NOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

2009-1097 JACK O. CARTNER and MOTRIM, INC., Plaintiffs-Appellants,

v. ALAMO GROUP, INC., Defendant-Appellee.

Philip J. Moy Jr. , Fay Sharpe LLP, of Cleveland, Ohio, argued for plaintiffsappellants. With him on the brief was Alexander P. Tsarouhas

. Steven M. Auvil , Benesch Friedlander Coplan & Aronoff, LLP, of Cleveland, Ohio, argued for defendant-appellee. With him on the brief were Bryan A. Schwartz and Benjamen E. Kern

. Appealed from: United States District C ourt for the Northern District of Ohio Senior Judge Lesley WellsNOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

2009-1097

JACK O. CARTNER and MOTRIM, INC., Plaintiffs-Appellants,

v. ALAMO GROUP, INC., Defendant-Appellee.
Appeal from the United States District Court for the Northern District of Ohio in case No. 1:07-CV-1589, Senior Judge Lesley Wells.

_________________________ DECIDED: June 17, 2009

_________________________ Before NEWMAN, MAYER, and SCHALL, Circuit Judges

. SCHALL, Circuit Judge

.

DECISION Plaintiff-Appellants Jack O. Cartner and Mo trim, Inc. (together “Cartner”) appeal the final judgment of the United States District Court for the No rthern District of Ohio in favor of Defendant-Appellee Alamo Group, Inc. (“Alamo”) that claims 5 and 12 of Cartner’s U.S. Patent No. 5, 197,284 (“the ’284 patent”) are invalid for failure to meet the written description requirement of 35 U.S. C. § 112. Cartner v. Alamo Group, Inc. , No. 1:07CV1589 (N.D. Ohio Oct. 29, 2008). The court’s entry of judgment and concurrentdismissal of all other clai ms and counterclaims in t he case followed the court’s construction of the claim limitation “said flow control orifice being c onstantly operative.” Cartner v. Alamo Group, Inc. , No. 1:07CV1589, 2008 WL 2169005 (N.D. Ohio May 21, 2008) (“Claim Construction ”). Based on that construction, the parties stipulated that claims 5 and 12 of the ’284 patent are invali d under § 112. Because we conclude that the district court erred in it s claim construction, we vacate the judgment of invalidity and remand the case to the district court for further proceedings. DISCUSSION I Mr. Cartner is the named inventor on the ’284 patent and is pr esident of Motrim, Inc., the exclusive licensee of the patent. The ’284 patent is directed towards “a deceleration circuit for a hydr aulic motor.” ’284 patent co l.1 ll.15–19. Such a circuit typically is used in “power mowers or ditc hers or the like utilized in road maintenance equipment.” Id. When power to the hydraulic motor is shut off, two potential problems can occur: (1) “the grass cutting blade or ditc hing blade . . . continues to freewheel” and “does not come to a stop very quickly,” pot entially causing damage to surroundings; or (2) “the motor . . . come[s] to a precipitous stop,” placing great strain on the motor and the fasteners that connect the cutting blades. Id. col.1 ll.25–49. The deceleration circuit of the current invention attempts to solve these problems by “gr adually bring[ing] a hydraulic motor to a stop” a fter it is shut off. Id. col.2 ll.54–60. Cartner sued Alamo for infringing several claims of the ’284 patent. Only claims 5 and 12, however, are at issue in this a ppeal. Both claims, of which claim 5 is representative and repr oduced below, contain the limitation in dispute—i.e., “said flow

2009-1097 2control orifice being const antly operative.” Id. col.8 ll.65–66; col.10 ll.25–26. Claim 5 reads as follows: 5. A hydraulic motor dec eleration system comprising: a pump; a hydraulic motor; a hydraulic circuit interconnecting said pump and said motor, said circuit comprising: a first hydraulic fluid line extendi ng between said pump and said motor, a first control valve located in said first fluid line for controlling the communication of fluid between said pump and said motor, a second hydraulic fluid line interc onnecting said control valve and said motor, a third hydraulic fluid line interconnecting said first and second hydraulic lines, a relief valve located in said third fluid line, and a flow control orifice located in said th ird fluid line, said flow control orifice being constantly operative , said third fluid line allo wing a flow of hydraulic fluid from said second fl uid line to said first fluid line even when said control valve is in a closed position, as regulated by said relief valve, and wherein said flow contro l orifice limits the speed with which such flow takes place. Id. col.8 ll.48–67. 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 Cart ner’s proposed construction of the disputed limitation, which relied on the ’284 patent’s s pecification and prosecution history. The court determined that the spec ification was not inst ructive and that the statements in the prosecution history were “not explanatory.” Id. at *14. In contrast, the

2009-1097 3court found Alamo’s proposed construction, whic h 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—s pecifically, the word “even.” Id. at *15. For those reasons, the district court accepted Al amo’s proposed construction and construed the limitation “said flow control orifice being cons tantly operative” as meaning that “the flow control orifice continuously sl ows fluid when the first control valve is in the open or closed position.” Id. Subsequently, Cartner and Alamo stipulated that, according to the district court’s construction, claims 5 and 12 of the ’284 patent are invalid for failure to meet the written description requirement of 35 U.S.C. § 112. Accordingly, the district court entered a judgment of invalidity in favor of Alamo and dismissed all other claims and counterclaims. Cartner has timely appealed; we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). II Cartner argues that the district court im properly construed the pertinent limitation because it discounted both the specification and prosecution history, instead relying heavily on the dictionary defin itions 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 c ontends that the prosecution history provides a clear definition of “said control orifice being constantly operative” that is inconsistent with the district court’s construction.

2009-1097 4Alamo responds that the district court, by relying on the plain meaning of claims 5 and 12, arrived at the correct construction. In addition, Alamo co ntends that that the district court’s construction properly “gives meaning to all the terms of the claims.” Appellees’ Br. 30. According to Alamo, th is is so because the district court’s construction requires the continuous slowing of fluid when the firs t valve is open or closed and, thus, takes into account the word “even” in the claim language. In addition, Alamo argues that the district court did not ignore the pros ecution history, but instead found it unclear and “not expl anatory.” Under those circ umstances, Alamo argues, the court was correct to discount the prosecution history. III We agree with Cartner. First, we think the district court’s construction of “said flow control orifice being co nstantly operative” is cont rary to the ’284 patent’s specification. The specificati on discloses that the “flow contro l orifice” is located in the third fluid line and “regulates the rate at whic h hydraulic fluid flowing through the third hydraulic fluid line 40 can reenter the first fluid line 14 .” ’284 patent col.4 ll.15–30; fig.1. The “flow control orifice” can only regul ate fluid flow when t he third fluid line 40 contains fluid. However, regardless of whether the first control valve is open or closed, there are times when the third fluid line 40 does not contain fluid—namely, when the relief valve 42 is in the closed position, thereby preventing fl uid from flowing into the third fluid line 40 . Id. fig.1. Until relief valve 42 is in the open position, it prohi bits fluid flow in the third fluid line 40 . Significantly, both parties agreed to t he construction of “as regulated by a relief valve” in the third fluid line to mean the “[r]elief valve controls whether and how much fluid may flow .” Claim Construction , 2008 WL 2169005, at *7 (emphasis added).

2009-1097 5In other words, because the relief valve controls whether fluid may flow into the third fluid line, there are instances when there is no fluid flow in the third fluid line. Thus, because the third fluid line does not always contain fluid, the district court’s requirement that the flow control orifice c ontinually slow fluid “when the first control valve is in the open or closed position” (regardless of whether there is fluid flow in the third fluid line) is contrary to the ’284 pa tent’s specification. Of particular importance to the proper clai m construction in this case is the prosecution history of t he ’284 patent. See, e.g. , Mangosoft v. Oracle Corp. , 525 F.3d 1327, 1332–33 (Fed. Cir. 2008) (findi ng further support for the proper construction in the prosecution history). Contrary to the district court’s c onclusion, the statements and amendments in the prosecut ion history are highly explanatory about the proper construction of “said flow contro l orifice being cons tantly operative .” Specifically, the claims that would become claims 5 and 12 initially did not include the language “constantly operative” to descr ibe the claimed “flow control orifice.” In due course, the examiner rejected those claims in view of U.S. Patent No. 4,194,365 granted to Stoufflet et al. (“Stoufflet”). Stouffl et shows a “flow control orif ice” (called an “adjustable constriction 53 ”) located in a two-position “solenoid valve 48 .” Thus, the “adjustable constriction” in Stoufflet is only placed in the third fluid line, and therefore is only “operative,” when t he solenoid valve 48 is activated. See Stoufflet col.3 ll.54–67; fig.1. In other words, Stoufflet’s “flow control orifice” (i.e., “adj ustable constriction 53 ”) is not permanently in the fluid line, but instead must be switched into the fluid line at certain operation times. Contrastingly, the “flow control orifice” of claims 5 and 12 in the ’284 patent is permanently located in the third fluid line and does not need to be switched

2009-1097 62009-1097 7 into that line at certain times. See ’284 patent fig.1 item 44 (disclosing that flow control orifice 44 is not located in relief valve 42 ). Cartner’s prosecuting attorney added the “constantly operative” limitation to reflect this difference, arguing t hat Stoufflet failed to teach a “flow control orifice, which is constantly operative, rather than being solenoid controlled.” Thus, Cartner’s prosecuting a ttorney did not add t he term “constantly operative” to indicate that the “flow control orifice” “c ontinuously slows fluid,” as concluded by the district court. Rat her, “constantly operative” was added during prosecution to explicitly describe the difference between the claims and the prior art— namely, that the “flow control orifice” was not located in a solenoid valve. Accordingly, the district court’s construction of “constant ly operative” is incons istent with the meaning it was given during prosecution. For the foregoing reasons, we hold that the district court erred in its construction of the limitation “said flow control orifice bei ng constantly operative” in claims 5 and 12. Taking into account the claim language, the specific ation, and the prosec ution history as explained above, we construe “said flow contro l orifice being const antly operative” to mean “the flow control orifice c ontinuously slows fluid flow when there is fluid flow in the third fluid line, whether the fi rst control valve is in the open or closed position.” Because we have revised the district court’s clai m construction, we va cate its judgment of invalidity of claims 5 and 12 pursuant to § 112. We therefore re mand the case to the district court for further pr oceedings consistent with the cl aim construction we have set forth above. VACATED and REMANDED