UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

 

ACCO BRANDS USA LLC f/k/a ACCO

BRANDS, INC.,

Plaintiff,

v.

SECUCOMPUTER, INC., NOBLE

SECURITY SYSTEMS, INC., OFFICE

SECURITY SOLUTIONS, INC.,

INOVETIVE LOCKS, LTD. d/b/a

INNOVATIVE LOCKS LTD.,

PEMANDROS TRADING, LTD., and

OFFICE SECURITY, INC.,

Defendants,

-andACCO BRANDS USA LLC,

Plaintiff,

v.

PC GUARDIAN ANTI-THEFT

PRODUCTS, INC., NOBLE LOCKS

ENTERPRISES, INC., WAREHOUSE

ETC., INC., JR SALES/MARKETING,

LLC d/b/a ROYAL LOCKS, MIZ

ENGINEERING, LTD., TECH FOR LESS,

INC., PHILADELPHIA SECURITY

PRODUCTS, INC., DATAMATION

SYSTEMS, INC., CYBERGUYS, INC.,

XTATIX LLC, INOVETIVE LOCKS LTD.

d/b/a INNOVATIVE LOCKS LTD.,

PEMANDROS TRADING LTD., and

OFFICE SECURITY, INC.,

Defendants,

No. 03 C 1820, 06 C 7102, 07 C 0591

Judge James B. Zagel
2

-andGUAN GAO COMPANY LTD., d/b/a

POLOX COMPANY LTD., and NOBLE

SECURITY, INC.,

Plaintiffs/Counterclaim Defendants,

v.

ACCO BRANDS USA LLC,

Defendant/Counterclaim Plaintiff,

v.

INOVETIVE LOCKS LTD. d/b/a

INNOVATIVE LOCKS LTD.,

PEMANDROS TRADING LTD., OFFICE

SECURITY, INC., and MEIR AVGANIM,

Counterclaim Defendants.

MEMORANDUM OPINION AND ORDER

On April 10, 2008, the Court held a claim construction hearing in this case to determine

the appropriate meanings of the relevant key words used in the claims of the patents at issue, the

infringement of which is alleged by Plaintiff. After consideration of the parties’ papers and

presentations, I construe the claims at issue as follows.

I. Background

This is a patent infringement case that stems out of Plaintiff ACCO Brands’ patents

directed at security locks for portable electronics, including, but not limited to, laptop computers. 

This case involves four of ACCO’s patents relating to such locking devices, and, with regard to

claim construction, ACCO contends that only the ‘403 patent contains claim terms requiring this
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Court’s clarification. Each of the Defendants is involved in the manufacturing and/or marketing

of the security locks of one or more of the patents at issue in this suit. Defendant PC Guardian

Anti-Theft Products, Inc. (“PC Guardian”) is the maker of the Notebook Guardian line of locks

for laptop computers. Defendants Noble Security, Inc. (“NSI”) and Guan Gao Co., d/b/a Polox

Co., Ltd. (“Polox”) (collectively “Noble”) and PC Guardian were the only Defendants to appear

at the Markman hearing and to submit proposed claim constructions for the patents-in-issue.

On September 14, 2007, I approved the parties’ proposed claim construction schedule. 

ACCO timely produced a list of claim terms it believes require construction, with proposed

definitions on December 14, 2007. Defendants were required to produce their lists of claim

terms by December 21, 2007. PC Guardian filed its initial list of claim terms and definitions on

December 21, 2007 and then revised its positions on January 17, January 23, and January 24. 

Noble produced a revised construction of terms on February 1, 2008, the day the Joint Statement

was due. ACCO argues that Defendants’ untimely revisions should be stricken. I denied that

motion to strike in open court on April 10, 2008.

II. The Standard Principles of Claim Construction

Claim construction is a matter of law for the court to decide. Markman v. Westview

Instruments, Inc., 517 U.S. 370 (1996). In order “[t]o ascertain the meaning of claims, [the

court] consider[s] three sources: The claims, the specification, and the prosecution history.” 

Markman v. Westview Instruments, Inc., 52 F3d 967, 979 (Fed. Cir. 1995) (citations omitted). 

These three sources are the intrinsic evidence, public records available for all to consult and rely

upon when determining the meaning and scope of a patent claim. Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). When the intrinsic evidence
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unambiguously describes the scope of a patented invention, reliance on extrinsic evidence, such

as expert testimony and treatises, is inappropriate. Id.

Claim interpretation begins with the actual language of the claims. Bell Commc’ns

Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 619-20 (Fed. Cir. 1995). Generally, the

words, phrases and terms in patent claims should receive their ordinary and accustomed meaning. 

Johnson Worldwide Assocs. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999) (noting a “heavy

presumption in favor of the ordinary meaning of claim language.”). The strong presumption in

favor of the ordinary meaning may be overcome only when the patentee “clearly set[s] forth a

definition for a claim term in the specification.” Anchor Wall Sys. v. Rockwood Retaining Walls,

Inc., 340 F.3d 1298, 1306 (Fed. Cir. 2003) (citing Johnson Worldwide Assoc., 175 F.3d at 989-

90). “[A] technical term used in a patent claim is interpreted as having the meaning a person of

ordinary skill in the field of the invention would understand it to mean.” Dow Chem. Co. v.

Sumitomo Chem. Co., 257 F.3d 1364, 1372 (Fed. Cir. 2001) (citation omitted). 

“Claims must be read in view of the specification, of which they are a part.” Markman,

52 F.3d at 979 (citations omitted). The specification may reveal “whether the inventor has used

any terms in a manner inconsistent with their ordinary meaning.” Vitronics Corp., 90 F.3d at

1582 (also noting that “the specification is always highly relevant to the claim construction

analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term”). 

The specification also serves as an aid in determining “the meaning of the claim term as it is used

. . . in the context of the entirety of [the] invention.” Interactive Gift Express, Inc. v. Compuserve

Inc., 231 F.3d 859, 866 (Fed. Cir. 2000) (quoting Comark Communs., Inc. v. Harris Corp., 156

F.3d 1182, 1187 (Fed. Cir. 1998)). 
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The claims, however, are not limited to the embodiment shown in the specifications. 

Anchor Wall, 340 F.3d at 1306-07; Transmatic, Inc. v. Gulton Indus., 53 F.3d 1270, 1277 (Fed.

Cir. 1995). Limitations appearing only in the specifications cannot be read into a claim because

“the claim, not the specification, measures the invention.” Howes v. Zircon Corp., 992 F. Supp.

957, 961 (N.D. Ill. 1998) (citing SRI Int’l v. Matsushita Elec. Corp. Of Am., 775 F.2d 1107 (Fed.

Cir. 1985)). However, when the specification “makes clear that the invention does not include a

particular feature, that feature is deemed to be outside the reach of the claims of the patent, even

though the language of the claims, read without reference to the specification, might be

considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v.

Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed Cir. 2001). 

The publicly available prosecution history, which details the proceedings before the

Patent and Trademark Office (“PTO”), may limit the interpretation of claim terms by revealing

express representations made by the applicant regarding the scope of the claims or by excluding

interpretations that were disclaimed during prosecution. Vitronics, 90 F.3d at 1582-83. 

However, “unless altering claim language to escape an examiner rejection, a patent applicant

only limits claims during prosecution by clearly disavowing claim coverage.” Kopykake Enters.

v. Lucks Co., 264 F.3d 1377, 1382 (Fed. Cir. 2001) (internal quotation and citation omitted). 

Any such disavowal “must be clear and unmistakable.” Anchor Wall, 340 F.3d at 1307. Finally,

extrinsic evidence such as expert testimony may be considered only where the language of the

claims remains ambiguous after consideration of the claim language, specification and file

history. Key Pharms. v. Hercon Lab. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998). “[E]xtrinsic

evidence in general, and expert testimony in particular, may be used only to help the court come
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to the proper understanding of the claims; it may not be used to vary or contradict the claim

language.” Vitronics, 90 F.3d at 1584.

III. Claim Construction Relating to All Patents 

Defendant Noble proposes constructions for four terms used variously by the four

patents-in-suit. I will address two of these proposed constructions at the outset, and the other two

in turn with the proposed claims of Defendant PC Guardian.

A. “About”

Noble proposes that the term “about” as used variously in the ‘403, ‘125, ‘989, and ‘479

patents as a prefix for the slot measurement (for example, “about 3mm x 7mm”) should mean “a

slot which has a ‘design’ dimension of 3mm x 7mm, and which is manufactured to that design

dimension within manufacturing tolerances.” Both ACCO and PC Guardian submit that no

construction is required for the term “about.”

As used in patent language, the term “about” has an ordinary meaning of

“approximately.” Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1371 (Fed. Cir.

2005) (reversing the district court’s construction of “about” and ascribing to the term its

“ordinary meaning” of “approximately”); see also Abbott Labs. v. Alra Labs., Inc., No. 92-5806,

1997 WL 667796, at *7 (N.D. Ill. Oct. 24, 1997) (finding 7 units is “about” 6 or “about” 4 to 6

units and implicitly adopting “approximately” as the ordinary meaning of “about”). Clearly the

term “about 3mm x 7mm” could include security slots which are larger or smaller in width or

length than exactly the 3mm x 7mm dimensions, so long as the slots were approximately 3mm x

7mm, within the context of this case. See Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs.,

Ltd., 476 F.3d 1321, (Fed. Cir. 2007) (“the numerical limits” of the term “about . . . depends
7

upon the technological facts of a particular case.”). Noble argues that the ordinary definition of

“about” is overcome because the specification of the ‘989 patent includes a description of a

preferred embodiment with a slot having a long dimension of “seven millimeters, and a short

dimension of three millimeters,” without including the word “about.” However, references in a

specification to a preferred embodiment “do not evince a clear intent by the patentee to limit the

article” to the exact words used. Free Motion Fitness, Inc. v. Cybex Int’l Inc., 423 F.3d 1343,

1350 (Fed. Cir. 2005). Also, nothing in the prosecution history limits the meaning of “about”

beyond its ordinary definition. For these reasons, I decline to construe the term “about” beyond

its ordinary meaning.

B. “Portable”

Next, Noble proposes a construction for the term “portable” as used in conjunction with

either “electronic device” or “computer” in each of the patents-in-issue. According to Noble, the

term “portable” should be construed as meaning “luggable equipment that can be carried in one

hand such as notebooks, subnotebooks, and handheld computers, as well as palmtops and

personal digital assistants.” ACCO argues that because the term is clear on its face, and its

ordinary meaning has not been disavowed in the specification or prosecution history, no

construction is required. PC Guardian likewise proposes that no additional construction is

required.

Noble does not cite any part of the specification in support of its effort to limit the term

“portable” to include only certain types of electronic devices and computers. Also, Noble’s

proposal would create ambiguity as to what any one person may be able to carry in one hand. I
That Court was in the Northern District of California, Judge Susan Illston, who adopted 1

ACCO’s construction as the claim term’s plain and ordinary meaning and found that Defendants

8

find that the term “portable” has an understood ordinary meaning, which has not been restricted

in the specification of the patents. I decline to construe the term any further.

IV. Claim Construction for U.S. Patent No. 7,100,403

The ‘403 patent, entitled “Computer Physical Security Device,” discloses an apparatus

and locking method for portable electronic devices. The additional claims in the ‘403 Patent

which require construction are stated below, with the disputed terms emphasized.

3. The locking method of claim 1, wherein the locked

configuration is maintained by use of a pin proximate said

locking member, and wherein said pin extends into said

security slot after said locking member has moved to a locked

position.

 . . .

5. The locking method of claim 1 further comprising inserting a

pin into said security slot before said locking member moves to a

locked position.

 . . . 

11. The locking method of claim 1 wherein the attachment

mechanism includes a pin.

 . . . 

16. The locking method of claim 1 wherein at least part of the

locking member is disposed between a pair of pins in the

attachment mechanism.

ACCO proposes that only one phrase in the ‘403 patent requires construction: “wherein

the locked configuration is maintained by use of a pin.” ACCO submits that the phrase is

correctly interpreted as “keeping the locking member in a locked position relative to the security

slot by use of a pin.” In support, ACCO argues that this construction is consistent with the claim

language itself, the specification of the ‘403 patent, the dictionary definition of “maintain,” and

the ruling of one other district court that has considered nearly identical language. PC Guardian 1
could not overcome a heavy presumption in favor of defining “maintaining” as “keeping” or

“keeping in existing state.” See ACCO Brands, Inc. v. PC Guardian Anti-Theft Products, Inc.,

No. 04-03526, 2007 WL 4287314, at *3-4 (N.D. Cal. Dec. 5, 2007).

9

proposes the phrase should be construed as “preventing the locking member from returning to a

position aligned relative to the security slot by use of a pin,” where pin is separately construed as

“a short, rod-like structure positioned near, but separate from, the locking member.” In addition,

PC Guardian proposes construing the phrase “wherein said pin extends into said security slot

after said locking member has moved to a locked position” in such a way that “extends” is an

active verb with a temporal connotation, rather than a state of being about how far the pin

extends.

The primary dispute centers around the construction of the term “maintaining” as

“keeping” or “preventing.” A heavy presumption applies that the claim term carries its ordinary

and customary meaning, as established by the dictionary definition, which is “keeping in existing

state.” PC Guardian’s proposed construction of “preventing the locking member from returning

to a [certain] position,” while similar to the ordinary meaning, is by no means synonymous with

it. PC Guardian’s proposed construction improperly imports a limitation from the ‘403

specification into the claim and, in contravention of well-established claim construction

methodology, excludes a preferred embodiment in the specification (depicted in Figure 26B). 

For these reasons, I adopt ACCO’s construction that “wherein the locked configuration is

maintained by use of a pin” means “keeping the locking member in a locked position relative to

the security slot by use of a pin.” 

 Next, PC Guardian argues that the phrase “wherein said pin extends into said security

slot after said locking member has moved to a locked position” ought to be construed in such a
Similarly, with respect to claim 16 which recites “a pair of pins,” PC Guardian suggests 2

that the appropriate construction is “a pair of short, rod-like structures positioned near, but

separate from, the locking member.”

10

way that “extends” is an active verb with a temporal connotation. Here again, however, nothing

in the claim term suggests that the verb “extends” is active or contains a temporal scope. PC

Guardian’s reliance on Federal Circuit opinion in earlier litigation between these parties over the

related ‘989 patent is misplaced. There, the Court construed the term “for extending” as an

active verb, but that term is not the equivalent of the term “extends,” which is used in the claim

here. See ACCO Brands, Inc. v. Micro Sec. Dev. d/b/a PC Guardian, 346 F.3d 1075 (Fed Cir.

2003). Rather, “extends” is an intransitive verb that describes the state of being of the pin. 

Where the patent teaches an action, as it does in claim 5, the language includes the participle

“inserting” to describe an action in particular sequence. PC Guardian’s construction improperly

limits the scope of the claim, and therefore I decline to adopt it. The ordinary meaning of the

term shall govern.

Lastly, with regard to the ‘403 patent, Defendants propose constructions of the term

“pin.” PC Guardian proposes the term “pin” should be construed as “a short rod-like structure

positioned near, but separate from, the locking member.” Noble proposes the term “a pin” 2

means “a single pin which is moveable relative to the attachment mechanism to extend into the

security slot after the locking member has moved to a locked position, in a manner which keeps
In the context of claim 16, where the term “pin” appears in the phrase “a pair of pins in 3

the attachment mechanism,” Noble argues for a construction that would require “a pair of pins

which emerges from the housing through an aperture in the housing.” Noble’s opening brief on

claim construction does not address this variation in construction. Regardless, the limitation on

the term is rejected for the same reasons that I decline to construe “pin” beyond its ordinary

meaning.

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the locking member in a locked position, as long as the pin is retained in the security slot.” 3

ACCO submits that the term “pin” is unambiguous and requires no construction.

Defendants’ proposals, specifically those that relate to location and function, require

additional limitations to the term “pin” that are not in the claim language nor supported from the

specification or prosecution history. Claim 11 does not require the pin to be in a position near,

but separate from, the locking member. Claims 3, 5, and 16 describe a pin separate and apart

from a locking member, but, absent clear disavowal, this limitation cannot be incorporated into

other claims that do not recite such a differentiation. Such a limitation may also not be

incorporated from structures depicted in certain preferred embodiments but not others. With

regard to structure, PC Guardian argues that during the prosecution of the related ‘794 patent

ACCO limited the scope of the term “pin” to a “short stiff wire, rod or something resembling a

wire or rod in shape or use.” Indeed, ACCO responded to the examiner that the cylindrical

second element 26 of Wilson was not a pin because a pin should have its “everyday meaning” as

a “short stiff wire, rod or something resembling a wire or rod in shape or use.” I decline to adopt

the additional limitations proposed by Defendants, but in light of the prosecution history, I will

adopt ACCO’s proposed ordinary meaning that a “pin” means a “short stiff wire, rod or

something resembling a wire or rod in shape or use.”
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V. Claim Construction for U.S. Patent 7,121,125

The additional claims in the ‘125 Patent which Defendants’ argue require construction are

stated below, with the disputed terms emphasized.

1. A locking system, comprising:

 . . . 

A retractable inhibiting member coupled to said housing, the

retractable inhibiting member inhibiting removal of the slot

engagement member from the security slot when the security

device is in the locked configuration, the retractable inhibiting

member being retractable relative to the slot engagement member,

and

. . . 

8. A system, comprising:

. . . 

An inhibiting member coupled to said slot engagement member,

the inhibiting member inhibiting the removal of the slot

engagement member from the security slot when the slot

engagement member is in the second configuration.

PC Guardian and Noble contend that claims 1 and 8 require construction. PC Guardian

makes three proposals with regard to construction of terms in claims 1 and 8. First, PC Guardian

proposes that the “retractable inhibiting member” of claim 1 and “inhibiting member” of claim 8

must be “inserted into the slot” to perform their functions of inhibiting removal of the slot

engagement member. Second, PC Guardian argues the term “retractable” in claim 1 must be

interpreted in view of the specification and prosecution history, which indicate a contemplated

meaning of “capable of being withdrawn linearly.” Third, PC Guardian insists that the terms

“retractable inhibiting member” of claim 1 and “inhibiting member” of claim 8 should be

construed as means-plus-function elements under 35 U.S.C. § 112, ¶ 6 and be statutorily

confined to the corresponding structures of the relevant embodiments of the ‘125 patent, and

equivalents. Noble makes two proposals regarding construction for claims 1 and 8 of the ‘125

patent, both of which are similar to PC Guardian’s first proposal. For claim 1, Noble suggests
13

“retractable inhibiting member” should be construed as “a member which is retractable, i.e.,

moveable, relative to the slot engagement member, in a manner such that when the slot

engagement member is in the security slot, the retractable inhibiting member inhibits the slot

engagement member from being moved out of the security slot.” For claim 8, Noble urges that

the definition of “an inhibiting member” ought to be “a member which prevents return of the

‘slot engagement member’ to the first configuration.” In contrast, ACCO asserts that the plain

meaning of all of the ‘125 patent claims should prevail and that no further claim construction is

required.

A. “Retractable inhibiting member” of Claim 1 and “inhibiting member” of Claim 8

PC Guardian argues that the terms “retractable inhibiting member” and “inhibiting

member” are hardly clear on their face and only indicate the function (“inhibiting”) but not the

structure or method of performance of the device. PC Guardian proposes that the phrase

“inserted into the slot” be added to these claims in order to clarify that the inhibiting member

must be inserted into the slot to perform its function of inhibiting removal of the slot engagement

member. In support, PC Guardian points to two preferred embodiments in the specification that

both show the inhibiting member within the security slot (Figures 14 and 15). PC Guardian

further argues that ACCO clarified during the prosecution of the ‘125 patent that the inhibiting

member must be in the slot when functioning in order to inhibit removal of the slot engagement

member.

Noble argues that the term “inhibit” as used in the phrases “retractable inhibiting

member” and “inhibiting member” means a member which is retractable, i.e., moveable, relative

to the slot engagement member, in a manner such that when the slot engagement member is in
14

the security slot, the retractable inhibiting member inhibits the slot engagement member from

being moved out of the slot.

ACCO argues that there is no support in either the specification or the prosecution history

of the ‘125 patent for such a narrowing of the ordinary meaning of the plain claim language.

First, the claim language itself imposes no requirement that the inhibiting member be

inserted into the slot when “inhibiting removal of the slot engagement member from the security

slot.” The claim language describes the inhibiting member as “coupled to the housing” and

retractable “relative to the slot engagement member.” The claim language further makes clear

that the inhibiting member inhibits removal of the slot engagement member from the security slot

when the device is in a locked configuration. Claim 4 requires that the inhibiting member

“extend through the housing,” and Claim 8 describes that the inhibiting member is “coupled to

the slot engagement member” and that it inhibits removal of the slot engagement member from

the security slot when in the second configuration. None of these detailed descriptions requires

that the inhibiting member be “inserted into the slot.”

In contrast, the claim language clearly indicates that the slot engagement member is

“retained within said security slot” when in certain configurations. If the claim had intended the

inhibiting member to likewise be inserted into the slot, it would have included that specification

in its clear language. Therefore, neither of Defendants’ proposed constructions is supported by

the claim language itself.

Second, although the inhibiting member is featured within the security slot in two

preferred embodiments in the specification, restrictions from particular embodiments cannot be

imported into the claim as a whole. Agfa Corp. v. Creo Products Inc., 451 F.3d 1366, 1376 (Fed.

Cir. 2006); Texas Instruments, Inc. v. United States Int’l Trade Comm’n, 805 F.2d 1558, 1563
15

(Fed. Cir. 1986) (“This court has cautioned against limiting the claimed invention to the

preferred embodiments as specific examples in the specification.”). This is especially so when

“[n]othing beyond that depiction [of particular preferred embodiments] limits the claim language

- the defining portion of the patent document - to some particular orientation.” Agfa, 451 F.3d at

1376-77. Furthermore, the limiting constructions proposed by Defendants would actually

exclude other preferred embodiments described in the specification, including Figures 19 and

21D, which do not require the inhibiting member be inserted into the slot. Thus, such

constructions cannot be sustained. Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334,

1341 (Fed. Cir. 1999).

Third, the prosecution history of the ‘125 patent fails to support any disavowal of claim

scope by ACCO. PC Guardian’s excerpted discussion between ACCO’s inventors and the

Examiner does not, as PC Guardian suggests, demonstrate a disavowal of any claim scope

covering the inhibiting member being located outside of the slot for inhibiting removal of the slot

engagement member. The Examiner rejected an independent claim as anticipated by U.S. Patent

No. 5,082,232 to Wilson under 35 U.S.C. § 102(b). In response, ACCO inventors argued that

Wilson was distinguishable because it did not teach both a slot engagement member and an

inhibiting member. ACCO did not make any arguments as to whether or not the inhibiting

member was required to be inserted into the slot, but rather sought clarification from the

Examiner as to which object the Examiner believed to be the inhibiting member and which

object was believed to be the slot engagement member. ACCO pointed out that in Wilson “there

is only one structure that fits into the hole” in order to demonstrate that Wilson did not teach both

a slot engagement member and an inhibiting member. Neither the Examiner nor ACCO made
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any mention of the location of the inhibiting member as being inside or outside the slot, and thus

there is no basis for the argument that ACCO made any disavowal.

Because there is no support in the claim language, the specification, or the prosecution

history, I decline to adopt either of Defendants’ limiting constructions of the phrases “retractable

inhibiting member” and “inhibiting member” as used in the ‘125 patent. Those phrases shall

carry their plain and ordinary meaning as clearly described in the claim language.

B. “Retractable”

PC Guardian argues that the term “retractable” should be interpreted to mean “capable of

being withdrawn linearly” because the term by itself leaves ambiguity as to how the inhibiting

member moves relative to the slot engagement member, since two parts can move toward and

away from each other in a myriad of ways. Again, PC Guardian points to three specific

embodiments (Figures 14, 15, and 27A and B) in support of its proposed construction and argues

that the remaining embodiments of the ‘125 patent similarly support such a construction. PC

Guardian also argues that the prosecution history reveals that the Examiner understood

“retractable” to mean capable of being withdrawn linearly. ACCO argues that the claim

language makes clear that the retractable inhibiting member must only be retractable “relative to

the slot engagement member” and imposes no further restrictions on the term. 

Regarding the specification and the preferred embodiments that depict the inhibiting

member retracting linearly relative to the slot engagement member, as explained above,

references in such embodiments should not be used to limit the claims. See, supra, Free Motion

Fitness, 423 F.3d at 1351. In general, courts “indulge a heavy presumption that a claim term

carries its ordinary and customary meaning.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d

1359, 1366 (Fed. Cir. 2002) (internal quotation omitted). Dictionary definitions may establish a
17

claim term’s ordinary meaning, see Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed.

Cir. 2001), and “retractable” ordinarily means “to draw back,” without any reference to a specific

linear direction. Webster’s Second New Riverside University Dictionary 1004 (1984). The use

of the word “retractable” and the limit imposed by the claim language (“retractable relative to the

slot engagement member”) is not overcome or further limited by any of the drawings in the

specification.

Regarding the prosecution history, that too shows no disavowal of the scope of the term

“retractable” by ACCO. The particular direction of movement of the inhibiting member was not

an issue before the Examiner. The issue was what the inhibiting member was retractable relative

to. The Examiner’s rejection of certain claims explained that those “claims do not set forth the

inhibiting member as being retractable relative to anything in particular.” In response, ACCO

amended the claims to specify that the retractable inhibiting member is “retractable relative to the

slot engagement member,” and that amended language remains in the claim. The Examiner

initially maintained the rejection in light of the Carl patent, which also disclosed an inhibiting

member retractable relative to the slot engagement member, reasoning that ACCO’s claim was

not patently distinct. Subsequently, however, the Examiner accepted ACCO’s further response

that Carl was not prior art and therefore did not need to be distinguished in order to allow

ACCO’s claims. The rejection based on the Carl patent was ultimately withdrawn. Regardless,

the specific direction of retraction was not addressed by either the Examiner nor ACCO during

the prosecution. The issue was what the inhibiting member was retractable relative to, not in

what direction the retraction was performed. 

Because there is no support in the claim language, the specification, or the prosecution

history, I decline to adopt PC Guardian’s construction of the term “retractable” as used in the
18

‘125 patent. “Retractable” shall carry its plain and ordinary meaning and only be modified by the

clear claim language “relative to the slot engagement member.” 

C. “Retractable inhibiting member” and “inhibiting member” as Means-Plus-Function

Limitations

PC Guardian argues that the terms “retractable inhibiting member” of claim 1 and

“inhibiting member” of claim 8 should be construed as means-plus-function elements under 35

U.S.C. § 112, ¶ 6 and be statutorily confined to the corresponding structures of the relevant

embodiments of the ‘125 patent, and their equivalents. According to PC Guardian, those phrases

recite the function of the members without also reciting sufficient structure for performing that

function. 35 U.S.C. § 112, ¶ 6 provides:

An element in a claim for a combination may be expressed as a

means or step for performing a specified function without the

recital of structure, material, or acts in support thereof, and such

claim shall be construed to cover the corresponding structure,

material, or acts described in the specification and equivalents

thereof.

The word “means” is not the only trigger that will invoke § 112(6), but a claim limitation

that actually uses the word “means” will create a rebuttable presumption that the section applies. 

Raytheon Co. v. Roper Corp., 724 F.2d 951, 957 (Fed. Cir. 1983); CCS Fitness, 288 F.3d at

1369. In contrast, a claim term that does not use “means” will trigger the rebuttable presumption

that § 112(6) does not apply. CCS Fitness, 288 F.3d at 1369.

In this case, the claims at issue do not use the catch phrase “means,” thereby triggering

the rebuttable presumption that § 112(6) does not apply. Still, PC Guardian can rebut this

presumption if it demonstrates that the claim terms fail to “recite sufficiently definite structure”

or else recite a “function without reciting sufficient structure for performing that function.” 

Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004).
19

To determine whether sufficient structure is in fact recited by the terms used in the claim

limitations, the Federal Circuit has inquired into whether the “term, as the name for structure, has

a reasonably well understood meaning in the art.” Greenberg v. Ethicon Endo-Surgery, Inc., 91

F.3d 1580, 1583 (Fed. Cir. 1996). The fact that a particular mechanism - in this case “inhibiting

member” - is defined in functional terms is not sufficient to convert a claim element containing

that term into a “means for performing a specified function” within the meaning of § 112(6). Id.

(noting that many devices take names from the functions they perform, including “filter,”

“brake,” “clamp,” “screwdriver,” and “lock.”). 

PC Guardian argues that these terms have no special meaning to one of ordinary skill in

the art of lock design and that no dictionary definition of either phrase exists. The term

“inhibiting member” appears only twice in the specification, and, according to PC Guardian, the

specification therefore fails to describe the term in enough detail to avoid means-plus-function

construction.

Contrary to PC Guardian’s assertions, the Federal Circuit has explained “member” is

ordinarily understood to connote structure. See CCS Fitness, 288 F.3d at 1369. Moreover,

ACCO has cited and included as exhibits six other mechanical patents, including patents for

locking mechanisms, that use a version of the term “inhibiting member” to connote structure. 

This is persuasive that the term does indeed have a reasonably well-understood meaning in the

art. 

More important, “member,” as defined by common and technical dictionaries, refers to a

“structural unit such as a ... beam or tie, or a combination of these,” see McGraw-Hill Dictionary

of Scientific and Technical Terms 1237 (5th ed.1994), or to a “distinct part of a whole,” see
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American Heritage Dictionary 849 (3d ed.1996). These definitions indicate that the term

“member” denotes a structure that is, at the very least, a single unit in a larger whole.

Further, in addition to the structure suggestion by these dictionary definitions, the claims

themselves offer descriptions of the “inhibiting member.” The member can be a pin or pins, a

screw, abutment plates, or a spindle arm. The member must be coupled to the housing, inhibit

removal of the slot engagement member from the security slot when in the locked configuration,

and be retractable relative to the slot engagement member. The inhibiting member must be

coupled to the slot engagement member and inhibit removal of the slot engagement member

when the security slot is in the second configuration.

PC Guardian has not shown that anything in the specification or prosecution history

overcomes the “heavy presumption” that “member” carries its ordinary meaning. Johnson

Worldwide, 175 F.3d at 989. Because the specification provides details of the structure and

because the term “member” has a reasonably well-understood meaning in the art and in common

and technical dictionaries to connote structure, I decline to construe these terms as mean-plusfunction elements under 35 U.S.C. § 112, ¶ 6.

VI. The ‘989 and ‘479 Patent Claims

The disputed claims in the ‘989 and ‘479 patents have all been addressed by the foregoing

claim construction of terms in the ‘403 and ‘125 patents. To the extent that any slight variation

in wording is disputed, I decline to further limit the scope of the claims here beyond their

ordinary, plain meaning.
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VII. Conclusion

The majority of terms in the patents-in-suit need no construction because they have wellunderstood definitions, capable of application by both the jury and this court in considering the

evidence submitted in support of an infringement or invalidity case. The ordinary meaning of a

“pin” is a “short stiff wire, rod or something resembling a wire or rod in shape or use.” For the

reasons stated above, I adopt the construction that “wherein the locked configuration is

maintained by use of a pin” means “keeping the locking member in a locked position relative to

the security slot by use of a pin.”

ENTER:

James B. Zagel

United States District Judge

DATE: June 25, 2008