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Edgewell Personal Care Brands, LLC v. Albaad Massuot Yitzhak, Ltd.

United States District Court, D. Delaware

May 9, 2017


          Thomas C. Grimm, Esq., Stephen J. Kraftschik, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, Delaware; Daniel J. Burnham, Esq., Jason T. Kunze, Esq., NIXON PEABODY LLP, Chicago, Illinois; Jason C. Kravitz, Esq. (argued), NIXON PEABODY LLP, Boston, Massachusetts. Attorneys for Plaintiff.

          John G. Day, Esq., Andrew C. Mayo, Esq., ASHBY & GEDDES, Wilmington, Delaware; David A. Loewenstein, Esq. (argued), Guy Yonay, Esq., Clyde Shuman, Esq., PEARL COHEN ZEDEK LATZER BARATZ LLP, New York, New York. Attorneys for Defendants.



         Presently before me is the issue of claim construction of multiple terms in U.S. Patent No. 9, 192, 522 (the '"522 Patent") and U.S. Patent No. 6, 432, 075 (the '"075 Patent"). I have considered the parties' Joint Claim Construction Brief. (D.I. 83). I held oral argument on April 5, 2017. ("Tr.").


         "It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal quotation marks omitted). '"[T]here is no magic formula or catechism for conducting claim construction.' Instead, the court is free to attach the appropriate weight to appropriate sources 'in light of the statutes and policies that inform patent law.'" SoftView LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at 1324) (alteration in original). When construing patent claims, a court considers the literal language of the claim, the patent specification, and the prosecution history. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Of these sources, "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, 415 F.3d at 1315 (internal quotation marks omitted).

         "[T]he words of a claim are generally given their ordinary and customary meaning.... [Which is] the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1312-13 (citations and internal quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id. at 1321 (internal quotation marks omitted). "In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314.

         When a court relies solely upon the intrinsic evidence-the patent claims, the specification, and the prosecution history-the court's construction is a determination of law. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015). The court may also make factual findings based upon consideration of extrinsic evidence, which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Phillips, 415 F.3d at 1317-19. Extrinsic evidence may assist the court in understanding the underlying technology, the meaning of terms to one skilled in the art, and how the invention works. Id. Extrinsic evidence, however, is less reliable and less useful in claim construction than the patent and its prosecution history. Id.

         "A claim construction is persuasive, not because it follows a certain rule, but because it defines terms in the context of the whole patent." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude the inventor's device is rarely the correct interpretation." Osram GMBH v. Int'l Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (citation omitted).


         1. a "generally tapered" [shaped] insertion tip region (Claims 1 and 15 of the '522 Patent)

a. Plaintiff's proposed construction: No construction needed. The plain and ordinary meaning applies (i.e., the insertion tip region has a generally tapered shape).
b. Defendants 'proposed construction: This claim element is indefinite.
c. Court's construction: No construction needed. The plain and ordinary meaning applies.

         Claim 1 is representative. It provides:

1. A tampon assembly, comprising:
a barrel region having a single layer plastic tubular wall having an inner surface and an outer surface, said barrel region having a first end and a second end, said barrel region having a plurality of discrete petals at said first end that define a generally tapered shaped insertion tip region, said discrete petals being separated from each other by a plurality of cuts that form a break of material through said tubular wall, each of said plurality of cuts having a terminal end adjacent a base region of said plurality of discrete petals, each of said plurality of cuts extending along said barrel region for a first length measured from said first end to said terminal end;
a tapered pledget having an end region that has been compressed to form a tapered insertion tip that has a greater density than an adjacent region of said pledget prior to said tampon assembly being inserted into a user, said tapered tip having a length that is less than said first lengths of said plurality of cuts, said tapered tip contacting and supporting at least said base regions of said plurality of petals adjacent to said terminal ends of said plurality of cuts while said tampon assembly is being inserted into said body for mitigating against said plurality of petals pinching said user.

('522 Patent, Claim 1). Figure 1 of the '522 Patent is as follows. ('522 Patent, Fig. 1).

         (IMAGE OMITTED)

         Under Nautilus, Inc. v. Biosig Instruments, Inc., "a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." 134 S.Ct. 2120, 2124 (2014). Prior to Nautilus, "terms of approximation such as 'generally' need not be construed with mathematical precision." N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1346 (Fed. Cir. 2005). The Federal Circuit has held that the phrase "generally parallel" was not indefinite and that it "envisions some amount of deviation from exactly parallel." Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003). The Federal Circuit has held the phrase "generally oblong" to mean "a shape that is longer in one direction than the other, but not necessarily true to a specific geometrical shape, i.e., not a perfect oval or rectangle." Alltrade Tools, LLC v. Olympia Grp., Inc., 123 F.App'x 394, 397 (Fed. Cir. 2005). The court in Datamize, LLC v. Plumtree Software, Inc., held that the term "aesthetically pleasing" was indefinite because it was subjective and depended on "one person's opinion of aesthetics." 417 F.3d 1342, 1350, 1356 (Fed. Cir. 2005).

         After Nautilus, the Federal Circuit has continued to uphold terms of degree. See Apple, Inc. v. Samsung Elec. Co., Ltd., 786 F.3d 983, 1002-03 (Fed. Cir. 2015) (finding "substantially centered" not indefinite); Tinnus Enters., LLC v. Telebrands Corp., 846 F.3d 1190, 1205-06 (Fed. Cir. 2017) (suggesting that "substantially filled" is not indefinite). The Federal Circuit has acknowledged that the "definiteness requirement. .. recogniz[es] that absolute precision is unattainable." Apple, 786 F.3d at 1002-03; see also Sonix Tech. Co., Ltd. v. Publ'ns Int'l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) ("Because language is limited, we have rejected the proposition that claims involving terms of degree are inherently indefinite.").

         Defendants' main argument is that that "[a]dding the word 'generally' to the mix creates ambiguity" rendering the claim indefinite under Nautilus. (D.I. 83 at p. 9). I disagree because the patent informs with reasonable certainty the term "generally tapered." The plain meaning of "tapered" is a "gradual diminution of thickness, diameter, or width in an elongated object."[1] The plain meaning of "generally" is '"in a general manner, ' or 'in disregard of specific instances and with regard to an overall picture, ' or 'on the whole.'" Alltrade, 123 F.App'x at 397. Combining these definitions results in the plain meaning of "generally tapered." Examples from the specification reinforce the meaning of "generally tapered." (See, e.g., '522 Patent, Figs. 1 and 5). The term "generally tapered" is analogous to terms of degree such as "generally parallel, " "generally oblong, " and "substantially centered." In contrast to the term "aesthetically pleasing, " the term "generally tapered" is much less subjective. Thus, the term is sufficiently definite.

         Defendants appear concerned that this construction would allow the claimed shape to be anything Plaintiff wants it to be, so long as it is "narrower towards the tip end." (D.I. 83 at pp. 9-10). This concern is misplaced because simply narrowing towards the tip end is not enough, there must be a gradual diminution of the diameter of the elongated object.

         Defendants argue that this construction would cover prior art which feature "dome shaped ends" or "semispherical shapes." (D.I. 83 at p. 16). As noted by Plaintiff, there is no principle that individual claim terms can never read on a prior art feature.

         Defendants argue for the application of the principle in Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1218 (Fed. Cir. 1991), that "[w]hen the meaning of claims is in doubt, especially when, ... there is close prior art, they are properly declared invalid." (D.I. 83 at pp. 17, 63). This principle does not apply here because the meaning of the claims is not in doubt.

         Defendants also argue that Plaintiffs interpretation here would be inconsistent with Plaintiffs interpretation of "diametrically gradually reduced" in the '075 Patent. (D.I. 83 at p. 10). Plaintiffs interpretation of "generally tapered" is consistent with "diametrically gradually reduced." The discussion in Part 11.10 below illustrates why. Furthermore, Defendants' argument also fails because the '075 Patent is not related to the '522 Patent; the '075 uses different language; and the '075 has different inventors. (See '075 Patent).

         Defendants argue that some of Plaintiff s arguments are doctrine of equivalents arguments because Plaintiffs arguments mention the coverage of the claim term. (D.I. 83 at p. 14). I see Plaintiffs arguments as simply claim construction arguments.

         Thus, the term "generally tapered" is not indefinite.

         2. said tapered insertion tip region is "generally elliptical" in shape (Claims 8, 21, 23, 28, and 35 of the '522 Patent)

         a. Plaintiff's proposed construction: The shape of the tapered insertion tip region generally follows the shape of a truncated ellipse.

         b. Defendants 'proposed construction: This claim element is indefinite.

         c. Court's construction: The shape of the tapered insertion tip region generally follows the shape of a truncated ellipse.

         Defendants' argue that "generally elliptical" is indefinite. The analysis above for "generally tapered" is applicable here. The term "generally elliptical" is even closer to the term "generally oblong" in Alltrade than the term "generally tapered." Defendants are concerned that Plaintiff may argue that a parabolically or cone-shaped tip is "generally elliptical" or that "generally elliptical" excludes circles. Defendants' concerns are largely misplaced. One skilled in the art would not understand "generally elliptical" to cover something "cone-shaped." Although one skilled in the art could understand something parabolically-shaped to be "generally elliptical, " it is still reasonably certain to determine whether something is "generally elliptical." Furthermore, one skilled in the art would understand that because a circle is a special case of an ellipse, "generally elliptical" does not exclude circles.

         Defendants argue that an ellipse describes a two-dimensional object and, because the patent relates to a three-dimensional object, the term is indefinite. (D.I. 83 at p. 19). One skilled in the art would understand with reasonable certainty an ellipse as used in the context of the claims refers to the three-dimensional equivalent of an ellipse. Thus, the term is not indefinite.

         Plaintiff seeks to clarify that this term refers to a "truncated" ellipse. This clarification is helpful because a skilled artisan looking at the context of the claims and figures in the specification would understand the insertion tip not to have the shape of a full ellipse.

         Defendants took issue with the word "truncated" at oral argument, arguing that it would be unclear where the truncation begins. (Tr. 21:19-20; 22:2-10). This concern was not adequately preserved in the briefing and there are no compelling circumstances for why Defendants did not raise this in their answering brief or sur-reply brief (D.I. 83 at pp. 19-20), and thus this issue is waived. See, e.g., D. Del. R. 7.1.3(c)(2) ("The party filing the opening brief shall not reserve material for the reply brief which should have been included in a full and fair opening brief); Melchior v. Hilite Int'l, Inc., 665 F.App'x 894, 899 n.4 (Fed. Cir. 2016) (finding waiver of an argument raised for the first time at oral argument on appeal); Anspach ex rel. Anspach v. City of Philadelphia, Dep't of Pub. Health, 503 F.3d 256, 258 n.1 (3d Cir. 2007) ("Absent compelling circumstances not present here, failure to raise an argument in one's opening brief waives it."). Even assuming it was not waived, one skilled in the art would understand with reasonable certainty where the truncation begins in light of the figures provided the specification. (See, e.g., '522 Patent, Figs. 1 and 5).

         3. said tapered tip [region] contacting [contacts] and supporting [supports] "at least said [the] base regions of said plurality of petals adjacent to said [the] terminal ends of said plurality of cuts while said tampon assembly is being inserted into said body for mitigating against said plurality of ...

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