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MAX International Converters, Inc. v. Iconex LLC

United States District Court, D. Delaware

September 24, 2019

MAX INTERNATIONAL CONVERTERS, INC. and MAXSTICK PRODUCTS LTD., Plaintiffs,
v.
ICONEX LLC, Defendant.

          MEMORANDUM ORDER

          Honorable Maryellen Noreika United States District Judge

         At Wilmington this 24th day of September 2019:

         IT IS HEREBY ORDERED that the claim terms of U.S. Patent Nos. 8, 445, 104 (the “’104 Patent”), 9, 208, 699 (the “’699 Patent”), and 9, 646, 517 (the “’517 Patent”) with agreed-upon constructions are construed as follows (see D.I. 59 at 6):

1. “cut by the auto-cutting mechanism to a variable length determined by the amount of printing on the web” means “the length of the label cut by the auto-cutting mechanism is not determined by black sensing marks, gaps in the adhesive, pre-determined perforations or cuts but is determined by the axial length of-the printing on the label” (’104 Patent, claim 1; ’699 Patent, claim 6; ’517 Patent, claim 15)
2. “custom cut from the roll of the media by a thermal printer at custom lengths” means “the length of the label cut by the auto-cutting mechanism is not determined by black sensing marks, gaps in the adhesive, predetermined perforations or cuts but can be determined by, among other things, the axial length of the printing on the label” (’699 Patent, claim 5)
3. “cut by a thermal printer at varying custom lengths” means “the length of the label cut by the auto-cutting mechanism is not determined by black sensing marks, gaps in the adhesive, pre-determined perforations or cuts but can be determined principally by the axial length of the printing on the label” (’517 Patent, claim 9)

         Further, as announced at the hearing on September 13, 2019, IT IS HEREBY ORDERED that the disputed claim terms of the ’104, ’699, and ’517 Patents are construed as follows:

1. “substantially continuous” / “substantially interrupted” mean “the adhesive coverage on the paper or substrate is such that the cutting mechanism of the point-of-sale printer contacts adhesive when a separate piece or label is cut from the roll” (’699 Patent, claim 6; ’517 Patent, claims 1, 9, 10, 15 & 16)
2. “at least one adhesive strip . . . extending in a substantially uninterrupted manner along a running axis of said web” means “an adhesive strip that extends such that the cutting mechanism of the point-of-sale printer contacts adhesive when a separate piece or label is cut from the roll” (’104 Patent, claim 1)
3. “said adhesive will extend in a continuous manner along the length” means “the adhesive areas extend along the entire length of the label in a continuous and uninterrupted manner” (’104 Patent, claim 1)
4. “extends over substantially the entire bottom surface” is given its plain and ordinary meaning of “largely but not necessarily wholly over the bottom surface” (’699 Patent, claim 8)
5. “prevent fouling” means “reduce or eliminate adhesive buildup within the printer, which can adversely affect the performance of the printer (’104 Patent, claims 1 & 4; ’699 Patent, claims 6, 8 & 9; ’517 Patent, claims 10 & 15)
6. “an adhesive layer” / “layer of pressure sensitive adhesive material” mean “an adhesive coating” (’517 Patent, claims 1, 2, 9 & 16)
7. “base coat” / “barrier coat” mean “a coating that prevents the adhesive applied to the substrate from moving into or contacting the substrate, particularly the thermal image coating, or secures the adhesive to the label” (’104 Patent, claims 1 & 4; ’699 Patent, claims 6 & 9; ’517 Patent, claims 1, 10, 15 & 16)
8. “variably patterned” / “repeating patterns” / “applying an adhesive layer in a pattern” / “at least one adhesive pattern” mean “regular arrangement of adhesive in lines” (’699 Patent, claims 6 & 8; ’517 Patent, claims 2, 10 & 15)
9. “the adhesive pattern . . . will extend along the length of the thermally printed paper” is given its plain and ordinary meaning, with the term “pattern” given the construction of “regular arrangement of adhesive in lines” as set forth above (’699 Patent, claim 6; ’517 Patent, claim 15)

         The parties briefed the issues (see D.I. 59) and submitted an appendix containing both intrinsic and extrinsic evidence (see D.I. 58), and Plaintiffs MAX International Converters, Inc. and MAXStick Products Ltd. (collectively, “Plaintiffs” or “MAX”) also provided a tutorial describing the relevant technology (see D.I. 57).[1] The Court carefully reviewed all submissions in connection with the parties’ contentions regarding the disputed claim terms, heard oral argument (D.I. 64) and applied the following legal standards in reaching its decision:

         I. LEGAL STANDARD

         “[T]he ultimate question of the proper construction of the patent [is] a question of law, ” although subsidiary fact-finding is sometimes necessary. Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 837-38 (2015). “[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.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (internal citations and quotation marks omitted). Although “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. Id. at 1314. “[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 . . . [as] 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). It is 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. “Even when the specification describes only a single embodiment, [however, ] 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) (internal quotation marks omitted) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).

         In addition to the specification, a court “should also consider the patent’s prosecution history, if it is in evidence.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc), 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.

         In some cases, courts “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. 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.” Phillips, 415 F.3d at 1318. 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, although 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).

         II. THE COURT’S RULING

         The Court’s rulings regarding the disputed claim terms of the ’104, ’699, and ’517 Patents were announced from the bench at the conclusion of the hearing as follows:

. . . I appreciate the arguments today. They were helpful. At issue are three patents, United States Patent Nos. 8, 445, 104, 9, 208, 699, and 9, 646, 517, the patents in suit, each titled ...

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