Judge Matsumoto Cuts Plaintiff a Little “Slack” in Claim Construction Ruling
On November 20, 2017, United States District Court Judge Kiyo A. Matsumoto issued a claim construction ruling in a suit between two fitness-related companies: Speedfit LLC (“Speedfit”) and Woodway USA, Inc. (“Woodway”). The sole term in dispute was “means for slackening” as it was recited in Claim 1 of U.S. Patent 8,343,016 (“the ’016 Patent”) – a patent related to a manually-powered treadmill involving a closed-loop belt designed to maintain a curved running surface.
The dispute here was quite narrow, as the parties agreed that the claim term should be construed as a means-plus-function limitation. Defendant Woodway, however, argued that the claim should be limited to the structures specifically disclosed in three figures contained in the ’016 Patent. Plaintiff Speedfit, on the other hand, asserted that the structures were merely exemplary and that the claim term “should not be construed to limit the claimed scope to any one particular example or species embodiment” disclosed by the ’016 Patent (or even the other patent in dispute, or the provisional application from which that other patent derived its priority, United States Provisional Application Serial No. 61/280,265 (“the ’265 Application”)). Speedfit also argued that the incorporation of the ’265 Application by reference in the ’016 Patent specification rendered it a part of the written description for purposes of construing the claim’s scope.
Following a Markman hearing, Judge Matsumoto ruled that “means for slackening” must be construed as limited to the structures specifically disclosed in the three figures set forth in the ’016 Patent specification and their equivalents. As to Speedfit’s argument regarding incorporation of the ’265 Application, the court found it improper: “[T]he generic incorporation by reference is insufficient to provide proper notice of additional structures sought to be included in the means-plus-function claim limitation in the ’016 Patent.”
The Judge, however, threw Speedfit a lifeline at the conclusion of her opinion, noting that, though the court’s ruling did not permit construction of the means-plus-function claim limitation to include undisclosed structures, it does protect any structure deemed to be an “equivalent.”
And what structures are deemed “equivalent” here, you ask? Well, that’s “a question of fact to be addressed at the infringement stage following claim construction.”
The case is Speedfit LLC v. Woodway USA, Inc., No. 13-cv-1276 (E.D.N.Y. Nov. 20, 2017).