                  NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
                    is not citable as precedent. It is a public record.

    United States Court of Appeals for the Federal Circuit


                                     04-1528, -1536

                             OCEAN INNOVATIONS, INC.
                      (formerly known as Jet Dock Licensing, Inc.)
                           and JET DOCK SYSTEMS, INC.,

                                                       Plaintiffs-Cross Appellants,

                                            v.

                                     RICK ARCHER,

                                                       Defendant,
                                           and

                               ZEPPELIN MARINE, INC.,

                                                       Defendant-Appellant.


                            __________________________

                            DECIDED: August 19, 2005
                            __________________________



Before MICHEL, Chief Judge, SCHALL, and LINN, Circuit Judges.

SCHALL, Circuit Judge.

                                       DECISION

      Ocean Innovations, Inc. and Jet Dock Systems, Inc. (collectively “Jet Dock”) sued

Rick Archer and Zeppelin Marine, Inc. (“Zeppelin”) for infringement of U.S. Patent No.

5,682,833 (“the ’833 patent”) in the United States District Court for the Northern District
of Ohio. The district court granted summary judgment of infringement in favor of Jet

Dock. Ocean Innovations, Inc. v. Archer, No. 5:98CV1515 (N.D. OH June 16, 2004)

(“Summary Judgment Order”).        Subsequently, after conducting a bench trial on the

issue of damages, the court awarded Jet Dock a reasonable royalty and permanently

enjoined Zeppelin from infringing the asserted claims. Zeppelin appeals, arguing that

the district court erred when it granted summary judgment of infringement. Jet Dock

cross-appeals, contending that the district court erred by awarding it a reasonable

royalty rather than lost profits as the measure of damages. Because we conclude that

the court erred in its construction of one of the ’833 patent’s disputed claim limitations,

we reverse the judgment of infringement and remand the case for further proceedings.


                                      DISCUSSION

                                             I.

     Jet Dock’s ’833 patent discloses a “floating drive-on dry dock” assembly for

personal watercraft, and a method for its use. See ’833 patent, abstract; id. col. 1, ll. 8-

11. The patent contains seven claims: one independent method claim (claim 1) with

three corresponding dependent claims, and one independent apparatus claim (claim 5)

with two corresponding dependent claims. See id. col. 7, l. 28 - col. 8, l. 45. An

embodiment of the device is shown in Figure 1 of the patent (below). The device’s

operation is shown in Figures 12-14 of the patent.




04-1528, -1536                               2
The dock allows watercraft to be stored out of water, and also allows the users of the

watercraft to get on or off the craft without getting into the water.

                                              II.

       Zeppelin describes its accused product, the Sport Port Ultra dock (“Ultra”), with

reference to U.S. Patent No. 5,795,098.         That patent also shows a dock for storing

watercraft so that the hull of the craft is above the waterline when it is on the dock.




       Jet Dock sued Zeppelin for infringement of method claims 1 and 4 of the ’833

patent.1   After construing the asserted claims, the district court granted summary

judgment of infringement in favor of Jet Dock. Thereafter, the court held a bench trial to


       1
              Although Jet Dock’s Second Amended Complaint does not reference any
particular patent claims, claims 1 and 4 were at issue on summary judgment and are
presently on appeal.


04-1528, -1536                                3
determine damages for infringement. After determining that Jet Dock was not entitled to

lost profits damages, the court calculated a reasonable royalty and entered judgment in

favor Jet Dock for approximately $455,000.           Zeppelin appeals the judgment of

infringement. Jet Dock cross-appeals the district court’s damages determination. We

have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

                                            III.

       On appeal, Zeppelin argues that the district court erred in granting summary

judgment of infringement in favor of Jet Dock. Summary judgment is appropriate “if the

pleadings, depositions, answers to interrogatories, and admissions on file, together with

the affidavits, if any, show that there is no genuine issue as to any material fact and that

the moving party is entitled to a judgment as a matter of law.” Fed. R. Civ. P. 56(c).

“The evidence of the non-movant is to be believed, and all justifiable inferences are to

be drawn in his favor.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).

       “Determining infringement requires two steps. First, the claim must be properly

construed to determine its scope and meaning.” Boss Control, Inc. v. Bombardier, Inc.,

410 F.3d 1372, 1376 (Fed. Cir. 2005) (citations omitted). Claim construction presents

an issue of law which we review de novo. Markman v. Westview Instruments, Inc., 52

F.3d 967, 977 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370 (1996). “Second, the claim

as properly construed must be compared to the accused device or process.” Boss

Control, 410 F.3d at 1376. Infringement presents an issue of fact. Id.

       On appeal Zeppelin contends that the district court erred in construing two

limitations of the asserted method claims. Asserted independent claim 1 provides in

pertinent part as follows:




04-1528, -1536                               4
       1. A method of placing a floating craft having a hull with an upwardly
       curved bow onto a dry dock comprising the steps of:

       selecting a plurality of floatation units from a first group of floatation units
       having a first buoyancy and a second group having a second buoyancy
       ....

       assembling the selected units to form a dock having an axial extent
       defining a craft-receiving surface which is above the surface of the water
       when the dock does not have a craft on it, using flexible joints between
       the units which permit adjacent units to flex downwardly with respect to
       each other upon the imposition of a downward load,

       driving the craft up and onto the dock . . . .

’833 patent, col. 7, l. 28 - col. 8, l. 6.2

       Zeppelin challenges the district court’s construction of the term “flexible joints

between the units.”       The court construed the term to mean “a point or position in the

interval or position separating the floatation units of the dock, which point or position is

capable of bending or flexing.”          Zeppelin argues that the district court erred in its

construction because the term “joint” in the claims must refer to a tangible object, not

merely a “conceptual” “point.” According to Zeppelin, a “point” cannot be characterized

as “capable of bending or flexing.” Zeppelin argues that the district court “mechanically

combined” definitions of the claim terms, and should have excluded a point from the

possible definitions of “joint.” Zeppelin proposes that the term “flexible joints between

the units” should be construed to mean “a configuration or component connecting the

flotation units of the dock, which configuration or component is capable of bending or

flexing.”




       2
              The disputed limitations are emphasized. The other asserted claim is
method claim 4, which depends from claim 1 and contains additional limitations not
relevant to resolving the present dispute.


04-1528, -1536                                   5
          Jet Dock defends the district court’s claim construction, analogizing to the human

body: “an elbow is a flexible joint between [the] forearm and upper arm, yet there is no

component that can be considered apart from the bones [that] the joint connects.” (Br.

of Appellee, at 31.) Jet Dock further argues that the district court’s construction is

consistent with the specification, because the tabs that connect the floatation units help

form the “flexible joint” but are not disclosed as components separate and apart from

the floatation units themselves. See ’833 patent, col. 1, l. 67-col. 2, l. 1.

          We see no error in the district court’s construction of “flexible joints between the

units.”      We think that Zeppelin’s proposed construction is incorrect because the

“flexibility” referred to in the ’833 patent is not that the material forming the joints itself is

flexible, but rather that the joints permit the floatation units to flex and bend relative to

each other. This is clearly recited in the claim language: to “permit adjacent units to flex

downwardly with respect to each other upon the imposition of a downward load.” Id.

col. 7, ll. 43-45 (claim 1).       Consistent with this notion, the specification teaches that

“[w]hen joined together the flotation units 12 and 14 show some flexibility relative to one

another.” Id. col. 4, ll. 23-24.

          Zeppelin also challenges the district court’s construction of the term “floatation

units.” The court construed the term to mean “an individual structural constituent of a

whole (i.e., the dry dock claimed in the ’833 patent) which is buoyed on water.” The

court also determined that the “floatation units” must be “airtight” but not necessarily

“hollow.” Zeppelin argues that the claimed “floatation units” must be hollow as well as

airtight.




04-1528, -1536                                   6
       Jet Dock agrees that the claimed “floatation units” are properly construed to be

“airtight.” It, argues, however, that construing the claims as requiring the units to also

be “hollow” imports a limitation into the claims. According to Jet Dock, “floatation units”

should be construed broadly because the claims are not limited to the single

embodiment that is disclosed in the ’833 patent’s specification.

       In Phillips v. AWH Corp., Nos. 03-1269, -1286, __ F.3d __ (Fed. Cir. 2005) (en

banc), we noted that “the line between construing terms and importing limitations can be

discerned with reasonable certainty and predictability if the court’s focus remains on

understanding how a person of ordinary skill in the art would understand the claim

terms.” Id. slip op. at 29. We further noted that, “[i]n the end, there will still remain

some cases in which it will be hard to determine whether a person of skill in the art

would understand the embodiments to define the outer limits of the claim term or merely

be exemplary in nature.” Id. slip op. at 30. However, we stated that “we nonetheless

believe that attempting to resolve [the] problem in the context of the particular patent is

likely to capture the scope of the actual invention more accurately than either strictly

limiting the scope of the claims to the embodiments disclosed in the specification or

divorcing the claim language from the specification.”      Id. slip op. at 30 (emphasis

added).

       With those principles in mind, we turn to the term “floatation units” in the ’833

patent. Doing so, we conclude that one skilled in the art would understand the term to

be referring to units that are hollow as well as airtight. The very first sentence of the

patent characterizes the overall invention of the ’833 patent as a “floating, drive-on dry

dock assembly for small craft [that] is assembled from two kinds of hollow floatation




04-1528, -1536                              7
units.” ’833 patent, abstract (emphasis added). This communicates to one skilled in the

art that a characteristic of a “floatation unit” in the invention of the ’833 patent is that it is

hollow.

       Continuing, the ’833 patent’s specification describes the claimed floatation units

with reference to prior art devices that also contain hollow units. The “Background of

the Invention” section of the patent describes the prior art with reference to U.S. Pat.

Nos. 3,824,664 and 4,603,962. According to the ’833 patent’s specification, “[t]hese

patents describe hollow cubical units[.]” ’833 patent, col. 1, ll. 21-24 (emphasis added).

In particular, the prior art units were “provided with bungholes so that the units could be

partially flooded to lower the water line of some or all of the units.” Id. col. 1, ll. 28-32.

       Most importantly, the “Summary of the Invention” section of the patent states:

The dock is “assembled from a combination of tall and short, hollow, air-tight floatation

units.” Id. col 1, ll. 66-67 (emphasis added). Finally, in the preferred embodiment “all of

the floatation units 12a-l and 14a-g are hollow and air tight.”            Id. col. 3, ll. 27-28

(emphasis added). In the preferred embodiment, the tall floatation units (12a-l) are

described as being “substantially similar to that shown in U.S. Pat. Nos. 3,824,644 and

4,604, 962[.]” ’833 patent, col. 3, ll. 31-34. These are the same two patents previously

described in the Background of the Invention section as containing “hollow” units that

can be flooded with water. See id. col. 1, ll. 22-24.

       We think that one skilled in the art reading the ’833 patent claims, in light of the

’833 patents’ disclosure, would understand that the “floatation units” in the claimed

invention are hollow. See C.R. Bard, Inc. v. United States Surgical Corp., 388 F.3d 858,

863-864 (Fed. Cir. 2004) (where a patentee had “globally” defined a “plug” for an




04-1528, -1536                                  8
implantable prosthesis as having a pleated surface, the term “plug” was so construed);

Scimed Life Sys. v. Adv. Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir.

2001) (“[T]he characterization of the coaxial configuration as ‘part of the present

invention’ is strong evidence that the claims should not be read to encompass the

opposite structure.”). Jet Dock’s argument to the contrary presumes the conclusion that

it seeks. To assert that “hollow” is improperly importing a limitation into “floatation units”

is to presume that the “floatation units,” as claimed in the ’833 patent, are not

characteristically hollow. That argument, however, presumes to know the meaning of

“floatation units” to one skilled in the art—which is the very issue at hand. We do not

think that to construe the “floatation units” as hollow is importing a limitation into the

claims when the specification makes clear that hollowness is an inherent characteristic

of the “floatation units” in the claimed invention.

       In sum, we construe claim 1 of the ’833 patent as directed to floatation units that

are airtight and hollow.

       Having altered the district court’s construction of “floatation units,” we reverse the

judgment in favor of Jet Dock and remand for further proceedings on the issue of

infringement. See Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1360 (Fed.

Cir. 2004) (remanding for new infringement determination in light of altered claim

construction); NeoMagic Corp. v. Trident Microsystems, Inc., 287 F.3d 1062, 1075 (Fed.

Cir. 2002) (same).3 Because we reverse the judgment of infringement in favor of Jet

Dock, we do not need to reach Jet Dock’s cross-appeal with respect to damages.



       3
             We reject Jet Dock’s argument that Zeppelin admitted infringement by
arguing that the ’833 patent is invalid under 35 U.S.C. § 102(g). Before the district
court, Zeppelin’s position was that the Ultra did not infringe, but that if the Ultra was


04-1528, -1536                                9
       For the foregoing reasons, we reverse the judgment of infringement in favor of

Jet Dock. The case is remanded to the district court for further proceedings consistent

with this opinion.

       Each party shall bear its own costs.




(Cont’d. . . .)
found to infringe, then the ’833 patent is invalid under section 102(g) on the basis of
prior invention of the Ultra. There is nothing inconsistent in advancing this alternative
theory for non-liability. This was exactly the position taken by the accused infringers in
Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363, 1366 (Fed. Cir. 2000), and in Evans
Cooling Systems, Inc. v. General Motors, Inc., 125 F.3d 1448, 1451 (Fed. Cir. 1997),
although in those cases the defendant argued under section 102(b) rather than section
102(g).


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