                         NOTE: This disposition is nonprecedential.


   United States Court of Appeals for the Federal Circuit
                                          2008-1311

                                  BOSS INDUSTRIES, INC.,

                                                Plaintiff/Counterclaim Defendant-Appellant,

                                              and

                                     JAMES ATHERLEY,

                                                Counterclaim Defendant-Appellant,

                                               v.

                      YAMAHA MOTOR CORPORATION, U.S.A., INC.,

                                                Defendant/Counterclaimant-Appellee.


        Alan M. Anderson, Briggs & Morgan, PA, of Minneapolis, Minnesota, argued for
plaintiff/counterclaimant defendant-appellant and counterclaim defendant-appellant. With him
on the brief was Christopher A. Young.

      Robert C. Weiss, Jones Day, of Los Angeles, California, argued                          for
defendant/counterclaimant-appellee. With him on the brief was Anna E. Rainer.

Appealed from: United States District Court for the District of Utah

Judge Dale A. Kimball
                      NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit

                                       2008-1311


                              BOSS INDUSTRIES, INC.,

                                                   Plaintiff/Counterclaim Defendant-
                                                   Appellant,

                                          and

                                 JAMES ATHERLEY,

                                                   Counterclaim Defendant-Appellant,

                                           v.

                  YAMAHA MOTOR CORPORATION, U.S.A., INC.,

                                                   Defendant/Counterclaimant-Appellee.


      Appeal from the United States District Court for the District of Utah in case
      no. 2:05-CV-00422, Judge Dale A. Kimball.

                            _________________________

                            DECIDED: May 28, 2009
                            _________________________


Before NEWMAN, SCHALL, and GAJARSA, Circuit Judges.

SCHALL, Circuit Judge.

                                       DECISION

      This is a patent infringement case. Boss Industries, Inc. and James Atherley 1

(together “Boss”), appeal the final judgment of the United States District Court for the


      1
           James Atherley is the inventor of the patents-in-suit and granted Boss a sole
and exclusive license to all rights in the patents-in-suit.
District of Utah, holding that Yamaha Motor Corp., U.S.A., Inc. (“Yamaha”) did not

infringe numerous claims of Boss’s U.S. Patent Nos. 6,086,149 (“the ’149 patent”),

6,386,630 (“the ’630 patent”), and 6,585,317 (“the ’317 patent”). In particular, Boss

appeals the district court’s claim construction of several terms in the claims asserted

against Yamaha. Boss Indus., Inc. v. Yamaha Motor Corp., U.S.A., No. 2:05CV00422

(D. Utah Sept. 7, 2007) (“Claim Construction”).          Based on the court’s Claim

Construction, Boss conceded that it could not prove Yamaha infringed the asserted

claims as construed and therefore stipulated to noninfringement.       Accordingly, the

district court entered judgment of noninfringement in favor of Yamaha and

simultaneously dismissed all of Yamaha’s counterclaims. Boss Indus., Inc. v. Yamaha

Motor Corp., U.S.A., No. 2:05CV00422 (D. Utah Mar. 13, 2008) (“Judgment”).            In

addition, Boss appeals the district court’s denial of two discovery motions related to

Yamaha’s invalidity counterclaims.      Because the district court’s construction of the

dispositive claim terms is correct and because Boss has stipulated to noninfringement

under the district court’s constructions, we affirm.

                                       DISCUSSION

                                              I.

       Boss is the owner of the ’149, the ’630, and the ’317 patents. All three patents

share nearly identical disclosures and issued from related applications in a patent

family, including a “parent” patent and three “child” continuations-in-part patents. All

three patents-in-suit are continuations-in-part from parent U.S. Patent No. 5,944,380




2008-1311                                     2
(“the ’380 patent”). 2 Additionally, the ’630 patent is a continuation-in-part of the ’149

patent, while the ’317 patent is a continuation-in-part of both the ’149 and ’630 patents.

       All three patents-in-suit are identically titled and directed to a “Light-Weight

Snowmobile Seat.” ’149 patent, ’630 patent, ’317 patent. This light-weight snowmobile

seat contains a “rigid base section for mounting on a snowmobile.” See, e.g., ’149

patent Abstract. In reference to figure 4 below, the “base section” 40 of the snowmobile

seat 10 is a “closed-cell structure” and is “substantially rigid and provides support for the

seat.” Id. col.4 ll.20-22. According to the patents, “[t]he closed-cell base section 40 is a

significant improvement over prior art seats utilizing metal or plastic frames and open

cell foam cushioning because the closed-cell structure forms a substantially rigid base

without adding weight or absorbing water.” See, e.g., id. col.4 ll.34-39. A flexible seat

section 60 is placed in an indentation 54 on the upper surface 52 of the base section 40.

Id. col.4 l.60-col.5 l.1. “The upper surface 52 of the base section 40 may also form part

of the upper surface 20 of the seat 10.” Id. col.4 ll.64-65. The snowmobile rider sits on

the upper surface of the seat section 62 or the upper surface of the base section 52, if

the base section’s upper surface is exposed. Id. col.5 ll.1-10.




       2
           Boss did not assert the ’380 patent against Yamaha.


2008-1311                                    3
See ’149, ’630, ’317 patents fig.4.

       In further detail, “[t]he base section 40 has a lower surface 42 that forms at least

part of the bottom 22” of the snowmobile seat. ’149 patent col.4 ll.44-45. The bottom

22 is disposed on the snowmobile, which is generally indicated at 23. Id. col.4 ll.8-10.

The bottom of the base section 40 also forms cavities, for example cavity 46, “so that

seat 10 fits around various snowmobile components, such as a gas tank, an engine, a

battery, etc.” Id. col.4 ll.58-60. The base section 40 is attached to the top of the

snowmobile 23—for example, using fasteners with one portion 93 located on the

snowmobile and the other portion 91 located on the lower surface 42 of the base

section 40, which contacts the snowmobile. Id. col.5 ll.54-65.

       Claim 1 of the ’149 patent is representative of the claims on appeal:




2008-1311                                   4
       1. A snowmobile seat comprising:

       a generally rigid base section having a lower surface for mounting on a
       snowmobile and an upper surface;

       a flexible seat section disposed on the base section and having an upper
       surface on which a rider may sit and a lower surface, the flexible seat
       section being formed of a compressible, open-cell material which
       compresses and deflects under force;

       a space disposed between the lower surface of the rigid base section and
       the upper surface of the flexible seat section and defining an air chamber,
       the space being formed at least partially by the flexible seat section;

       cover means for covering at least a portion of the base and seat sections;
       and

       at least one air passage extending from the air chamber;

       the flexible seat section deflecting between (i) a first position in which the
       seat section is substantially undeflected and defines the air chamber, and
       (ii) a second position in which the seat section deflects into the air
       chamber forcing air from the air chamber and through the at least one air
       passage.

’149 patent col.9 l.53-col.10 l.6.
                                             II.

       Yamaha sells a variety of snowmobiles and snowmobile seats. On May 12,

2005, Boss filed a patent infringement suit against Yamaha in the United States District

Court for the District of Utah, alleging that Yamaha’s “Viper” seats infringe claims 1-3, 6,

8, 20, and 21 of the ’149 Patent; claims 19, 21, and 23 of the ’630 Patent; and claims 5,

7, 8, 12, 13, 16, and 18 of the ’317 Patent. Boss also alleged that Yamaha’s “Apex”

seats infringe claim 21 of the ’630 Patent, and claims 12 and 13 of the ’317 Patent. 3 On


       3
             The record does not clearly reflect which claims the Apex seats allegedly
infringe. Although the district court’s judgment states that the Apex seats are accused
of infringing only claim 21 of the ’630 patent and claims 12 and 13 of the ’317 patent,
see Judgment, slip op. at 2, Boss indicated in its post-claim construction status report to
the district court that claims 16 and 18 of the ’317 patent were asserted as well.
Neither party addresses this discrepancy in their briefing. Regardless, claims 16 and 18


2008-1311                                    5
July 7, 2005, Yamaha answered, asserting numerous counterclaims including that the

patents-in-suit were not infringed, and were invalid and unenforceable.

       Following extensive briefing and a Markman hearing on June 14, 2007, the

district court issued a detailed claim construction order on September 7, 2007. See

Claim Construction. In its order, the court construed fifteen disputed claim limitations.

See id. While the constructions of the majority of these limitations have been appealed,

the constructions of two limitations are particularly important. These limitations are

“base” or “base section,” 4 and “adjacent.”

       The term “base section” appears in all three patents-in-suit and in all of the

asserted claims, except for claim 5 of the ’317 patent. The term “adjacent” appears in

claims 5, 7, and 8 of the ’317 patent. After a detailed review of the claim language, the

patents’ specifications, and the prosecution histories, the court construed “base section”

for all three patents-in-suit as “the bottom support structure of the snowmobile seat.”

Claim Construction, slip op. at 20.      Following a similar detailed analysis, the court

construed “adjacent” as “next to or adjoining.” Id. at 32.

       After the court issued its Claim Construction, Boss filed a post-claim construction

status report, stating that “[a]s a result of the court’s claim construction, the court should

rule as a matter of law that Yamaha’s accused snowmobile seats do not infringe any of


of the ’317 patent both contain the limitation “base section,” which, as explained below,
Boss concedes is missing from the accused Apex seats as currently construed. Thus,
because we affirm the district court’s construction of “base section,” we consequently
find that claims 16 and 18 of the ’317 patent cannot be infringed.
       4
               The terms “base section” and “base” are used interchangeably in the
patents-in-suit and neither party has differentiated between the terms. In addition, the
district court treated the terms as the same during claim construction. See Claim
Construction, slip op. at 12. As such, we will treat the terms “base section” and “base”
the same on appeal and will refer to both collectively as “base section.”


2008-1311                                     6
the asserted claims of the Boss Patents.”        Boss then requested the court to enter

summary judgment of noninfringement of all its asserted claims. Additionally, Boss

listed each of the limitations as construed that were missing from the accused products,

specifically indicating that either “base section” or “adjacent” were missing from all of the

asserted claims. Accordingly, the district court “enter[ed] judgment of non-infringement,

both literally and under the doctrine of equivalents, in favor of Yamaha on all claims in

Boss’s Amended Complaint.” Judgment, slip op. at 2-3. The court also dismissed

Yamaha’s counterclaims. Id. at 3.

       In addition to claim construction, the district court also addressed issues that

Boss raised concerning Yamaha’s alleged discovery abuses. Because of Yamaha’s

alleged discovery misconduct, Boss filed a first motion (“Motion to Preclude”), urging the

court to preclude certain witness testimony and evidence, which, according to Boss,

Yamaha belatedly produced. Boss filed a second motion (“Adverse Inference Motion”)

that was based on Yamaha’s alleged failure to “institute a litigation hold after being

served with Boss’s Complaint.” Boss argued that Yamaha’s failure to issue a litigation

hold caused the destruction of relevant documents, prevented Boss from obtaining vital

information, and therefore warranted an adverse inference instruction.

       On January 22, 2007, the district court denied Boss’s Motion to Preclude “[f]or

the reasons stated by Yamaha in its response to Plaintiff’s motion.” Boss Indus., Inc. v.

Yamaha Motor Corp., U.S.A., No. 2:05CV00422, slip op. at 3 (D. Utah Jan. 22, 2007).

The court gave no further explanation. Id. Because it was unclear why the court denied

Boss’s previous Motion to Preclude, Boss requested reconsideration, or clarification, of

the court’s denial.




2008-1311                                    7
       On March 13, 2008, in the Judgment, the court denied both Boss’s Adverse

Inference Motion and its motion for reconsideration, or for clarification, of the court’s

previous denial of its Motion to Preclude. Judgment, slip op. at 3. The court did not

provide an explanation. Rather, it stated that “upon review and consideration of the

memoranda and other materials submitted therewith, the Court denies both motions on

the merits.”

                                              III.

       Boss appeals the district court’s claim construction and the district court’s denial

of its two discovery-related motions. We have jurisdiction over the appeal pursuant to

28 U.S.C. § 1295(a)(1). Boss acknowledged, in its post-claim construction status report

to the district court and in its briefing to this court, that all of the accused products do not

contain either the “base section” or “adjacent” limitations under the district court’s

construction.   As such, because of Boss’s concessions and because infringement

requires each claim limitation to be satisfied, see BMC Res., Inc. v. Paymentech, L.P.,

498 F.3d 1373, 1378 (Fed. Cir. 2007) (“Direct infringement requires a party to perform

each and every step or element of a claimed method or product.”), if we find that the

district court correctly construed both of the limitations “base section” and “adjacent,” we

must affirm the judgment of noninfringement in favor of Yamaha.               Because “base

section” and “adjacent” are dispositive if we affirm the district court’s construction, we

address those limitations first.

       Claim construction is a question of law that we review de novo. Cybor Corp. v.

FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). The words of a claim

“‘are generally given their ordinary and customary meaning,’” according to a person of




2008-1311                                      8
ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d

1303, 1312-13 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc.,

90 F.3d 1576, 1582 (Fed. Cir. 1996)). The claims themselves provide “substantial”

guidance as to the meaning of claim terms. Id. at 1314. However, the claims must be

read in light of the specification, the “‘single best guide to the meaning of a disputed

term.’” Id. at 1315 (quoting Vitronics, 90 F.3d at 1582).

                                            A.

       We first turn to the “base section” limitation, which appears in all but one of the

asserted claims. More particularly, “base section” is found in claims 1-3, 6, 8, 20, and

21 of the ’149 patent; claims 19, 21, and 23 of the ’630 patent; and claims 7, 8, 12, 13,

16, and 18 of the ’317 patent. As noted, the district court construed this limitation to

have a single meaning for all three of the patents-in-suit: “the bottom support structure

of the snowmobile seat.” Claim Construction, slip op. at 20.

       According to Boss, notwithstanding the fact that the patents’ specifications are

nearly identical, each patent should have a different construction for the term “base

section”:

       The ’149 Patent: “a cellular structure that forms at least part of the bottom
       of the seat.”

       The ’630 Patent: “a cellular structure that forms at least part of the bottom
       of the seat and which can be directly or indirectly mounted to the
       snowmobile.”

       The ’317 Patent: “a cellular structure that forms at least a part of the
       bottom of the seat and which can be mounted to other support structure
       that in turn can be mounted to the snowmobile.”

Boss argues that the district court erred by construing “base section” identically for all

three patents because “the specifications of the Boss Patents successively broaden the



2008-1311                                    9
scope of ‘base section.’” Specifically, Boss highlights that each patent has a slightly

different disclosure—including several unique sections in the ’630 and ’317 patents that

do not appear the other patents—to support its contention that “base section” should be

construed differently for each patent. Also, Boss argues that the district court incorrectly

limited “base section” to the preferred embodiments.

       Yamaha counters that the district court’s construction of “base section” is

supported by the all three patents’ claims and specifications.       In addition, Yamaha

points out that both the preferred and alternative embodiments indicate that the “base

section” is the bottom structure that provides support. Moreover, Yamaha argues that

Boss’s proposed constructions import unnecessary limitations into the claims and

misinterpret the patents’ specifications.

       We hold that the district court correctly construed “base section” as the “bottom

support structure of the snowmobile seat.” Contrary to Boss’s arguments, the district

court’s construction—“bottom support structure of the snowmobile seat”—does not

improperly limit “base section” to a preferred embodiment. Rather, it is in accordance

with the entirety of each patents’ intrinsic evidence. See, e.g., Phillips, 415 F.3d at

1314-15 (emphasizing a patent’s intrinsic evidence as particularly important to claim

construction); Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1370-71 (Fed. Cir. 2003)

(looking to “whether the specification read as a whole suggests that the very character

of the invention requires” a particular claim construction). In addition, because each

patent-in-suit is derived from the same parent application and shares many common

terms with its sister patents, the district court correctly interpreted “base section”

consistently across all of the asserted patents. See NTP, Inc. v. Research In Motion,




2008-1311                                   10
Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (“Because NTP’s patents all derive from the

same parent application and share many common terms, we must interpret the claims

consistently across all asserted patents.”); Jonsson v. Stanley Works, 903 F.2d 812,

818 (Fed. Cir. 1990) (“The ’912 patent is the result of a continuation-in-part application

from the original ’008 application, which led to the ’251 patent.              Hence . . . the

construction of the term ‘diffuse light’ contained in that patent, is relevant to an

understanding of ‘diffuse light’ as that term is used in the ’912 patent.”).

       We begin by looking at the claim language itself, which is instructive of the proper

construction of “base section.” See Phillips, 415 F.3d at 1314 (“[T]he claims themselves

provide substantial guidance as to the meaning of particular claim terms.”). Several

claims at issue in each patent indicate that the “base section” has a “lower surface for

mounting on a snowmobile” and that “a flexible seat section [is] disposed on the base

section . . . on which a rider may sit.” ’149 patent col.9 ll.53-57; col.12 ll.31-38; see ’317

patent col.10 ll.65-67; col.11 ll.19-25 (claiming that the flexible seat section, upon which

the rider sits, is placed on top of the base section); ’630 patent col.11 ll.41-44 (claiming

that a flexible seat section is disposed on a generally rigid base section); col.12 ll.18-23

(claiming “a substantially rigid base section, supporting the flexible seat section,” upon

which a rider may sit). Other claims similarly state that the base section “has a bottom

surface configured to abut an upper surface of the track tunnel of the snowmobile” and

that “the rigid base section provides a desired shape and structure of the seat.” ’317

patent col.11 ll.25-29; col.12 ll.10-13, 42-46.     In addition, certain unasserted claims

likewise suggest that the “base section” must be the bottom structure of the seat. See,

e.g., Phillips, 415 F.3d at 1314 (“unasserted [claims] can also be valuable sources of




2008-1311                                    11
enlightenment”).   For example, several such claims indicate that the “base section”

includes “fasteners” to couple the seat to the body of the snowmobile. See, e.g., ’317

patent col.10 ll.28-61 (“fasteners being coupled on the lower surface of the base section

and configured to be coupled to the snowmobile to resist horizontal movement between

the base section and the snowmobile”); ’630 patent col.20 ll.5-16 (“fasteners, configured

to be coupled between the base section and the snowmobile” to resist movement

between the base section and the snowmobile); ’149 patent col.10 ll.30-35 (“fasteners

being coupled on the lower surface of the base section and configured to be coupled to

the snowmobile”). The fact that the base section abuts, mounts, and fastens to the

upper portion of the snowmobile body indicates that it must be the bottom of the

snowmobile seat. Indeed, it would be difficult, if not impossible, to mount the base

section to the top of the snowmobile, using the fasteners on the base section’s bottom,

if the base section was not the bottom of the snowmobile seat. Similarly, that the base

section is placed underneath the flexible seat section and that it provides the shape of

the snowmobile seat, certainly denotes that the base section provides support for the

snowmobile seat upon which the rider sits.

      While the claims provide guidance, the district court’s construction of “base

section” is further confirmed, and consistently explained in detail, by each patents’

specification. See Phillips, 415 F.3d at 1315 (acknowledging that the specification is

“always highly relevant” and usually dispositive). The patents’ specifications emphasize

exactly what was described in the claims—that the base section has a bottom surface

that is disposed on, and abuts, the snowmobile body and an upper surface for placing a

flexible seat section upon which the rider may sit. See ’149 patent col.2 ll.40-45; col.4




2008-1311                                    12
ll.8-13; col.6 ll.33-34; see also ’630 patent col.3 ll.35-36 (“The front 24, like the bottom

22, abuts the snowmobile 23.”); col.4 ll.25-26 (“The seat section 60 has an upper

surface 62 on which a rider may sit.”); col.6 ll.3-4 (“bottom 222 disposed on the

snowmobile 23”); ’317 patent col.2 ll.1-3 (“a substantially rigid base disposed over an

upper surface of a track tunnel of a snowmobile.”), ll.15-17 (“the base section or bottom

thereof can abut directly to the upper surface of the track tunnel of the snowmobile.”);

col.3 ll.55-58 (same). Again reiterating the claim language, each specification explains

that the bottom surface of the base section includes fasteners, hooks, or rails for

coupling the base section to the body of the snowmobile. See, e.g., ’149 patent col.2

l.65-col.3 l.25 (“fasteners are coupled on the lower surface of the base section and

coupled to the snowmobile to resist horizontal movement”); col.5 ll.54-65; col.8 ll.53-58;

’630 patent col.2 ll.13-27; col.5 ll.11-35; col.8 ll.8-45; ’317 patent col.6 ll.5-20.

Moreover, the same point is reflected in all the figures in each patent. For example,

figure 4 of each patent discloses joining the snowmobile seat to the snowmobile body

using a pair of fasteners—one fastener 91 located on the lower surface of the base

section and the other fastener 90 located on the upper surface of the snowmobile 23.

See, e.g., ’630 patent fig.4; see also ’630, ’317, ’140 patents fig.10 (showing a different

embodiment of the snowmobile seat, but still disclosing one fastener on the on the

bottom of the base section and another fastener on the top of the snowmobile body).

Thus, the base section is required to be the bottom structure of the snowmobile seat.

       Further emphasizing that the base section is the bottom structure of the

snowmobile seat, the base section consists of formed cavities that fit around various

components located on the snowmobile itself, such as the gas tank, engine, and




2008-1311                                   13
battery. ’630 patent col.4 ll.14-16; ’149 patent col.4 ll.58-60; ’317 patent col.2 ll.2-32

(describing various indentations in the base section to “match” components on the

snowmobile body). In this way, the base section can act as a “leak barrier between the

snowmobile components . . . and the flexible seat section,” which is placed on top of the

base section. ’317 patent col.2 ll.27-30; see, e.g., ’630 patent col.3 ll.47-50 (explaining

that the base section “does not absorb moisture or water”); ’149 patent col.4 ll.25-28

(same). If the base section was not the bottom of the snowmobile seat, it would not

need to be formed with cavities to “match” the shape of the snowmobile body and

components; nor could it protect the flexible seat section from leaking snowmobile

components.

       The patents’ specifications similarly reiterate that the base section is the support

structure of the snowmobile seat. Specifically, each patents’ specification states that

the “base section . . . is substantially rigid and provides support for the seat [],” ’149

patent col.4 ll.21; col.6 ll.38-40; ’630 patent col.3 ll.42-43; col.6 ll.7-9; ’317 patent col.4

ll.5-7; col.7 ll.1-3, and “provide[s] strength and rigidity,” ’630 patent col.3 ll.47-48; ’149

patent col.4 ll.24-26; ’317 patent col.4 ll.20-22. The statement in the specification that

the base section “prevents the seat from collapsing onto the snowmobile components”

and “provide[s] the desired shape and structure of the seat,” ’317 patent col.2 ll.23-25;

col.4 ll.24-26; col.4 l.64-col.5 l.5, further suggests that the base section is the support

structure.

       Boss cites several portions of the patents-in-suit, suggesting both that its

proposed constructions are correct and that the district court’s construction is unduly




2008-1311                                     14
narrow. In emphasizing these excerpts, however, Boss attempts to read unnecessary

limitations into the claims and misinterprets the specification. 5

       Arguing that the “base section” should be only “at least a part of the bottom” of

the snowmobile seat, Boss stresses that each patent explains that the “base section 40

has a lower surface 42 that forms at least part of the bottom 22.” See, e.g., ’317 Patent

col.4 ll.44-45 (emphasis added); see also ’149 patent col.4 ll.44-45; ’630 patent col.3

ll.66-67. Boss, however, misinterprets these statements in the specifications. Tellingly,

the “at least part of the bottom 22” of the snowmobile seat language does not describe

the entire base section 40. Instead, as clarified in figure 4, the “at least a part of the

bottom 22” language only describes the “lower surface 42.” In other words, the “bottom

22” of the snowmobile seat consists of at least a “lower surface 42” of the base section,

but may consist of another surface on the bottom of the base section—i.e., a surface

higher than the lower surface, but still part of the bottom of the base section. 6 Indeed,

the “lower surface 42” forms a part of the bottom 22, while the higher surface, indicated

by 46, forms the remaining part of the bottom 22. 7 Thus, the higher and lower surfaces

       5
           We also note that Boss’ proposal to construe “base section” differently for
each patent is contrary to its initial suggestion, in the district court, that the limitation
should be construed identically across all three patents.
       6
             A “higher surface” should not be confused with the “upper surface” of the
base section, which is exemplified by 52 and 54 in figure 4. The “upper surface” is on
the top of the base section, and the rider either sits directly on the “upper surface” or on
a “flexible seat section” placed on the “upper surface.” See, e.g., ’317 patent col.5 ll.6-
23. In contrast, the “higher surface” refers to a surface higher than lower surface, but
nonetheless still on the bottom of the base section. See, e.g., ’317 patent fig.4.
Accordingly, both the higher and lower surfaces make up the bottom of the base
section, which abuts the snowmobile body.
       7
            We recognize that the patents’ specifications describe item 46 in figure 4 as
“additional cavities.” See, e.g., ’149 patent col.4 l.58. We in no way contradict this
disclosure, but, because the higher surface in figure 4 is not labeled, we simply use 46
as a convenient reference.


2008-1311                                    15
form the entire bottom of the snowmobile seat. Logically, because both the higher and

lower surfaces are part of the base section, the base section is therefore the bottom

structure of the snowmobile seat.

       Next, Boss cites the specification language stating that the base section, or

bottom thereof, can be “directly or indirectly mounted on the snowmobile.”             This

suggests to Boss that the base section for all patents need only be “at least a part of the

bottom” of the snowmobile seat. See ’630 patent col.3 ll.31-32; col.3 l.67-col.4 l.1; col.6

ll.19-21. Because this statement only appears in the ’630 patent, Boss also argues that

its unique construction of base section in the ’630 patent is correct. This disclosure,

however, does not further explain the difference between directly and indirectly

mounting and does not prevent the base section from being the “bottom support

structure of the snowmobile.” Rather, based on the entirety of the intrinsic evidence,

including these specific statements, the base section can still be indirectly mounted to

the snowmobile while being the “bottom” structure of the snowmobile seat. Moreover,

the other portions of the specifications, which more clearly discuss mounting the

snowmobile seat to the snowmobile body, disclose using “hook-and-loop type fasteners”

or the “snap type fasteners.” See, e.g., ’630 patent col.5 ll.10-35; col.8 ll.8-61. Not only

do neither of these mounting fasteners preclude the base section from being the bottom

structure, but they in fact support that the base section must be the bottom structure of

the snowmobile seat.      As explained, mounting the base section to the top of the

snowmobile—using the fasteners on the base section’s bottom—would be difficult

unless the base section was the bottom of the snowmobile seat. As such, if the base




2008-1311                                   16
section is “indirectly mounted on the snowmobile” using either of these fastener-types,

the base section is nonetheless the “bottom support structure of the snowmobile seat.”

      Boss also points out that the ’317 patent states that “the base structure can be

mounted to other support structure that in turn can be mounted on the track tunnel.”

See ’317 patent col.4 ll.14-16.    According to Boss, this statement both proves its

different construction for the ’317 patent and that, because the base section can be

mounted to an additional support structure, the base section is not necessarily the

bottom support structure.     Boss, however, overlooks that this statement is not

inconsistent with the base section being the bottom support structure of the snowmobile

seat, despite being mounted to another support structure. In fact, the cited passage

suggests that the “other support structure” is not part of the snowmobile seat, but rather

is part of the snowmobile body or is independent from any other part.          The claim

construction, however, requires the base section to be the “bottom support structure of

the snowmobile seat.” As such, even assuming the “other support structure” provides

some support to the bottom of the seat, it is neither the bottom structure nor the support

structure of the snowmobile seat. Thus, the base section remains both the bottom

structure and the support structure of the snowmobile seat.

      For the foregoing reasons, we hold the district court correctly construed “base

section” for all three patents-in-suit to mean the “bottom support structure of the

snowmobile seat.” We have considered Boss’s additional arguments on this issue, but

find them unpersuasive.




2008-1311                                  17
                                            B.

       We now address the construction of “adjacent.” This limitation explicitly appears

only in independent claim 5 of the ’317 patent, but it is also required in dependent

claims 7 and 8 by dependency from claim 5. The district court construed this limitation

as “next to or adjoining.” Claim Construction, slip op. at 32.

       Boss argues that this term should be construed as “close to.” Boss contends that

the district court inappropriately limited the definition of “adjacent” and, in doing so,

excluded certain embodiments in the ’317 patent.          According to Boss, the proper

construction would cover all of the disclosed embodiments. Specifically, Boss points to

figures 4 and 10 in the ’317 patent, emphasizing that its proposed construction—“close

to”—would encompass both disclosed figures, whereas the district court’s construction

excludes the embodiment shown in figure 4.

       Yamaha responds that the intrinsic evidence, the claims, and ordinary meaning

support the district court’s construction. In particular, Yamaha argues that the ’317

patent’s specification use of “adjacent” to describe “corners formed by adjacent sides of

the base section 240,” col.9 l.52, confirms “the concept of next to or adjoining.” Yamaha

also contends that, contrary to Boss’s suggestion, the court’s construction “does not

exclude any embodiments from the scope of the invention because other claims are

available to cover those embodiments.”

       We agree with the district court that the correct construction of “adjacent” in the

’317 patent is “next to or adjoining.”    Although the term “adjacent” is a commonly

understood word, we still look to the intrinsic evidence for the proper construction. See

Phillips, 415 F.3d at 1321 (“the specification is ‘the single best guide to the meaning of a




2008-1311                                   18
disputed term’”) (quoting Vitronics, 90 F.3d at 1582); id. (“[T]he “ordinary meaning” of a

claim term is its meaning to the ordinary artisan after reading the entire patent.”).

       Turning to the pertinent claim language, claim 5 states “a storage section,

disposed adjacent the flexible seat section, having a storage cavity formed therein.”

’317 patent col.11 ll.3-4. While the language of claim 5 alone does little to clarify the

parties’ dispute, the figures in the specification support the proposition that the term

means “next to or adjoining.” As shown by figure 10, the storage section is directly

“next to or adjoining”—not merely “close to”—the flexible seat section 260. Id. fig.10. In

addition, the specification’s use of “adjacent”—“corners formed between adjacent sides

of the base section”—supports that “next to or adjoining” is the correct construction. Id.

col.9 ll.51-52. Indeed, in order for the sides of the base section to form “corners,” the

sides would logically have to be “next to or adjoining” each other, rather than merely

“close to” each other. See id. fig.9a items 230 and 224. Moreover, this construction,

gleaned from the intrinsic evidence, is consistent with the dictionary definition of

“adjacent.” See, e.g., American Heritage Dictionary of the English Language (4th Ed.

2000); Phillips, 415 F.3d at 1322-23 (acknowledging that a construction “may also rely

on dictionary definitions . . . so long as the dictionary definition does not contradict any

definition found in or ascertained by a reading of the patent documents.” (quoting

Vitronics, 90 F.3d at 1584 n.6)).

       Moreover, Boss’s proposed construction of “close to” and its contentions that the

current construction of “next to or adjoining” excludes certain disclosed embodiments

are contradicted by the unasserted claims of the ’317 patent. See Phillips, 415 F.3d at

1314 (“Other claims of the patent in question, both asserted and unasserted, can also




2008-1311                                    19
be valuable sources of enlightenment as to the meaning of a claim term.”); see also

PSN Illinois v. Ivoclar Vivadent, Inc., 525 F.3d 1159, 1166 (Fed. Cir. 2008)

(“[U]nasserted or cancelled claims may provide ‘probative evidence’ that an

embodiment is not within the scope of an asserted claim.”). Indeed, this case presents

a clear example of the situation in which, although alternatively disclosed embodiments

are not encompassed by the current claim construction, other unasserted claims cover

those alternative embodiments. See, e.g., TIP Sys., LLC v. Phillips & Brooks/Gladwin,

Inc., 529 F.3d 1364, 1373 (Fed. Cir. 2008) (“[T]he mere fact that there is an alternative

embodiment disclosed in the . . . patent that is not encompassed by [a] district court’s

claim construction does not outweigh the language of the claim, especially when the

court’s construction is supported by the intrinsic evidence.”); PSN Illinois, 525 F.3d at

1166 (“[C]ourts must recognize that disclosed embodiments may be within the scope of

other allowed but unasserted claims.”).

       Claim 5 reads “a storage section, disposed adjacent the flexible seat section.”

’317 patent col.11 ll.3-4 (emphasis added). Under the current construction of “next to or

adjoining,” claim 5 encompasses the embodiment shown in figure 10, which discloses

the storage section next to the seat section.       Id. fig.10.   Importantly, unasserted

independent claims 1 and 12, as well as their dependent claims, omit the requirement

that the storage section be “adjacent” the seat section. See, e.g., id. col.10 ll.35-36;

col.12 ll.25-34. As such, the unasserted claims allow the storage section to be in a

variety of locations, including simply “close to” the seat section. The unasserted claims

therefore specifically encompass the other disclosed embodiments, which show the

storage section “close to” a seat section. See, e.g., id. fig.4 items 60 (seat section) and




2008-1311                                   20
44 (utility cavity). Construing the limitation “adjacent” as “close to,” as urged by Boss, in

this case would render that limitation in claim 5 essentially meaningless in light of the

other unasserted claims—a construction we cannot accept based on the entirety of the

intrinsic evidence. See, e.g., Ortho-McNeil Pharma., Inc. v. Caraco Pharma. Labs.,

Ltd., 476 F.3d 1321, 1327-28 (Fed. Cir. 2007) (rejecting a claim construction that would

have “render[ed] meaningless another claim’s limitation”). 8

       For the foregoing reasons, we hold the district court correctly construed

“adjacent” as “next to or adjoining.” We have considered Boss’s additional arguments

on this issue, but find them unpersuasive.

       In sum, because we have affirmed the district court’s constructions of “base

section” and “adjacent,” either of which appear in all of the asserted claims, and

because Boss stipulated to noninfringement under the district court’s construction, we

affirm the summary judgment of noninfringement of all claims.

                                             IV.

       We now turn to Boss’s appeal of the district court’s decision denying its

discovery-related sanctions motions. Boss does not allege that its discovery motions,

and the district court’s denial of those motions, affected its claim construction or

infringement positions.     Rather, Boss apparently acknowledges that its discovery

motions concerned only potential prior art and invalidity issues.         As Boss correctly

acknowledged at oral argument, the discovery issues therefore only need to be

addressed “if the court reverses the claim construction rulings” and would only become

pertinent on remand.        See Oral Arg. 39:00-39:20, Jan. 8, 2009, available at

       8
             Also, we note that Boss originally proposed during claim construction in the
district court that, if “adjacent” required construction, it should be construed as “next to.”


2008-1311                                    21
http://oralarguments.cafc.uscourts.gov.     Thus, the only remedies that Boss has

requested—namely, an adverse inference and preclusion of certain evidence at trial—

are contingent upon further litigation in the district court.     We, however, have not

reversed the district court’s claim construction, but rather affirmed the court’s

constructions of the dispositive claim terms, and Boss has conceded noninfringement

under those constructions. Consequently, we cannot remand for further litigation in the

district court and the discovery-related motions therefore are moot. See, e.g., Geneva

Pharm., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1386 (Fed. Cir. 2003) (“Because

this court affirms that the patents at issue in this case are invalid, the discovery issue is

moot.”); Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1380 (Fed. Cir. 1999)

(“[W]e note that in view of our conclusion that the claims at issue are invalid as not

enabled, the fact that the district court did not admit this evidence on the issue of

infringement is essentially moot.”).

       Nor did Boss appeal the denial of its other sanctions motions, which requested

sanctions not contingent upon remanding for further district court litigation and which

possibly could have provided this court with another avenue to address discovery

issues. Accordingly, we are unable to rule on, not only the district court’s denial of

Boss’s discovery motions, but also on any other possible discovery abuses that may

have occurred in the district court. That said, it appears from the record presented to us

that Yamaha’s discovery practices were less than commendable.             For example, on

several occasions Yamaha date-stamped documents to be filed with the district court

using the court’s time stamp, but did not actually place the document in the court’s drop-

box at that time.      See Boss Indus., Inc. v. Yamaha Motor Corp., U.S.A., No.




2008-1311                                    22
2:05CV00422, slip op. at 2 (D. Utah Feb. 28, 2007) (“Discovery Order”).              Rather,

Yamaha actually filed the documents, by placing them in the drop-box, several days

after the “filed” stamp was placed on the documents. Id. After the district court realized

that this was not an isolated incident, but happened several times, it admonished

Yamaha, stating that “[t]his deceitful conduct will not be tolerated” and that this

inappropriate practice “is particularly egregious when . . . the court is liberal in granting

extensions of time.” Id. slip op. at 2-3. The court further noted that “counsel in this case

have been admonished before about the gamesmanship that has been taking place in

this lawsuit.”   Id. slip op. at 3.   In addition, regarding Yamaha’s interpretation of

communications with the district court, the court further characterized Yamaha’s actions

as “unreasonabl[e]” and “disingenuous.”       Boss Indus., Inc. v. Yamaha Motor Corp.

U.S.A., No. 2:05CV00422, slip op. at 4 n.2 (D. Utah Jan. 23, 2007).            This type of

conduct during litigation is unacceptable and reflects a lack of respect for both the

opposing party and the court.

                                      CONCLUSION

       In sum, we affirm the district court’s claim constructions of “base section” and

“adjacent.” We therefore affirm the court’s grant of summary judgment of

noninfringement. Because we affirm the summary judgment of noninfringement, Boss’s

appeal of the denial of its discovery motions is moot.

       Each party shall bear its own costs.

                                        AFFIRMED




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