Opinion
Case No. 1:13-cv-337
05-21-2014
THE PROCTER & GAMBLE COMPANY, Plaintiff, v. CAO GROUP, INC., Defendant.
Judge Timothy S. Black
ORDER ON CLAIM CONSTRUCTION
The parties submitted briefs in support of their proposed claim constructions. (Docs. 46, 48, 53, 55). Additionally, the Court held a Markman hearing on May 7, 2014.
I. BACKGROUND FACTS
In 2001, P&G introduced a tooth whitening strip known as Crest Whitestrips®, the first commercial whitening product in strip form. P&G holds a portfolio of patents covering Crest Whitestrips®, one of which is at issue in this case, as well as patents covering other technology relating to tooth whitening and oral care strips.
Defendant manufactures oral care strip products (collectively, "the Accused Products") that allegedly infringe three of Plaintiff's patents. The Accused Products, which Defendants market through professional dental channels, include: (1) Sheer White!® Whitening Films ("Sheer White"); (2) Sheer DesenZ® Desensitizing Films ("Sheer DesenZ"); and (3) Sheer FluorX® Fluoride Treatment Films ("Sheer FluorX"). Defendant recently introduced an over-the-counter tooth whitening strip product called LumistTM Whitening Strips ("Lumist").
II. THE PATENTS AT ISSUE
There are three patents at issue: (1) U.S. Patent No. 7,122,199 (the "'199 patent"), entitled "Methods For Whitening Teeth" (JA0016-0028); (2) U.S. Patent No. 5,989,569 (the "'569 patent"), entitled "Delivery System For A Tooth Whitener Using A Permanently Deformable Strip Of Material" (JA0001-0008); and (3) U.S. Patent No. 6,045,811 (the "'811 patent"), entitled "Delivery System For An Oral Care Substance Using A Permanently Deformable Strip Of Material" (JA0009-00015).
III. THE CLAIMS AT ISSUE
All of the terms and phrases at issue were submitted to the Court for construction at Defendant's request. Plaintiff submits that the terms are unambiguous and clear on their face and do not require any special construction. However, in view of Defendant's position, Plaintiff also proposed constructions.
The parties dispute the construction of eight terms or phrases in the patents-in-suit: (1) "strip of material"; (2) "about 7 days"; (3) "unobtrusive so as to be wearable without interfering with normal social discourse"; (4) "of a size that individually fits an upper or lower row of a wearer's teeth"; (5) "substantially conforms to the curvature of the wearer's mouth, gaps between the adjacent teeth, [and] a shape of a tooth"; (6) "under a pressure less than about 250,000 Pascals"; (7) "permanent deformation"; and (8) "a normal force applied to deform said strip of material...during manual deformation of said strip of material."
IV. STANDARD OF REVIEW
Claim construction is a matter of law to be decided exclusively by the Court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370. "[T]he claims of a patent define the invention to which the patentee is entitled the right to exclude." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). Claim terms are "generally given their ordinary and customary meaning." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). "The 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 date of the patent application." Id. at 1313. Absent an express intent to the contrary, a patentee is presumed to have intended the ordinary meaning of a claim term. York Prods. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996). The Court must also consider the specification "to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning." Id. Finally, the Court may consider "the prosecution history of the patent, if in evidence." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). If these documents unambiguously define the scope of the patented invention, there is no need for the Court to consider any extrinsic evidence. Id. at 1583.
In construing claims, the Court determines whether or not a term requires construction. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). The Court is not required to accept a construction of a term, even if the parties have stipulated to it, but instead may arrive at its own construction of claim terms, which may differ from the constructions proposed by the parties. Pfizer, Inc. v. Teva Pharms., USA, Inc., 429 F.3d 1364, 1376 (Fed. Cir. 2005). "The appropriate starting point [...] is always with the language of the asserted claim itself." Comark Commc'ns, Inv. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). "When the specification explains and defines a term used in the claims, without ambiguity or incompleteness, there is no need to search further for the meaning of the term." Multiform Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998).
The general rule is that terms in the claim are to be given their ordinary and accustomed meaning. Reinshaw v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). General descriptive terms will ordinarily be given their full meaning; modifiers will not be added to broad terms standing alone. See, e.g., Virginia Panel Corp. v. MAC Panel Co., 133 F.3d 860, 865-66 (Fed. Cir. 1997). A court must presume that the terms in the claim mean what they say and, unless otherwise compelled, give full effect to the ordinary and accustomed meaning to skilled artisans of claim terms. See, e.g., Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed. Cir. 1994).
In order to overcome this heavy presumption in favor of the ordinary meaning of claim language, it is clear that "a party wishing to use statements in the written description to confine or otherwise affect a patent's scope must, at the very least, point to a term or terms in the claim with which to draw in those statements." Renishaw, 158 F.3d at 1248. That is, claim terms cannot be narrowed by reference to the written description or prosecution history unless the language of the claims invites reference to those sources. See, e.g., McCarty v. Lehigh Valley R.R., 160 U.S. 110, 116 (1895) ("If we once begin to include elements not mentioned in the claim in order to limit such claim ..., we should never know where to stop").
Courts have available to them a number of canons of construction which aid in construing patent claims. Among them are:
1) Each claim in a patent has a different scope. A dependent claim has a narrower scope than the claim upon which it depends.Patent Law and Practice, Fifth Edition, Herbert F. Schwartz at 134-136.
2) Claims are not limited to the preferred embodiment disclosed in the specification.
3) Ordinarily, different words in a patent have different meanings.
4) Ordinarily the same word in a patent has the same meaning.
5) Ordinarily, the meaning should align with the purpose of the patented invention.
6) Ordinarily, general descriptive terms are given their full meaning.
7) If possible, claims should be construed so as to preserve their validity.
8) Ordinarily, absent broadening language, numerical ranges are construed exactly as written.
9) Ordinarily, absent recitation of order, steps of a method are construed to have a particular order.
10) Absent highly persuasive evidentiary support, a construction should literally read on the preferred embodiment.
Courts may also consider the patent's prosecution history, if in evidence. The prosecution history limits the interpretation of claim terms so as to exclude any inter-pretation that was disclaimed during prosecution. Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995). The prosecution history "constitutes a public record of the patentee's representations concerning the scope of and meaning of the claims, and competitors are entitled to rely on those representations when ascertaining the degree of lawful conduct." Seachange Int'l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005).
In most circumstances, analysis of the intrinsic evidence alone will resolve claim construction disputes. See Vitronics, 90 F.3d at 1583. Extrinsic evidence may be considered, as it "'can shed light on the relevant art,' but is less significant than the intrinsic record in determining the 'legally operative meaning of disputed claim language.'" C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (quoting Vanderlande Indus. Nederland BV v. Int'l Trade Comm'n, 366 F.3d 1311, 1318 (Fed. Cir. 2004)). Dictionaries and technical treaties, which are extrinsic evidence, hold a "special place" and may sometimes be considered along with the intrinsic evidence when determining the ordinary meaning of claim terms. Id. at 1267. However, the Federal Circuit cautions against the use of nonscientific dictionaries, lest dictionary definitions be converted into technical terms of art having legal, not linguistic, significance. Id.
Courts must first look to intrinsic evidence (i.e., the claim itself, specifications, prosecution history and prior art cited in the patent) to resolve any ambiguities. Id. at 1582.
V. THE COURT'S CONSTRUCTION OF THE CLAIMS
A. Term: "strip of material"
Plaintiff proposes that "strip of material" be defined as "strip of any material suitable for use in the oral cavity."
Defendant proposes that "strip of material" be defined as "a flat substance that has a shape for allowing coverage of tops of some front teeth without covering the tips of the two canine teeth and that is designed to conform to the shape of the teeth, fitting by drape rather than permanent deformation to the shape of the teeth."
This Court previously construed the term "strip of material" in The Procter & Gamble Co. v. Team Technologies, Inc., Case No. 1:12cv552 (S.D. Ohio Nov. 22, 2013). In that ruling, this Court held that the '199 patent is not limited to a preferred embodiment and construed "strip of material" to mean "strip of any material suitable for use in the oral cavity." (Doc. 71 at PageID 4119-4123). Defendant argues that the Court did not have all of the relevant information in Team Technologies, and therefore the Court should revisit its previous ruling.
In the Team Techs. case, the defendants argued, like Defendant does here, that the claimed strip of material does not cover the tips of the canine teeth. This Court disagreed. "Despite Defendants' claim that the inventors specified that the strips never fold over the canine teeth, there is no patent language to this effect. Discussions of specific embodiments that do not fold over the canines do not amount to a mandate that in no embodiment must the strip ever do so. (Id., Doc. 71, PageID 4123). In fact, the specification discloses an embodiment "which appears to cover the tips of the canine teeth to some degree." (Id.)
Specifically, Defendant references the ongoing Inter Partes Review ("IPR") of the '199 Patent. Defendant argues that this prosecution history disclaimer constitutes a clear unequivocal disclaimer of claim scope and requires that the term "strip of material" be limited to a strip "that is designed to conform to the shape of the teeth, fitting by drape rather than permanent deformation to the shape of the teeth." Defendant notes that on March 14, 2014, Plaintiff submitted its Patent Owner's Response in the IPR, which included a section titled "The Invention Of The '199 Patent." Patent Owner's Response, J.A. at 2407. In that section, Plaintiff stated: "[t]he strips are designed to conform to the shape of the teeth, fitting by drape rather than permanent deformation to the shape of the teeth, thus distinguishing them form the existing mouthguard-type devices that were permanently deformed to the shape of a user's teeth." Id.
Inter partes review allows any person other that the patent owner to file a petition to institute IPR in order to establish that the identified claims are invalid under 35 U.S.C. 102 or §§ 103. 35 U.S.C. §§ 311(a)-(b). A petitioner may request to cancel as unpatentable one or more claims of a patent. Id. The petitioner must rely "only on...prior art consisting of patents or printed publications." 35 U.S.C. § 311(b). The PTO must decide whether or not to institute IPR. 35 U.S.C. § 314(b). The Director may institute IPR only when the Director determines that "there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." 35 U.S.C. § 314(a). If the Director institutes IPR, the proceeding is conducted before the United States Patent and Trademark Office Patent Trial and Appeal Board ("PTAB"). After a final determination from the PTAB, the parties may appeal to the Federal Circuit. 35 U.S.C. §§ 141(c), 319. Tas Energy, Inc. v. San Diego Gas & Elec. Co., No. 12cv27777, 2014 U.S. Dist. LEXIS 2617, at *4-6 (S.D. Cal. Feb. 26, 2014).
However, context shows that Plaintiff summarized the disclosures of the '199 Patent before turning to the '199 Patent claims in the next sentence:
On June 6, 1997, P&G filed its first patent applications describing and claiming this revolutionary invention. The '199 patent claims priority to one of these originally-filed applications. The patented invention of the '199 patent generally relates to a strip of material that includes a tooth whitening substance thereon. The substance provides adhesion to the teeth and provides an active for whitening the teeth. The strips are designed to conform to the shape of the teeth, fitting by drape rather than permanent deformation to the shape of the teeth, thus distinguishing them from the existing mouthguard-type devises that were permanently deformed to the shape of a user's teeth. The claims of the '199 patent focus on a method of bleaching a plurality of teeth using such a device, which includes the steps of applying the strip to a first surface of the teeth, folding the strip over the incisal edges of the teeth, and applying the strip to a second surface of the teeth.(JA2407) (emphasis added). The '199 Patent claims focus on methods of bleaching teeth, not the strip itself or its characteristics. (Id.) The context reveals that the design of the strip does not directly bear on the claims.
In fact, the file history and context supports a finding that the alleged disclaimer is irrelevant to the methods claimed in the '199 Patent. The rest of the cited IPR document and its analysis of the '199 Patent claims never mentions "drape" or "permanent deformation" or attempts to distinguish the cited prior art on that basis. (JA2395-2440). At no other time in the original '199 Patent prosecution, or in the current IPR proceedings, did Plaintiff or the PTO imply or suggest that "drape" or "permanent deformation" had anything to do with the methods claimed in the '199 Patent or their patentability over the prior art. The isolated sentence that references "drape" and "permanent deformation" is simply "not clear and unmistakable enough to invoke the doctrine of prosecution history disclaimer." Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1343 (Fed. Cir. 2009).
See also Grober v. Mako Prods., Inc., 686 F.3d 1335, 1342-43 (Fed. Cir. 2012) (the district court "misread the context of the reexamination process and improperly emphasized a general statement out of context to limit the disputed claim term.").
No new evidence warrants departure from this Court's previous construction. Claim 17 of the '199 patent does not require that a "strip of material" have any specific shape, and reading such a limitation into the claim is improper based on the specification and the doctrine of claim differentiation. In fact, Plaintiff pursued separate patent applications with claims to strips that conform "without permanent deformation," namely, United States Patent Nos. 5,894,017 ("'017 patent") and 5,891,453 ("'453 patent").
Claim differentiation requires the Court to recognize consequential differences in claims when the inventor uses different words in separate claims. CAE Screenplates, Inc. v. Heinrich Fiedler Gmblt & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000).
Accordingly, the term "strip of material" is construed as "strip of any material suitable for use in the oral cavity.
B. Term: "about 7 days"
Plaintiff proposes that "about 7 days" be defined as "5 to 9 days."
Defendant proposes that "about 7 days" be defined as "daily for at least 7 consecutive calendar days."
Plaintiff's proposal acknowledges the legal and technical significance of the term "about," which imparts a range of days above and below the approximate figure recited in the claim, based on the contents of the claims and the specification. Defendant reads "about" out of the claims and imports two additional requirements: "once a day" and "consecutive days."
Defendant changes the meaning of "about," which as a matter of law broadens the scope of "7 days" by a range of days above and below 7 days. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1368 (Fed. Cir. 2008). Defendant's construction improperly replaces "about" with "at least," requiring an exact minimum value of 7 days, and no less. Id.
When "about" is used as part of a numeric range, "the use of the word 'about,' avoids a strict numerical boundary to the specified parameter. Its range must be interpreted in its technologic and stylistic context." Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995). In determining how far beyond the claimed range the term "about" extends the claim, "[w]e must focus...on the criticality of the [numerical limitation] to the invention." Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1327 (Fed. Cir. 2007).
The purpose of "about 7 days" is to ensure that the claimed tooth bleaching strips contact the teeth for a sufficient time to achieve effective bleaching. The specification explains that the systems should be worn for a range of minutes during each treatment, "preferably from about 30 minutes to about 60 minutes." ('199 at 11). If a user wears the claimed tooth bleaching system for about 45 minutes a treatment for about 7 days, the total contact time is about 315 minutes. If the user wears the strip longer during each treatment, it takes fewer days to reach the same total contact time, and vice versa. At about 60 minutes per treatment, it takes about 5 days to reach the same total contact time. At about 30 minutes per treatment, it takes about 9 or 10 days. Thus, if the user wears the strip anywhere between about 30 minutes or about 60 minutes, a user achieves the same effective tooth bleaching in about 5 to 9 days. Accordingly, P&G's construction as "5 to 9 days" matches the technical context and purpose of the term "about 7 days." There is no "consecutive days" or "once per day" requirement. ('199 at 13). See, e.g., Reedhycalog UK, Ltd. v. United Diamond Drilling Servs., Inc., No. 6:07cv251, 2009 U.S. Dist. LEXIS 32959, at *35 (E.D. Tex. Apr. 15, 2009) (rejecting contention that "at least about 0.1mm" was "limited to 'a minimum of 0.1 .'" due to the word "about").
In fact, Defendant's expert, Dr. Glassett testified:
Q. Now, when you say in paragraph 14 that the treatments have to be repeated daily for a minimum of seven days for effective results, what do you mean by "effective results"?(Doc. 48 at 41). Dr. Glassett also admitted that "about 7 days" includes 6 days. (Id. at 37).
A. ...I think effective results are case variant. Each person, how white they want to get, depends upon that person.
Q. Couldn't a person bleach for five days and get effective results?
A. They could.
Additionally, Defendant ignores that the specification explains that the minutes and days are qualified by "[p]referably" and "[g]enerally[.]" As with "about," these terms indicate that the invention contemplates some amount of deviation from the exact values specified. Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003) ("[T]he phrase 'generally parallel' envisions some amount of deviation from exactly parallel.").
Accordingly, the Court finds that the phrase "about 7 days" is clear on its face and does not require construction.
C. Term: "unobtrusive so as to be wearable without interfering with normal social discourse"
Plaintiff proposes that the phrase be defined as "without significantly interfering with the wearer's interactions with others."
Defendant claims that the phrase is indefinite and incapable of construction, because the metes and bounds of the claim scope cannot be determined by those of ordinary skill in the art due to ambiguous and indefinite terms such as "unobtrusive," "interfere," and "normal."
The Court incorporates herein the analysis in its Order denying partial summary judgment for indefiniteness. (Doc. 61 at 7-10). In sum, the Court rejects Defendant's contention that the phrase is indefinite and construes the phrase as "without significantly interfering with the wearer's interactions with others."
D. Term: "of a size that individually fits an upper or lower row of a wearer's teeth"
Plaintiff proposes that the phrase be defined as "sufficient to cover the upper or lower teeth to be treated."
Defendant claims that this phrase is indefinite and incapable of construction, because the metes and bounds of the claim scope cannot be determined by those of ordinary skill in the art. In the alternative, Defendant argues that this phrase should be interpreted as "of a size such that one undivided strip fits the entire upper dental arch or the entire lower dental arch of the intended wearer."
The Court rejects Defendant's contention that the phrase is indefinite and incorporates herein the analysis in its Order denying partial summary judgment for indefiniteness. (Doc. 61 at 6).
This dispute turns on whether the claimed strip must be long enough to cover the teeth being treated (as Plaintiff argues) or whether it must cover an "entire" dental arch of teeth (as Defendant argues).
The claims recite that the strip "individually fits an upper or lower row of a wearer's teeth," but do not require that the strip fits an "entire" dental arch of teeth. There is no evidence that the embodiments must cover the "entire" dental arch of the teeth. In fact, Figure 6 depicts "adjacent teeth having the strip of material of the present invention conforming thereto." ('569 at 4). The Figure shows strips that are long enough to cover rows of adjacent teeth, but expose the remaining teeth that are not being treated. (Id.) The prosecution history indicates that Plaintiff and the examiner negotiated and ultimately agreed on claims that require the strip to cover two or more adjacent teeth, not an "entire" dental arch. In fact, during the prosecution of Defendant's U.S. Patent Application No. 12/944, 937, the PTO rejected a claim requiring a strip "configured to treat the entire dental arch of a user" as obvious, due to a prior P&G patent application. Sagel, et al., U.S. Patent Publication No. 2002/0146666 A1 ("Sagel '666 application").
Defendant even admits that these strips do not cover an "entire" dental arch.
The Sagel '666 application discloses the same strips as those in the '569 and '811 Patents, right down to the back teeth that the strip exposes. (Sagel '666 application, Figure 7; '569 and '811, Figure 8). The PTO held that the Sagel '666 application:
does not teach the entire dental arch is whitened [but nonetheless] ...it would have been obvious to modify the length of the strip of Sagel et al. to cover the entire dental arch since it would be desirable to provide even bleaching over the entire dental arch and since Sagel et al. teaches the device may be sized to cover one or more teeth.(Doc. 53, Ex. 13 at 4). Defendant agreed that "Sagel discloses a dental strip, but that strip is not 'a full arch dental strip device.'" (Id., Ex. 15). Therefore, Defendant's representations to the PTO confirm that the strips of the '569 and '811 Patents need not cover an "entire" dental arch, contrary to what Defendant now suggests.
Defendant cites two instances of the term "row" in the specification and argues that they support Defendant's construction. However, the specification refers to a "row of adjacent teeth," but modifies "row" with the term "entire" in the phrase "entire upper or lower rows of teeth." If "row" meant "entire row," then "entire" is superfluous. Phillips, 415 F.3d at 1314. Moreover, the specification discloses that "[t]he conformable strip of material is preferably of a size that individually fits the entire upper or lower rows of teeth" and does not limit the invention as a whole. ('569 at 3).
Defendant also contends that Plaintiff amended the claims in a manner inconsistent with an amendment proposed by the Examiner during the patent's prosecution. Plaintiff argues that the Examiner suggested three amendments - not one - and that Plaintiff incorporated two of the suggested amendments and modified the other. The Court finds that the Examiner's proposal, as structured, is unclear. While the Court declines to go so far as to find that the Examiner proposed three amendments, the language is contradictory.
The Examiner never stated that these changes were required for patentability.
The Examiner's proposed "amendment" reads: "[t]he claims do not recite and require [1] that the strip...have a length sufficient to cover a plurality of adjacent teeth while conforming to the curvature of the wearer's mouth, and gaps between the adjacent teeth, and [2] that the conformable strip be of a size that individually fits the entire upper or lower rows of teeth when placed against the teeth, nor [3] is the adhesive attachment of the substance applied to said strip required to also have sufficient viscosity and tackiness to hold the strip of material in place on the front surface of the teeth as in the claims as presently amended." (JA0314) (numbering by Plaintiff).
Plaintiff argues and the Court agrees that the "three amendments" are mutually incompatible. The first - "a length sufficient to cover a plurality of adjacent teeth" - requires only that the strip is long enough to cover two or more adjacent teeth. (Doc. 48, PageID 4729). The second is more narrow - "entire upper or lower rows of teeth[.]" (Id.) Plaintiff incorporated the first and third suggested amendments and deleted "entire" from the second to make the claim consistent and coherent. (JA0323-0325). The Examiner then allowed the claims without any further discussion. (JA0330).
While Defendant accuses Plaintiff of misleading the Examiner by representing that it implemented the Examiner's suggested amendments, the record shows that Plaintiff did implement the Examiner's suggested amendment(s).
Defendant maintains that Plaintiff surrendered all strips that do not cover an "entire" dental arch based on its action(s) during prosecution. (Doc. 46, PageID 3666). See, e.g., Trading Techs. Int'l Inc. v. Open E Cry, LLC, 728 F.3d 1309, 1322 (Fed. Cir. 2013) (prosecution history estoppel is an equitable doctrine that limits the scope of equivalents available under the doctrine of equivalents). Plaintiff amended the claims to require the strip to be long enough "to cover a plurality of adjacent teeth" and to be sized to fit a "row" of teeth. (JA0323-0325). Those amendments narrowed the claims, but did not require an "entire" dental arch. There was no narrowing amendment to support an estoppel. Moreover, there was no clear and unmistakable statement by Plaintiff that the claims required strips that cover an "entire" dental arch. Id.
Prosecution history estoppel bars recapture of "subject matter surrendered from the literal scope of a claim during prosecution." Id. Prosecution history estoppel arises only where there is a narrowing amendment or a clear and unmistakable statement that the claims do not cover certain subject matter. Conoco, Inc. v. Energy & Envt'l Int'l, L.C., 460 F.3d 1349, 1364 (Fed. Cir. 2006).
Accordingly, the Court construes the phrase as "sufficient to cover the upper or lower teeth to be treated."
E. Term: "substantially conforms to the curvature of the wearer's mouth, gaps between adjacent teeth, a shape of a tooth"
Plaintiff maintains that this phrase should be given its ordinary meaning.
Defendant proposes that the phrase be defined as "the strip of material, without the substance thereon, plastically deforms to the curvature of the wearer's mouth, plastically deforms to nearly fully fill gaps between adjacent teeth, and plastically deforms to outline the shape of the teeth."
This Court already determined what it means to "conform" "to the shape of the teeth." (Team Tech, Doc. 71 at PageID 4112). On its face, the "substantially conforms" phrase requires that the strip conforms to the surfaces in a wearer's mouth, namely, the curvature of the wearer's mouth, gaps between the adjacent teeth, and the shape of the teeth. (Id.)
Notwithstanding this Court's previous Order, Defendant contends that a few isolated words ("gap," "mouth," "a shape of a tooth," and "conform") are "unclear and confusing" and require construction. However, the terms "gap," "mouth," "a shape of a tooth," and "conform," are familiar terms with known meanings that do not need to be construed. (See Team Techs, Doc. 71 at PageID 4112). See also O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) ("[D]istrict courts are not (and should not be) required to construe every limitation present in a patent's asserted claims.").
See also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) ("The Markman decisions do not hold that the trial judge must repeat or restate every claim term in order to comply with the ruling that claim construction is for the court. Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy.").
Accordingly, the Court finds that this phrase should be given its ordinary meaning.
F. Term: "via permanent deformation under a pressure less than about 250,000 Pascals"
Plaintiff maintains that this phrase should be defined as "by taking the shape of the teeth when applied using a pressure less than 300,000 Pascals and maintaining that shape in the absence of another deforming force."
Defendant maintains that this phrase is indefinite and incapable of construction because the metes and bounds of the claim scope cannot be determined by those of ordinary skill in the art.
Defendant argues that it is "impossible" to measure the pressure a user applies by pressing down on a strip with a finger and that "about 250,000 Pascals" is indefinite because it does not require a precise number of Pascals. (Doc. 46, PageID 3670-3680). However, terms like "about" are not indefinite simply because they are not mathematically exact. See, e.g., BJ Servs. Co. v. Halliburton Energy Servs., Inc., 338 F.3d 1368, 1372-73 (Fed. Cir. 2003). In the context of the '569 and '811 patents, the phrase "about 250,000 Pascals" means typical fingertip pressures, but the exact values of typical fingertip pressures are not critical to the invention. Plaintiff's expert, Dr. Atwood, recognized that "about 250,000 Pascals" is an approximate measure of pressure, not an exact value. (Doc. 46-9 at PageID 3987). He also testified that 300,000 Pascals was within the scope of "about 250,000 Pascals" because that value represents typical fingertip pressure applied to the strip, which is not a precise value. (Id., PageID 3992-3995). Dr. Atwood explained that one skilled in the art would know that there is an upper limit to the amount of pressure that can be applied. (Id. at PageID 3996).
The Court rejects Defendant's contention that the phrase is indefinite and incorporates herein the analysis in its Order denying partial summary judgment for indefiniteness. (Doc. 61 at 4-5).
Plaintiff's proposed construction substitutes the term "about 250,000 Pascals" with "300,000 Pascals" which Defendant claims is an unjustified and arbitrary expansion of the scope of the claim by twenty perfect. The Court agrees. As explained supra at Section V.B, the Court need not construe the meaning of "about." Given the context, Plaintiff clearly used the term "about" to "avoid a strict numerical boundary." Ortho-McNeil Pharm., 476 F.3d at 1327.
Accordingly, the Court finds that the phrase is clear on its face and does not require construction.
G. Term: "permanent deformation"
Plaintiff maintains that this term should be defined as "taking the shape of the teeth and maintaining that shape in the absence of another deforming force."
Defendant maintains that this term should be defined as "permanently conforming to the shape of the teeth."
Defendant maintains that "permanent deformation" is a "term of art having a very precise meaning" and that it is sometimes equated with "plastic deformation." (Doc. 46, PageID 3680). Defendant urges the Court to construe the "substantially conforms" sub-clause to require "plastically deforms." (Id. at PageID 3680-3681). However, even if "permanent deformation" is a synonym for "plastic deformation," that does not justify rewording "substantially conforms." C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 863 (Fed. Cir. 2004) ("[M]erely rephrasing or paraphrasing the plain language of a claim by substituting synonyms does not represent genuine claim construction.").
This Court previously determined that the terms "substantially conforms" and "plastically deforms" are not synonyms that are interchangeable. (Team Techs, Doc. 71 at PageID 4112).
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Although Defendant contends that "permanent deformation" constitutes a term of art, Defendant does not explain why Plaintiff's construction of "permanent deformation" is incorrect or suggest that "plastic deformation" means something different. Moreover, the specification describes "permanent deformation" as how the strip can "creep...[and] bend in order to conform across several teeth and around the arch of the wearer's mouth." ('569 at 5 (JA0006)).
Accordingly, this Court construes the term as "taking the shape of the teeth and maintaining that shape in the absence of another deforming force."
H. Term: "a normal force applied to deform said strip of material...during manual deformation of said strip of material"
Plaintiff proposes that the phrase be defined as "a force applied perpendicular to the surface of the strip."
Defendant maintains that the phrase is indefinite and incapable of construction.
The parties differ over whether one skilled in the art would understand that the phrase "normal force applied" means "a force applied perpendicular to the surface of the strip." Defendant argues that this phrase is indefinite because "normal" could mean either "typical" or "perpendicular." (Doc. 46 at PageID 3681-3684).
The specification confirms that "normal force" means the force applied by a wearer when she presses down on the strip to apply it to her teeth. For example, the specification teaches that "[i]t is important that the necessary permanent deformation occur under minimum normal force being applied by the wearer." ('569 at 5). Relevant extrinsic evidence shows that Plaintiff's construction matches the understanding of one skilled in the art. For example, both parties' experts testified that one skilled in the art knows that "normal" means "perpendicular." (Atwood Tr. 88, Ex. 9; Blotter Tr. 57). The fact that the claims use "normal" in different contexts, once referring to "normal social discourse" and later to "normal force applied," does not make the term "normal" ambiguous or indefinite. See, e.g., Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1031 (Fed. Cir. 2002) (same term ("substantially") had different meanings when used in different contexts ("substantially constant" as opposed to "substantially below")).
Accordingly, the Court construes the term as "a force applied perpendicular to the surface of the strip."
VI. CONCLUSION
Therefore, the parties shall construe the contested terminology of the '199, '569, and '811 patents as set forth in this Order.
IT IS SO ORDERED.
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Timothy S. Black
United States District Judge