Opinion
Civil Action 20-cv-01318-NYW
09-08-2021
ALL PLASTIC, INC., Plaintiff, v. SAMDAN LLC, d/b/a Smokus Focus, a/b/a Smokusfocus.com, SAMUEL WHETSEL, individually and as a member of Sam Dan LLC, and DANIEL RUSSELL-EINHORN, individually and as a member of Sam Dan LLC, Defendants.
CLAIM CONSTRUCTION ORDER
Nina Y. Wang United States Magistrate Judge
This civil action is before the court on the Parties' Joint Motion for Determination [Doc. 97] after the completion of claim construction briefing by Defendants SamDan LLC (“SamDan”), Samuel Whetsel (“Mr. Whetsel”), and Daniel Russell-Einhorn (“Mr. Russell-Einhorn”) (with Mr. Whetsel, “Individual Defendants” and collectively, “Defendants”) [Doc. 79, Doc. 96] and Plaintiff All Plastic, Inc.'s (“Plaintiff” or “All Plastic”) [Doc. 93] and oral argument on July 2, 2021 [Doc. 103]. In addition, Defendants filed a Notice of Supplemental Authority on September 3, 2021. [Doc. 119, Doc. 119-1]. This court fully presides over this matter pursuant to 28 U.S.C. § 636(c) and the Order of Referral dated August 10, 2020 [Doc. 24]. Having carefully reviewed the briefing and the arguments offered by the Parties at the July 2 Markman hearing, and applicable law, the court construes the disputed terms as follows.
BACKGROUND
All Plastic is the assignee of U.S. Patent No. 10, 384, 834 (the “'834 Patent” or “Patent-in-Suit”), issued on August 20, 2019 from Application No. 15/464, 82. [Doc. 1-1]. The Patent-in-Suit is titled “Container for Providing Aromatic Sampling and Visualization of Contents” and names William Thomas Smith (“Mr. Smith”) and Cheryl Ann Smith (“Ms. Smith”) (collectively, “Patentees, ” “Applicants, ” and/or “Inventors”) as inventors. [Id.]. The '834 Patent claims embodiments of a container for displaying, visualizing, and aroma sampling of botanical materials. [Id. at Abstract]. In describing the need for the invention, the patentee stated that while display containers are known in the prior art, “display containers that permit adequate storage, preservation, and presentation of botanical samples, such as cannabis, are not adequately described or available.” [Id. at col. 1, ll. 26-29].
The Patent-in-Suit is a continuation-in-part (“CIP” of United States Patent Application No. 14/701, 961 that matured into United States Patent No. 9, 630, 747 (“'747 Patent”). A CIP is “an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the earlier nonprovisional application.” Manual of Patent Examining Procedure (“MPEP”) § 201.08 (9th ed. Jan. 2018). Therefore, the specifications of the two patents overlap, but are not identical.
In citing to a Patent-in-Suit, the court cites to the document number generated by the court's CM/ECF filing system but the column and line numbers assigned by the Patent.
Ms. Smith is also Vice President of Plaintiff. [Doc. 101 at ¶ 1].
To address these identified deficiencies, the Inventors claim a container for the displaying, visualizing and aroma sampling of botanical materials that permit stabilization and magnification of a portion of a sample material. [Id. at col. 1, ll 33-38]. The disclosed invention has container body with an interior surface and exterior surface, and are shaped to define an open top and bottom. [Id. at col. 6, ll. 53-55]. In addition, although the shape may vary, “for any given container body shape, the perimeter of the lid will correspond to the perimetrical ridge of the container 5 body, such that the lid is fitted on the perimetrical ridge of said container body forming a chamber.” [Id. at col. 7, ll. 4-7]. The lids of the claimed container are shaped to define a recessed area that include a plurality of scent openings within the recessed area, and may also include a lens for viewing the botanical sample. [Id. at col. 6, ll. 65-67]. One embodiment of the invention is depicted in the drawing below:
Image Omitted[Doc. 1-1 at fig. 10].
All Plastic asserts a single cause of action, but multiple theories of patent infringement, i.e., by making, using, offering to sell, selling, importing, and exporting the JetPack containers, Defendants have thereby directly infringed, and have induced others to infringe, the Patent either literally or under the doctrine of equivalents pursuant to 35 U.S.C. § 271. See generally Doc. 1]. All Plastic also claims that Defendants have willfully, deliberately, and intentionally infringed one or more claims of the Patent. [Id.].
This court recently denied All Plastic's Motion to Amend, seeking to include additional accused products. [Doc. 113].
LEGAL STANDARD
“[T]he construction of a patent, including terms of art within its claim, is exclusively within the province of the court.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996); see also id. at 384 (“The two elements of a simple patent case [include] construing the patent and determining whether infringement occurred The first is a question of law, to be determined by the court, [and] [t]he second is a question of fact, to be submitted to a jury.” (footnote and internal quotation marks omitted; ellipsis and brackets added)). “The purpose of claim construction is to determine the meaning and scope of the patent claims asserted to be infringed.” O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (internal brackets and quotation marks omitted). “In construing patent claims, courts are guided by the precedent of the Federal Circuit.” Frac Shack Inc. v. Fuel Automation Station, LLC, 300 F.Supp.3d 1333, 1338 (D. Colo. 2018) (citing SunTiger, Inc. v. Sci. Research Funding Grp., 189 F.3d 1327, 1333 (Fed. Cir. 1999)).
When construing the words of a claim, courts are to give those words their ordinary and customary meaning. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Indeed, courts “indulge a heavy presumption that a claim term carries its ordinary and customary meaning.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (internal quotation marks omitted). In certain circumstances, plain and ordinary meaning will control and the court need not expressly construe the term. This is true even if the Parties disagree as to the plain and ordinary meaning, because courts determine the “plain and ordinary meaning” of a patent term not by stipulation of the parties but by what a person of ordinary skill in the art at the time of the invention would understand the term to mean. Stryker Corp. v. Zimmer, Inc., 837 F.3d 1268, 1272 (Fed. Cir. 2016) (citing Phillips, 415 F.3d at 1313). And courts should consider this meaning “in the context of the entire patent, including the specification” of which the claims are a part. See Trustees of Columbia Univ. in City of NY v. Symantec Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016). This is because the specifications provide the “best guide” as to the meaning of a disputed term, but the court will not “import limitations from the specification into the claims.” Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (internal quotation marks omitted). Exceptions to this rule apply when (1) “a patentee sets out a definition and acts as his own lexicographer” or (2) “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).
Although neither party defines the person of ordinary skill in the art in the respective claim construction briefing, the papers indicate that the Parties do not propose different constructions based on a disagreement over the level of skill of a person of ordinary skill in the art. Thus, the court need not define the person of ordinary skill in the art before proceeding with construing any disputed term or phrase.
Courts may employ intrinsic as well as extrinsic evidence when construing patent claims. Intrinsic evidence includes the patent, its claims, its specifications, and, if available, its prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Intrinsic evidence “is the most significant source of the legally operative meaning of disputed claim language.” Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1372 (Fed. Cir. 2001) (internal quotation marks omitted). Under certain circumstances, courts may utilize extrinsic evidence, including expert and inventor testimony, dictionaries, and treatises. See Takeda Pharm. Co. Ltd. v. Zydus Pharm. USA, Inc., 743 F.3d 1359, 1363 (Fed. Cir. 2014). But “while extrinsic evidence can shed useful light on the relevant art, . . . it is less significant than the intrinsic record in determining the legally operative meaning of claim language.” Netcraft Corp. v. eBay, Inc., 549 F.3d 1394, 1397 (Fed. Cir. 2008) (internal quotation marks omitted; ellipsis added).
Finally, a court construes claims without regard to the accused device. See Optical Disc. Corp v. Del Mar Avionics, 208 F.3d 1324, 1333 (Fed. Cir. 2000). Accordingly, to the extent that the Parties made arguments about whether certain elements of the invention are found within any device offered by Plaintiff or Defendants, or sought to use any such device as a demonstrative (such as during oral argument), this court disregards such arguments.
ANALYSIS
The Parties identify seven phrases for this court to construe: (1) “said container body is shaped to define a perimetrical ridge surrounding said open top”; (2) “said lid is shaped to define a perimeter”; (3) “a lens affixed to the lid”; (4) “said lid is fitted on the perimetrical ridge forming a chamber”; (5) “said plug forms an airtight seal between said plug and said lid completely sealing said chamber”; (6) “tether affixed to the container body”; and (7) “said lid and said container body are comprised of poly(methyl methacrylate).” [Doc. 68, Doc. 79, Doc. 93; Doc. 96]. The court construes the disputed phrases, in the order presented in the Joint Disputed Claim Terms Chart, as follows.
Originally, the Parties also identified “a removable soft plug” as a disputed term for construction, but Defendants withdrew their request for construction.
The briefing by the Parties does not follow the order of the Joint Disputed Claim Terms Chart. [Doc. 68]. For purposes of clarity, this court follows the order set forth in the Joint Dispute Claim Terms Chart.
I. Said Container Body is Shaped to Define a Perimetrical Ridge Surrounding Said Open Top
Plaintiff's Proposal
Defendants' Proposal
Court Construction
No construction necessary
The surface of the container body integrally forms a raised strip adjacent a shoulder, on the
Said container body is shaped to define a raised
Alternatively: said container body is shaped to define an elevated structure or raised strip surrounding said open top
perimeter of the container body, that encircle the open top
strip surrounding said open top
The phrase “said container body is shaped to define a perimetrical ridge surrounding said open top” appears in independent claims 1 and 11 of the '834 Patent. Defendants urge this court to construe the disputed phrase because the meaning of “perimetrical ridge” is not readily apparent, and because the “import of the phrase ‘shaped to define' must be determined.” [Doc. 79 at 9]. Defendants contend that the “shaped to define” means that the “perimetrical ridge” (1) cannot simply be a “mere rim or top edge of the contained which is an inherent feature of any vessel, ” and (2) the container body integrally forms a raised strip adjacent to the shoulder. [Doc. 79 at 1011]. To resolve these two issues, Defendants proffer the construction of “the surface of the container body integrally forms a raised strip adjacent a shoulder on the perimeter of the container body, that encircle the open top.” [Doc. 79 at 8]. Plaintiff counters that the phrase need not be construed, because a person of ordinary skill in the art would understand its meaning. [Doc. 93 at 8]. To the extent that the court determines a construction is necessary, Plaintiff offers “said container body is shaped to define an elevated structure or raised strip surrounding said open top.” [Id.].
The Parties each amended their proposed constructions from the time of the filing of the Joint Disputed Claim Terms Chart to their respective briefs. Compare [Doc. 68] with [Doc. 79, Doc. 93, Doc. 96].
As an initial matter, this court respectfully disagrees that the import of the phrase “shaped to define” is ambiguous and must be further defined. Indeed, Defendants offer no authority to suggest that any court has found that terminology vague or ambiguous or that the use of “shaped to define” necessarily triggers the need to construe a claim. In examining the claim language and the specification, this court concludes that both indicate that the container body itself is shaped to define a distinct “perimetrical ridge” - just as the container body is also shaped to define other parts of the invention such as an open top, bottom, a front, a back, a first side, a second side, and a plurality of feet. See [Doc. 1-1 at claims 1, 11; col. 2, ll.38-42]. This court respectfully finds that any further construction of “is shaped to define” is unnecessary.
The Parties appear to agree that the “ridge” is a raised strip encircling or surrounding an open top. [Doc. 68 at 2]. But Defendants' proposed construction seeks to add an element of a “shoulder, ” which does not appear anywhere in the claim language, specification, or prosecution history. To the extent that Defendants seek to import limitations from the Figures and embodiments of the specification which is impermissible. As recognized by the United States Court of Appeals for the Federal Circuit (“Federal Circuit”), “the distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice.” Phillips, 415 F.3d at 1323. Here, the claim language, specification, and prosecution history of the '834 Patent do not evidence an intention by the Patentees to make the claims and the embodiments in the specification strictly coextensive. Id. To the contrary, at the end of the written description immediately before the claims, the Patentees expressly state “the foregoing disclosure should be interpreted as illustrative only and is not to be interpreted in a limiting sense.” [Doc. 1-1 at col. 7, ll. 14-16]. Thus, this court respectfully declines to introduce limitations into the claim language that are not supported by either the intrinsic or appropriate extrinsic evidence in the record.
This court declines to consider the Cuneo Declaration submitted as Exhibit 1 to Defendants' Reply. Defendants cite no authority, and this court found none, that permits the court to consider the proffered extrinsic evidence, including but not limited to photographs taken by counsel and attorney argument, for the purposes of claim construction.
Similarly, the addition of the phrases “surface of the container body” and “on the perimeter of the container body” are unhelpful at best, introducing potential vagueness rather than clarity to the disputed phrase. Cf Mouldtec, Inc. v. Pagter & Partners Int'l B.V., No. 12 C 4249, 2014 WL 4262633, at *4 (N.D. Ill. June 4, 2014) (rejecting the defendant's proposed construction of ridges as unnecessary due to their unhelpfulness). To the extent that Defendants insist that these additional elements are necessary to create a sealed chamber to achieve the object of the invention [Doc. 79 at 10], this court observes that this is but one term in greater claims, and “interpretations that render some portion of the claim language superfluous are disfavored.” SimpleAir, Inc. v. Sony Ericsson Mobile Commc'ns AB, 820 F.3d 419, 429 (Fed. Cir. 2016).
Accordingly, this court construes the phrase “said container body is shaped to define a perimetrical ridge surrounding said open top” to mean “said container body is shaped to define a raised strip surrounding said open top.”
II. Said Lid is Shaped to Define a Perimeter
Plaintiff's Proposal
Defendants' Proposal
Court Construction
No construction is necessary
The surface of the lid integrally forms an edge, which conforms to the raised portion and shoulder
No construction necessary
The phrase “said lid is shaped to define a perimeter” appears in independent claims 1 and 11. Defendants contend that this term must be construed to clarify the scope of the claims for the same reasons as stated above with respect to “said container body is shaped to define a perimetrical ridge surrounding said open top.” [Doc. 79 at 12; Doc. 96 at 7-8]. For the reasons as set forth above, this court finds that “shaped to define” does not require further construction and “shoulder” is an improperly added limitation to the claim language. In addition, nothing in the disputed claim language, specification, or prosecution history justifies Defendants' proposed substitution of the word “edge” instead of the plain and ordinary meaning of perimeter. Defendants' proposed construction again tends to render another disputed claim term - “said lid fitted on the perimetrical ridge forming a chamber” - superfluous.
Thus, this court finds that no construction is necessary with respect to “said lid is shaped to define a perimeter.”
III. A Lens Affixed to the Lid
Plaintiff's Proposal
Defendants' Proposal
Court Construction
No construction necessary Alternatively, a magnification lens attached to the lid
A planoconvex lens attached to the lid
A dedicated, high-quality magnification lens attached to the lid
“A lens affixed to the lid” appears in both independent claims 1 and 11. Defendants contend that because of the prosecution history of the Patent-in-Suit, this phrase must be construed as “a planoconvex lens attached to the lid.” [Doc. 68 at 3; Doc. 79 at 14; Doc. 96 at 10-11]. Plaintiff argues that no construction is necessary, and to the extent that a construction is necessary, the term “lens” means a “magnification lens, ” such that “a lens affixed to the lid” means “a magnification lens attached to the lid.” [Doc. 68 at 3; Doc. 93 at 19-21]. Before proceeding, this court considers what is actually in dispute between the Parties. There seems to be no dispute that the term “affixed” means “attached.” Compare [Doc. 79 at 14] with [Doc. 93 at 19]. Nor does there appear to be a dispute over “to the lid.” Id. Thus, the relevant term for construction is “lens.”
This court begins with considering the plain and ordinary meaning of “lens.” The plain and ordinary meaning of “lens” contemplates some type of curvature of transparent material. See e.g., https://www.oed.com/view/Entry/107288?rskey=H4f3BY&result=1&isAdvanced=false#eid (“A piece of glass, or other transparent substance, with two curved surfaces, or one plane and one curved surface, serving to cause regular convergence or divergence of the rays of light passing through it.”); https://www.merriam-webster.com/dictionary/lens (“a piece of transparent material (such as glass) that has two opposite regular surfaces either both curved or one curved and the other plane and that is used either singly or combined in an optical instrument for forming an image by focusing rays of light”); https://www.ahdictionary.com/word/search.htmPqMens (“A ground or molded piece of glass, plastic, or other transparent material with opposite surfaces either or both of which are curved, by means of which light rays are refracted so that they converge or diverge to form an image.”); https://www.dictionary.com/browse/lens (“[A] piece of transparent substance, usually glass, having two opposite surfaces either both curved or one curved and one plane, used in an optical device in changing the convergence of light rays, as for magnification, or in correcting defects of vision.”).
Defendants contend that “lens” must be construed to be “the dedicated high-quality lens with a particular curvature, optical power, shape, and so on, as argued by the patent owners” based on the prosecution history of the '834 Patent. [Doc. 68 at 3; Doc. 79 at 16]. They argue that the only lens contemplated by the '834 Patent is a plano-convex lens such as ‘Lens Doc. 90-1235 manufactured by J.P. Manufacturing which can be a 1x, 2x, 3x, magnifier.” [Id.]. Thus, Defendants' propose that the disputed phrase be construed as “a planoconvex lens attached to the lid.” [Doc. 79 at 14]. Plaintiff concurs that the prosecution history requires the lens to be a magnifier. [Doc. 93 at 21]. But Plaintiff counters that such “magnification lens” is not limited to the exact embodiment described in the specification, because the Applicants did not “clearly and unequivocally” disavow the full scope of “lens.” [Doc. 93 at 21]. On Reply, Defendants argue that the role of the prosecution history is not limited to clear disavowals, but also to informing the proper construction of a term short of disavowal. [Doc. 96 at 10]. To that end, Defendants urge this court to construe the term lens to require specifics beyond simple magnification, i.e., a “planoconvex lens” as disclosed. [Id.].
As acknowledged by all Parties, the prosecution history plays an important role in the construction of claim terms. [Doc. 79 at 14 (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 723 (2002)); Doc. 93 at 20 (citing Phillips, 415 F.3d at 1317); Doc. 96 at 10 (citing Personalized Media Commc'ns, LLC v. Apple Inc., 952 F.3d 1336, 1340 (Fed. Cir. 2020))]. “The prosecution history can inform the meaning of 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 narrower than it would otherwise be.” SpeedTrack, Inc. v. Amazon.com, 998 F.3d 1373, 1377 (Fed. Cir. 2021) (quoting Phillips, 415 F.3d at 1312-13). Courts considering whether a patentee has surrendered claim scope through the prosecution of the patent look for a “clear and unmistakable disavowal.” Id. (citing Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1324 (Fed. Cir. 2009)). The doctrine of prosecution history disclaimer precludes a patentee from re-capturing claim scope it has surrendered to obtain the patent in the first instance. Id. at 1380 (citations and internal quotation marks omitted) (“Ultimately, the doctrine of prosecution disclaimer ensures that claims are not construed one way in order to obtain their allowance and in a different way against accused infringers.”).
The Patent-in-Suit was originally filed on March 21, 2017, with 20 claims. [Doc. 79-2 at 102]. On January 24, 2018, the United States Patent and Trademark Office Examiner (“Examiner”) issued a non-final rejection, as to all the claims. [Id. at 100-110]. The Examiner found that the original claims 1, 2, 5-12, and 15-20 were obvious in light of Bean et al (US 2016/0031605) [Doc. 79-7] in view of Burnett et al (U.S. Patent No. 4, 230, 231). The only element that the Examiner found not to be taught by Bean was “a removable soft plug shaped to fit within said recessed area forming an airtight seal; wherein said plug forms an airtight seal between said plug and said lid completely sealing said chamber.” [Id. at 105]. Specific to the lens, the Examiner stated that Bean taught a container with a lens (116) affixed to the lid to cover a viewing opening on the lid [Doc. 79-2 at 104 ¶ 9]:
Image Omitted[Doc. 79-7, Fig. 1].
On July 24, 2018, the Applicants responded to the Examiner's non-final rejection with an Amendment. [Doc. 79-2 at 79-90]. In responding, the Applicants distinguished the lens from Bean, Schofield and/or Burnett by arguing that each did not teach or suggest a “lens affixed to the lid to cover said viewing opening on said lid, herein said lens forms an airtight seal between said lens and said lid.” [Doc. 79-2 at 86]. They further argued that “window” of Bean was not enabled because the disclosure provided no specifics of how the window was shaped to operate as a lens. [Id. at 86-87]. The Applicants' third argument focused upon the characteristic of the lens, i.e., even if Bean was considered to have an enabled lens, claim 1 of the Application requires “a dedicated high-quality lens, ” and again, the placement of the lens, i.e., “it is not affixed within viewing opening 85.” [Id.]. No amendments were made to the actual language of the claim with respect to “lens.” See e.g., [id. at 80].
It does not appear that the Examiner specifically addressed Schofield in the January 24 non-final rejection. See [Doc. 79-2 at 100-110].
On December 14, 2018, the Examiner issued a Final Rejection as to claims 1-20. [Doc. 79-2 at 55-61]. The Examiner did not address the Applicants' arguments with respect to “lens” specifically. [Id.]. Consistent with the Examiner's Final Rejection, the Applicants did not address lens in their Reply to the Office Action dated March 4, 2019. [Id. at 45-52]. Nor were there any amendments to the claim language regarding the term “lens.” [Id.]. Nor were there amendments to the lens portion of any drawings. [Id. at 52]. The Examiner then allowed claims 1-20 [id. at 11], and the '834 Patent issued on August 20, 2019. [Id. at 1].
The Examiner did not expressly address what portion of Defendants' Response traversed her non-final rejection as to the “lens” of Bean. But an examination of Bean reference itself, as well as the plain and ordinary meaning of “lens, ” leads this court to the following conclusions. First, despite the applicant's argument that “Bean's lens” is a “window” [Doc. 79-2 at 88], it is clear that Bean discloses a first embodiment with a window (116) that is shaped so that it acts as a magnifying lens. [Doc. 79-7 at 11 at ¶ 0022 (emphasis added)]. Bean explains that “[t]his allows a potential customer to view a magnified image of the sample material and see small details that would not be as easily distinguished with the naked eye.” [Id.]. Bean further discloses a second embodiment with a top window made from transparent material, at least a portion of which is shaped into a magnifying lens. [Id. at 12 ¶ 0034 (emphasis added)]. Dependent claim 11 of Bean claims the device of claim 1, “where in [sic] the transparent window comprises a magnifying lens.” [Id. at 13 (emphasis added)]. As discussed in detail below, Plaintiff concedes that “comprises” is an open-ended term that is understood to include but not limit. See T.J. Smith & Nephew Ltd. v. Parke, Davis & Co., 871 F.2d 1098 (Fed. Cir. 1989) (“The open-ended connotation of ‘comprises' in patent law has long been recognized. It has become a term of art.”). This court concludes that the “magnifying lens” of Bean is a subset of a broader category, rather than mutually exclusive, of “window” as Plaintiff suggests, and that the “lens” of Bean is “shaped.” The relevant distinction drawn from the Applicants' first argument appears to be directed not at the lens itself, upon the manner it is attached to the lid [Doc. 79-2 at 86 (emphasis added)] - thus, not particularly relevant to the court's construction of the disputed term at issue.
Next, the patentees argued that the magnifying lens disclosed in Bean was not enabled, and thus, not prior art. [Doc. 79-2 at 86-87]. “A claimed invention cannot be anticipated by a prior art reference if the allegedly anticipatory disclosures cited as prior art are not enabled, ” and a patent examiner is permitted to reject application claims without conducting an inquiry into whether or not the patent is enabled. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003) (citations omitted). But the Examiner did not reject the application as anticipated by Bean, but rather, as part of an obviousness rejection. Contrary to anticipation, “a nonenabling reference can potentially qualify as prior art for the purpose of determining obviousness.” See I/P Engine, Inc. v. AOL Inc., 576 Fed.Appx. 982, 988-89 (Fed. Cir. 2014). In addition, the Federal Circuit has held that enablement concerns do not justify departing from the plain and ordinary meaning of a term and where the meaning of a claim term is clear, courts do not rewrite the claim to preserve its validity. See Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1374 (Fed. Cir. 2014) (citation omitted). Thus, the issue of enablement - and the statements made by the Applicants with regard to the lack of enablement of Bean - also appear inapposite to construing the term “lens” as it is used in the '834 Patent.
Finally, this court turns to the Applicants' final argument to overcome Bean, i.e., “[e]ven assuming, arguendo, Bean could be considered to have an enabled lens, the Applicants' present Claim 1 includes elements and limitations absent from Bean. Applicants' Claim 1 requires a dedicated high-quality lens.” [Doc. 79-2 at 87 (emphasis added)]. Curiously, Plaintiff does not address this unequivocal statement in its Response. See [Doc. 93 at 19-21]. Nor is this court persuaded that the Applicants' mere statement that they have not made any disclaimer or disavowal is dispositive in light of the clear and unequivocal statement that Claim 1 (and in turn, Claim 11) requires a “dedicated high-quality lens.” While a disavowal of claim scope must be clear and unequivocal, it need not be explicit. See Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) (citing Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363-64 (Fed. Cir. 2016)). As explained by the Poly Am. court, “[a]n inventor may disavow claims lacking a particular feature when the specification distinguishes or disparages prior art based on the absence of that feature.” Id. (emphasis added). Here, in response to the Examiner's non-final rejection, the Applicants clearly and unambiguously limited the “lens” of Claim 1 (and in turn, Claim 11) to a “dedicated high-quality lens.” See Data Engine Techs. LLC v. Google LLC, No. 2021-1050, 2021 WL 3778735, at *5 (Fed. Cir. Aug. 26, 2021).
Nevertheless, this court declines Defendants to further limit the construction of the dispute term to a “plano-convex lens.” Nothing in the prosecution history or the specification suggests to the court that the Patentees intended to limit the term “lens” to a “plano-convex lens.” Unlike Data Engine Techs., the Patentees here did not define a “dedicated high-quality lens” as a “planoconvex lens.” [Doc. 79-2 at 87]. Instead, the Patentees clearly state that “in one embodiment, lens 100 is a plano-convex lens such as Lens Doc. 90-1235 manufactured by J.P. Manufacturing.” [Doc. 1-1, col. 3, ll. 2-4 (emphasis added)]. In the very next sentence, the specification goes on to say “[a] variety of lenses may be used such as 1x, 2x, or 3x magnifier, ” - without a description of the shape of such lens. [Id. at col. 3, ll. 4-5]. Given the claims of the related '747 Patent, the Patentees clearly understood how to specifically claim a “plano-convex” lens. [Attach. 1, United States Patent No. 9, 630, 747, cl. 1 (including a claim element of “a countersunk plano-convex lens adhesively affixed to lid”). The Federal Circuit has repeatedly warned against confining claims to embodiments described in the specification, and has “expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” See Phillips, 415 F.3d at 1323. Given this authority, the court construes “lens affixed to the lid” as “a dedicated, high-quality lens attached to the lid.”
IV. Said Lid is Fitted on the Perimetrical Ridge Forming a Chamber
Plaintiff's Proposal
Defendants' Proposal
Court Construction
No construction necessary
The lid is placed on the raised portion and shoulder such that its edge snugly fits over the raised portion and shoulder to form a sealed chamber
Said lid conforms on the perimetrical ridge forming a chamber
The phrase “said lid is fitted on the perimetrical ridge forming a chamber” appears in independent claims 1 and 11. Defendants contend that this disputed phrase must be construed “to give effect to the object of the invention in view of the constructions” of “said container body is shaped to define a perimetrical ridge surrounding said open top” and “said lid is shaped to define a perimeter.” [Doc. 79 at 13-14]. Specifically, Defendants argue that “replacing the proposed constructions for perimetrical ridge and perimeter results in Defendants' suggested construction for this term. [Id. at 14]. Again, Plaintiff contends that no construction is necessary, while acknowledging that the plain and ordinary meaning of “perimeter” is “generally understood to be ‘the outer boundary of a body or figure' and “chamber” is “generally understood to mean ‘enclosed space or cavity.'” [Doc. 93 at 15-19].
As discussed above, this court declined to construe “perimetrical ridge” to include a limitation of a shoulder, or “perimeter” to require “an edge;” and the court will construe those terms consistently here. See supra. In addition, the Parties do not seem to truly dispute how to define the term “chamber, ” generally. The core of the dispute appears to lie with the term “fitted.” Thus, this court turns to considering whether “fitted” requires further definition, again guided by the intrinsic evidence.
Similarly here, this court respectfully declines to consider the testimony offered by defense counsel through her Declaration in support of the Reply. [Doc. 96-1].
First, this court notes that the specification and claim language indicate that when all of the parts of the Invention are assembled, the resulting container is “airtight.” See e.g. [Doc. 1-1 at Abstract; col. 3, ll. 7-11, 58-62; col. 4, 41-43; col. 5, ll. 5-7]. Contrary to Defendants' proposed construction, the Invention does not require the fitting of only the lid and the perimetrical ridge to necessarily create an airtight chamber because in some embodiments, the lid has openings to allow the prospective purchasers of the botanical to “test the aroma of the contained contents for suitability, freshness, or other features.” See e.g. [id. at col. 1, ll. 20-22; col. 2, ll. 55-57 (“Lid 60 is further shaped to define a recessed area 90, and further shaped to define a plurality of scent openings with said recessed area 90.”). Indeed, the very next claim element in Claim 1 describes the plug forming an airtight seal with the lid, resulting in a sealed chamber - indicating that the fitting of the lid to the perimetrical ridge without the plug would leave an opening or openings, and thus, not an airtight container. See [id. at cl. 1].
Second, this court notes that despite Defendants' arguments, Plaintiff does not address “fitted” except to argue that “the lid fits the container” and the lid need not fit “snugly.” [Doc. 93 at 16-18]. This court finds that the plain and ordinary meaning of “fit” and “fitted” are not identical. For instance, a flat sheet on a bed might fit a mattress, but a fitted sheet conforms to the mattress. Given the description of the Invention, “fitted, ” used as a verb in claims 1 and 11, generally refers to conforming shape or size of an object to another. See e.g., https://www.merriam-webster.com/dictionary/fit (“To conform correctly to the shape or size of' or “to make or adjust to the right shape and size”); https://www1oed1com/view/Entry/70748?rskey=wQIXXq&result=1#eid (“To be of such size and shape as to fill exactly a given space, or conform properly to the contour of its receptacle or counterpart; to be adjusted or adjustable to a certain position”). While Plaintiff is correct that the claim term does not limit the Invention to a certain method of engagement between the lid and the container [Doc. 93 at 18], the lid must be engaged on the perimetrical ridge in a manner that allows the container to be “completely sealed” when all the parts are assembled together. Thus, this court construes “said lid fitted on the perimetrical ridge forming a chamber” to mean “said lid conformed on the perimetrical ridge forming a chamber.”
V. Said Plug Forms an Airtight Seal Between Said Plug and Said Lid Completely Sealing Said Chamber
Plaintiff's Proposal
Defendants' Proposal
Court Construction
No construction necessary
The plug forms an airtight seal between the plug and the lid to seal off the scent openings
No construction necessary
The phrase “said plug forms an airtight seal between said plug and said lid completely sealing said chamber” appears in independent claims 1 and 11. Defendants argue that this is “erroneously phrased, ” because a seal formed between the plug and the lid is wholly contained on the surface of the lid and is incapable of sealing the chamber as claimed.” [Doc. 79 at 17]. Thus, Defendants urge this court to construe this phrase to require the plug to “seal off the scent openings.” [Id. at 17-18]. Plaintiff contends that this phrase needs no construction, and that the dispute is over the term “chamber, ” which should be given its plain and ordinary meaning. [Doc. 93 at 22].
While Defendants argue that such construction is necessary to preserve the validity of the patent claims [Doc. 79 at 17], this court respectfully disagrees that the phrase should be construed to be limited to a plug sealing off scent openings. First, this court is not persuaded that the term is “erroneously phrased.” In the phrase immediately prior to this one, Claims 1 and 11 each recite “a removable soft plug shaped to cover the scent opening forming an airtight seal;” to then include the same limitation here would be unnecessarily redundant and would inexplicably read out “chamber” - despite Defendants' argument that the court must focus upon “completely sealing the chamber.” See Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 781 (Fed. Cir. 2010). Second, even if the term was “erroneously phrased, ” Defendants fail to point to any legal authority to undermine the principle that “a court may not rewrite a claim even if giving a disputed claim its plain meaning would lead to a ‘nonsensical result.'” Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 F.3d 1291, 1301 (Fed. Cir. 2014). Third, while Defendants focus their argument on the sub-phrase of “completely sealing said chamber” on Reply [Doc. 96 at 9-10], there is no explanation as to how their arguments regarding the object of an “airtight seal” requires the court to import the limitation of plural “scent openings” when such openings are not claimed in the express language of the claim. Finally, even if Defendants seek to construe the phrase to avoid invalidity, the Federal Circuit has clearly warned trial courts from intermingling validity and construction analyses that result in reading in limitations not otherwise in the claim language. See DSW, Inc. v. Shoe Pavilion, Inc., 537 F.3d 1342, 1347 (Fed. Cir. 2008).
Accordingly, this court finds that no construction is necessary.
VI. Tether Affixed to the Container Body
Plaintiff's Proposal
Defendants' Proposal
Court Construction
No construction necessary
Tether attached to the bottom of the container body with a fastener
Tether attached to the container body
“Tether affixed to the container body” appears in dependent claims 2 and 12. Defendants contend that the phrase must be construed to specify where the tether attaches, i.e., “tether attached to the bottom of the container with a fastener, ” because it is so limited by the specification of the Patent-in-Suit. [Doc. 79 at 18-19]. Plaintiff contends that nothing within the claim language or specification of the '834 Patent requires a particular configuration of the tether, nor does the claim language, specification, or prosecution history disavow any scope. [Doc. 93 at 23-24]. Though the phrase is disputed, it is clear from review of the Parties' arguments that the core of the dispute lies with the construction of the term “affixed.”
As discussed above, patent terms are typically given their plain and ordinary meaning to one of ordinary skill in the art, and the court should not import limitations from the specification into the claims. See Stumbo, 508 F.3d at 1362 (Fed. Cir. 2007) (internal quotation marks omitted); RF Delaware, Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1263 (Fed. Cir. 2003) (citations omitted). Indeed, it is axiomatic that claim terms are not necessarily limited to the preferred embodiments in the specification. Id. (citing Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1370, 65 U.S.P.Q.2d 1865, 1870 (Fed.Cir.2003)).
While exceptions to this rule apply, Defendants have not pointed to any portion of the specification or prosecution history of the'834 Patent when (1) “a patentee sets out a definition and acts as his own lexicographer” or (2) “the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner, 669 F.3d at 1365. Though Defendants are correct that the specification discusses embodiments of the tether as attached to the bottom of the body with a fastener, there is no language in the specification of the '834 Patent that even suggests that the Patentee was acting as her own lexicographer with respect to “affixed” to additionally require a location and mechanism. The inventors have not set forth a specific definition of “affixed” nor have they limited the tether to the bottom of the container with a fastener through the summary or description of the invention. Cf. Astrazeneca AB, Aktiebolaget Hassle, KBI-E, Inc. v. Mut. Pharm. Co., 384 F.3d 1333, 1339 (Fed. Cir. 2004) (holding that the inventors acted as their own lexicographer when stating that the disputed term was “defined below”). Indeed, as Plaintiff points out - in other places in the specification, the inventors discuss that a different element of the invention, i.e., the lens, may be affixed through a “snap fit, ” “friction fit, ” or “adhesively” [Doc. 1-1 at col. 2, ll. 64-66; col. 3, ll. 1-2] - indicating that the term “affixed” does not require that the attachment of the tether be limited to the bottom of the container with the fastener. Indeed, Defendants acknowledge that “affixed” simply means “attached” in their own proposed construction of “a lens affixed to the lid.” [Doc. 68 at 3; Doc. 79 at 14; Doc. 93 at 1921]. This court is not persuaded by Defendants' argument on Reply that “affixed” is used differently for different structures. Rather, “affixed” is used consistently with its plain and ordinary meaning - “attached.”
Further, Defendants point to no portion of the prosecution history where Plaintiff has disavowed certain attachments for the tether. [Doc. 79 at 18-19; Doc. 96 at 11]. The “standard for disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention includes or does not include a particular feature.” Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131, 1137 (Fed. Cir. 2016). With no such evidence in the record, this court respectfully declines to further construe “tether affixed to the container body” beyond “tether attached to the container body.”
VII. Said Lid and Said Container Body are Comprised of Poly(Methyl Methacrylate)
Plaintiff's Proposal
Defendants' Proposal
Court Construction
No construction necessary
The lid and container body are substantially composed of poly(methylmethacrylate)
No construction necessary
“Said lid and said container body are comprised of poly(methyl methacrylate)” appears in dependent claims 3 and 13. While the Parties both acknowledge the Federal Circuit has held that “comprise, ” “comprising, ” and “comprised of, ” are all open-ended terms, and that when used as a transition phrase, “the usual and generally consistent meaning of ‘comprised of'” indicates that “the ensuing elements or steps are not limiting, ” see CIAS, Inc. v. All. Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007), Defendants argues that the specification of '834 Patent discloses only one configuration enabled, disclosed, or otherwise contemplated and thus, the disputed phrase must be limited to the lid and container body being made from the same moldable material, and to being “substantially composed of poly(methylmethacrylate).” [Doc. 79 at 19-20]. Plaintiff asserts that Defendants are not disputing the technical terms, but rather are disputing the meaning of “comprised” and define it as “substantially composed of” and that no construction is necessary. [Doc. 93 at 24].
This court respectfully agrees with Plaintiff. As an initial matter, to the extent that Defendants contend that both the lid and said container body must be made of “the same moldable material, ” this limitation is nowhere in the claim language or the Patent-in-Suit's specification. Second, as discussed above, concerns regarding enablement cannot direct the claim construction away from the plain and ordinary meaning. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d at 1374. Third, as acknowledged by all Parties, the Federal Circuit has a well-settled understanding of the term “comprising.” See supra. This court is not persuaded by Defendants' argument on Reply - which is not supported by any legal authority - that it should depart from Federal Circuit precedent to construe “comprised of” differently than “comprising” or as a mix of “comprising” and “consisting of.” [Doc. 96 a6 12]. Indeed, the CIAS court expressly rejected a similar argument. CIAS, 504 F.3d at 1360 (“Although ‘comprised of' is not used as regularly as ‘comprising,' and ‘comprised of' is sometimes used other than as a ‘transition phrase,' nonetheless it partakes of long-standing recognition as an open-ended term.”). Accordingly, this court finds that “said lid and said container body are comprised of poly(methyl methacrylate)” needs no construction.
CONCLUSION
For the reasons set forth herein, IT IS ORDERED that:
(1) The Parties' Joint Motion for Determination [Doc. 97] is GRANTED; and
(2) The court construes the disputed terms as set forth above.