No, 01 C 7019 Page 4

tubular sleeve. We conclude that the claim requires that the shank be firmly held by a tubular
holder in both the upper and lower portions of the sleeve.

The upper portion must also have at least one outwardly opening, curved, concave,
recess having an open window. That covers, according to the plaintiff, an indented or receding
part that is arched or curved inward, resulting in an opening in the recess that allows the
shank of the fastener to pass through. Plaintiff may be correct that a curved recess dues not
require a smooth curve, a concave recess need only arch inward and a recess can be an
indentation or receding part, Further, a window can be without an upper surface, such as
some bank tellers’? windows. That is, however, pushing the limits of language, One would
hardly expect a staircase between two walls to be described as a series of outwardly opening,
curved, concave recesses having open windows.

More importantly, we believe, is that the meaning of those terms is dictated by the
nature of the sleeve claimed. If the sleeve must have a tubular holder in both the upper and
lower portions, then the opening necessarily is more like the interior surface of a thin slice of
cantaloupe (a partially eaten cantaloupe, perhaps, as the curve may be irregular), with the
window bounded above by the upper portion of the holder.

We conclude that plaintiff's construction, to the extent indicated, is contrary to the
claim language and, to the extent that it can be supported by the claim language, it does not
give fair notice to the public in light of the claim language, the specification and the drawings.
See Athletic Alternatives, Inc. vy. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed.Cir. 1996).
Defendant's construction is adopted, except the curve of the upper portion need not be smooth

and unfaceted (see pl. exh.C).



No. 01 C 7019 Page 3

round, would necessarily be enclosed by a tubular holder, The issue is not whether a tubular
holder must enclose the shank, as the lower annular portion does so enclose. The issue, rather,
is whether the upper portion must also “grip” the shank,

Plaintiff contends that the words following the first “with” merely determines the
orientation of the upper and lower portions of the sleeve relative to the head and point of the
fastener; it is enough that at some point (at the lower portion) the sleeve grips the shank, It
points out that one drawing indicates that the bore of the preferred embodiment of the upper
portion is not in contact with the shank and that the specification at one point describes the
lower portion as gripping the shank, while the upper portion has a generally quadrilateral
aperture, having four interior faces, which “confines” the shank.

The claim language, however, makes no distinction between the upper and lower
portions with respect to gripping the shank. If the “with” language were to be interpreted as
plaintiff contends, then the reference to the location of the upper portion would be entirely
superfluous. The claim states that the sleeve grips the shank with the upper portion and the
lower portion.

Moreover, the patent appears to use “grip” and “confine” interchangeably. The
specification refers to a “generally quadrilateral aperture having four interior faces confining
the shank ...,” with a general hexagonal (exterior) shape, two of the six faces parallel to each
other “but not to any of the four gripping faces” (col. 2, I. 28-35). That description is also
consistent, and only consistent, with an upper portion having a tubular holder. The

specification refers to the upper portion “gripping” the fastener (col. 6, I. 37-38). Finally, every

drawing in the patent depicting the sleeve shows a holder with both an upper and lower



No. 01 C 7019 Page 5

Finally, we deny the objection to the declaration of Pau! Gaudron. While much of it
relates to infringement by defendant, which is not before us, some of it relates to claim

construction.

Araaee 8, Monee

JAMES B, MORAN
Senfor Judge, U. S. District Court

Orel IS, 2003.



Miter For (0687)

United States District Court, Northern District of Llinois

o

plexh.C). Finally, we deny the objection to the declaration of Paul Gaudron.
for May 13, 2003 at 9:15am.

(a) @

{For further detail see order attached to the original minute order-|

Name of Assigned Judge James B. Moran Sitting Judge if Other
or Magistrate Judge . than Assigned Judge
CASE NUMBER 01 C7019 DATE 4/15/2003
CASE Illinois Tool Works, Inc. Vs. Powers Fasteners, Inc.
TITLE
[In the following box (a) indicate the party filing the motion, ¢.g,, plaintiff, defendant, 3rd party plaintiff, and (b) state bricfly the nature
MOTION; of the motion being presented.]
Memorandum Opinion and Order
DOCKET ENTRY;
qi) og Filed motion of [ use listing in “Motion” box above.]
(2) oO Brief in support of motion due
(3) 0 Answer brief to motion duc_ _. Reply to answer brief duc.
(4) Oo Ruling/Hearing on __ sct for at
(3) o Status hearing[held/continued to] {set for/re-set for] on set for at
(6) o Pretrial conference[held/continued to] [set for/re-set for] on setfor at.
(7) Qo Trial{set for/re-set for]on at
(8) CG [Bench/Jury trial] [Hcaring) held/continued to at
(9) oO This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
OFRCP4(m) OC Local Rule 41.1 [) FRCP41(a)(1) OO FRCP41(a)(2).
ao) ff [Other docket entry] Enter Memorandum Opinion and Order. We conclude that plaintiff's

construction, to the extent indicated, is contrary to the claim language and, to the extent that it can be supported
by the claim language, it does not give fair notice to the public in light of the claim language, the specification
and the drawings. See Athletic Altcrnatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 158] (Fed.Cir. 1996).

Defendant’s construction is adopted, except the curve of the upper portion need not be smooth and unfaceted (see
Status hearing set

No notices required, advised in open court,

‘No notices requited. number of norizas

Notices mailed by judge’s staff.

APR 17 2993

duty docket

K\

duckellny deputy initials

Notified counsel by telephone.

vf | Docketing Lo mail notices.

Mail AO 450 form. Lunna farmy

IS sy

Copy to judge/magistrate judge.

floes

dave miled notice

courtroom
deputy’s

initials

WAH

Date/time received in
contral Clerk's Office

nla deputy inials



“a

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
ILLINOIS TOOL WORKS, INC., )
)
Plaintiff, )
) &S
vs. ) No, 01.7019 € eS
POWERS FASTENERS, INC., ) y a
) e
Defendant. )

MEMORANDUM OPINION AND ORDER

Plaintiff sues defendant for infringement of U. S. Patent No. 5,069.340 (340 patent),
relating to a strip of collated fasteners for a fastener-driving tool, primarily to install metal
track to concrete for partitions. Claim 1 and its dependent claims are oriented toward the
breakable portion of the fastener and are not relevant here. Claim 9 is oriented toward
guidance of the fastener. It is claim 9 that we must construe. It reads as follows (edited to
highlight the words and phrases disputed by the parties):

A strip of collated fasteners, the strip comprising a plurality of fasteners

and a carrier molded from a polymeric materia], each fastener having an

elongate shank with a pointed end and a head and being designed to be forcibly

driven through a workpiece, into a substrate, the carrier comprising

a separate sleeve associated with each fastener,

a representative sleeve including a lower, annular portion and
an upper portion integral with the annular portion,

the representative sleeve gripping the shank of the associated
fastener with the lower, annular portion nearer to the pointed end
of the shank of the associated fastener and with the upper portion
nearer to the head of the associated fastener,

the upper portion having at least one outwardly opening,



No. 01 C7019 Page 2

curved, concave recess having an open window, from which a
portion of the shank of the associated fastener emerges,

the carrier comprising frangible bridges between adjacent ones
of the sleeves of the carrier.

The parties largely agree about the applicable law, and so do we. Claim construction
is a question of law. We first look to the claim language itself, generally giving the claim
language the full range of its ordinary meaning as understood by a person skilled in the art
(here, the parties agree, a mechanical engineer), unless the text of the patent makes clear that
a word was used with a special meaning. The patent text reveals no special usage and,
accordingly, we can turn to commonly used dictionaries as an aid in construction, We also
turn to the specification, drawings, and, customarily, the prosecution history (here there is
none of any relevance), although the claims are not necessarily limited to the embodiments
described in the specification. The public is entitled to rely upon the public record of a patent
in determining the scope of the patent’s claims.

Defendant contends that a sleeve is a tubular holder which fully encloses the shank of
the fastener, although the exterior and the bore of the holder may be round, oblong, square,
rectangular or of some other shape, Plaintiff argues that a sleeve has a broader meaning —
any encasement or shell unto which a fastener fits. It cites a phonograph record jacket as an
example. Its expert has testified that the word “sleeve” needs context, and we agree. It also
contends that “sleeve” includes a holder which grips the shank of the fastener in its lower,
annular portion, even though the upper portion does not grip the fastener. We disagree.

We note that even a record jacket fully encloses the record, except for the opening

through which the record is inserted. That being said, we note that the fastener, which is