Seiko Epson Corporation et al v. Glory South Software Manufacturing Inc. et al
Filing
429
Order. The Court construes the term "being compressingly contained" in Claim 83 of Seiko Epson's '377 Patent to mean "being contained in at least a partially compressed state." Signed on 12/16/2011 by Judge Anna J. Brown. (bb)
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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
PORTLAND DIVISION
SEIKO EPSON CORPORATION,
a Japan corporation; EPSON
AMERICA, INC., a California
corporation; and EPSON
PORTLAND, INC., an Oregon
corporation,
Plaintiffs,
v.
GLORY SOUTH SOFTWARE
MANUFACTURING, INC., a
California corporation;
BUTTERFLY PRINT IMAGE CORP.,
LTD, a Hong Kong company;
INK LAB (H.K.) CO., LTD,
a Hong Kong company; NECTRON
INTERNATIONAL, LTD, a Texas
company; NINE STAR IMAGE CO.,
LTD, a China company; NINE
STAR TECHNOLOGY CO., LTD, a
California company; TOWN
SKY, INC., a California
corporation; ZHUHAI GREE
MAGNETO-ELECTRIC CO., LTD,
a China company; MMC CONSUMABLES,
1 - OPINION AND ORDER
3:06-CV-477-BR
OPINION AND ORDER
INC., a California company;
TULLY IMAGING SUPPLIES, LTD,
a Hong Kong company; INKJET
WAREHOUSE.COM, INC., a Connecticut
corporation; WELLINK TRADING CO.,
LTD, a China company; RIBBON TREE
(MACAO) TRADING CO., LTD, a China
company; RIBBON TREE (USA), INC.,
dba CANA-PACIFIC RIBBONS, INC.,
a Washington company; APEX
DISTRIBUTING, INC., a Washington
company; DATAPRODUCTS USA, LLC, a
California limited liability
corporation; MASTER INK CO., LTD,
a Hong Kong company; and ACUJET U.S.A.,
INC., a California company,
Defendants.
DAVID W. AXELROD
DEVON ZASTROW NEWMAN
Schwabe, Williamson & Wyatt, P.C.
Pacwest Center
1211 S.W. Fifth Ave, Suite 1900
Portland, OR 97204
(503) 222-9981
HAROLD A. BARZA
J.D. HORTON
JAMES STEIN
JOSEPH M. PAUNOVICH
RYAN S. GOLDSTEIN
TIGRAN GULEDJIAN
VALERIE RODDY
JUSTIN BROWNSTONE
LANCE YANG
RACHAEL MCCRACKEN
Quinn Emanuel Urquhart Oliver & Hedges, LLP
865 South Figueroa Street, 10th Floor
Los Angeles, CA 90017-2543
(213) 624-7707
Attorneys for Plaintiffs Seiko
Epson Corporation; Epson America,
Inc.; and Epson Portland, Inc.
2 - OPINION AND ORDER
LEI MEI
Mei & Mark LLP
1050 Connecticut Ave. N.W., 10th Floor
Washington, D.C. 20036
(202) 256-1008
SETH H. ROW
Parsons Farnell & Grein LLP
1030 S.W. Morrison St
Portland, OR 97205
(503) 222-1812
ELIZABETH H. RADER
YITAI HU
Alston & Bird LLP
275 Middlesex Road, Ste 150
Menlo Park, CA 94025
(650) 838-2000
Attorneys for Defendants Ninestar
Technology Co. Ltd (formerly Ninestar
Image Co. Ltd.); Ninestar Technology
Company, Ltd.; and Dataproducts USA LLC
BROWN, Judge.
This matter came before the Court on December 7, 2011, for
a Supplemental Markman Hearing to construe the claim term “being
compressingly contained” in the second limitation of Claim 83 and
in dependent Claims 72 and 73 of U.S. Patent No. 5,5158,377 (‘377
Patent) issued to Plaintiffs (collectively referred to as Seiko
Epson).1
1
On December 1, 2011, the United States Patent and
Trademark Office notified Seiko Epson that it was reexamining
whether Claims 83 and 84 of the ‘377 Patent are unpatentable
based on prior art. That action does not have any immediate
bearing on the pending matter.
3 - OPINION AND ORDER
STANDARDS
Patent claim terms are generally given their ordinary and
customary meaning.
Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005)(en banc).
“[T]he claims themselves provide
substantial guidance as to the meaning of particular claim
terms.”
Id. at 1314.
“A patent's specification is always highly
relevant to the claim construction analysis.”
Id. at 1315.
When interpreting the legally operative meaning of a
disputed term, the court may consider "both intrinsic (e.g., the
patent specification and file history) and extrinsic evidence,”
(e.g., expert testimony and dictionary definitions).
Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
See also MBO Lab., Inc. v. Becton, Dickinson & Co., 474 F.3d
1323, 1329 (Fed. Cir. 2007).
Intrinsic evidence such as the 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.”
Phillips v. AWH Corp., 415 F.3d at 1315.
Although 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.’”
Id. at 1317 (internal citations omitted).
4 - OPINION AND ORDER
DISCUSSION
Claim 83 of the ‘377 Patent describes:
An ink-supply tank formed with an ink-supply
delivery port having an opening for the
passage of ink from said ink-supply tank;
An ink absorbing member formed from a porous
material mounted within said tank, said ink
absorbing member having a region facing said
opening and being compressively contained by
the ink-supply tank against the ink-supply
delivery port so that at least the region of
the ink absorbing member facing said opening
is compressed relative to at least another
region of the ink absorbing member; and
Said ink absorbing member substantially
filling said ink-supply tank, said ink-supply
tank including an inner wall surface having
projections to provide a space between said
ink absorbing member and said wall surface.
Seiko Epson Mem., Ex. B (emphasis added).
I.
Ninestar’s Proposed Construction
Defendants (collectively referred to as “Ninestar”) contend
“being compressingly contained” should be construed to mean the
ink-absorbing member2 is (a) “continuously subjected to forces
which distort it into a smaller shape in the ink cartridge and
2
In their memoranda, the parties occasionally refer to Seiko
Epson’s ink-absorbing member as a “sponge.” The Court has
previously construed the term ink-absorbing member to mean
“a porous material that absorbs ink.” In other words, it is not
described specifically as a “sponge.” Accordingly, the Court
uses the original term ink-absorbing member in this Opinion and
Order to avoid confusion.
5 - OPINION AND ORDER
(b) upon removal of these forces, the sponge returns
spontaneously to its original shape.”
A.
Emphasis added.
Continuously Subjected to Forces.
Ninestar argues the sponges in its ink cartridges, unlike
Seiko Epson’s ink-absorbing members, are not “compressingly
contained” because they are already “semi-permanently deformed”
when installed in the ink cartridge; i.e., “the walls of the ink
supply tank do not apply any compressive force at the time a
cartridge is installed.”
In contrast, Seiko Epson’s ink-absorbing members are
compressed by the tank lid, which, according to Ninestar “is
largely responsible for compressing the [ink-absorbing member],
in combination with the walls of the tank.”
In addition, the
claim specification describing the compression of the [inkabsorbing member] near the ink-supply port “implies that such
[compressing] forces also come from the floor and the walls of
the tank.”
B.
Upon removal of these forces, the sponge
returns spontaneously to its original shape.
Ninestar’s expert, Wayne C. Hubbell, tested Seiko Epson’s
ink cartridge.
When he removed the ink-absorbing member from the
ink cartridge, he found it “resiliently returned to its original
thickness,” and, “despite the fact that each ink absorbing member
was saturated with ink, the [ink-absorbing member] quickly
6 - OPINION AND ORDER
recovered from the applied short-term deformation.”
II.
Seiko Epson’s Proposed Construction
Seiko Epson contends “being compressively contained” means
that the ink-absorbing member is reduced in size within the
cartridge and, should be construed to mean the ink absorbing
member is “being contained [in the cartridge] in at least a
partially compacted state.”
Emphasis added.
Seiko Epson asserts it is irrelevant that a compressive
force is or is not continuously applied when the ink-absorbing
member is installed in the ink cartridge because the patent
specification only describes that “the thicker front portion [of
the ink-absorbing member] is compressed by the tank lid when the
[ink-absorbing member] is filled in the tank body.”
‘377 Patent at 8:68-9:2.
See Ex. B.,
Seiko Epson maintains that “[a]s long
as the [ink-absorbing member] is maintained in a compacted state,
it is [] irrelevant whether the force that initially compressed
the sponge is continuously maintained over time.”
Moreover,
the capillary-action effect (i.e., the tendency of liquid to be
drawn into small tubes) is “driven by the relative pores sizes of
different regions of the sponge, not by whether the sponge is
under constant pressure.”
Seiko Epson point outs that dependent Claim 72 describes the
ink-absorbing member as “substantially filling the ink-supply
tank,” dependent Claim 73 clarifies “at least a portion of the
7 - OPINION AND ORDER
ink absorbing member [is] being compressingly contained,” and
dependent Claim 74 further clarifies the “wall of said ink-supply
tank facing said ink-supply delivery port is a cover means
bearing on said ink absorbing member, when assembled to said ink
supply tank to at least apply a compressive force to effect
compression of said ink absorbing member.”
35.
‘377 Patent at 18:15-
Emphasis added.
According to Seiko Epson, these specifications describe that
the compressive force is applied when the ink-absorbing member is
first installed in order to create a “capillary action for moving
ink through the ink absorbing member from an area where the pores
of the ink absorbing member are on average larger to the area
nearest the ink supply port where the pores on average are
smaller as a result of the applied compression.”
‘377 Patent at
5:30-49, 7:4-31.
III. Analysis
A.
Ninestar’s Proposed Construction.
The Court rejects Ninestar’s proposed construction because
it reads into the claim term two limitations that are not
asserted or described in the claim specification (i.e., (1) the
ink-absorbing member is continuously subjected to compression
that distorts it while it is encased in the ink cartridge and
8 - OPINION AND ORDER
(2) the ink-absorbing member returns spontaneously to its
original shape when it is removed from the ink cartridge.
The Court finds unpersuasive Ninestar’s argument that
Seiko Epson’s use of the word “being” immediately before the
term “compressingly contained” connotes that after the ink
absorbing member is installed in the ink cartridge, the inkabsorbing member is subjected to ongoing, continuous forces
that distort it.
The word “being” in its primary usage means “the state or
quality of having existence.”
See Am. Heritage Dictionary of the
English Language 163 5th ed. 2011).
There is no question that
“compression” is a “state of existence” of at least some parts of
Seiko Epson’s ink-absorbing member when it is first installed in
Seiko Epson’s ink cartridge.
There is, however, nothing in the
claim language or specification to support Ninestar’s assertion
that the claim language describes ongoing compression of the inkabsorbing member.
As argued by Seiko Epson, the flow of ink from
the ink-absorbing member to the ink- delivery port is the result
of a capillary action resulting from the original compression
that need not be the result of ongoing compression.
The Court also rejects Ninestar’s construction because it
imposes a limitation that the ink-absorbing member spontaneously
returns to its original shape when removed from the ink
9 - OPINION AND ORDER
cartridge.
That limitation is not found in either the claim
language or the claim specification.
Moreover, the Court agrees
with Seiko Epson that such a limitation would be irrelevant to a
functioning ink cartridge.
B.
Seiko Epson’s Proposed Construction.
The Court rejects in part Seiko Epson’s construction that
the ink-absorbing member is “being contained [in the cartridge]
in at least a partially compacted state.”
Although the claim
focuses on the compression of an ink-absorbing member in an ink
cartridge, Seiko Epson proposes an instruction including the word
“compacted” to describe the ink-absorbing member in the ink
cartridge after it has been subjected to compression upon
installation.
“To compress” is defined to mean the same as “to
press together” or “to make more compact by pressing.”
Heritage Dictionary 379 (5th ed. 2011).
Am.
Thus, the terms
“compressed” and “compacted” have identical meanings in the
context of Seiko Epson’s ink cartridges.
There is not any reason
to import the term “compacted” in place of the term “compressed”
to describe the ink-absorbing member’s state when it is first
placed into the ink cartridge.
CONCLUSION
10 - OPINION AND ORDER
For these reasons, the Court construes the term “being
compressingly contained” in Claim 83 of Seiko Epson’s ‘377 Patent
to mean “being contained in at least a partially compressed
state.”
IT IS SO ORDERED
DATED this 16th day of December, 2011.
/s/ Anna J. Brown
ANNA J. BROWN
United states District Judge
11 - OPINION AND ORDER
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