definition may be relied upon “so long as [it] does not

contradict any definition found in or ascertained by a reading of the patent documents.”

Wavetronix v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1355 (Fed. Cir. 2009) (quoting

Phillips, 415 F.3d at 1322-23).

E. Inventor Testimony Is Irrelevant

Based on PacTool’s identification in the Joint Claim Chart (Exhibit 5) of extrinsic

evidence in the form of deposition testimony and newly created Declarations from, among

others, one of the named inventors on the patents-in-suit, this Court should be aware that

such testimony is highly disfavored by the Federal Circuit. Kett will address this issue, and

the specific improper evidence PacTool submits, when Kett files its Responsive Claim

Construction Brief.

The Federal Circuit has "often repeated that inventor testimony is of little probative

value for purposes of claim construction." E-Pass Techs. Inc. v. 3COM Corp., 343 F.3d

1364, 1370 n.5 (Fed. Cir. 2003). Some Federal Circuit panel opinions have gone so far as to

declare inventor testimony “irrelevant” to claim construction. See Cordis Corp. v. Boston

Sci. Corp., 561 F.3d 1319, 1338 (Fed. Cir. 2009); see also Hoechst Celanese Corp. v. BP

Chems. Ltd., 78 F.3d 1575, 1580 (Fed. Cir. 1996) ("Markman requires us to give no

deference to the testimony of the inventor about the meaning of the claims.").

Case 3:06-cv-05367-BHS Document 170 Filed 03/04/11 Page 4 of 25
Defendant Kett Tool Company Inc.’s

Opening Claim Construction Brief - 5

WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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In Markman v. Westview Instruments Inc., 52 F.3d 967, 983 (Fed. Cir. 1995) (en

banc), aff'd, 517 U.S. 370 (1996), the court found an inventor not competent to construe

patent claims, reasoning that:

Commonly the claims are drafted by the inventor's patent

solicitor and they may even be drafted by the patent examiner

in an examiner's amendment (subject to the approval of the

inventor's solicitor). While presumably the inventor has

approved any changes to the claim scope that have occurred via

amendment during the prosecution process, it is not unusual for

there to be a significant difference between what an inventor

thinks his patented invention is and what the ultimate scope of

the claims is after allowance by the PTO.

Id. at 985. Lending further support for excluding inventor testimony from claim

construction is the fact that it "is often a self-serving, after-the-fact attempt to state what

should have been part of his or her patent application." Bell & Howell Document

Management v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997); see also Roton Barrier Inc. v.

Stanley Works, 79 F.3d 1112, 1126 (Fed. Cir. 1996) ("We have previously stated that an

inventor's after-the-fact testimony is of little weight compared to the clear import of the

patent disclosure itself."). When construing a patent, a court is better served by evaluating

the claims and specification objectively from the perspective of one of ordinary skill in the

art, rather than relying on the subjective testimony of the inventor obtained in the context of

litigation. See Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379-80 (Fed. Cir. 2000).

F. The Accused Product Is Not To Be Considered In The Claim

Construction Analysis

Finally, it is well-settled that the construction of patent claims is not dependent upon

the products accused of infringement. Wilson Sporting Goods Co. v. Hillerich & Bradsby

Co., 442 F.3d 1322, 1330-31 (Fed. Cir. 2006) (“This court, of course, repeats its rule that

Case 3:06-cv-05367-BHS Document 170 Filed 03/04/11 Page 5 of 25
Defendant Kett Tool Company Inc.’s

Opening Claim Construction Brief - 6

WOOD, HERRON & EVANS, L.L.P.

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Cincinnati, Ohio 45202-2917

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‘claims may not be construed with reference to the accused device.’”) (citing NeoMagic

Corp. v. Trident Microsystems, 287 F.3d 1062, 1074 (Fed. Cir. 2002)). Thus, any attempt by

PacTool to consider the accused products in connection with claim construction is off base,

and in fact impermissible.

III. THE DISPUTED TERMS OF THE ‘303 AND ‘998 PATENTS

A. Overview Of The ‘303 Patent

The ‘301 patent and ‘303 C1 Certificate, entitled “Hand-Held Cutting Tool For

Cutting Fiber-Cement Siding” issued on November 30, 1999 and December 1, 2009,

respectively. See Exhibits 1 and 3. The written description and 11 claims of the ‘303 patent

and ‘303 C1 Certificate disclose and claim a fiber-cement siding cutting tool. Id. Figures 1

and 3 of the ‘303 patent illustrate a cutting tool of the preferred embodiment of the ‘303

patent. Id.

B. Overview Of The ‘998 Patent

The ‘998 patent and ‘998 C1 Certificate, entitled “Hand-Held Cutting Tool For

Cutting Fiber-Cement Siding,” issued on June 26, 2001 and December 8, 2009, respectively,

and claim priority back to the ‘303 patent. See Exhibits 2 and 4. Because the ‘998 patent is

related to the ‘303 patent as a continuation application, the disclosure of the ‘998 patent is the

same as the ‘303 patent and references herein to the specification of the ‘303 patent are

equally applicable to the ‘998 patent.

C. Grouping Of Claim Terms In Dispute

Kett asserts that the claim terms and phrases listed in the Joint Claim Chart (Exhibit

5) should be grouped as follows for purposes of analysis and decision:

Case 3:06-cv-05367-BHS Document 170 Filed 03/04/11 Page 6 of 25
Defendant Kett Tool Company Inc.’s

Opening Claim Construction Brief - 7

WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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Group I: terms 1 and 2

1

;

Group II: terms 3-13; and

Group III: terms 14-17.

The bases for suggesting these groupings are that: 1) the Group I terms 1 and 2 (“gap” and

“gap distance”) are very similar, Kett’s proposed definitions for these two terms are the

same, and PacTool’s proposed definitions for these two terms are virtually identical (they

differ only by a single word); 2) the Group II terms 3-13 all present the identical issues

insofar as the parties’ dispute over the definitions are concerned, and thus resolution of the

disputes as to those terms can be made with a single decision; and 3) the Group III terms 14-

17 all present the issue of indefiniteness under 35 U.S.C. § 112.

D. Support For Kett’s Proposed Definitions

1. Group I

The dispute between the parties as to the proper construction of the Group I terms 1

and 2 essentially presents one issue: whether the degree or amount of separation between the

inner surfaces of the two side knives needs to be defined with a frame of reference for

determining the degree or amount of separation (i.e., as measured along a line perpendicular

to the axes of the first and second fingers or guide members). Kett asserts that a proper

construction does require such a frame of reference. Otherwise, the Group I terms are

indefinite under 35 U.S.C. § 112.

The Group I terms are “gap” and “gap distance” which are found in claims 8, 16, 21

and 25 of the ‘303 patent and claims 1, 2, 3, 7, 10, 13, 16, 19, and 22 of the ‘998 patent.

A.

1 The reference to “term #” is taken from the left-hand column of the Joint Claim Chart (Exhibit 5).

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Defendant Kett Tool Company Inc.’s

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Kett’s Proposed Construction: “The degree of amount of

separation between the first and second interior surfaces, as

measured along a line perpendicular to the axis of the first and

second fingers or guide members.”

Figure 3 of the ‘303 and ‘998 patents (Exhibits 1 and 2), reproduced below for the

convenience of the Court, identifies the “gap” or the “gap distance” by the letter “G.”

This “gap distance G” or “gap width G” is further explained in the respective specifications

to be the distance “between the first interior surface 64a of the first finger 60a and the second

interior surface 64b of the second finger 60b.” Exhibit 1 at col. 4, ll. 13-15 and Exhibit 2 at

col. 4, ll. 19-21. Accordingly, Kett’s proposed claim construction language that reads, “. . .

between the first and second interior surfaces . . .,” is a virtual verbatim quotation from the

specification.

Moreover, while the detailed descriptions for both the ‘303 and ‘998 patents refer to

first and second “fingers” id., the claims of the ‘998 patent refer to first and second

“members” as opposed to “fingers.” However, for the purposes of construing the term “gap”

or “gap distance,” this semantic variation is of no import. Accordingly, Kett’s proposed

claim construction language which further reads in relevant part, “. . . the first and second

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Defendant Kett Tool Company Inc.’s

Opening Claim Construction Brief - 9

WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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fingers or guide members . . .,” is phrased in the disjunctive so that a single construction may

be applicable to the claims of both patents-in-suit.

Turning next to Kett’s proposed claim construction language which reads, “[t]he

degree of amount of separation between . . .,” Kett simply calls to the Court’s attention the

common dictionary definitions for a “gap” and a “distance.” For example a “gap” is often

defined as “a separation in space.” (Exhibits 6 and 7 at KETT 06754 & 06758.) And

“distance” is often defined as “the degree or amount of separation between” something.

(Exhibits 6-8 at KETT 06753, 06757, & 06761.) Hence, Kett’s proposed claim construction

language which reads, “[t]he degree of amount of separation between . . .,” is taken directly

from the common dictionary definitions for “gap” and/or “distance.”

Finally, turning to the frame of reference dispute between the parties’ respective

claim constructions, Kett’s proposed claim construction language, which reads in relevant

part, “. . . as measured along a line perpendicular to the axis of . . .,” is derived first again

from Figure 3 of the ‘303 and ‘998 patents (Exhibits 1 and 2). Here, to state the obvious, it is

unmistakable that the lines which define “G,” i.e., the “gap” or the “gap distance,” are

parallel to the axis of the first finger 60a and the second finger 60b. Id. Or said another way,

as Figure 3 illustrates, the two opposing arrows that define the “gap distance G” or “gap

width G” are perpendicular to the axis of the first finger 60a and the second finger 60b. Id.

The common dictionary definitions for “gap” and/or “distance” further reinforce

Kett’s proposed construction. For example, an example given of a “gap” is “the shortest

distance between the planes of the chords of the upper and lower wings of biplane.” (Exhibit

6 at KETT 06754) (emphasis added). Clearly, the shortest distance between the upper and

lower wings would be a line perpendicular to those wings.

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Defendant Kett Tool Company Inc.’s

Opening Claim Construction Brief - 10

WOOD, HERRON & EVANS, L.L.P.

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Cincinnati, Ohio 45202-2917

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Similarly, “distance” is further commonly defined as “the degree or amount of

separation between two points, lines, surfaces, or objects in geometrical space measured

along the shortest path joining them,” or as “the length of the perpendicular from a given

point to a given line.” (Exhibits 6, 8 and 9 at KETT 06753, 06761, & 06764) (emphasis

added).

Accordingly, Kett respectfully submits that the terms “gap” and “gap distance”

should be construed as “[t]he degree of amount of separation between the first and second

interior surfaces, as measured along a line perpendicular to the axis of the first and second

fingers or guide members.”

2. Group II

The dispute between the parties as to the proper construction of the Group II terms 3-

13 essentially presents two issues. The first issue is whether the recitation in these terms of

specific spacing dimensions needs to be defined with a frame of reference for determining

the recited spacing (i.e., as measured along a line perpendicular to the axis of the first and

second fingers or guide members). The second issue is whether such spacing dimensions

must be uniform along the length of the fingers or guide members (i.e., is there an inherent

requirement that the guide members or fingers have surfaces that are parallel to the side

surfaces of the center blade). As to the first issue, Kett asserts that the proper construction of

the Group II terms does require a frame of reference for determining the recited spacing.

Absent such a frame of reference, the Group II terms are indefinite under 35 U.S.C. §112.

As to the second issue, Kett asserts that there is no requirement, either explicit or implicit,

that the guide members or fingers have surfaces that are parallel to the side surfaces of the

center blade, i.e., the claims are not limited to spacing dimensions that are uniform along the

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Defendant Kett Tool Company Inc.’s

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length of the fingers or guide members.

a. A Proper Claim Construction Requires A

Frame Of Reference

Similar to the discussion in section D.1 above, Figure 3 of the ‘303 and ‘998 patents,

reproduced below, identifies the distances or spacings between the first and second fingers,

60a and 60b respectively, and the center blade 70 as S1 and S2.

Kett’s proposed claim construction language which reads in relevant part, “. . . as

measured along a line perpendicular to the axis of . . .,” is derived first again from Figure 3 of

the ‘303 and ‘998 patents (Exhibits 1 and 2). Here, to state the obvious, it is unmistakable

that the lines which define “S1” and “S2”, the separation or spacing distances are parallel to

the axis of the first finger 60a and the second finger 60b. Id. Or said another way, as Figure

3 illustrates, the two opposing arrows that define “S1” and “S2” are perpendicular to the axis

of the first finger 60a and the second finger 60b. Id.

The common dictionary definition for “distance” further reinforces Kett’s proposed

construction. For example, “distance” is commonly defined as “the degree or amount of

separation between two points, lines, surfaces, or objects in geometrical space measured

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Defendant Kett Tool Company Inc.’s

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along the shortest path joining them,” or as “the length of the perpendicular from a given

point to a given line.” (Exhibits 6, 8 and 9 at KETT 06753, 06761, & 06764) (emphasis

added).

Accordingly, Kett respectfully submits that the Group II terms must be construed

with a frame of reference in the form of the language “as measured along a line perpendicular

to the axis of the first and second fingers or guide members.” To construe these terms

without such a frame of reference for determining the dimension of the separation distance

flies in the face of the ordinary understanding for making such a measurement.

b. A Proper Claim Construction Does Not

Require An Implicit Requirement Of Parallel

Surfaces

The specifications of the ‘303 and ‘998 patents describe and depict an embodiment of

the claimed invention. Nowhere in the specifications, nor anywhere in the prosecution

histories of the patents-in-suit, nor in the reexamination prosecution histories is there a

requirement or explanation that calls for the fingers or guide members to have surfaces that

are parallel to the side surfaces of the center blade. Although Figure 3 of the ‘303 patent

shows an embodiment where those surfaces are parallel, there is no limitation in that regard.

It is well settled that it is improper to import limitations from the specification into the

claims.

[I]t is improper to import limitations from the specification into

the claims where there is no indication that the specific

examples in the specification are intended to be strictly

coextensive with the claim.

Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (quoting Vitronics,

90 F.3d at 1582); see also Kinetic Concepts, Inc. v. Blue Sky Med. Group, Inc., 554 F.3d

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Defendant Kett Tool Company Inc.’s

Opening Claim Construction Brief - 13

WOOD, HERRON & EVANS, L.L.P.

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Cincinnati, Ohio 45202-2917

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1010, 1027 (Fed. Cir. 2009).

The portion of the claim construction proposed by Kett “at any given point along that

axis,” makes it clear that the claim is not limited to a parallel orientation of the respective

surfaces. PacTool’s proposed construction of the Group II terms, on the other hand, imply

there is such a parallel orientation limitation. This is improper under Phillips.

In further support of Kett’s proposed construction, the ‘303 patent incorporates by

reference U.S. Patent No. 4,173,069. See Exhibit 1 at col. 3, lines 59-61. A copy of the ‘069

patent is attached as Exhibit 13. Reproduced below is Figure 5 of the ‘069 patent which

shows a tapered center blade. Because the center blade is tapered, by definition the side

surfaces of the center blade and the surfaces of the side shear blades are not parallel.

Because the ‘069 patent is incorporated by reference in the ‘303 patent, it forms a part of the

specification of the ‘303 patent.

Element Identifiers

31 – Movable Shear Blade

32, 33 – Stationary Shear Blades

41 – Cutting Edges of the Stationary Shear Blades

43 – Cutting Edge of the Movable Blade

44 – Flat, Transverse, Upper Face

45 – Side Cutting Edges

46 – Tapered Lower Portion

54, 55 – Downwardly Diverging Inner Faces

56, 57 – Flat Bottom Faces

Moreover, in the late 1970’s, Kett began working with James Hardie and Coy Pty.

Ltd., an Australian company, to produce new shear blades to cut a new product – corrugated

and flat cement fiber board. More specifically, the side knives (part no. 91-22) had a 7

degree taper, as shown in the figures below. The lower figure is an excerpt of Exhibit 12,

KETT 02691.

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Defendant Kett Tool Company Inc.’s

Opening Claim Construction Brief - 14

WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

(513) 241-2324  (513) 241-6234 facsimile

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These prior art shear blades are consistent with the proposed claim construction because they

show that it was known in the art, prior to the inventions in the ‘303 and ‘998 patents, to have

side knives and center blades without parallel facing surfaces.

PacTool itself has injected James Hardie into relevance through the Declaration of

John T. Whitehead it filed with the USPTO during the reexamination proceedings on the

‘303 and ‘998 patents. See Exhibit 14 at ¶¶ 4 and 16. The prior products depicted above,

manufactured for James Hardie, are thus relevant to the claim construction analysis and

support the conclusion that it is improper to include a parallel orientation limitation in the

claim terms at issue.

3. Group III

Terms 14-17 are grouped together because they all present the issue of indefiniteness

under 35 U.S.C. § 112. It should be noted that these terms (and the claims in which they are

found) are the partial subject of Kett’s pending Motion for Summary Judgment (Dkt. No.

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Defendant Kett Tool Company Inc.’s

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WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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125) filed December 7, 2010. Although the Court stayed the briefing and decision on Kett’s

motion, the indefiniteness analysis in that motion is highly relevant to the current claim

construction proceedings, and is reiterated below. Because claim terms that are indefinite are

not capable of construction, Kett has not proffered constructions for the Group III terms.

An indefinite patent claim is invalid. See Amgen Inc. v. F. Hoffman-La Roche, Ltd.,

580 F.3d 1340, 1371 (Fed. Cir. 2009) (“If a claim fails to reasonably apprise one skilled in

the art of the boundaries of the claim when read in light of the specification, then the claim is

invalid under § 112 for indefiniteness.” (citing Miles Lab., Inc. v. Shandon, Inc., 997 F.2d

870, 875 (Fed. Cir. 1993)). “Section 112(2) provides that ‘[t]he specification shall conclude

with one or more claims [1] particularly pointing out and distinctly claiming the subject

matter [2] which the applicant regards as his invention.’” Veritas Operating Corp. v.

Microsoft Corp., Case No. 2:06-cv-703, 2007 U.S. Dist. LEXIS 98739, at * 96 (W.D. Wash.

May 25, 2007) (quoting 35 U.S.C. § 112). Under this provision of the Patent Act, the

applicant is required to set forth what the invention is, and “must do so with sufficient

particularity and distinctness, i.e., the claim must be sufficiently ‘definite.’” Id. (quoting

Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1377 (Fed. Cir. 2000)). A party seeking

to invalidate a claim as indefinite under 35 U.S.C. § 112, ¶ 2 must show by clear and

convincing evidence that one skilled in the art would not understand the scope of the claim

when read in light of the specification. Intellectual Prop. Dev., Inc. v. UA-Columbia

Cablevision of Westchester, Inc., 336 F.3d 1308, 1319 (Fed. Cir. 2003).

Indefiniteness is a question of law for the Court to decide. See Honeywell Int’l, Inc.

v. United States, 609 F.3d 1292, 1301 (Fed. Cir. 2010); see also Exxon Research, 265 F.3d at

1376 (“We adhere to the principle that ‘determination of claim indefiniteness is a legal

conclusion that is drawn from the court’s performance of its duty as the construer of patent

claims.’” (quoting Personalized Media Commun., LLC v. Untied States Int’l Trade Comm’n,

161 F.3d 695, 705 (Fed. Cir. 1998)). Both the Federal Circuit and the courts in the Western

Case 3:06-cv-05367-BHS Document 170 Filed 03/04/11 Page 15 of 25
Defendant Kett Tool Company Inc.’s

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WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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District of Washington have stated that indefiniteness is “inextricably intertwined with claim

construction.” See e.g., Energizer Holdings v. United States Int’l Trade Comm’n, 435 F.3d

1366, 1367 (Fed. Cir. 2006) (emphasis added); Atmel Corp. v. Information Storage Devices,

198 F.3d 1374, 1379 (Fed. Cir. 1999); Veritas, 2007 U.S. Dist. LEXIS, at *97 (W.D. Wash,

May 25, 2007); Omax Corp. v. Flow Int’l Corp., Case No. 04-cv-2334, 2006 U.S. Dist.

LEXIS 81913, at *11-12 (W.D. Wash. Nov. 7, 2006). Indeed, if after undertaking claim

construction in full, the Court cannot determine the reasonable meaning of a claim term in

dispute, then that term is indefinite. See Datamize LLC v. Plumtree Inc., 417 F.3d 1342,

1347 (Fed. Cir. 2005).

a. Claims Containing The Group III Phrases

“to inhibit premature failure of said motor

and drive assembly” And “to provide clean

edge cuts” Are Indefinite

“A claim is indefinite if its legal scope is not clear enough that a person of ordinary

skill in the art could determine whether a particular composition infringes or not.” Geneva

Pharms., Inc. v. GlaxoSmithKline, PLC, 349 f.3d 1373, 1384 (Fed. Cir. 2003) (citing 35

U.S.C. § 112); see also IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384

(Fed. Cir. 2005) (claim must be “sufficiently precise to provide competitors with an accurate

determination of the ‘metes and bounds’ of the protection involved”). Such is the case for

claims containing the phrases “inhibit premature failure of said motor and drive assembly”

and “to provide clean edge cuts.” The scope of these phrases are neither defined by the

language of the specification, nor clear to a person of ordinary skill in the art.

The phrases exist in each of the independent claims of the ’303 patent, as they exist

after reexamination. For example:

8. [The cutting tool of claim 7] A reciprocating

fiber cement side cutting tool, comprising:

* * *

Case 3:06-cv-05367-BHS Document 170 Filed 03/04/11 Page 16 of 25
Defendant Kett Tool Company Inc.’s

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WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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a reciprocating cutting member between the first and

second fingers . . .

the second width being less than the first width such

that the first side surface is spaced apart from the first interior

surface by 0.0425 to 0.045 inches and the second side surface

is spaced apart from the second interior surface by 0.0425 to

0.045 inches to inhibit premature failure of said motor and

drive assembly and to provide clean edge cuts of said fibercement siding begin cut therebetween, . . .

(Exhibit 3) (emphasis added). In addition to claim 8 of the ’303 patent, this phrase exists in

the language of all remaining independent claims 16, 21 and 25, and therefore in all of the

claims depending therefrom. (See Id. at 12-13). See Wahpeton Canvas Co. v. Frontier, 870

F.2d 1546, 1552 n.9 (Fed. Cir. 1989) (noting that by definition dependent claims contain all

the limitation of the independent claims from which they depend); Markman v. Westerview

Instr., 52 F.3d 967, 1000 (Fed. Cir. 1995) (Newman, J., dissenting) (“An extensive body of

law, statutory and judgemade, governs the construction and legal effect of patent claims; for

example, that a claim is construed the same way in determining both patent validity and

infringement; that a dependent claim includes all of the limitations of the independent

claim...”). Accordingly, this indefinite limitation permeates all the claims of the ’303 patent,

and renders all the claims invalid.

Similar claim language is used in several claims of the ’998 patent. In that patent,

claims 7, 10, 13, 16, 19, and 22 include the phrases “to inhibit premature wear of the motor

or the drive assembly” and “to provide even edge cuts along a fiber-cement workpiece cut by

the cutting blade.” For purposes of the Court’s indefiniteness analysis, this phrase is

sufficiently similar to the language of the ’303 patent for the Court to determine their

invalidity together.

Both phrases contain subjective components that render the claims indefinite. In the

’303 patent, the term is “premature failing,” while in the ’998 patent, the term is “premature

Case 3:06-cv-05367-BHS Document 170 Filed 03/04/11 Page 17 of 25
Defendant Kett Tool Company Inc.’s

Opening Claim Construction Brief - 18

WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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wear.” The proper construction of each phrase depends upon a subjective reading of the

modifier “premature.” Likewise, in the ’303 patent, the term used is “clean edge cuts,” while

in the ’998 patent, the term used is “even edge cuts.” Despite the differences, proper

construction of each phrase depends on the subjective terms “clean” or “even.” Accordingly,

to the extent that the Court deems the claim language of the ’303 patent indefinite, the

language used in the ’998 patent is indefinite for similar reasons discussed below.

The role of the specification in determining indefiniteness was illustrated in Datamize

v. Plumtree, where the Federal Circuit considered the definiteness of the term “aesthetically

pleasing.” The court noted that “when faced with a purely subjective phrase like

‘aesthetically pleasing,’ a court must determine whether the patent’s specification supplies

some standard from which to measure the scope of the phrase.” Datamize, 417 F.3d at 1351.

In Datamize, the patent’s specification referenced “aesthetically pleasing” by describing

various advantages of the invention over the prior art, including that it “enables the user

interface for each individual kiosk to be customized quickly and easily... adhering the...

interface to good standards of aesthetics and user friendliness.” Id. at 1351. Additionally,

the specification described that the size of buttons on the screen layout were predefined to a

size chosen [] to make them aesthetically pleasing in appearance...” Id. Ultimately, the court

held that “aesthetically pleasing” was indefinite because:

Datamize has offered no objective definition identifying a

standard for determining when an interface screen is

“aesthetically pleasing.” In the absence of a workable

objective standard, “aesthetically pleasing” does not just

include a subjective element, it is completely dependent

on a person’s subjective opinion.

Id. at 1350.

The specification of the ’303 patent does not illuminate the meaning of a “premature

failure” of the drive assembly and motor unit. The ’303 patent suffers from inadequacies

similar to those suffered by Datamize. Although, it does describe “premature failure” in the

Case 3:06-cv-05367-BHS Document 170 Filed 03/04/11 Page 18 of 25
Defendant Kett Tool Company Inc.’s

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WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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prior art as “[o]ne drawback of the original hand-held tool” (Exhibit 1 at col. 2, lines 17-20),

the specification fails to provide one of ordinary skill in the art a means to measure when a

“failure” would be “premature.” Additionally, the ’303 patent describes its solution to the

problem, where “the inventors further discovered that increasing the size of the spaces...

between the blade... and the fingers... significantly reduced the premature failure of the

motor 24 and the drive assembly 36.” (Id. at col. 5, lines 25-29). And finally, “the blade set

50 of the cutting tool 10 not only provides a cost effective solution for reducing the

premature failure of the motor 24 and drive assembly 36, but it also produces a clean edge

along the cut.” (Id. at 51-54). But ultimately, the specification of the ’303 patent provides

“no objective definition identifying a standard” one of ordinary skill could use to determine

what is meant by “premature failure”.

Similarly, the specification offers no objective criteria to define a “clean edge cut.”

The term appears but twice in the specification: First, “it would be desirable to develop a

hand-held cutting tool that cuts a clean edge in FCS and is not subject to premature failure.”

(Exhibit 1 at col. 2, lines 34-36). Second, “the blade set 50 of the cutting tool 10 not only

provides a cost effective solution for reducing the premature failure of the motor 24 and drive

assembly 36, but it also produces a clean edge along the cut.” (Id. at col. 5, lines 51-54).

Like avoiding “premature failure,” the patent describes cutting a “clean edge” as an objective

of the claimed invention. However, one of ordinary skill in the art cannot, from the context

of the claims and specification, determine what either of those terms means.

This fact is illustrated, concisely – yet powerfully – by the deposition testimony of

Mr. Scott Fladgard, the named inventor of the ’303 patent. See Phillips v. AWH, 415 F.3d

1303, 1313 (Fed. Cir. 2005) (stating that it is a “well-settled understanding that inventors are

typically persons skilled in the field of the invention and that patents are addressed to an

intended to be read by others of skill in the pertinent art.”). Mr. Fladgard testified that he had

no idea what was meant by these terms:

Case 3:06-cv-05367-BHS Document 170 Filed 03/04/11 Page 19 of 25
Defendant Kett Tool Company Inc.’s

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WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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Q. Okay. And just after that second range is recited, it

says, “to inhibit premature failure of said motor and

drive assembly and to provide clean edge cuts of said

fiber-cement siding being cut therebetween.” Do you

see that?

A. Yes.

Q. So how is one to – to determine that premature failure

of said motor and drive assembly has been inhibited?

***

A. Give me the question again.

Q. How is one to determine whether premature failure of

said motor and drive assembly has been inhibited or

not?

***

A. Subjective.

Q. Okay. And then how about “and to provide clean edge

cuts of said fiber-cement siding cut therebetween”?

What is the standard that’s applied to determine

whether that gap width provides clean edge cuts?

***

A. And again, that’s a subjective, as we talked about

before: What’s a clean edge?

Q. Something might be clean to one person and not to

somebody else?

A. Exactly.

(Scott Fladgard Dep. Tr. 118:9 – 119:12, previously filed with Dkt. 113-1, Ex. 3 to Davis

Decl.). The terms “premature failing” and “clean edge cut,” by their nature, are subjective.

What is meant by premature can only be understood by an objective understanding of when

something – such as the failing of the motor and drive assembly – will or should likely

happen. Likewise, whether a cut is a clean edge cut is based on an opinion. These terms

Case 3:06-cv-05367-BHS Document 170 Filed 03/04/11 Page 20 of 25
Defendant Kett Tool Company Inc.’s

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WOOD, HERRON & EVANS, L.L.P.

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Cincinnati, Ohio 45202-2917

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remain subjective without further description, discussion or definition. According to the

Federal Circuit in Datamize, that is where the specification must be used to determine

whether the construction of a purportedly indefinite term can be ascertained. As described

above, the ’303 patent’s specification provides one of ordinary skill in the art no further

guidance regarding the meaning of “premature failing” and “clean edge cut.” Even the

named inventor cannot understand their meaning.

Accordingly, the Court should determine that the phrases “to inhibit premature failure

of said motor and drive assembly” and “to provide clean edge cuts” are indefinite, and

therefore, invalid.

b. Claims Containing The Phrase “wherein the

first side spacing and the second side spacing

are from [a certain percentage] of a thickness

of a fiber cement workpiece” Are Indefinite

“When a proposed construction requires that an artisan make a separate infringement

determination for every set of circumstances in which the [device] may be used, and when

such determinations are likely to result in differing outcomes (sometimes infringing and

sometimes not), that construction is likely to be indefinite.” Halliburton Energy Services,

Inc. v. M-I LLC, 514 f.3d 1244, 1255 (Fed. Cir. 2008). The claims of the ’998 patent reciting

that the first side spacing and the second side spacing are of a certain percentage of the

“thickness of a fiber-cement workpiece to be cut with the blade” require such a determination

from an artisan. Essentially, an artisan in the field must determine the ratio of the first and

second side spacing to the thickness of the fiber cement to determine whether his actions

constitute infringement.

This phrase generally exists in each of independent claim 2, 10, and 19 of the ’998

patent, as they exist after reexamination. For example:

2. The method of cutting a fiber-cement workpiece

having a thickness of 0.025 inch, comprising:

Case 3:06-cv-05367-BHS Document 170 Filed 03/04/11 Page 21 of 25
Defendant Kett Tool Company Inc.’s

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WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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* * *

reciprocating a cutting blade between the first and

second guide members and along a path transverse to the

surface of the workpiece... wherein the first side spacing and

the second side spacing are approximately 17% to 18% of a

thickness of a fiber-cement workpiece;...

(Exhibit 4 at col. 2, lines 12-15) (emphasis added). Because this limitation is contained in

independent claims, it is by law included into the dependent claim thereof. See Wahpeton

Canvas, 870 F.2d at 1552 n.9 (noting that by definition, dependent claims contain all the

limitation of the independent claims from which they depend); Markman, 52 F.3d at 1000

(“An extensive body of law, statutory and judgemade, governs the construction and legal

effect of patent claims; for example, that a claim is construed the same way in determining

both patent validity and infringement; that a dependent claim includes all of the limitations of

the independent claim...”).

In Halliburton Energy Svs., Inc. v. M-I, LLC, the Federal Circuit found claims such as

those employed by PacTool invalid due to indefiniteness. Halliburton Energy, 514 F.3d at

1255. In this case, the court undertook the construction of “fragile gels” as used in a claim

reciting “a method for conducting a drilling operation in a subterranean formation using a

fragile gel drilling fluid.” Id. at 1246. The specification defined “fragile gels” in a number of

ways, including: “easily disrupted or thinned, and that liquefies or becomes less gel-like and

more liquid – like under stress...” Id. Among other considerations, the court found

Halliburton’s claim indefinite because it failed to define the scope of the fragility of the gel in

light of all the variables that go into the characteristics of the gels. Id. at 1253. Moreover,

the court found that “an artisan would not know from one [oil] well to the next whether a

certain drilling fluid was within the scope of the claims ...” and therefore infringed. Id. at

1254. See also Geneva Pharms, Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed.

Cir. 2003) (determining that it is “the epitome of indefiniteness” that “a given embodiment

Case 3:06-cv-05367-BHS Document 170 Filed 03/04/11 Page 22 of 25
Defendant Kett Tool Company Inc.’s

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WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower · 441 Vine Street

Cincinnati, Ohio 45202-2917

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would simultaneously infringe and not infringe the claims, depending on the particular

bacteria chose for analysis.”).

PacTool’s claims are similarly indefinite. To determine whether a particular device

or use of a device infringes the claims of the ’998 patent identified above requires the artisan

to make a repeated series of calculations of the percentage of the first and second side

spacing with respect to the thickness of the workpiece he is currently dealing with. In other

words, to determine whether a particular tool would arguably infringe these claims, you

would have to first know the thickness of the particular workpiece in question. For one, or

many thicknesses, the tool would not infringe, but the artisan in the field would not know

(before calculating) from one piece of fiber-cement to the next whether the device he was

using was within the scope of the claims; his same hand-held cutting tool would

simultaneously infringe or not infringe, depending on the size of the workpiece. This is the

“epitome of indefiniteness,” and as such, these claims are indefinite and invalid.

IV. CONCLUSION

For all the foregoing reasons, Kett respectfully request that the Court adopt the

constructions proposed by Kett as set out in Exhibit 5.

Case 3:06-cv-05367-BHS Document 170 Filed 03/04/11 Page 23 of 25
Defendant Kett Tool Company Inc.’s

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WOOD, HERRON & EVANS, L.L.P.

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Cincinnati, Ohio 45202-2917

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/s/ John Paul Davis

Gregory F. Ahrens, OH Bar No. 0038627

Admitted Pro Hac Vice

John Paul Davis, OH Bar No. 0073446

Admitted Pro Hac Vice

WOOD, HERRON & EVANS, L.L.P.

2700 Carew Tower

441 Vine Street

Cincinnati, Ohio 45202-2917

(513) 241-2324

Facsimile: (513) 241-6234

jdavis@whepatent.com

gahrens@whepatent.com

Attorneys for Defendant Kett Tool

Company Inc.

Paul Richard Brown, WSBA No. 19357

BERESFORD BOOTH PLLC

145 Third Ave. S, Suite 200

Edmonds, Washington 98020

(425) 776-4100

Facsimile: (425) 776-1700

paulb@beresfordlaw.com

Local Counsel for Defendant Kett Tool

Company Inc.

Case 3:06-cv-05367-BHS Document 170 Filed 03/04/11 Page 24 of 25
Defendant Kett Tool Company Inc.’s

Opening Claim Construction Brief - 25

WOOD, HERRON & EVANS, L.L.P.

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Cincinnati, Ohio 45202-2917

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CERTIFICATE OF SERVICE

I hereby certify that on March 4, 2011, I electronically filed the foregoing with the

Clerk of the Court using the CM/ECF system which will send notification of such filing to

the following:

Paul T. Meiklejohn, Esq.

Ryan B. Meyer, Esq.

DORSEY & WHITNEY LLP

1420 Fifth Ave., Suite 3400

Seattle, Washington 98101

meiklejohn.paul@dorsey.com

meyer.ryan @dorsey.com

Attorneys for Plaintiff PacTool International, Ltd.

Arthur H. Schlemmer, Esq.

BARRON PECK BENNIE & SCHLEMMER

3074 Madison Road

Cincinnati, Ohio 45209

ahs@bpbslaw.com

Ronald James Trompeter, Esq.

HACKETT BEECHER & HART

1601 Fifth Avenue

Suite 2200

Seattle, Washington 98101-1625

rtrompeter@hackettbeecher.com

Attorneys for Elizabeth Tu Hoffman, Executor of the Estate of H. Rowe Hoffman

Dated this 4th day of March, 2011.

/s/ John Paul Davis

Gregory F. Ahrens, OH Bar No. 0038627

Admitted Pro Hac Vice

John Paul Davis, OH Bar No. 0073446

Admitted Pro Hac Vice

WOOD, HERRON & EVANS, L.L.P.

Attorneys for Defendant Kett Tool

Company, Inc.

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