United States District Court, W.D. Louisiana, Monroe Division
MICHAEL L. McGINLEY, ET AL.
LUV N' CARE, LTD., ET AL.
L. HAYES MAG. JUDGE
MEMORANDUM OPINION AND ORDER ON CLAIM
A. DOUGHTY UNITED STATES DISTRICT JUDGE
April 3, 2019, the Court held a hearing to determine the
proper construction of the disputed claim terms in United
States Patent No. 8, 636, 178 (“the '178
Patent”). Having considered the arguments made by the
parties at the hearing and in the parties'
having considered the intrinsic evidence, and having made
subsidiary factual findings about the extrinsic evidence, the
Court hereby issues this Claim Construction Memorandum and
Order. See Phillips v. AWH Corp., 415 F.3d 1303,
1314 (Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S.Ct. 831, 841 (2015).
'178 Patent was filed on October 22, 2008, issued on
January 28, 2014, and is directed to a container or pitcher
“having a flexible side wall portion and rim portion .
. . which can conform to the shape of an object.”
'178 Patent at Abstract. The specification indicates that
the primary purpose of the container is for rinsing shampoo
or soap from the head of a child. Id. at 2:57-63.
Figures 3 and 6 illustrate different embodiments of the
container with and without divider 40.
at Figs. 3 & 6. The specification states that the
container has continuous sidewalls (12) with one of the
sidewalls having a sidewall portion (24) with a flexible
panel portion (28). Id. at 4:4- 61. The
specification further states that the flexible panel portion
is constructed of a thin flexible plastic or a flexible
rubber panel that is capable of conforming to the shape of
the head of a child. Id. at 4:43-61. In operation,
the flexible panel portion is pressed against the front of
the head above the eyes and the rinse water pours over the
top of the head. Id. at 2:57-63. The specification
indicates that the flexible panel portion prevents the rinse
water from flowing into the child's eyes or face.
illustrated above, the specification discloses embodiments of
the container without a divider (Figure 3) and with a divider
(Figure 6). Id. at 3:29-34, 3:42-46, Figs. 3 &
6. The specification states that the divider is provided so
that the rinse water flows over the head more evenly.
Id. at 7:11-18. Figure 9 illustrates an embodiment
having a sidewall section that is shown to be flat with a
flat flexible panel (28) flexed slightly inward.
at Fig. 9. As illustrated in Figure 9, this embodiment also
includes “a generally curved divider panel (50) which
separates container (10) into two fluid holding
compartments.” Id. at 6:58-59.
specification discloses that “that the curvature of
panel (50) thereby directs the fluid contained in second
compartment (44) generally onto the center of the head of the
child and avoids even distribution of the water across the
width of curved divider panel (50) as the water is being
poured out of second compartment (44).” Id. at
of the '178 Patent recite the following elements
(disputed term in italics):
a generally continuous sidewall terminating in an upper
sidewall end and a lower sidewall end and defining an inward
fluid holding space bounded by said continuous sidewall, said
continuous sidewall having a flexible portion thereof that
defines a generally flat sidewall section and a
generally non flexible portion joined on either end to the
flexible portion, a bottom closing said lower sidewall end
with said upper sidewall generally flat sidewall section end
being generally open,
a generally flat inwardly flexible panel forming a
portion of said generally flat sidewall section and
extending to form at least a portion of said upper sidewall
end, the flexible panel facing outwardly and being sized,
shaped and sufficiently pliable to matingly mold to the head
of a person during use; said flexible panel having a
generally smooth inward surface for unobstructed fluid flow
out of said open upper sidewall end, and
a handle located on the non flexible portion
opposite the flexible panel to allow a user to lift and pour
the container when filled with liquid.
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, 415 F.3d at 1312 (quoting Innova/Pure
Water Inc. v. Safari Water Filtration Sys., Inc., 381
F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning
of the claims, courts start by considering the intrinsic
evidence. Id. at 1313; C.R. Bard, Inc. v. U.S.
Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004);
Bell Atl. Network Servs., Inc. v. Covad Commc'ns
Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The
intrinsic evidence includes the claims themselves, the
specification, and the prosecution history.
Phillips, 415 F.3d at 1314; C.R. Bard,
Inc., 388 F.3d at 861. The general rule-subject to
certain specific exceptions discussed infra-is that
each claim term is construed according to its ordinary and
accustomed meaning as understood by one of ordinary skill in
the art at the time of the invention in the context of the
patent. Phillips, 415 F.3d at 1312-13; Alloc,
Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368
(Fed. Cir. 2003); Azure Networks, LLC v. CSR PLC,
771 F.3d 1336, 1347 (Fed.Cir. 2014), vacated on other
grounds 135 S.Ct. 1846 (2015) (“There is a heavy
presumption that claim terms carry their accustomed meaning
in the relevant community at the relevant time.”)
claim construction inquiry . . . begins and ends in all cases
with the actual words of the claim.” Renishaw PLC
v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248
(Fed. Cir. 1998). “[I]n all aspects of claim
construction, ‘the name of the game is the
claim.'” Apple Inc. v. Motorola, Inc., 757
F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)). First, a
term's context in the asserted claim can be instructive.
Phillips, 415 F.3d at 1314. Other asserted or
unasserted claims can also aid in determining the claim's
meaning because claim terms are typically used consistently
throughout the patent. Id. Differences among the
claim terms can also assist in understanding a term's
meaning. Id. For example, when a dependent claim
adds a limitation to an independent claim, it is presumed
that the independent claim does not include the limitation.
Id. at 1314-15.
‘must be read in view of the specification, of which
they are a part.'” Id. (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967,
979 (Fed. Cir. 1995) (en banc)). “[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.'”
Id. (quoting Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996));
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough
the specification may aid the court in interpreting the
meaning of disputed claim language, particular embodiments
and examples appearing in the specification will not
generally be read into the claims.'” Comark
Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187
(Fed. Cir. 1998) (quoting Constant v. Advanced
Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
1988)); see also Phillips, 415 F.3d at 1323.
“[I]t is improper to read limitations from a preferred
embodiment described in the specification-even if it is the
only embodiment-into the claims absent a clear indication in
the intrinsic record that the patentee intended the claims to
be so limited.” Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
prosecution history is another tool to supply the proper
context for claim construction because, like the
specification, the prosecution history provides evidence of
how the U.S. Patent and Trademark Office (“PTO”)
and the inventor understood the patent. Phillips,
415 F.3d at 1317. However, “because the prosecution
history 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.” Id. at 1318; see also Athletic
Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580
(Fed. Cir. 1996) (ambiguous prosecution history may be
“unhelpful as an interpretive resource”).
extrinsic evidence can also be useful, it is
“‘less significant than the intrinsic record in
determining the legally operative meaning of claim
language.'” Phillips, 415 F.3d at 1317
(quoting C.R. Bard, Inc., 388 F.3d at 862).
Technical dictionaries and treatises may help a court
understand the underlying technology and the manner in which
one skilled in the art might use claim terms, but technical
dictionaries and treatises may provide definitions that are
too broad or may not be indicative of how the term is used in
the patent. Id. at 1318. Similarly, expert testimony
may aid a court in understanding the underlying technology
and determining the particular meaning of a term in the
pertinent field, but an expert's conclusory, unsupported
assertions as to a term's definition are entirely
unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its
prosecution history in determining how to read claim
terms.” Id. The Supreme Court recently
explained the role of extrinsic evidence in claim
In some cases, however, 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. See, e.g., Seymour
v. Osborne, 11 Wall. 516, 546 (1871) (a patent may be
“so interspersed with technical terms and terms of art
that the testimony of scientific witnesses is indispensable
to a correct understanding of its meaning”). In cases
where those subsidiary facts are in dispute, courts will need
to make subsidiary factual findings about that extrinsic
evidence. These are the “evidentiary
underpinnings” of claim construction that we discussed
in Markman, and this subsidiary factfinding must be
reviewed for clear error on appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct.
831, 841 (2015).
Departing from the Ordinary Meaning of a Claim Term
are “only two exceptions to [the] general rule”
that claim terms are construed according to their plain and
ordinary meaning: “1) when a patentee sets out a
definition and acts as his own lexicographer, or 2) when the
patentee disavows the full scope of the claim term either in
the specification or during prosecution.” Golden Bridge Tech.,
Inc. v. Apple Inc., 758 F.3d 1362, 1365 (Fed. Cir. 2014)
(quoting Thorner v. Sony Computer Entm't Am.
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)); see also
GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d
1304, 1309 (Fed. Cir. 2014) (“[T]he specification and
prosecution history only compel departure from the plain
meaning in two instances: lexicography and
disavowal.”). The standards for finding lexicography or
disavowal are “exacting.” GE Lighting
Solutions, 750 F.3d at 1309.
act as his own lexicographer, the patentee must
‘clearly set forth a definition of the disputed claim
term,' and ‘clearly express an intent to define the
term.'” Id. (quoting Thorner, 669
F.3d at 1365); see also Renishaw, 158 F.3d at 1249.
The patentee's lexicography must appear “with
reasonable clarity, deliberateness, and precision.”
Renishaw, 158 F.3d at 1249.
disavow or disclaim the full scope of a claim term, the
patentee's statements in the specification or prosecution
history must amount to a “clear and unmistakable”
surrender. Cordis Corp. v. Boston Sci. Corp., 561
F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner,
669 F.3d at 1366 (“The patentee may demonstrate intent
to deviate from the ordinary and accustomed meaning of a
claim term by including in the specification expressions of
manifest exclusion or restriction, representing a clear
disavowal of claim scope.”). “Where an
applicant's statements are amenable to multiple
reasonable interpretations, they cannot be deemed clear and
unmistakable.” 3M Innovative Props. Co. v. Tredegar
Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013); see
also Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040,
1045 (Fed. Cir. 2016) (“When the prosecution history is
used solely to support a conclusion of patentee disclaimer,
the standard for justifying the conclusion is a high
a statement of lexicography or disavowal must be exacting and
clear, it need not be “explicit.” See Trs. of
Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1364
(Fed. Cir. 2016) (“a patent applicant need not
expressly state ‘my invention does not include X'
to indicate his exclusion of X from the scope of his
patent”). Lexicography or disavowal can be implied
where, e.g., the patentee makes clear statements
characterizing the scope and purpose of the invention.
See On Demand Mach. Corp. v. Ingram Indus., Inc.,
442 F.3d 1331, 1340 (Fed. Cir. 2006) (“[W]hen the scope
of the invention is clearly stated in the specification, and
is described as the advantage and distinction of the
invention, it is not necessary to disavow explicitly a
different scope.”). Nonetheless, the plain meaning
governs “[a]bsent implied or explicit lexicography or
disavowal.” Trs. of Columbia Univ., 811 F.3d
at 1364 n.2.
LEVEL OF ORDINARY SKILL IN THE ART
well established that patents are interpreted from the
perspective of one of ordinary skill in the art. See
Phillips, 415 F.3d at 1313 (“[T]he ordinary and
customary meaning of a claim term 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.”). The
Federal Circuit has advised that the “[f]actors that
may be considered in determining the level of skill in the
art include: (1) the educational level of the inventors; (2)
the type of problems encountered in the art; (3) prior art
solutions to those problems; (4) the rapidity with which
innovations are made; (5) sophistication of the technology;
and (6) education level of active workers in the
field.” Env'tl Designs, Ltd. v. Union Oil Co.
of California, 713 F.2d 693, 696 (Fed. Cir. 1983).
“These factors are not exhaustive but are merely a
guide to determining the level of ordinary skill in the
art.” Daiichi Sankyo Co. Ltd. v. Apotex, Inc.,
501 F.3d 1254, 1256 (Fed. Cir. 2007).
suggest that the level of ordinary skill in the art is
“that level of skill possessed by an ordinary
individual having at least a high school education or the
equivalent, with knowledge and experience of household and
consumer goods like the rinse cup products at issue and
familiarity with plastic, rubber, foam and other flexible
materials as of February 2003. The level of ordinary skill
does not require any ‘formal' education or
licensure as an engineer or design professional, or a degree
in mechanical engineering or product or mechanical
design.” [Doc. No. 218 at 1].
contend that “a person of ordinary skill and a person
of skill in that art would be a person with either (1) a
mechanical engineering or design degree and two years actual
product experience or (2) a person with no formal degree who
had at least five years of practical experience in mechanical
or product design of consumer products.” [Doc. No. 223
considered the parties' proposals, and the factors that
may be considered in determining the level of skill in the
art, the Court finds that a person of ordinary skill in the
art would have either: (1) a Bachelor's degree in
Mechanical Engineering or equivalent thereof, and at least
two years of experience designing consumer products, or (2)
familiarity with plastic, rubber, foam and other flexible
materials, and at least five years of experience designing
CONSTRUCTION OF DISPUTED TERMS
parties' dispute focuses on the meaning and scope of five
terms/phrases of the '178 Patent.
“including but not limited to”
No construction provided by Defendants
The Parties' Positions
argue that the word “comprising” as used in the
claims means “including but not limited to.”
[Doc. No. 136-33 at 24-25] (citing McGinley v. Munchkin,
Inc., No. 09-257, 2010 WL 128053 (W.D. Mo., Apr. 2,
2010); In re Skvorecz, 580 F.3d 1262, 1267 (Fed.
Cir. 2009)). According to Plaintiffs,
“comprising” simply means that a device
“may contain elements in addition to those explicitly
mentioned in the claim.” [Id. at 25].
Defendants do not provide any arguments related to the term
“comprising, ” or provide a proposed
construction. [Doc. No. 223 at 2].
patent claim has three major sections: (1) a preamble; (2) a
transitional phrase; and (3) a body. Transitional phrases,
such as “comprising, ” “consisting of,
” and “consisting essentially of, ” are
terms of art in patent law that “define the scope of
the claim with respect to what unrecited additional
components or steps, if any, are excluded from the scope of
the claim.” Manual Of Patent Examining Procedure §
2111.03. Here, the claims use the transitional phrase
“comprising.” See, e.g., '178 Patent
at 8:23 (Claim 1: “A container comprising:”),
8:52 (Claim 6: “A container comprising:”).
well established that the transitional phrase
“comprising, ” is inclusive or open-ended and
does not exclude additional, unrecited elements or method
steps. Genentech, Inc. v. Chiron Corp., 112 F.3d
495, 501 (Fed. Cir. 1997) (“‘Comprising' is a
term of art used in claim language which means that the named
elements are essential, but other elements may be added and
still form a construct within the scope of the
claim.”). Specifically, “[i]n the patent claim
context the term ‘comprising' is well understood to
mean ‘including but not limited to.'”
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