NY Patent Decisions Blog

Judge Matsumoto Holds That “Very Small Side Load” Is Indefinite and That “Retention Element” Is a Means-Plus-Function Claim Limitation

On July 13, 2020, District Judge Matsumoto (E.D.N.Y.) entered a claim construction order construing several claim terms recited in Plaintiff Uni-Systems, LLC’s (“Plaintiff”) U.S. Patent Nos. 6,789,360 (“the ’9360 patent”) and 7,594,360 (“the ’4360 patent”), which relate to retractable roof design and are asserted against a number of defendants including the United States Tennis Association National Tennis Center (collectively, “Defendants”).

  1. Alleged Indefinite Terms: “Stable Movement” (’4360 patent, claim 1); “Limited Amount of Movement” (’4360 patent, claims 1, 14, 21); “Very Small Side Load” (’4360 patent, claims 1, 14, 21); “No Need for Additional Lateral Reinforcement” (’4360 patent, claims 1, 14, 21)

The Court ruled that “stable movement,” which appears only in the preamble of claim 1, does not limit the scope of the claim, and thus, does not need construction.

The Court ruled that “limited amount of movement” and “no need for additional lateral reinforcement” should be given their plain and ordinary meanings, which a person of ordinary skill in the art (“POSITA”) would understand when the terms are read in the context of the claimed invention.

The Court ruled that “very small side load” is indefinite because the specification provides no standard for measuring how small “very small” is.

  1. Alleged Means-Plus-Function Terms: “Retention Mechanism” and “Retention Element” (’9360 patent, claim 1)

The Court ruled that in “retention mechanism,” the modifier “retention” provides sufficient structure to place the claim outside 35 U.S.C. § 112 ¶ 6. The Court held, based on the intrinsic and extrinsic evidence, that a POSITA would understand the term to mean “a device that holds a component in place or limits or controls its movement.”

However, unlike for “retention mechanism,” the Court held that “retention element” does not impart sufficient structure. The term was thus construed as a means-plus-function limitation, with the structure being wheels or their equivalents and the function being “engaging a downwardly facing surface of said guide track in the event of initiation of upward vertical movement.”

  1. “Tied Arch” and “To Assume Most Gravity Induced Stress” (’9360 patent, claim 1)

Citing expert testimony from all parties, the Court adopted Plaintiffs’ constructions that: (1) “tied arch” means “an arch in which the ends are connected with a connecting member,” and (2) “to assume most gravity induced stress” means “most of the stress on the lower portion of the tied arch is assumed as tension.”

  1. “Preventing Said Roof Member From Being Lifted Upwardly . . . In The Event of Initiation Upward Vertical Movement” (’9360 patent, claim 1); “A Lateral Release System for Each of Said Transport Mechanism” (’4360 patent, claims 1, 14, 21); “Interposed Between” (’4360 patent, claims 1, 14, 21)

The Court ruled that these terms should be given their plain and ordinary meaning and that they do not need construction.

Case: Uni-Systems, LLC v. U.S. Tennis Assoc. Nat’l Tennis Ctr., Inc., et al., No. 17-cv-147, Dkt. No. 457 (E.D.N.Y. July 13, 2020).