United States District Court, D. Delaware
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.
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.
ANDREWS, U.S. DISTRICT JUDGE
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.").
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).
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.
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.
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)
TERMS FOR CONSTRUCTION
"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
b. Defendants 'proposed construction: This claim
element is indefinite.
c. Court's construction: No construction needed.
The plain and ordinary meaning applies.
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
('522 Patent, Claim 1). Figure 1 of the '522 Patent
is as follows. ('522 Patent, Fig. 1).
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).
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
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." 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.
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.
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.
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.
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).
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.
the term "generally tapered" is not indefinite.
tapered insertion tip region is "generally
elliptical" in shape (Claims 8, 21, 23, 28, and 35 of
the '522 Patent)
Plaintiff's proposed construction: The shape of
the tapered insertion tip region generally follows the shape
of a truncated ellipse.
Defendants 'proposed construction: This claim
element is indefinite.
Court's construction: The shape of the tapered
insertion tip region generally follows the shape of a
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
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
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.
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).
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