United States District Court, D. Delaware
D. Smith II, Michael J. Flynn, Morris, Nichols, Arsht &
Tunnell LLP, Wilmington, Delaware; Guy W. Chambers, Ellen P.
Liu, Peter Colosi, Sideman & Bancroft LLP, San Francisco,
California Counsel for Plaintiffs.
Francis DiGiovanni, Thatcher A. Rahmeier, Drinker Biddle
& Reath LLP, Wilmington, Delaware; William S. Foster,
Jr., Brianna L. Silverstein, Drinker Biddle & Reath LLP,
Washington, District of Columbia Counsel for Defendants.
F. CONNOLLY UNITED STATES DISTRICT JUDGE.
f real Foods, LLC and Rich Products Corporation filed this
lawsuit accusing Defendants Hamilton Beach Brands, Inc. and
Hershey Creamery Company of infringing four patents for
commercial blenders: United States Patent Numbers 5, 803, 377
(the "#377 patent"), 7, 144, 150 (the "#150
patent"), 7, 520, 658 (the "#658 patent"), and
7, 520, 662 (the "#662 patent"). I granted summary
judgment of infringement of two of the asserted claims.
See D.I. 141 (claim 21 of the #662 patent); D.I. 142
(claim 15 of the #150 patent). The case was then tried to a
jury, which found infringement of the remaining asserted
claims in three of the four asserted patents and
noninfringement of the #377 patent. See D.I. 263.
The jury also found that Defendants' infringement was not
willful and that certain claims were not invalid as obvious.
See Id. The jury awarded damages totaling $3, 233,
869. See id.
trial, the parties stipulated under Rule 39(a)(1) of the
Federal Rules of Civil Procedure that I would decide
indefiniteness issues under 35 U.S.C. § 112 solely based
on post-trial briefing, without going beyond the expert
reports already submitted in connection with earlier summary
judgment briefing, and without submitting an advisory verdict
on any subsidiary factual questions to the
jury. See Tr. 11:2-12:7. In the
post-trial briefing, Defendants argue-based on the
requirement of "sufficient mass"-that one of the
two asserted claims of the #150 patent and the five asserted
claims of the #658 patent are invalid for indefmiteness.
See D.I. 271; D.I. 274. The challenged claims
require that the blender have a "splash
shield"-which covers the top of a cup or
"vessel" in which the substance is blended-with
"sufficient mass" such that the splash shield is
heavy enough to hold the cup in place in a cupholder rather
than having the cup be propelled upward or dislodged, for
example, by the force of the blades spinning. See
#150 patent, claim 22; #658 patent, claims 1, 5, 6, 10, &
11. Defendants argue that "the intrinsic record provides
no guidance as to where the line should be drawn between the
claimed * sufficient mass' and a mass that is
insufficient." See D.I. 271 at 3. I disagree.
The challenged claims define the term "sufficient
mass" by its function and a person of ordinary skill in
the art (POSITA) could easily determine by simply observing
the blender in action whether the splash shield had a
"sufficient mass" to be covered by the disputed
claim limitation. Accordingly, the challenged claims are not
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." Nautilus, Inc. v. BiosigInstruments,
Inc., 572 U.S. 898, 901 (2014). "Indefiniteness is
a matter of claim construction, and the same principles that
generally govern claim construction are applicable to
determining whether allegedly indefinite claim language is
subject to construction." Praxair, Inc. v. ATM,
Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008),
abrogated on other grounds by Nautilus, 572 U.S. at
901. As in claim construction, in making an indefiniteness
determination, the district court may make "any factual
findings about extrinsic evidence relevant to the question,
such as evidence about knowledge of those skilled in the art,
[which] are reviewed for clear error." See BASF
Corp. v. Johnson Mattheylnc, 875 F.3d 1360, 1365 (Fed.
Cir. 2017). "Any fact critical to a holding on
indefiniteness ... must be proven by the challenger by clear
and convincing evidence." Cox Commc'ns, Inc. v.
Sprint Commc'n Co. LP, 838 F.3d 1224, 1228 (Fed.
Cir. 2016) (alteration in original) (quoting Intel Corp.
v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir.
claims define the requirement that the "splash
shield" have "sufficient mass" in clear
functional terms. The challenged claims describe a blender
that includes a "[cup]holder" for a cup or
"vessel" in which a frozen substance (like a
milkshake) is blended. E.g., #658 patent, claim 1,
at 4:45-48. A "splash shield" sits atop the cup.
E.g., #658 patent, claim 1, at 4:59-61. The claims
require the "splash shield" to have
"sufficient mass to retain the vessel within the
holder." #150 patent, claim 22; #658 patent, claim 1;
see also #658 patent, claim 5 (dependent on claim
1); #658 patent, claim 6 ("the mass of the splash shield
preventing separation of the holder and the vessel during
translation"); #658 patent, claims 10 & 11
(dependent on claim 6). The claims therefore define
"sufficient mass" functionally: the splash shield
must be heavy enough to keep the cup in the cupholder.
Sleet's claim construction captures the claims'
functional definition of the "sufficient mass"
term. He "adopt[ed] the plain and ordinary meaning of
the term [as] proposed by Plaintiffs and the PTO":
The term "sufficient mass to retain the vessel within
the holder during relative axial movement of the mixing
element and vessel from the first position to the second
position when liquid is present in the vessel" in the
[#]658 patent is construed to be "the splash shield is
heavy enough to create sufficient downward force on the
vessel so as to retain the vessel within the holder when the
mixing element moves upwardly in the vessel from the first
position to the second position when liquid is present."
D.I. 83 at 2. This claim construction reflects the
claims' requirement for the splash shield to be heavy
enough that the gravitational force of the splash shield
alone is "sufficient" to overcome any
countervailing forces that could otherwise dislodge the cup
from the cupholder, such as the upward force from the blades
Sleet's construction finds support in portions of the
written description ...