After briefing by the parties and a Markman hearing, the relevant terms were construed as
follows: (1) a “substantially hermetic seal” is a seal that is nearly or largely impervious to air;
(2) “complete hermetic seal” means a seal that does not require any additional parts to retain
nearly or largely all of the air in the bed; and (3) “protruding radially inward” means that the lip
is positioned towards the center of the device in question and remains placed along the whole
radius throughout the whole piece.

At trial, Dr. Albert Karvelis, an expert witness for Plaintiffs, testified about the ‘726
patent. According to Dr. Karvelis, a “substantially hermetic seal” used in air mattresses must
hold air in the mattress, Dr. Karvelis also stated that a “complete hermetic seal” requires no
additional parts to retain the air in the mattress. These terms, when read in combination and in
light of the specification of the ‘726 patent, would be understandable to a person of ordinary skill
in the art.

Dr. Karvelis further testified that an inconsistency does not exist between claims 12 and
13, Claim 12 only requires that the circular lip be pointed towards the center of the passageway
but does not specify what angle the circular lip points towards the center. In contrast, Claim 13
specifically requires that the circular lip be pointed towards the center of the passageway at an
oblique angle, which is an angle that is not perpendicular.

CONCLUSIONS OF L.

Defendants seek to bar Plaintiffs’ patent claims on the grounds of indefiniteness. Under
35 U.S.C. § 112, 9 2, a patentee shall “particularly point[] out and distinctly claim{] the subject
matter which the applicant regards as his invention.” Making this determination is a question of

law “that is drawn from the court's performance of its duty as the construer {sic] of patent


that they have separate meanings. Therefore, “complete hermetic seal” is not contradictory, is
amenable to a claim construction, and is, thus, not indefinite.

Defendants also assert that both “substantially hermetic seal” and “complete hermetic
seal” were added in amendments to overcome close prior art and the meanings of these terms are
not discernable from any disclosure in the patent. Thus, according to Defendants, these terms are
indefinite. However, as discussed above, the meaning of these terms are discernable from the
patent’s disclosure.

Lastly, Defendants argue that the limitation in claim 12, requiring the circular lip to
protrude radially inward, is inconsistent with the limitation in dependent claim 13, requiring the
same lip to protrude radially inward at an oblique angle. There is no requirement in claim 12 that
the circular lip point inward perpendicular to the center of the device; but, rather, the circular lip
may point inward at any angle, including an oblique angle. Accordingly, claims 12 and 13 are
not indefinite.

CONCLUSION
For the foregoing reasons, judgment is entered for Plaintiffs and against Defendants on

Defendants’ defense of indefiniteness.

Dated: y) 200 t
/ JOHN W.
Unjted States District Judge


Claim 9 of the ‘726 patent states, in relevant part:

An inflatable support system, comprising:

an inflatable body having an interior, an exterior, and inflation input for
transfer of air between the interior and the exterior; and

a one-way valve, disposed between the interior and the inflation input, for
controlling the transfer of air, providing a substantially hermetic seal under low
pressure conditions, such valve including:

a circular lip, disposed peripherally in the passageway and protruding
radially inward, having a first surface generally facing the interior, defining a
valve seat... .

Claim 12 of the ‘726 patent states:

An inflatable body comprising:

an inflatable bladder having an interior and an inflation input;

a one-way valve disposed between the interior and the inflation input
providing a substantially hermetic seal under low pressure conditions, such valve
including:

a passageway having a generally circular cross section and a first end in
communication with the interior and a second end in communication with the
inflation input;

a circular lip, disposed peripherally in the passageway and protruding
radially inward, having a first surface generally facing the interior, defining a
valve seat;

a flexible circular diaphragm, having an inner surface generally facing the
interior and an outer surface facing away from the interior, mounted for axial
movement in the passageway away from and against the valve seat in the
respectively open and closed positions of the valve, so that (i) the act of inflation
of the bladder under low pressure is sufficient to cause axial motion of the valve
into the open position to permit the large influx of air and (ii) following inflation
of the bladder, air pressure created in the interior the bladder by inflation thereof
causes an outer annular region of the outer surface of the diaphragm to be urged
into engagement against the valve seat to provide a complete hermetic seal when
the valve is in the closed position; and

stiffening means for reducing flexing of the diaphragm except in its outer
annular region.

Claim 13, a claim dependent on claim 12, states: “An inflatable bed according to claim
12, wherein the first surface is disposed at an oblique angle with respect to the radius of the

passageway.”



claims.” Bancorp Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1371 (Fed. Cir. 2004)
(Bancorp) (citation omitted). Moreover, issues of indefiniteness do not depend on underlying
factual disputes, but extrinsic evidence may be considered to help determine whether a claim is
indefinite. See Exxon Research & Eng'g Co, v. United States, 265 F.3d 1371, 1375 (Fed. Cir.
2001) (Exxon).

To decide whether a claim is indefinite, “a court must determine whether those skilled in
the art would understand what is claimed when the claim is read in light of the specification.”
Bancorp, 359 F.3d at 1371. Ifa claim is subject to construction, it is not invalid on
indefiniteness grounds. Bancorp, 359 F.3d at 1371. Thus, because of the statutory presumption
of patentability under 35 U.S.C. § 282, “close questions of indefiniteness in litigation involving
issued patents are properly resolved in the favor of the patentee.” Bancorp, 359 F.3d at 1371
(citation omitted).

Claims that include terms such as “substantially” do not automatically render a claim
indefinite. See Exxon, 265 F.3d 1371, 1377. “The degree of precision necessary for adequate
claims is a function of the nature of the subject matter.” Miles Labs., Inc. v. Shandon, Inc., 997
F.2d 870, 875 (Fed. Cir. 1993). A claim limitation does not need to be explicitly included in the
specification, as long as one skilled in the art would be able to discern that the claim language
reflects the disclosure of the specification. A/l Dental Prodx, LLC v. Advantage Dental Prods.,
309 F.3d 774, 779 (Fed. Cir. 2002).

In addition, when there is an irreconcilable contradiction within a patent, then the claims
subject to this contradiction are indefinite. See Allen Eng'g Corp. v. Bartell Indus., 299 F.3d

1336, 1349 (Fed. Cir. 2002). However, the use of two similar but different terms in close



Minute Order Form (06/97)

United States District Court, Northern District of Illinois

Name of Assigned Jud Sitting Judge if Oth
vor Magistrate Judge John W. Darrah than Assigned Judge
CASE NUMBER 02 C 2590 DATE 7/7/2004
CASE Aero Products Intl. Vs. Intex Recreation Corp.
TITLE
[In the foliowing box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.]
DOCKET ENTRY:
qd) oO Filed motion of [ use listing in “Motion” box above.]
(2) o Brief in support of motion due
(3) a) Answer brief to motion due. . Reply to answer brief due. :
(4) Qa Ruling/Hearing on set for at
(5) Oo Status hearing[held/continued to] [set for/re-set for] on set for at
(6) Oo Pretrial conference[held/continued to] [set for/re-set for] on set for at .
(7) Qa Trial[set for/re-set for] on at
(8) oO [{Bench/Jury trial] [Hearing] held/continued to at
(9) Oo This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
CFRCP4(m) CLocal Rule 41.1 CIFRCP4i(a)\(1) CIFRCP41(a)(2).

qo) [Other docket entry] For the reasons stated in the attached memorandum opinion and order,

judgment is entered for plaintiffs and against defendants on defendants’ defense of indefiniteness. Enter

Memorandum Opinion and Order.
al @ (For further detail see order attached to the original minute order.]

xX No notices required, advised in open court.

No notices required.

Notices mailed by judge’s staff.

Notified counse! by telephone.

Docketing to mail notices.

Mail AO 450 form.

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MYa19 sn

Copy to judge/magistrate judge.

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initials

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mailing deputy initials



proximity to each other infers that each term should be given a different meaning. See Bancorp,
359 F.3d at 1373.
DECISION

Defendants first argue that the term “substantially hermetic seal” is indefinite “because no
specifics are given regarding the amount of leakage that a seal can allow and still be considered
‘substantially hermetic.’” Def.’s Proposed Conclusion of Law 4. Defendants also argue that the
specification gives no guidance to the term. Defendants further argue that this term is ambiguous
because a hermetic seal does not leak, and the term “substantially hermetic seal” is contradictory
because it does leak.

However, the term has already been construed in a Markman proceeding, and, as such,
has already been found to be definite. Also, a person skilled in the relatively simple art of air
mattresses and valves would be able to discern this term reflects the disclosure of the
specification and requires the valve and the air mattress to retain enough so that the mattress may
be slept on without losing its shape. Moreover, adding the term “substantially” is not
contradictory to a hermetic seal; instead, “substantially” implies that the hermetic seal is not a
perfect seal.

Defendants next contend that the term “complete hermetic seal” has no meaning and is
contradictory to the term “substantially hermetic seal.” As construed earlier in a Markman
proceeding, the term “complete hermetic seal” describes the status of the seal, not the quality of
the seal. This conclusion is highlighted by the context of the claim, which uses “substantially” to
describe the seal’s retention of air and “complete” — instead of “completely” — to describe the

status of the seal. These terms are also in close proximity to each other, and it can be inferred



UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
pOCcKETEL
AERO PRODUCTS INTERNATIONAL, INC., ) 2004
a Florida corporation, and : ) JUL 09
ROBERT B. CHAFFEE, an individual, )
)
Plaintiffs, )
)
v. ) No: 02 C 2590
)
INTEX RECREATION CORPORATION, ) Judge John W. Darrah
a California corporation; )
QUALITY TRADING, INC., )
a California corporation; and )
WAL-MART STORES, INC., )
a Delaware corporation, )
)
Defendants. )
ORDER

The Plaintiffs, Aero Products International, Inc. (“Aero”) and Robert B. Chaffee, filed
suit against the Defendants, Intex Recreation Corporation (“Intex”); Quality Trading, Inc.; and
Wal-Mart Stores, Inc. Plaintiffs alleged Defendants infringed U.S. Patent No. 5,367,726 (“the
‘726 patent”). A trial with a jury was held, but the issue of whether Defendants’ defense of
indefiniteness applies is a question of law reserved for the Court’s determination. Defendants
argue that the terms “substantially hermetic seal” and “complete hermetic seal” are ambiguous
and inconsistent, and that the limitation in claim 12 requiring the circular lip to protrude Tadially
inward is inconsistent with the limitation in claim 13 requiring the same lip to protrude radially

inward at an oblique angle.

yy?



Plaintiffs argue that the claim of indefiniteness raises an issue of law resolved by the
Court in construing the claims. This the Court has done pursuant to a Markman hearing
conducted before trial.' Plaintiffs further point out that Defendants have conceded there are no
factual issues relevant to indefiniteness and that Defendants have not responded to the Court’s
invitation to present any evidence or request a hearing on the issues. Defendants insist the Court
must sit as the trier of fact.

To the extent that resolution of the issue is to be considered a bench trial, the Court has
considered the evidence, including the testimony of witnesses, exhibits, stipulations, the written
arguments of counsel for the parties and the authority cited therein.

Pursuant to Federal Rule of Civil Procedure 52, the Court hereby enters the following
written Findings of Fact and Conclusions of Law which are based upon consideration of all
admissible evidence as well as the Court’s determination of the credibility of the witnesses. To
the extent that Findings of Fact, as stated, may be considered Conclusions of Law, they shall be
deemed Conclusions of Law. Similarly, to the extent that matters expressed as Conclusions of
Law may be considered Findings of Fact, they shall also be deemed Findings of Fact.

FINDINGS OF FACT

Plaintiffs are the holders of the relevant patent, the ‘726 patent. The ‘726 patent relates to

the technology of inflatable air mattresses. Defendants sell inflatable air products, including

inflatable air mattresses.

' For a more detailed discussion of the claim construction adopted in this matter, see this
Court’s January 28, 2004 opinion in Aero Prods. Int’l, Inc. v. Intex Recreation Corp., 2004 WL
407028 (N.D. Ill. Jan. 28, 2004).

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