180s, Inc. et al v Gordini U.S.A., Inc., No. 1:2008cv00177 - Document 141 (D. Md. 2010)
Court Description: OPINION. Signed by Judge J. Frederick Motz on 3/30/10. (hmls, Deputy Clerk)
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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND 180s, Inc. and 180s, LLC v. Gordini U.S.A., Inc. * * * * * * ****** Civil No. JFM-08-177 OPINION 180s, Inc. and 180s, LLC (collectively 180s ) sued Gordini U.S.A., Inc. for trade dress and patent infringement stemming from Gordini s sale of certain ear warmers. This action is based on three of 180s patents: U.S. Patent No. 6,978,483 ( 483 patent ), U.S. Patent No. 7,212,645 ( 645 patent ), and U.S. Design Patent No. 545,001 ( 001 design patent ). On March 12, 2010, I heard oral arguments pertaining to claim construction. This Opinion outlines my decisions on these issues.1 I. A patent includes both claim(s) and a specification. The specification contain[s] a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same . . . . Phillips v. AWH Corp., 415 F.3d 1303, 1311 12 (Fed. Cir. 2005) (citing the Patent Act, 35 U.S.C. § 112). The specification conclude[s] with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Id. at 1311 12 (citing § 112). [A] bedrock principle of 1 For the 483 patent, I will construe the following terms: (1) ear warmer frame, (2) member terms (first, second, and third frame members), (3) passageway, (4) projection, and (5) plurality of projections. For the 645 patent, I will construe the following terms: (1) [first/second] membrane, (2) receptacle, (3) opening, (4) communicates with, (5) disposed proximate, and (6) second end including a connector. 1 patent law is that these patent claims define the invention to which the patentee is entitled the right to exclude. Id. at 1312 (internal citations and quotations omitted). As a first step in an infringement analysis, prior to comparing the accused device to the patent claims, a court must interpret the claims.2 See Young Dental Mfg. Co. v. Q3 Spec. Prods., 112 F.3d 1137, 1141 (Fed. Cir. 1997); see also Omega Eng g, Inc. v. Raytek Corp., 334 F.3d 1314, 1320 (Fed. Cir. 2003). At this claim construction stage, claims are interpreted and defined through the eyes of a person of ordinary skill in the art and are accordingly generally given the meaning that the term[s] would have to a person of ordinary skill in the art[.] 3 Phillips, 415 F.3d at 1313 (internal citations and quotations omitted). Sometimes, a term s meaning to a person of skill in the art is synonymous with the widely accepted definition of that term, while other times ascertaining that meaning will require a more sophisticated inquiry. See id. at 1314. In determining the meaning to a person of skill in the art, a district court may properly consider both intrinsic and extrinsic evidence. Id. at 1313 18; Vitronics Corp., 90 F.3d at 1582 83. Intrinsic evidence includes the claim language, other claims in the patent, the specification, and the prosecution history.4 Phillips, 415 F.3d at 1313 17; Vitronics, 90 F.3d at 1582. Although the court should start with the claim language, the claim specification is always highly relevant and often dispositive. Phillips, 415 F.3d at 1315 (internal citation and quotations omitted); see also Vitronics, 90 F.3d at 1582 ( The specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication. ). Despite the importance of a specification, a court should not read a limitation from the specification into the claim. Tate Access Floors v. Interface Architectural Res., Inc., 185 F. Supp. 2d 588, 595 (D. Md. 2002) 2 Claim construction is a matter of law. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 83 (Fed. Cir. 1996). 3 Design patent claims are construed somewhat differently. See infra Section II.C. 4 Prosecution history is the record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims. Vitronics, 90 F.3d at 1582. 2 (Motz, J.); accord Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306 07 (Fed. Cir. 2003). A fine line exists between reading a claim in light of the specification, and reading a limitation into the claim from the specification. Anchor Wall Sys., 340 F.3d at 1307 (internal citation and marks omitted). The extrinsic evidence that may be considered includes dictionaries, learned treatises, prior art, inventor testimony, and expert testimony.5 Phillips, 415 F.3d at 1317 18. Extrinsic evidence can inform the court about the field and technical aspects of the invention, and help the court determine how a person of ordinary skill in that field would understand the claim. See id. at 1317 19. That said, while extrinsic evidence may be helpful, it is less significant than the intrinsic record. Id. at 1317. A party may not use any extrinsic evidence to contradict claim meaning that is unambiguous in light of the intrinsic evidence. Id. at 1324. II. As a preliminary matter, 180s correctly points out that I have made clear I will only construe ten to twelve terms. Although Gordini s Opening Claim Construction Brief purports to limit itself to that number, the claim constructions that it provided to 180s on February 2, 2010 construed dozens of terms.6 (See generally Opening Claim Constr. Brief of Pls. 180s, Inc. and 180s, LLC ( Pls. Mem. ), Ex. G.) In light of my previous instruction, and the practical difficulty 5 Generally, claims are construed without reference to the accused device. See, e.g., Sri Int l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985) ( It is only after the claims have been construed without reference to the accused device that the claims, as so construed, are applied to the accused device to determine infringement. (emphasis in original)). However, giving meaning to claim terms always takes place in the context of a specific accused infringing device or process. Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1326 27 (Fed. Cir. 2006). Accordingly, if the litigants cannot themselves inform a trial court of the specific issues presented by the infringement inquiry that is, issues of the breadth of the claim construction analysis and the most useful terms to facilitate that defining process then a trial court may refer to the accused product . . . for that context . . . . Id. at 1331. 6 Gordini argues that both the 483 patent claims and 645 patent claims should be construed narrowly because they are narrow improvement[s] in a crowded field of prior art. Although this argument makes some logical sense, Gordini fails to cite any Federal Circuit case the expressly establishes such a rule. The Federal Circuit case Gordini does cite Slimfold Mfg. Co. v. Kinkead Indus., Inc., 932 F.2d 1453, 1457 58 (Fed. Cir. 1991) is pre-Markman and only holds that a claim that is a mechanical combination in a crowded field is entitled to a narrow scope of equivalents. 3 of examining every term for which Gordini has at some point provided a construction, I will only consider constructions and legal arguments Gordini expressly included and did not later abandon in its Opening Claim Construction Brief, Response, and Claim Construction Statements. All claim terms not construed by this Court will be given their plain meaning by the fact finder.7 Cf. O2 Micro Int l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1361 (Fed. Cir. 2008) ( A determination that a claim term needs no construction or has the plain and ordinary meaning may be inadequate when a term has more than one ordinary meaning or when reliance on a term's ordinary meaning does not resolve the parties dispute. ); Sulzer Textile A.G. v. Picanol N.V., 358 F.3d 1356, 1366 67 (Fed. Cir. 2004) (citing U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1567 (Fed. Cir. 1997)) (distinguishing U.S. Surgical, where the Federal Circuit held claim construction was unnecessary, by noting that in U.S. Surgical the claim terms were understood throughout the case as having their plain meaning and that U.S. Surgical held that when the parties do not dispute that the words of the claims simply mean what they say, the district court is not required to add an additional layer of complexity by constructing the words ). A. 180s alleges patent and trade dress infringement based on the 483 patent. This patent describes the apparatus and method for making an ear warmer and an ear warmer frame without necessarily involv[ing] extraneous components (such as bolts or screws) or 7 Gordini continues to argue that I should bar 180s from advancing its ordinary meaning approach for the terms for which 180s did not offer constructions. In other words, constructions for the terms not discussed [within Gordini s Opening Claim Construction Memo] are undisputed for all purposes relevant here and should be adopted by the Court. (Def. Gordini s Initial Markman Claim Constr. Brief ( Def. s Mem. ) at 31 32.) Because 180s appropriately limited the number of its constructions in an effort to comply with my instruction limiting the number of terms to be construed, Gordini s argument that 180s waived their right to object to Gordini s other term constructions is without merit. 4 environmentally unfriendly glues or adhesives. (See Pls. Mem. at 6; see also id., Ex. A at col. 1, ll. 35 45.) The claims at issue are independent claim 3 and dependent claim 4: 3. A method of assembling an ear warmer frame, the ear warmer frame including a first frame member including a passageway and a projection, a second frame member including a plurality of projections, and a third frame member including a passageway and projection, said method comprising: inserting the second frame member into the first frame member passageway; engaging the projection on the first frame member with the plurality of projections on the second frame member; and coupling the second frame member and the third frame member. 4. The method of claim 3, wherein said coupling the second frame member and the third frame member comprises: inserting the second frame member into the third frame member passageway; and engaging the projection on the third frame member with the plurality of projections on the second frame member. (Id., Ex. A at col. 11, ll. 25 43.) Some of the embodiments discussed in the specification consist of an ear warmer frame made of one unitary piece. Claims 3 and 4, however, involve a frame constructed from multiple parts. (See id., Ex. A at Figs. 16 & 17.) i. Ear Warmer Frame As both 180s and Gordini propose, I construe ear warmer frame as a structure that supports a device worn on or over the ears whose primary function is to keep ears warm. (See id. at 9; Def. Gordini s Response to 180s [sic] Initial Markman Claim Constr. Brief ( Def. s Response ) at 3.) ii. Member / first frame member / second frame member / third frame member The chart below describes the parties competing definitions of the member terms.8 8 For the purpose of my limiting term constructions to ten to twelve, I consider these member terms collectively as a single term construction. 5 180s Construction member first frame member second frame member third frame member Gordini s Construction No construction term provided. The term member never appears in the claims alone . . . . Accordingly, no separate construction of the term member is necessary or appropriate a part of an ear warmer frame a part of an ear warmer frame, separate and distinct from the first frame member a part of an ear warmer frame, separate and distinct from the first and second frame members a unitary component having a length that may be coupled to one or more other unitary components; when the unitary components are coupled, they manifest motion relative to one another a first member (construed above) a second member (construed above) a third member (construed above) First, I construe member as a part. In light of the claim language, specification, and illustrative figures in the patent, member is synonymous with part. (See Pls. Mem., Ex. A at col. 7, ll. 39 52, Figs. 16 & 17.) Gordini s proposed construction of member is both too narrow and unnecessarily confusing. Nothing in the claim language necessitates that members, when coupled, manifest motion relative to one another. Although the specification indicates that some members in some embodiments move relative to each other to adjust the overall length of the frame[,] (see Pls. Mem., Ex. A at col. 7, ll. 40 45), the widely accepted understanding of member does not, explicitly or implicitly, implicate movement relative to one another. Additionally, I construe [first/second/third] frame member as follows: First frame member : a part of an ear warmer frame, separate and distinct from the second and third frame members Second frame member : a part of an ear warmer frame, separate and distinct from the first and third frame members Third frame member : a part of an ear warmer frame, separate and distinct from the first and second frame members This construction closely, but not identically, parallels 180s proposed construction. I added the extra separate and distinct . . . language to the first frame member and the second 6 frame member to make clear that each member is separate and distinct from each other member. Any redundancy this language creates is outweighed by the clarity it establishes. iii. Passageway 180s construes passageway as a long, narrow way, typically having walls on either side, that allows access. (180s seemed to abandon its request for long and narrow at oral arguments.) Gordini defines passageway as a loop, like a belt loop, having a perimeter fully enclosing an opening and is topologically genus one. I construe passageway as a way, typically having barriers at least on either side, that allows access. This parallels 180s proposed construction, with two exceptions. First, at least is added to clarify that a passageway may have barriers on more than just two sides. For example, the passageway in Figure 17 has, in addition to barriers on two walls, a barrier on what looks like, depending on how the ear warmer is positioned, the roof. Figure 17, therefore, has barriers on three sides of the passageway. Second, narrow and long are omitted because the passageways referenced in the specification are neither long nor narrow. (See, e.g., id., Ex. A at col. 7, ll. 57 60.) Nor am I convinced, despite some dictionary evidence to the contrary, that long and narrow are a part of the ordinary meaning of passageway. Regardless, the meaning supported by the specification that a passageway need not be long or narrow (although it may be) trumps any extrinsic dictionary definition. (See Def. s Mem. at 7 8 (citing Phillips, 415 F.3d at 1317).) Gordini s assertion that a passageway must be fully enclosed is contrary to the plain meaning of passageway, and Gordini does not present any evidence that passageway is understood differently to someone of skill in the art. Although the specification only refers to figures showing passageways that are in fact fully enclosed (see Pls. Mem., Ex. A at col. 7, ll. 7 57 60, Fig. 17), a court should not read a limitation from the specification into the claim. See Tate, 185 F. Supp. 2d at 595. Similarly, the mere fact that the patent drawings depict a particular embodiment of the patent does not operate to limit the claims to that specific configuration. Anchor Wall Sys., 340 F.3d at 1306 07. Further, the 483 patent noted its relation to the application for U.S. Patent No. 6,502,248 ( 248 patent ) (Pls. Mem., Ex. A at col. 1, ll. 10 12.), and the 248 patent includes an illustrative figure showing a passageway that is not fully enclosed on all four sides. (Id., Ex. H at col. 8, ll. 50, Fig. 14.) All of these points highlight the fact that a passageway may be fully enclosed, but it need not be. If 180s intended to for passageway to mean a fully enclosed passageway, the claim should have read fully enclosed passageway or tunnel. iv. Projection 180s proposed construction for projection is something that extends outward, and Gordini s is a tooth-like extension protruding radially from a member surface. I construe projection as something that extends outward from a surface. The portion of this construction that reads something that extends outward is the widely accepted understanding of projection. The entire construction, including the phrase from a surface, is consistent with all the relevant language in the specification. (See, e.g., id., Ex. A at col. 7, ll. 47 49, Figs. 16 & 17.) Furthermore, although this Court need not consult extrinsic evidence because the intrinsic evidence is clear, Phillips, 415 F.3d at 1324, this construction closely tracks the dictionary definition. (Pls. Mem., Ex. D ( projection is a thing that extends outward from something else ).) Defining projection as, in part, tooth-like would be vague and imprecise. In fact, as 180s points out, the projections shown in the patent figures do not particularly resemble teeth. 8 Nor do claims 3 or 4 require that the projections protrude radially from the member. Such a limitation simply does not exist in the claim language. v. Plurality of Projections 180s urges the following construction of plurality of projections : two or more projections. Gordini argues for a large number of tooth-like extensions protruding radially from a member surface. I construe plurality of projections as two or more projections. The plain and ordinary meaning of plurality is the state of being plural, which is synonymous with two or more. Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1325 28 (Fed. Cir. 2001) (citing Yorks Prods. Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1575 (Fed. Cir. 1996)); see also Cybersettle, Inc. v. Nat l Arbitration Forum, Inc., 243 Fed. App x 603, 606 (Fed. Cir 2007) (unpublished) (noting that the well understood meaning of the term plurality both in general and in patent parlance is two or more ). Gordini points out that the patent figures always show a second frame member which the claim characterizes as having a plurality of projections with a large number of projections. However, consistent with the principle that limitations will not be read from the specification into the claim, the Federal Circuit has expressly held that plurality may still mean two or more where the relevant figures show more than two projections. 9 See Dayco Prods., 258 F.3d at 1327 28. I am also not persuaded by Gordini s argument that plurality must mean a large number because the second frame member must have a large number of projections to 9 Gordini erroneously argues that Dayco Products only stands for the proposition that plurality means two or more unless there is some indication to the contrary. Although the Dayco Products court, in describing prior Federal Circuit decisions, stated we have held that plurality, when used in a claim, refers to two or more items, absent some indication to the contrary[,] the court went on to hold that plurality . . . of projections means two or more even where the figures showing the patent s preferred embodiments included four projections. Dayco Prods., 258 F.3d at 1327 28 (emphasis added). 9 establish adjustability. At oral arguments, 180s pointed out that adjustability could be created merely by friction, without dotting the second frame member with a large number of projections.10 180s also noted that nothing in the claim language actually requires that the ear warmer be adjustable.11 B. 180s brought patent and trade dress infringement counts against Gordini based on the 645 patent, which describes ear warmers that organize headphone components in a manner that protects speaker components and facilitates a wearer s ease of use of the electronic components. (Pls. Mem. at 1, 6.) These allegations implicate thirteen claims in the 645 patent: 1 4 and 7 15. Independent claim 1 reads: 1. An apparatus, comprising: a frame having an interior side and an exterior side, the frame being configured to extend around the back of a user's head; a first membrane coupled to at least a portion of the interior side of the frame; a second membrane coupled to one of the frame and the first membrane, the first membrane and the second membrane defining a receptacle and an opening that communicates with the receptacle, the opening being disposed proximate the interior side of the frame; a speaker disposed in the receptacle; and a first electrical wire having a first end electrically coupled to the speaker and a second end including a connector, the connector being disposed proximate to the opening of the receptacle and configured to be electrically coupled to a second electrical wire disposed outside of a housing of the device associated with sound generation. 10 Though not directly relevant to this term construction, the second frame member probably must have despite claim language describing a second frame member including a plurality of projections at least two projections on each end. Claim 3 describes engaging the projection on the first frame member with the plurality of projections on the second frame member. For the first frame member, which rests somewhere in the vicinity of one of the user s ears, to engage with a plurality of projections, the second frame member would have to have at least two projections on the end that links up with the first frame member. Similarly because claim 4 also describes wherein coupling the second frame member and the third frame member comprises: . . . engaging the projection on the third frame member with the plurality of projections on the second frame member the other side of the second frame member must also have at least two projections. Accordingly, the claim language probably requires the second frame member to have at least four projections. 11 In its Opening Claim Construction Brief, Gordini seems to urge this Court to construe insert. 180s argues this term should not be construed because Gordini did not previously identify this term. Because Gordini does not respond to 180s argument in its Response, and it is not particularly clear whether Gordini is in fact seeking such a construction, I did not construe insert. 10 (Id., Ex. B at col. 10, ll. 1 20.) 180s and Gordini disagree about which of these claims terms I should construe. 180s offers construction for the following six terms: [first/second] membrane, receptacle, opening, communicates with, disposed proximate, and second end including a connector. Gordini presents constructions for two terms: an opening that communicates with the receptacle, the opening being disposed proximate the interior side of the frame and second end including a connector. 12 (See Joint Claim Constr. Statement ( Joint Constr. ) at 2.) The first term for which Gordini urges a construction is unwieldy, lengthy, and complex. Accordingly, I find it more practical to construe this claim language in smaller pieces as urged by 180s. i. [first/second] membrane As 180s and Gordini propose, I construe membrane as a layer of fabric or materials. (See Pls. Mem. at 19; Def. Response at 13.) ii. receptacle As 180s and Gordini propose, I construe receptacle as container. (See Pls. Mem. at 21; Def. Response at 13.) iii. opening 180s argues for construing opening as open space serving as a passage or gap. Considering its construction of an opening that communicates with the receptacle, the opening being disposed proximate the interior side of the frame, Gordini seems to urge construing 12 Although Gordini asked me to construe the term the connector being disposed proximate to the opening of the receptacle in both its Opening Claim Construction Brief and its Response, it appears to abandon that approach and instead joins 180s in asking this Court to construe second end including a connector. (See Joint Constr. at 2.) 11 opening as a port that is positioned near and within the inside surface, i.e., the surface closest to the user s head when worn. 13 Gordini also seems to urge a further limit that the opening be unimpeded. I construe opening as an open space serving as a passage or gap. This definition is consistent both with the embodiments in the specification and the widely accepted understanding of the term and. To be sure, the opening must be disposed proximate the interior side of the ear warmer frame. However, any required proximity to the interior side is not found within the term opening, but rather within terms disposed proximate and interior. See infra Section II.B.v (construction of disposed proximate ). Further, Gordini s unimpeded limitation is unnecessary and imprecise. If Gordini believes, as 180s suggests, that unimpeded means unblocked to provide continuous access by the user, such a limitation is simply not found in the claim language or specification. For example, an opening that is somewhat impeded by fabric, but nonetheless allows access to the connector, would in fact, I believe, still be considered an opening under this claim language. (See, e.g., Pls. Mem., Ex. B. at col. 4, ll. 50 58 (specification describing an embodiment in which the connector is not stored within the receptacle, but is protruding out of the opening such that the user need not have unimpeded access through the opening and into the receptacle ).) 13 Matching Gordini s constructions with particular claim terms or language, especially for the 645 patent, is a difficult endeavor, in part because Gordini construed longer phrases and not individual words. For example, Gordini may actually be urging the Court to define disposed proximate the interior side when it urges the construction near and within the inside surface, i.e., the surface closest to the user s head when worn. That said, the outcome of these claim constructions would remain the same regardless of where this opinion discusses each of Gordini s proposed constructions. 12 iv. communicates with 180s urges this Court to define communicates with as provides access to. In contrast, Gordini seems to again, based on its construction of an opening that communicates with the receptacle . . . urge two constructions: [allows] for something such as a wire or jack to pass through the port when the apparatus is worn by a user and/or [provides] continued, unimpeded access by the wearer during use to allow the user to connect and disconnect a device such as an iPod. I construe communicates with as provides access to. Again, continued, unimpeded access by the wearer is imprecise and unnecessary. See supra Section II.B.iii. In claim 1, the opening . . . communicates with receptacle. That is, the opening must provide access to the receptacle. Whether that access is impeded or continuous is irrelevant and extraneous. A more difficult question is whether communicates with means provides access to [the receptacle] . . . for something such as a wire or jack to pass through the opening. First, Gordini s argument that the doctrine of prosecutorial disclaimer is applicable here is unpersuasive. This doctrine precludes a patentee from recapturing through claim interpretation specific meanings disclaimed during prosecution. See Omega Eng g, 334 F.3d at 1323 26. To trigger this rule, the disclaimer must be unambiguous. Id. Even if this the doctrine does not apply, however, prosecution history is relevant intrinsic evidence for claim construction, though less so than the claim language or specification. See Phillips, 415 F.3d at 1313 17. The Patent Office initially rejected the 645 patent as anticipated by the Siskin headphones/ear warmer, U.S. Patent No. 6,888,950 ( Siskin Patent ). In response, to distinguish it from the Siskin Patent, 180s amended its claim to require that the opening be disposed proximate the interior side of the 13 frame. (Def. s Mem., Ex. 14 at 3; Rebuttal Claim Constr. Brief of Pls. 180s, Inc. and 180s, LLC ( Pls. Response ) at 15.) Although not entirely clear, Gordini seems to argue that 180s, in amending the 645 patent and responding to its initial rejection, accepted provid[ing] access for something such as a wire or jack to pass through as the meaning of communicates with. More specifically, 180s allegedly distinguished the 645 patent from the Siskin Patent by noting that the Siskin Patent has an opening (110), through which the control portion (108) of the electronic component is extended, whereas the corresponding opening in the 645 patent is on the interior side of the frame. Accordingly, Gordini argues 180s explicitly argued . . . that the purpose of the claimed opening is to allow for components of the apparatus to pass from the interior to the exterior so that they are accessible to a wearer during use. Although 180s may have unambiguously disclaimed any embodiment in which the opening was not on the interior of the ear warmer, 180s did not unambiguously disclaim any definition of opening that lacked a wire or jack passing through. The claim language also supports the provides access to construction. To be sure, the claim language an opening that communicates with the receptacle is ambiguous, and 180s perhaps should have used the clearer phrase provides access to. Additionally, communicates with is not a widely accepted synonym for provides access to, but implicates the idea of facilitating communication (such as electrical communication). However, communicates with is also not synonymous with provides access to for something such as a wire or jack to pass through. More importantly, as 180s stressed at the Markman hearing, the configuration of the ear warmer s electrical components are discussed in a different section of claim 1. Two paragraphs after communicates with, claim 1 reads: [A] first electrical wire having a first end electrically coupled to the speaker and a second end including a connector, the connector being disposed proximate to the opening of the receptacle and configured to be electrically coupled to a 14 second electrical wire disposed outside of a housing of the device associated with sound generation. (Pl. s Mem., Ex. B at col. 10, ll. 14 20.) Nothing suggests that the portion of claim 1 that includes communicates with was intended to provide guidance regarding the electrical configuration of the patent. If Gordini wants to limit the 645 patent to a certain electrical configuration, it must find such a limitation in the claim language that pertains to the electrical configuration. Lastly, there is extrinsic support for the provides access to construction. One dictionary definition though the third and last listed of communicate is to open into each other; connect. See MERRIAM-WEBSTER ONLINE DICTIONARY, http://www.merriamwebster.com/dictionary/communicate. v. disposed proximate 180s urges the following construction of disposed proximate : located closely in space [to]. Gordini argues for a different construction: being positioned near and within so as to be accessible from. 14 I adopt 180s proposed construction: located closely in space [to]. This construction is the closest to the plain and ordinary meaning of the term. If the claims intended a near and within meaning, they should have used that language. Proximate is widely understood as meaning close to or near, but not necessarily within. Furthermore, this construction makes sense in light of the specification and fits both uses of disposed proximate in claim 1: the connector is located closely in space to the opening and the opening is located closely in space to the interior side. Finally, the dictionary supports this construction. The most relevant definition of dispose is to put in place: set in readiness: arrange ; the most relevant definition 14 Gordini s Opening Claim Construction Brief and the Joint Claim Construction Statement suggest Gordini s construction for disposed proximate is being positioned near or within. (See Def. s Mem. at 31; Joint Constr. at 2.) However, in its Response, Gordini also argues that [t]he 645 opening must be disposed, i.e., set in readiness, see Merriam-Webster online, so as to be accessible from the interior of the ear warmer frame. (Def. s Response at 16.) Furthermore, Gordini vacillates between near or within and near and within. 15 of proximate is very near: close. MERRIAM-WEBSTER ONLINE DICTIONARY, http://www.merriam-webster.com/dictionary/proximate; MERRIAM-WEBSTER ONLINE DICTIONARY, http://www.merriam-webster.com/dictionary/disposed. vi. second end including a connector 180s urges construing second end including a connector as an end having or coupled to a connector. Gordini urges construing the term as a second extremity forming one piece of a jack for establishing an electrical communications connection. I adopt the following construction of second end including a connector : a second end having or coupled to something that establishes an electrical communications connection. 180s construction of second end including as an end having or coupled to is consistent with the plain meaning of the phrase and the specification. However, 180s construction is incomplete; this term construction must clarify that the connector is an electrical communications connection. The plain meaning of connector does not necessarily implicate electrical communication, so an ordinary fact finder would be easily misled into believing the connector lacks such a meaning. Yet the specification is unambiguous that connector in fact facilitates an electrical communication connection, and 180s does not point to any claim language or specification language disclaiming such an understanding. Consequently, although jack may inappropriately limit the term connector, defining connector as something that establishes an electrical communications connection is consistent with the specification. (See, e.g., Pls. Mem., Ex. B. at col. 4, l. 59 col. 5, l. 8 ( The connector 450 can be either a male or female connector and is configured to be coupled to another wire as illustrated, for example, by the wire W in FIG. 2. Note that connector 450 is illustrated as a female connector in FIG. 2 and as a male connector in FIG. 9. ).) 16 C. Lastly, 180s brings a design patent infringement claim against Gordini based on the 001 design patent. The only claim in 001 reads: The ornamental design for an ear warming having an external frame, as shown and described. (Id., Ex. C.) The claim specification simply refers to seven illustrative figures, two of which are pictured below: (Id., Ex. C.) Because both parties agree that most of the broken lines form no part of this design, this claim covers only the small, left-side portion of the ear warmer that is shown in solid lines. 180s cites Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) to oppose a verbal construction of this claim. 180s argues that the claim is best represented by simply the seven figures set forth in the patent. Gordini, on the other hand, asks for the following verbal construction: A small left side portion, having the shape and proportions shown, in an external ear warmer frame, that tapers, when viewed from the side, between a forward end and a rear end; jagged forward and rear edges; and top and bottom arcuate edges; wherein the small left-side portion is substantially asymmetrical around a horizontal axis of rotation, extending between the forward edge and the rear edge. Gordini also requests that I decide whether: 17 (1) the 001 design patent claim is limited to the small portion shown in solid lines, including the jagged solid lines at the left and right ends and the broken fold line, the other broken lines being disclaimed ; (2) there are any ornamental (rather than functional) features in the small claimed portion that joins the headband member and the left ear frame member ; and (3) [a]fter subtracting unprotectable functional features, what if any ornamental features in the claimed design portion are present: (a) in the prior art and (b) in the accused Gordini earmuff. Although it does not offer a verbal alternative, as it believes none is necessary, 180s asserts that Gordini s proposed verbal construction is flawed because the claimed design is not intended to necessarily have jagged edges but rather they merely illustrate an arbitrary boundary between the claimed portion and the disclaimed portions and the construction is entirely inconsistent with the priority claim. i. Legal Principles Specific to Design Patent Claim Construction A design patent may be obtained for any new, original and ornamental design for an article of manufacture. See, e.g., Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (quoting 35 U.S.C. § 171). A design patent (1) must be non-obvious and (2) protects only ornamental that is, non-functional features of the design. See, e.g., OddzOn Prods. Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404 05 (Fed. Cir. 1997); Durling, 101 F.3d at 103 (citing 35 U.S.C. § 103). [C]ourts have traditionally undertaken a familiar two-step approach in addressing design patent infringement: first, claim construction and, second, comparing the accused article to the construed claim. OddzOn Prods., 122 F.3d at 1405. Recently, the Federal Circuit, in Egyptian Goddess, clarified that step two hinges on identity of appearance to an ordinary person, not to the eye of an expert. Egyptian Goddess, 543 F.3d at 670 (quoting Gorham v. White, 81 U.S. 511, 527 (1871)) (if infringement hinged on the eye of an expert, there never could be piracy of a patented design, for human ingenuity has never yet produced a design, in all 18 its details, exactly like another, so like, that an expert could not distinguish them ). More specifically, the test for step two is whether an ordinary observer, familiar with the prior art, would find the accused design substantially similar to the patented design.15 Id. at 677 78; see also Wing Shing Prods. (BVI) Co. Ltd. v. Sunbeam Prods., Inc., 665 F. Supp. 2d 357, 361 (S.D.N.Y. 2009). Egyptian Goddess also clarified a distinction between design patent claim construction (step one) and other patent claim construction. Although the district court may verbally construe a design patent claim, [g]iven the recognized difficulties entailed in trying to describe a design in words, the preferable course ordinarily will be for a district court not to attempt to construe a design patent claim by providing a detailed verbal description of the claimed design. 16 Egyptian Goddess, 543 F.3d at 679 (emphasis added); accord Crocs, Inc. v. Int l Trade Comm n, --- F.3d --, 2010 WL 638272, at *5 (Fed. Cir. Feb. 24, 2010) ( [A]s a rule, the illustration in the drawing views is its own best description. (quoting MANUAL OF PATENT EXAMINING PROCEDURE § 1503.01 (8th ed. 2006))). Verbally construing a design patent claim risks unduly emphasizing particular features of the design and focusing on each individually described feature in the 15 Although this is how this test is usually described, prior art is not actually always relevant. Rather, Egyptian Goddess created two levels to step two: a level-one or threshold analysis to determine if comparison to the prior art is even necessary, and a second level analysis that accounts for prior art in less obvious cases. Wing Shing Prods., 665 F. Supp. 2d at 362. 16 Gordini argues that the Federal Circuit require[s] detailed verbal descriptions in cases of obviousness, see Durling v. Spectrum Furniture Co., 101 F.3d 100, 102 (Fed. Cir. 1996), cited with approval in Egyptian Goddess at 679 n. 1 [sic], and in cases of functionality, see Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997), also cited with approval in Egyptian Goddess at 680 [sic]. Here, functionality and obviousness are key issues, thus, a detailed verbal description of the 001 claimed design portion is required . . . . I disagree. First, immediately after citing Durling with approval, the Egyptian Goddess court distinguished the rule announced in Durling which pertained to describing a design patent in explaining a decision that the patent was invalid as obvious from a rule requiring a verbal description at the claim construction stage: Requiring such an explanation of a legal ruling as to invalidity is quite different from requiring an elaborate verbal claim construction to guide the finder of fact in conducting the infringement inquiry. Egyptian Goddess, 543 F.3d at 679 n.1. Second, in citing OddzOn Products, the Egyptian Goddess court was merely re-affirming that district courts should distinguish [for the fact-finder] between those features of the claimed design that are ornamental and those that are functional. Id. at 680. Egyptian Goddess never suggested that a detailed verbal claim construction would be required in cases of functionality. 19 verbal description rather than on the design as a whole. Egyptian Goddess, 543 F.3d at 679 80; accord Crocs, 2010 WL 638272, at *5. That said, the district court has significant discretion about whether to verbally construe a claim and what level of detail to include in such a construction. Egyptian Goddess, 543 F.3d at 679. As part of design patent claim construction, in addition to verbally describing the claim, a trial court can usefully guide the finder of fact by addressing a number of other issues that bear on the scope of the claim. For example, the court may: (1) describ[e] the role of particular conventions in design patent drafting, such as the role of broken lines (2) assess[] and describ[e] the effect of any representations that may have been made in the course of the prosecution history (3) distinguish[] between those features of the claimed design that are ornamental and those that are purely functional Id. at 680 (internal citations omitted).17 17 Egyptian Goddess was unclear regarding whether these three functions were to be performed at claim construction or at a later stage in the litigation: Apart from attempting to provide a verbal description of the design, a trial court can usefully guide the finder of fact by addressing a number of other issues that bear on the scope of the claim. Those include such matters as describing the role of particular conventions in design patent drafting, such as the role of broken lines, see 37 C.F.R. § 1.152; assessing and describing the effect of any representations that may have been made in the course of the prosecution history, see Goodyear Tire & Rubber Co., 162 F.3d at 1116; and distinguishing between those features of the claimed design that are ornamental and those that are purely functional . . . Egyptian Goddess, 543 F.3d at 680. Because this section starts with apart from attempting to provide a verbal description and includes guide the fact finder, at least one court held that Egyptian Goddess cautions against addressing these issues at claim construction in advance of trial or in advance of summary judgment motions. See DePaoli v. Daisy Mfg. Co., 2009 WL 2145721, *3 *5 (D. Mass. July 14, 2009). Just a few weeks ago, however, the Federal Circuit implicitly clarified that apart from attempting to provide a verbal description did not necessarily mean separate from claim construction. See Richardson v. Stanley Works, Inc., ---F.3d---, 2010 WL 774334, *2 *3 (Fed. Cir. March 9, 2010) (citing to Egyptian Goddess and affirming the district court s decision to, after a bench trial, distinguish the design patent s ornamental and functional aspects as part of claim construction). However, Richardson does not expressly demand that the district court distinguish the ornamental and functional characteristics at the claim construction stage as opposed to some later stage in the litigation. Rather, Richardson merely clarifies that, post-Egyptian Goddess, a district court should still distinguish between ornamental and functional characteristics at some point in design patent infringement cases, and that the court is permitted to engage in that inquiry as part of claim construction (at least when claim construction occurs after a bench trial). 20 ii. 001 Design Patent Claim Construction I construe the 001 design patent claim as simply the seven figures included in the patent. A verbal construction is unnecessary as these illustrative figures speak for themselves. Gordini s proposed construction demonstrates why the Federal Circuit advises against detailed verbal constructions: it confuses and causes more harm than good. For example, top and bottom arcuate edges and substantially asymmetrical around a horizontal axis of rotation are less clear than the illustrations alone. Disputes about the visual characteristics of the design such as what exactly the jagged lines depict may be properly resolved by this Court at a later stage in the litigation or by the fact finder at trial. Although it is debatable whether this is the most appropriate stage for this determination,18 I also hold that the claim is demarcated only by the solid lines in the figures. Gordini s argument that the broken line in the middle of the claimed portion should be considered a middle arcuate folding edge is unpersuasive. Although 180s agrees that in some circumstances broken lines represent fold lines and are thus a part of the claim, Gordini offers no persuasive reason why this particular broken line should be viewed as a fold line. Rather, 180s explanation that this broken line shows where two parts of the ear warmer abut is more plausible. Finally, I will refrain from distinguishing the claim s ornamental and functional characteristics at this time.19 Although a district court may distinguish between these features at the claim construction stage, I believe I also have discretion to wait until a later stage of the litigation to make that decision, as long as I do so before proceeding to the step 2 comparison of 18 For the reasons explained in supra note 17, it is within my discretion to make this determination now. This inquiry serves two primary purposes: (1) determining if the claim is invalid because it is primarily functional and (2) even if the claim is valid, determining which characteristics of the claim will not be protected because they are functional (and not ornamental). See Richardson, 2010 WL 774334, at *2; OddzOn Prods., 122 F.3d at 1404 06. 19 21 the claim and the accused article. Cf. Richardson, 2010 WL 774334, at *1 *3 (affirming the district court distinguishing ornamental and functional features as part of claim construction at the conclusion of a bench trial); Egyptian Goddess, 543 F.3d at 679 80 (noting that a district court has significant discretion in deciding how to proceed with design patent claim construction); OddzOn Prods., 122 F.3d at 1399 1406 (affirming the district court distinguishing ornamental and functional characteristics as part of claim construction after cross-motions for summary judgment,); DePaoli, 2009 WL 2145721, at *8 ( It is not entirely apparent from this passage whether the Federal Circuit advocates resolving . . . functionality issues through formal Markman claim construction, jury instructions, or some other means. . . . One thing that does seem clear from Egyptian Goddess is that district courts have considerable discretion for resolving this type of question. ). But cf. Mag Instruments, Inc. v. JS Prods., Inc., 595 F. Supp. 2d 1102, 1107 08 (C.D. Cal. 2008) ( Assuming . . . that Plaintiff s Patents contain both functional and non-functional elements, the Court, in the usual course of issuing a claim construction order, will construe the challenged claims to identify the non-functional aspects of the design as shown in the patent. ). In this case, it is prudent to defer distinguishing the ornamental and functional features until a later stage in the litigation. Unlike OddzOn Products and Richardson, this case is not on the verge of proceeding to the comparison of the accused article and the claim. On the contrary, it would be premature to compare Gordini s ear warmer to the 001 design patent claim because discovery is not complete and the parties have not fully briefed these issues. There is therefore no rush to distinguish the claim s ornamental and functional features, and Gordini does not 22 provide any other convincing rationale for not waiting until the close of discovery to resolve these functionality questions.20 DATE: March 30, 2010 ________/s/_______________ J. Frederick Motz United States District Judge 20 Because I also believe it is inappropriate for resolution at this stage, I do not address Gordini s request that this Court decide whether [a]fter subtracting unprotectable functional features, what if any ornamental features in the claimed design portion are present: (a) in the prior art and (b) in the accused Gordini earmuff. Cf., e.g., OddzOn Prods., 122 F.3d at 1405 06 (in design patent infringement analysis, distinguishing between (1) construing the claim to the design and (2) comparing [the construction] to the design of the accused device ); Wing Shing Prods., 665 F. Supp. 2d at 362 68 (addressing whether the accused device infringed on the design patent by analyzing the differences between the accused device and the design patent both considering and not considering the prior art at the summary judgment stage). 23
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