United States District Court, D. Oregon
Rudolph A. Telscher, Jr., Kara R. Fussner, David A. Nester, and Greg W. Meyer, DICKEY & PIERCE, P.L.C., Susan D. Pitchford, CHERNOFF VILHAUER LLP, Attorneys for Plaintiff.
David P. Enzminger, David P. Dalke, and Jenna W. Logoluso, WINSTON & STRAWN LLP, Jon P. Stride, TONKON
DISCOVERY DISPUTE CONFERENCE ORDER
OPINION AND ORDER
MICHAEL H. SIMON, District Judge.
This is an action by Plaintiff Cyber Acoustics, LLC ("Cyber") against Defendant Belkin International, Inc. ("Belkin") alleging infringement of U.S. Patent No. 8, 281, 924 (the "'924 Patent"). Cyber alleges that protective covers sold by Belkin for electronic tablets (for example, an Apple iPad®) infringe one or more claims of the '924 Patent. On March 10, 2014, the Court held a claim construction hearing. Based on the parties' briefs, other papers filed in the claim construction proceeding, and the argument of counsel, the Court construes the disputed terms below.
A. Claim Construction
Patent infringement analysis involves two steps. First, the court construes the asserted claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Second, the fact finder determines whether the accused product or method infringes the asserted claim as construed. Id. The first step, claim construction, is a matter of law. See Markman, 517 U.S. at 372; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). "It is a bedrock principle' of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Patent claims must precisely define the relevant invention and thereby serve to put both the public and competitors on notice of the claimed invention. See Phillips, 415 F.3d at 1312.
In interpreting a patent claim during the claim construction process, there are "numerous sources that [a district court] may properly utilize for guidance." Vitronics, 90 F.3d at 1582. Some types of evidence are "more valuable than others." Phillips, 415 F.3d at 1324. The relevant sources of evidence include both intrinsic evidence and extrinsic evidence. Vitronics, 90 F.3d at 1582. A court begins claim construction with consideration of intrinsic evidence in the record, consisting of the claim terms, the patent specification, and the patent prosecution history. Phillips, 415 F.3d at 1313. Where the intrinsic evidence alone fails to resolve a claim construction dispute, a court may consider extrinsic evidence. Vitronics, 90 F.3d at 1583. Extrinsic evidence "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980.
Intrinsic evidence is the court's starting point because it is "the most significant source of the legally operative meaning of disputed claim language." Vitronics, 90 F.3d at 1582. The first type of intrinsic evidence is "the words of the claims themselves, both asserted and nonasserted." Id. The words of a claim are "generally given their ordinary and customary meaning." Phillips, 415 F.3d at 1312 (citation and quotation marks omitted). A claim term's "ordinary and customary meaning" is the "meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1313.
There is a "heavy presumption" that a claim term carries its "ordinary and customary meaning." Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007). There are two exceptions to this general rule: (1) "when a patentee sets out a definition and acts as his own lexicographer;" or (2) "when the patentee disavows the full scope of a claim term either in the specification or during prosecution." Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also Hormone Research Found., Inc. v. Genentech, Inc., 904 F.2d 1558, 1563 (Fed. Cir. 1990) ("It is a well-established axiom in patent law that a patentee is free to be his or her own lexicographer and thus may use terms in a manner contrary to or inconsistent with one or more of their ordinary meanings." (citation omitted)).
In some cases, the "ordinary meaning of claim language" may be "readily apparent to lay judges, " in which case, "claim construction... involves little more than the application of the widely accepted meaning of commonly understood words." Phillips, 415 F.3d at 1314. In such cases, commonplace terms or those that a juror can easily use without further direction from the court "do not need to be construed because they are neither unfamiliar to the jury, confusing to the jury, nor affected by the specification or prosecution history." Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 528 F.Supp.2d 967, 976 (N.D. Cal. 2007). In those circumstances, it is enough to hold that the ordinary and customary meaning controls. Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1206-07 (Fed. Cir. 2010) (holding that the district court "was not obligated to provide additional guidance to the jury" beyond directing the jury to apply the "ordinary meaning" of a claim term).
"[T]he context in which a term is used in the asserted claim can be highly instructive." Phillips, 415 F.3d at 1314. For example, it is improper for a court to interpret a claim term in a manner that renders subsequent claim terms superfluous. See Stubmo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007); Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) ("A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so."). The doctrine of claim differentiation further provides that the limitations in each claim are presumed to be distinct from one another, although simply "describing claim elements or limitations in different words does not invariably change the scope of the claim." Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350, 1354 (Fed. Cir. 2006).
The second type of intrinsic evidence is the patent specification. A court does not determine the ordinary meaning of a disputed term "in a vacuum." Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005). The claims "must be read in view of the specification, of which they are a part." Markman, 52 F.3d at 979. "[T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582. The purpose of a patent's specification is to "teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so." Phillips, 415 F.3d at 1323. A specification may limit or disavow the scope of a claim, however, when a patentee makes a "clear and unmistakable disclaimer" deviating from the ordinary meaning. Thorner, 669 F.3d at 1366-67. For example, where a specification makes clear that an invention does not include a particular feature, "that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question." Thorner, 669 F.3d at 1366 (quoting SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)).
The Federal Circuit has repeatedly warned, however, that "although the specification often describes very specific embodiments of the invention, " the claims should not necessarily be confined to those embodiments. Phillip, 415 F.3d at 1323; Intel Corp. v. U.S. Int'l Trade Comm'n, 946 F.2d 821, 836 (Fed. Cir. 1991) (holding that "[w]here a specification does not require a limitation, that limitation should not be read from the specification into the claims" (citation, quotation, and emphasis omitted); see also Amhil Enters., Ltd. v. Wawa, Inc., 81 F.3d 1554, 1559 (Fed. Cir. 1996) (holding that "[a] preferred embodiment... is just that, and the scope of a patentee's claims is not necessarily or automatically limited to the preferred embodiment"). Ultimately, there is "no magic formula or catechism for conducting claim construction." Phillips, 415 F.3d at 1324. The court must "read the specification in light of its purposes in order to determine whether the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive." Decisioning.com, Inc. v. Federated Dept. Stores, Inc., 527 F.3d 1300, 1308 (Fed. Cir. 2008) (quoting Phillips, 415 F.3d at 1323).
The third type of intrinsic evidence is the prosecution history of a patent (or the "file wrapper"), if it is in evidence. Markman, 52 F.3d at 980; see also Graham v. John Deere Co., 383 U.S. 1, 33 (1966) ("[A]n invention is construed not only in light of the claims, but also with reference to the file wrapper or prosecution history in the Patent Office."). The patent history with the U.S. Patent and Trademark Office ("PTO") "contains the complete proceedings..., including any express representations made by the applicant regarding the scope of the claims." Vitronics, 90 F.3d at 1582. Because the prosecution represents an "ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes." Phillips, 415 F.3d at 1317. The prosecution history, however, can inform the meaning of a claim term where a patentee makes "a clear and unmistakable disavowal of scope during prosecution." Creative Integrated Sys., Inc. v. Nintendo of Am., Inc., 526 F.Appx. 927, 934 (Fed. Cir. 2013). "A patentee could do so, for example, by clearly characterizing the invention in a way to try to overcome rejections based on prior art." Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008); see also Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) ("The purpose of consulting the prosecution history in construing a claim is to exclude any interpretation that was disclaimed during prosecution." (citation and quotation marks omitted)). If the alleged disavowal of the claim scope is ambiguous, it will not limit the scope of the claim. Creative Integrated Sys., Inc., 526 F.Appx. at 934.
Generally an "analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term." Vitronics, 90 F.3d at 1583. Where that is the case, "it is improper to rely on extrinsic evidence." Id. Where the ordinary and customary meaning of a claim term is not apparent based on the intrinsic evidence, courts are authorized to consult extrinsic evidence. Markman, 52 F.3d at 980. Relevant extrinsic evidence includes "expert and inventor testimony, dictionaries, and learned treatises." Id. at 980. Judges may "rely on dictionary definitions when construing claims, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.'" Meyer Intellectual Props. Ltd. v. Bodum, Inc., 690 F.3d 1354, 1368 (Fed. Cir. 2012) (quoting Phillips, 415 F.3d at 1322). Indeed, "heavy reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into a meaning of the term in the abstract, out of its particular context, which is the specification." Phillips, 415 F.3d at 1321. Thus, a patentee is not "entitled to a claim construction divorced from the context of the written description and prosecution history." Nystrom v. Trex Co., Inc., 424 F.3d 1136, 1144-45 (Fed. Cir. 2005). Extrinsic evidence, therefore, is "less reliable than the patent and its prosecution history in determining how to read claim terms, " and its consideration is within the court's sound discretion. Phillips, 415 F.3d at 1318-19.
A patent must contain claims "particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as his invention." 35 U.S.C. § 112(b). "Because claims delineate the patentee's right to exclude, the patent statute requires that the scope of the claims be sufficiently definite to inform the public of the bounds of the protected invention, i.e., what subject matter is covered by the exclusive rights of the patent." Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008).
Indefiniteness is a legal issue for the court to resolve. Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 897 (Fed. Cir. 2013). A claim is indefinite only when it is "not amenable to construction" or is "insolubly ambiguous." Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citation and quotation marks omitted). The mere "reduction of the meaning of a claim into words is not dispositive of whether the term is definite." Star Scientific, Inc. v. R.J. Reynolds Tobacco Co. (" Star Scientific I "), 537 F.3d 1357, 1371 (Fed. Cir. 2008) (citations omitted). If claim construction results in a definition "that does not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim, the claim is insolubly ambiguous and invalid for indefiniteness." Id. On the other hand, "[a]bsolute clarity is not required to find a claim term definite." Star Scientific, Inc. v. R.J. Reynolds Tobacco Co. (" Star Scientific II "), 655 F.3d 1364, 1373 (Fed. Cir. 2011). A claim is sufficiently definite to satisfy the statute if "one skilled in the art would understand the bounds of the claim when read in light of the specification." Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). "[C]lose questions of indefiniteness in litigation involving issued patents are properly resolved in favor of the patentee." Id. at 1380.
General principles of claim construction are applicable to determining "whether allegedly indefinite claim language is subject to construction." Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008). Thus, the court may consider intrinsic evidence consisting of the claim terms, the specification, and the prosecution history. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332-33 (Fed. Cir. 2010). In addition, the court may also consider extrinsic evidence when necessary to resolve disputes of indefiniteness. Exxon Research, 265 F.3d at 1376.
This case concerns a patent disclosing covers for portable electronic devices, such as the Apple iPad® or other tablets. Pl.'s Compl., Dkt. 1 at 2 ¶ 8. Plaintiff Cyber alleges that Defendant Belkin is infringing Cyber's '924 Patent. Id. The '924 Patent is made up of four claims. Pl.'s Ex. 1 at 6, Dkt. 51-1. Claim 1 is an independent claim with six sub-parts labeled (a) through (f). Id. Claims 2 through 4 are dependent claims. Id. The '924 Patent also contains eight figures illustrating the structure and function of the alleged invention. Id. at figs.1-8.
A. History of the '924 Patent
On August 20, 2010, Cyber filed an application for a portfolio-style protective cover that would hold an electronic tablet device, allow it to stand up, and protect it from damage if struck or dropped. Pl.'s Ex. 1, Dkt. 51-1 at 1; Pl.'s Ex. 3, Dkt. 51-3 at 8. Shortly thereafter, the PTO recorded an assignment of the application from Joseph Westrup to Cyber Acoustics, LLC. Pl.'s Ex. B, Dkt. 1-2 at 1. The U.S. Patent Application 12/860, 808 (the "'808 Application") contained six claims, which read:
1. A protective cover for electronic devices comprising:
(a) a foldable portfolio having a top and a bottom with corners on said top and said bottom;
(b) a four-cornered, generally rectangular O-shaped frame secured to the inside of said bottom;
(c) legs integral with the four corners of said frame oriented radially outwardly from said frame; and
(d) resilient corner-engaging lugs integral with said legs.
2. The cover of claim 1 wherein said top and said bottom comprise three plies of (i) a soft inside layer; (ii) a durable outside layer; and (iii) a stiff middle layer.
3. The cover of claim 2 further comprising reversible elastic straps secured to the corners of said top and said bottom.
4. The cover of claim 3 further comprising an elastic strap secured to the inside of said top.
5. The cover of claim 4 further comprising a flap on the outside of said bottom.
6. The cover of claim 5 further comprising a hinge integral with said top that permits said top to be partially opened to an angle of about 90° relative to the remainder of said top and to engage said flap.
Pl.'s Ex. 3, Dkt. 51-3 at 4. Three months later, Cyber amended Claim 1 of the '808 Application as follows:
1. (currently amended) A protective cover for electronic devices comprising:
(a) a foldable portfolio having a top and a bottom with corners on said top and said bottom;
(b) a four-legged cornered, generally rectangular O-shaped frame secured to the inside of said bottom;
(c) the four legs integral with the four corners of said four-legged frame oriented in an X-shaped configuration relative to each other radially outwardly from said frame; and
(d) resilient corner-engaging lugs integral with each of said four legs.
Pl.'s Ex. 4, Dkt. 51-4 at 2.
On July 21, 2011, the PTO Examiner ("Examiner") rejected all the claims of the '808 Application. Pl.'s Ex. 5, Dkt. 51-5 at 1-2. The Examiner rejected Claims 1 and 3 through 6 under 35 U.S.C. § 103(a) as being obvious and unpatentable over "Patterson (US 2008/0237432) in view of Nieves (US 2004/0173482) and Mish (US 2010/149739)." Id. at 3. Regarding Claim 1, the Examiner found that Patterson disclosed:
[A] protective cover for electronic devices comprising a foldable portfolio (3) having a top (15) and a bottom (10) with corners on said top and said bottom; a four-legged frame (6) secured to the inside of said bottom (10); the four legs of said four-legged frame oriented in an X-shaped configuration relative to each other radially outwardly from said frame (see figure 1).
Id. The Examiner concluded that given the prior art, "[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the cover of Patterson having engaging lugs of Nieves and disposed on the corners as disclosed by Mish." Id. at 3-4. The Examiner rejected Claim 5 and found that Patterson "disclosed a flap (26) on the outside of said bottom (10) (see figure 1)." Id. at 4. Finally, the Examiner rejected Claim 6 (relating to the hinge) because Patterson disclosed "a hinge (18) integral with said top (15) that permits said top to be partially opened to an angle of about 90° relative to the remainder of said top and to engage said flap." Id.
On August 9, 2011, Cyber responded to the July 2011 office action. Pl.'s Ex. 6, Dkt. 51-6 at 1. Cyber argued to the PTO that the cited prior art did not disclose the claimed matter. Regarding the rejection of Claims 1 and 3 through 6, Cyber argued that Patterson did not disclose a four-legged frame having its four legs oriented in an X-shape configuration. Id. at 2. Cyber did not make a specific argument related to the terms "top, " "bottom, " "flap, " or "to engage said flap." On September 29, 2011, the PTO sent notification of a final office action rejecting Claims 1 through 6 as obvious and unpatentable. Pl.'s Ex. 7, Dkt. 51-7 at 1-2.
Cyber next filed an Appeal Brief on October 17, 2011. Pl.'s Ex. 8, Dkt. 51-8 at 1. Cyber maintained in the appeal its position that Claims 1 and 3 through 6 were improperly rejected on the basis of Patterson because Patterson failed to disclose the four-legged frame. Pl.'s Ex. 9, Dkt. 51-9 at 6-7. Moreover, Cyber argued that Claim 5 was improperly rejected because it included the limitation of a flap on the outside of the bottom of the cover. Regarding Claim 6, Cyber differentiated Patterson again, arguing that the hinge limitation disclosed in the '808 Application is not disclosed in either the Patterson specification or drawings. Id.
Thereafter, the Examiner re-opened prosecution of the '808 Application and issued a Non-Final Office Action on December 28, 2011. Pl.'s Ex. 10, Dkt. 51-10 at 1-2. The Examiner rejected the '808 Application on two separate grounds: (1) indefiniteness pursuant to 35 U.S.C. § 112; and (2) obviousness pursuant to 35 U.S.C. § 103(a). Id. at 3-4. The Examiner rejected Claims 3 through 6 as indefinite for "failing to particularly point out and distinctly claim the subject matter" of the alleged invention because it was unclear how the elastic straps were secured to the corners of the top and bottom of the protective cover. Id. at 3-4.
The Examiner also again rejected Claims 1 and 3 through 6 as obvious and "being unpatentable over Patterson (US 2008/0237432) in view of LeGette (US 2010/0072334)." Id. at 4. Further, the Examiner noted that the "X-shaped base portion" of the frame was "a matter of design" and did "not provide any advantage to the frame" because "the base portion [of the cover] [could] have an unlimited number of skeletal shapes, so long as there are four corners for the lugs." Id. at 5. The Examiner concluded: "It is clear that there is no novelty in an X-shaped [ sic ] frame." Id. Claims 3 through 6 were also rejected on obviousness grounds "as being unpatentable over Patterson (US 2008/0237432), LeGette (US 2010/0072334) and Moser (US 2007/0119735)..., and further in view of Austin (No. 549, 890)." Id. at 6. Specifically, the Examiner rejected Claim 3 in light of Patterson and Austin's disclosure of an elastic strap, Claim 4 in light of Austin's disclosure of an elastic strap on the inside of the protective cover, and Claims 5 and 6 in ...