United States District Court, W.D. Louisiana, Monroe Division
CLAIM CONSTRUCTION MEMORANDUM ORDER
H.L. Perez-Montes, United States Magistrate Judge.
the Court is the issue of claim construction. The parties
have fully briefed the issue. (Docs. 79, 83, 84). The parties
agreed, and the Court determined, a claim construction
hearing was not required. (Doc. 96).
filed a Complaint, as amended, against Lindsey Laurain
(“Laurain”) and EZPZ for damages and injunctive
relief for false advertising, false representation, unfair
competition under the Lantham Act, 15 U.S.C. §§
1051, et seq., and the Louisiana Unfair Trade
Practices and Consumer Protection Law, La. Rev. Stat.
51:1401, et seq. (Doc. 21). LNC also seeks a
declaratory judgment under 28 U.S.C. §§ 2201 and
2202 that LNC violates no valid claim of
design patent, utility patent, or any other intellectual
property right of EZPZ. (Doc. 21). The alleged intellectual
property rights at issue are:
(1) On July 17, 2014, Laurain filed United States Patent
Application No. 14/333, 682 (“the ‘682 Utility
Application”) for Surface Contact Self-Sealing
Integrated Tablewear and Dining Mat. (Doc. 21, Doc. 27).
(2) On December 3, 2014, Laurain filed a design patent
application for Dining Mat with Integrated
Tablewear, and on December 15, 2015, the United States
Patent and Trademark Office (“USPTO”) issued
United States Patent No. D745, 327 (“the ‘327
Design Patent”). (Doc. 21, Doc. 27).
(3) On March 17, 2016, the application for the ‘682
Utility Application published as United States Published
Patent Application No. 2016/0073805, Surface Contact
Self-Sealing Integrated Tablewear and Dining Mat
(“the ‘805 Publication”). (Doc. 27).
(4) On October 11, 2016, the USPTO issued United States
Patent No. 9, 462, 903, Surface Contact Self-Sealing
Integrated Tablewear and Dining Mat (“the
‘903 Utility Patent”). (Doc. 21, Doc. 27).
seeks an injunction and damages for EZPZ's alleged acts
of false advertising, false representation, and unfair
competition allegedly based on false claims of infringement.
(Doc. 21). LNC alleges the product giving rise to this action
is a feeding mat, which is an integrated self-sealing
silicone place mat with a built-in bowl or plate that
attaches to the table using suction. (Doc. 21). LNC alleges
EZPZ has no valid existing intellectual property right that
covers any aspect of LNC's feeding mats. (Doc. 21). LNC
alleges EZPZ sells competing feeding mats. (Doc. 21).
filed an Answer to Complaint, Answer to Amended Complaint,
and Counterclaim against LNC alleging that LNC infringed the
‘903 Utility Patent and the ‘327 Design Patent,
violated 15 U.S.C. § 1114 and 15 U.S.C. § 1125(a),
and unfairly competed with EZPZ in violation of state and
common law. (Doc. 27). EZPZ seeks monetary damages and a
permanent injunction against LNC. (Doc. 27).
answered EZPZ's Counterclaim asserting various
affirmative defenses. (Doc. 33). EZPZ amended its
Counterclaim asserting claims against third party
Counter-Defendants Admar International, Inc.
(“Admar”) and Nouri E. Hakim
(“Hakim”). (Doc. 40). Defendants Admar, Hakim,
and LNC answered asserting various affirmative defenses.
(Doc. 45). The parties now seek claim construction as to the
disputed terms in the ‘903 patent. (Docs. 79, 83, 84).
Law and Analysis
patent describes “the exact scope of an invention and
its manufacture to ‘secure to [the patentee] all to
which he is entitled, [and] to apprise the public of what is
still open to them.'” Markman v. Westview,
Inc., 517 U.S. 370, 373 (1996) (citation omitted). The
patent application contains a specification describing the
invention “in such full, clear, concise, and exact
terms as to enable any person skilled in the art . . . to
make and use the same.” 35 U.S.C. § 112. The
specification concludes with “one or more claims
particularly pointing out and distinctly claiming the subject
matter which the inventor . . . regards as the
invention.” Id. Claims may be written in
independent or dependent form. Id. Dependent claims
shall be construed to incorporate by reference all the
limitations of the claim to which it refers. Id.
“[I]t is only fair (and statutorily required) that
competitors be able to ascertain to a reasonable degree the
scope of the patentee's right to exclude.”
Markman v. Westview Instruments, Inc., 52 F.3d 967,
978 (Fed. Cir. 1995), aff'd, 517 U.S. 370
claim construction is a question of law for the court.
Markman v. Westview, Inc., 517 U.S. at 372.
“Victory in an infringement suit requires a finding
that the patent claim[s] ‘cover[ ] the alleged
infringer's product . . .' which in turn necessitates
a determination of ‘what the words in the claim[s]
mean.'” Markman, 517 U.S. at 374
(citations omitted). The meaning and scope of any disputed
terms and limiting expressions in the claims are determined
by the court as a matter of law. Vivid Techs., Inc. v.
Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803
(Fed.Cir.1999) (citing Markman, 52 F.3d at 976 and
EMI Group North America, Inc. v. Intel Corp., 157
F.3d 887, 891 (Fed.Cir.1998)). “[O]nly those terms need
be construed that are in controversy, and only to the extent
necessary to resolve the controversy.” Vivid
Techs., Inc., 200 F.3d at 803 (citing U.S. Surgical
Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir.
1997) (claim construction is for “resolution of
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 Systems, Inc., 381 F.3d 1111,
1115 (Fed. Cir. 2004); Markman, 517 U.S. at 373-74).
The goal of claim construction, then, is to give proper
meaning and scope to claim language by giving claim terms
their ordinary and customary meanings, according to the
customary understanding of an artisan of ordinary skill at
the time of the invention. Id. at 1312-13.
‘ordinary meaning' of a claim term is its meaning
to the ordinary artisan after reading the entire
patent.” Id. at 1321. While “the claims
themselves provide substantial guidance as to the meaning of
particular claim terms, ” the context of the
surrounding words of the claim also must be considered.
Id. at 1314 (citations omitted). Furthermore,
“[o]ther claims of the patent in question, both
asserted and unasserted, can also be valuable sources of
enlightment . . . [b]ecause claim terms are normally used
consistently throughout the patent . . .” Id.
(internal citation omitted).
construe a claim, a court first looks to the intrinsic
evidence of record, which is the “patent itself,
including ‘the claims, the specification [or written
description, ] and, if in evidence, the prosecution
history'”. Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citing
Markman, 52 F.3d at 979). “[T]here is no magic
formula or catechism for conducting claim
construction.” Phillips, 415 F.3d at 1324.
Instead, the court is free to attach the appropriate weight
to appropriate sources “in light of the statutes and
policies that inform patent law.” Id. (citing
Vitronics, 90 F.3d at 1582).
court starts with the actual language of the claim. “If
the claim language is clear on its face, then [the
court's] consideration of the rest of the intrinsic
evidence is restricted to determining if a deviation from the
clear language of the claims is specified.”
Interactive Gift Express, Inc. v. Compuserve, Inc.
256 F.3d 1323, 1331 (Fed. Cir. 2001). The specification
always can and should be used as an important source support
for claim interpretation. Phillips, 415 F.3d at
1315-17. In addition to the specification, a court
“should also consider the patent's prosecution
history, if it is in evidence.” Markman, 52
F.3d at 980. The prosecution history, which is
“intrinsic evidence, ” “consists of the
complete record of the proceedings before the PTO [Patent and
Trademark Office] and includes the prior art cited during the
examination of the patent.” Phillips, 415 F.3d
at 1317. “[T]he prosecution history can often inform
the meaning of the claim language by demonstrating how the
inventor understood the invention and whether the inventor
limited the invention in the course of prosecution, making
the claim scope narrower than it would otherwise be.”
Id. (citations omitted).
the well-established doctrine of prosecution disclaimer
“preclud[es] patentees from recapturing through claim
interpretation specific meanings disclaimed during
prosecution.” Omega Eng'g Inc. v. Raytek
Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). By
distinguishing the claimed invention over the prior art, an
applicant is indicating what the claims do not cover.
Spectrum Int'l v. Sterilite Corp., 164 F.3d
1372, 1378-79 (Fed. Cir. 1988). This promotes the public
notice function of the intrinsic evidence and the
public's reliance on definitive statements made during
prosecution. Omega Eng'g, Inc., 334 F.3d at
construing claims, the intrinsic evidence of the meaning of
the claims are the primary resources; while helpful,
extrinsic sources like dictionaries and expert testimony
cannot overcome more persuasive intrinsic evidence.
Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323,
1328 (Fed. Cir. 2008) (citing Phillips, 415 F.3d at
1318). “Extrinsic evidence consists of all evidence
external to the patent and prosecution history, including
expert and inventor testimony, dictionaries, and learned
treatises.” Phillips, 415 F.3d at 1317 (citing
Markman, 52 F.3d at 980). “[H]eavy reliance on
the dictionary divorced from the intrinsic evidence risks
transforming the meaning of the claim term to the artisan
into the meaning of the term in the abstract.”
Id. at 1321. The Court should instead focus on how
the patentee used the claim term in the claims,
specification, and prosecution history, rather than starting
with a broad definition and whittling it down. Id.
cases, “the district court will need to look beyond the
patent's intrinsic evidence and to consult extrinsic
evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during
the relevant time period.” Teva Pharms. USA, Inc.
v. Sandoz, Inc., 135 S.Ct. 831, 837 (2015). While
extrinsic evidence “may be useful” to the court,
it is “less reliable” than intrinsic evidence,
and its consideration “is unlikely to result in a
reliable interpretation of patent claim scope unless
considered in the context of the intrinsic evidence.”
Phillips, 415 F.3d at 1318-19. However, conclusory,
unsupported assertions by experts as to the definition of a
claim term are not useful. Phillips, 415 F.3d at
1318. Where the intrinsic record unambiguously describes the
scope of the patented invention, reliance on any extrinsic
evidence is improper. See Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir.
1999) (citing Vitronics, 90 F.3d at 1583).
construction that stays true to the claim language and most
naturally aligns with the patent's description of the
invention will be, in the end, the correct
construction.” Renishaw PLC v. Marposs Societa'
per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). Where
two alternative claim constructions are equally plausible
based on the instrinsic evidence, claims should be construed
so as to preserve their validity. Phillips, 415 F.3d
Construction of Disputed Claim
‘903 patent contains 9 claims, of which 3 are
independent claims (claims 1, 5, and 9), and 6 of the claims
are dependent on one of the independent claims. (Docs. 79-2,
83-1). The disputed claim terms appear in claims 1, 2, 5, and
9. (Doc. 79-2, 83-1). The parties dispute whether the
preambles of claims 1, 5, and 9 are limiting. (Doc. 79, 83,
84). The parties also seek claim construction of the
following disputed terms: (1) “planar portion”
(claims 1, 2, 5, and 9); (2) “an entirely suffuse
undersurface” (claim 1); and (3) “an undersurface
entirely suffuse upon the planar portion” (claims 5,
(Docs. 79, 83, 84).
A surface contact self-sealing integrated tableware and
dining mat comprising a rubberlike planar portion having a
raised perimeter delimiting at least one concavity
surrounding at least one receptacle above an upper surface
and an entirely suffuse undersurface upon which said mat is
disposed, said sealable contact preventative of lateral
displacement of the planar portion across the underlying
surface, wherein said sealable contact creates a partial
vacuum when attempts to separate the undersurface from the
underlying surface are made except at an outer edge of the
planar portion, whereby removal of the planar portion from
the underlying surface is effective only be peeling the
undersurface from the underlying surface starting first at
the outer edge.
The surface contact self-sealing integrated tableware and
dining mat of claim 1 wherein the planar portion extends
laterally beyond the raised perimeter whereby the planar
portion extends surrounding the at least one concavity.