United States District Court, D. Delaware
LIQWD, INC. and OLAPLEX LLC, Plaintiffs,
L'ORÉAL USA, INC., L'ORÉAL USA PRODUCTS, INC., L'ORÉAL USA S/D, INC., and REDKENS 5TH AVENUE, NYC, L.L.C., Defendant.
MEMORANDUM AND ORDER CLAIM CONSTRUCTION
F. Bataillon, Senior United States District Judge.
matter is before the Court on the objections by defendants,
D.I. 620, to the report and recommendation of the magistrate
judge, D.I. 602. Liqwd filed its claim construction chart.
D.I. 404. The parties filed numerous briefs. Plaintiffs
oppose defendants' objections. D.I. 646. In this patent
infringement action filed by plaintiffs Liqwd, Inc. and
Olaplex LLC (together, "Olaplex") against
defendants L'Oreal USA, Inc., L'Oreal USA Products,
Inc., L'Oreal USA S/D, Inc., and Redken 5th Avenue NYC,
LLC (collectively, "L'Oreal"), Olaplex alleges
infringement of United States Patent Nos. 9, 498, 419
("the '419 patent") and 9, 668, 954 ("the
'954 patent") (D.I. 262 at ¶¶ 90-138).
STANDARD OF REVIEW
standard of review is governed by 28 U.S.C. §
636(b)(1)(C) and Federal Rule of Civil Procedure 72(b). The
district court “shall make a de novo determination of
those portions of the report or specified proposed findings
or recommendations to which objection is made” and
“may also receive further evidence or recommit the
matter to the magistrate judge with instructions.” 28
U.S.C. § 636(b)(1)(C). Similarly, Rule 72(b)(3) requires
de novo review of any recommendation that is dispositive of a
claim or defense of a party. The Court “may accept,
reject, or modify the recommended disposition; receive
further evidence; or return the matter to the magistrate
judge with instructions.” Fed.R.Civ.P. 72(b)(3).
Supreme Court has construed the statutory grant of authority
conferred on magistrate judges under 28 U.S.C. § 636 to
mean that nondispositive pretrial matters are governed by
§ 636(b)(1)(A) and dispositive matters are covered by
§ 636(b)(1)(B). Gomez v. United States, 490
U.S. 858, 873-74 (1989); see alsoFed. R. Civ. P.
72(a). Under subparagraph (B), a district court may refer a
dispositive motion to a magistrate judge “to conduct
hearings, including evidentiary hearings, and to submit to a
judge of the court proposed findings of fact and
recommendations for the disposition.” 28 U.S.C. §
636(b)(1)(B); see EEOC v. City of Long
Branch, 866 F.3d 93, 99-100 (3d Cir. 2017). The product
of a magistrate judge, following a referral of a dispositive
matter, is often called a “report and
recommendation.” Id.“Parties ‘may
serve and file specific written objections to the proposed
findings and recommendations' within 14 days of being
served with a copy of the magistrate judge's report and
recommendation.” Id. (quoting Fed.R.Civ.P.
a party objects timely to a magistrate judge's report and
recommendation, the district court must ‘make a de novo
determination of those portions of the report or specified
proposed findings or recommendations to which objection is
made.'” EEOC, 866 F.3d at 99 (quoting 28
U.S.C. § 636(b)(1)).
construction determinations in an R&R are reviewed de
novo. See St. Clair Intellectual Prop.
Consultants, Inc. v. Matsushita Elec. Indus. Co., 691
F.Supp.2d 538, 542 (D. Del. 2010); 28 U.S.C. §
636(b)(1); Fed.R.Civ.P. 72(b)(3). Claim construction falls
“exclusively within the province of the court, ”
not that of the jury. Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S.Ct. 831, 837 (2015) (quoting
Markman, 517 U.S. at 370). It is proper for courts
to “treat the ultimate question of the proper
construction of the patent as a question of law in the way
that [courts] treat document construction as a question of
law.” Id. at 837, 841 (noting that when the
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, however,
underlying factual determinations are reviewed for clear
claims of a patent define the scope of the patent.
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc). The claims of a patent are of primary
importance in determining what is patentable and the function
and purpose of a claim is to “delimit the right to
exclude.” Id. The purpose of claim
construction is to “determin[e] the meaning and scope
of the patent claims asserted to be infringed.”
Markman v. Westview Instruments, Inc., 52 F.3d 967,
976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S.
370 (1996). A claim construction order will dictate how the
court will instruct the jury regarding a claim's scope.
O2 Micro Int'l Ltd. v. Beyond Innovation Technology
Co., Ltd., 521 F.3d 1351, 1359 (Fed. Cir. 2008).
process of construing a claim term begins with the words of
the claims. Phillips, 415 F.3d at 1312-14;
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996). Absent contravening evidence from the
specification or prosecution history, plain and unambiguous
claim language controls the construction analysis. DSW,
Inc. v. Shoe Pavilion, Inc., 537 F.3d 1342, 1347 (Fed.
Cir. 2008). However, the claims “must be read in view
of the specification, of which they are a part.”
Phillips, 415 F.3d at 1315 (quoting
Markman, 52 F.3d at 979); see Tempo
Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed.
Cir. 2014) (stating in claim construction, the court
“gives primacy to the language of the claims, followed
by the specification”). Additionally, the prosecution
history, while not literally within the patent document,
serves as intrinsic evidence for purposes of claim
claim term remains ambiguous after an examination of
intrinsic evidence, the court may resort to extrinsic
evidence. Interactive Gift Express, Inc. v. Compuserve,
Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). Extrinsic
evidence includes expert and inventor testimony,
dictionaries, and learned treatises. Phillips, 415
F.3d at 1317. Extrinsic evidence is less reliable and less
persuasive than intrinsic evidence since such evidence is not
part of the patent and was not created concurrently with the
prosecution of the patent. Id. at 1317-19;
Summit 6, LLC v. Samsung Electronics Co., 802 F.3d
1283, 1290 (Fed. Cir. 2015) (“Although courts are
permitted to consider extrinsic evidence, like expert
testimony, dictionaries, and treatises, such evidence is
generally of less significance than the intrinsic
record”). “Extrinsic evidence may not be used
‘to contradict claim meaning that is unambiguous in
light of the intrinsic evidence.'” Summit 6,
LLC, 802 F.3d at 1290 (quoting Phillips, 415
F.3d at 1324).
district court is not obligated to construe terms with
ordinary meanings, lest trial courts be inundated with
requests to parse the meaning of every word in the asserted
claims.” O2 Micro Int'l Ltd., 521 F.3d at
1360. However, when the parties raise an actual dispute
regarding the proper scope of these claims, the court, not
the jury, must resolve that dispute. Id.
words of a claim are generally given their ordinary and
customary meaning, which is the meaning a term would have to
a person of ordinary skill in the art in question at the time
of the invention. Phillips, 415 F.3d at 1313. The
inquiry into how a person of ordinary skill in the art
understands a term provides an objective baseline for which
to begin claim interpretation. Id.“In some
cases, the ordinary meaning of claim language . . . 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.
are only two exceptions to the general rule [that claim terms
are given their plain and ordinary meanings to one of skill
in the art]: 1) when a patentee sets out a definition and
acts as his own lexicographer, or 2) when the patentee
disavows the full scope of the claim term either in the
specification or during prosecution.'” Golden
Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365
(Fed. Cir. 2014) (quoting Thorner v. Sony Computer
Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012)). “To act as its own lexicographer, a patentee
must ‘clearly set forth a definition of the disputed
claim term' other than its plain and ordinary
meaning.” Thorner, 669 F.3d at 1365-66
(quoting CCS Fitness, Inc. v. Brunswick Corp., 288
F.3d 1359, 1366 (Fed. Cir. 2002)). “It is not enough
for a patentee to simply disclose a single embodiment or use
a word in the same manner in all embodiments, the patentee
must ‘clearly express an intent' to redefine the
term.” Id. at 1366 (quoting Helmsderfer v.
Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed.
Cir. 2008)). The inventor's written description of the
invention is relevant and controlling insofar as it provides
clear lexicography. Id.
court is guided in the claim construction endeavor by several
“canons of claim construction” or guideposts.
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc.,246 F.3d 1368, 1376 (Fed. Cir. 2001). Under the doctrine of
claim differentiation, a dependent claim has a narrower scope
than the claim from which it depends, and an independent
claim has a broader scope than the claim that depends from
it. Free Motion Fitness, Inc. v. Cybex Int'l,
Inc.,423 F.3d 1343, 1351 (Fed. Cir. 2005). Also,
ordinarily, claims are not limited to the preferred
embodiments disclosed in the specification.
Phillips, 415 F.3d at 1323. Different words in a
patent have different meanings and the same words have the
same meaning. Innova/Pure Water, Inc., v. Safari Water
Filtration Systems, Inc.,381 F.3d 1111, 1119-20 (Fed.
Cir. 2004). Use of the open-ended term of art,
“comprising, ” allows the addition of other
elements so long as the named elements, which are essential,
are included. SeeGenentech, Inc. v. Chiron
Corp.,112 F.3d 495, 501 (Fed. Cir. 1997). Generally, a
preamble is not limiting. Summit 6, LLC, 802 F.3d at
1292 (noting, for example that preamble language that merely
states the purpose or intended use of an invention is
generally not treated as limiting the scope of the claim).
“When the applicant adds a claim or otherwise amends
his specification after the original filing date, . . . the
new claims or other added material must find support in the
original specification.” T ...