United States District Court, D. Delaware
W. Poff, Pilar G. Kraman, YOUNG CONAWAY STARGATT & TAYLOR
LLP, Wilmington, DE, Laura Masurovsky, Sydney R. Kestle,
FINNEGAN HENDERSON FARABOW GARRETT & DUNNER, Washington,
DC, Daniel C. Cooley, FINNEGAN HENDERSON FARABOW GARRETT
& DUNNER, Reston, VA Attorneys for Plaintiff.
S. Kraft, Brian A. Biggs, DLA PIPER, Wilmington, DE Nicholas
G. Papastavros, Michael Strapp, DLA PIPER, Boston, MA Melissa
Reinckens, Peter Maggiore, DLA PIPER, San Diego, CA Aaron
Fountain, DLA PIPER, Austin, TX Attorneys for Defendants.
U.S. DISTRICT JUDGE
Valinge Innovation AB ("Plaintiff) sued Defendants
Halstead New England Corporation and Home Depot U.S.A., Inc.
(collectively, "Defendants"), alleging that
Defendants infringe Plaintiffs nine asserted patents by
importing, selling, or offering to sell certain flooring
products. (See generally D.I. 26) The
patents-in-suit generally relate to flooring technologies, in
particular "floorboard locking mechanisms,
moisture-proof systems, methods for installing resilient
floorboards, and the composition of vinyl planks and
tiles." (D.I. 84.1 at 15)
before the Court are the parties' disputes over the
meaning of certain claim terms in the asserted claims. The
parties submitted technology tutorials (D.I. 84, 85), claim
construction briefs (D.I. 86, 89, 98, 102), and expert
declarations (D.I. 87, 88, 90, 91, 99, 100, 103, 104). The
Court held a claim construction hearing on March 8, 2018.
(See D.I. 129 ("Tr."))
parties have organized the nine asserted patents into four
groups: (A) the "Chen patents;"(B) the "Nilsson
patents;" (C) U.S. Patent No. 7, 398, 625
('"625 patent"); and (D) U.S. Patent No. 8,
584, 423 ('"423 patent"). The Court will do so
ultimate question of the proper construction of a patent is a
question of law. See Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S.Ct. 831, 837 (2015) (citing
Markman v. Westview Instruments, Inc., 517 U.S. 370,
388-91 (1996)). "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. AWHCorp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
(internal quotation marks omitted).
is no magic formula or catechism for conducting claim
construction." Id. at 1324. Instead, the Court
is free to attach the appropriate weight to appropriate
sources "in light of the statutes and policies that
inform patent law." Id.
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
(internal citations and quotation marks omitted). "[T]he
ordinary meaning of a claim term is its meaning to the
ordinary artisan after reading the entire patent."
Id. at 1321 (internal quotation marks omitted). The
patent 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." Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (Fed. Cir. 1996).
"the claims themselves provide substantial guidance as
to the meaning of particular claim terms, " the context
of the surrounding words of the claim also must be
considered. Phillips, 415 F.3d at 1314. Furthermore,
"[o]ther claims of the patent in question, both asserted
and unasserted, can also be valuable sources of
enlightenment. . . [b]ecause claim terms are normally used
consistently throughout the patent." Id.
(internal citation omitted).
likewise true that "[differences among claims can also
be a useful guide.... For example, the presence of a
dependent claim that adds a particular limitation gives rise
to a presumption that the limitation in question is not
present in the independent claim." Id. at
1314-15 (internal citation omitted). This "presumption
is especially strong when the limitation in dispute is the
only meaningful difference between an independent and
dependent claim, and one party is urging that the limitation
in the dependent claim should be read into the independent
claim." SunRace Roots Enter. Co., Ltd. v. SRAM
Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
also possible that "the specification may reveal a
special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess. In such
cases, the inventor's lexicography governs."
Phillips, 415 F.3d at 1316. It bears emphasis that
"[e]ven when the specification describes only a single
embodiment, the claims of the patent will not be read
restrictively unless the patentee has demonstrated a clear
intention to limit the claim scope using words or expressions
of manifest exclusion or restriction." Hill-Rom
Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed.
Cir. 2014) (quotingLiebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)) (internal
quotation marks omitted).
addition to the specification, a court "should also
consider the patent's prosecution history, if it is in
evidence." Marhnan v. Westview Instruments,
Inc., 52 F.3d 967, 980 (Fed. Cir. 1995),
aff'd, 517 U.S. 370 (1996). The prosecution
history, which is "intrinsic evidence, "
"consists of the complete record of the proceedings
before the PTO [Patent and Trademark Office] and includes the
prior art cited during the examination of the patent."
Phillips, 415 F.3d at 1317. "[T]he prosecution
history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and
whether the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it would
otherwise be." Id.
cases, "the district court will need to look beyond the
patent's intrinsic evidence and to consult extrinsic
evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during
the relevant time period." Teva, 135 S.Ct. at
841. Extrinsic evidence "consists of all evidence
external to the patent and prosecution history, including
expert and inventor testimony, dictionaries, and learned
treatises." Markman, 52 F.3d at 980. For
instance, technical dictionaries can assist the court in
determining the meaning of a term to those of skill in the
relevant art because such dictionaries "endeavor to
collect the accepted meanings of terms used in various fields
of science and technology." Phillips, 415 F.3d
at 1318. In addition, expert testimony can be useful "to
ensure that the court's understanding of the technical
aspects of the patent is consistent with that of a person of
skill in the art, or to establish that a particular term in
the patent or the prior art has a particular meaning in the
pertinent field." Id. Nonetheless, courts must
not lose sight of the fact that "expert reports and
testimony [are] generated at the time of and for the purpose
of litigation and thus can suffer from bias that is not
present in intrinsic evidence." Id. Overall,
while extrinsic evidence "may be useful" to the
court, it is "less reliable" than intrinsic
evidence, and its consideration "is unlikely to result
in a reliable interpretation of patent claim scope unless
considered in the context of the intrinsic evidence."
Id. at 1318-19. Where the intrinsic record
unambiguously describes the scope of the patented invention,
reliance on any extrinsic evidence is improper. See
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90
F.3d at 1583).
"[t]he construction that stays true to the claim
language and most naturally aligns with the patent's
description of the invention will be, in the end, the correct
construction." 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)
(quoting Mo dine Mfg. Co. v. U.S. Int'l Trade
Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).
patent claim is indefinite if, "viewed in light of the
specification and prosecution history, [it fails to] inform
those skilled in the art about the scope of the invention
with reasonable certainty." Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). A claim
may be indefinite if the patent does not convey with
reasonable certainty how to measure a claimed feature.
See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d
1335, 1341 (Fed. Cir. 2015). But "[i]f such an
understanding of how to measure the claimed [feature] was
within the scope of knowledge possessed by one of ordinary
skill in the art, there is no requirement for the
specification to identify a particular measurement
technique." Ethicon Endo-Surgery, Inc. v. Covidien,
Inc., 796 F.3d 1312, 1319 (Fed. Cir. 2015).
CONSTRUCTION OF DISPUTED TERMS
Chen patents are directed to a thermoplastic plank containing
multiple layers. See '345 patent at
layers include a core made up of at least one thermoplastic
material, a print layer above the core, and optionally an
overlay layer on top of the print layer. Id.
"polyvinyl chloride that is capable of
"polyvinyl chloride with a
"polyvinyl chloride containing a
plasticizer or another additive that imparts
parties dispute whether a plasticizer is necessary to make
flexible polyvinyl chloride ("PVC"). Plaintiff
contends that the patents use the plain and ordinary meaning
of flexible, and a person of ordinary skill in the art
("POSA") would understand there are
"other ways to make [PVC]
flexible in addition to plasticizers." (D.I. 86 at 5-9)
(emphasis added) Defendants contend that this is a technical
phrase and a POSA would understand it to mean
"flexibility at the molecular level, which occurs
only when combined with a
plasticizer." (D.I. 89 at 2-6) (emphasis added)
intrinsic evidence supports a finding that a plasticizer is
just one of many additives that could be used to impart
flexibility to PVC. Nothing in the claim language requires a
plasticizer. Nor does the specification require the use of
plasticizer to impart flexibility -although it states that a
plasticizer can be used for that purpose.
See '345 Patent, col. 4 11. 19-20 ("The
flexibility of the thermoplastic material can be imparted by
using at least one liquid or solid plasticizer ....").
The prosecution history also suggests that a plasticizer is
not required to impart flexibility. (See D.I. 92 at
p. 314 of 380) (applicant noting that prior art "does
not teach or suggest including any plasticizer or
other flexibility-imparting additive or
agent in the core") (emphasis added)
However, Plaintiffs construction is too broad, as it would
encompass even rigid PVC. (See D.I. 90 at 13 ¶