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SZ DJI Technology Co. Ltd. v. Autel Robotics USA LLC

United States District Court, D. Delaware

December 16, 2019

SZ DJI TECHNOLOGY CO., LTD. and DJI EUROPE B.V., Plaintiffs-Counterclaim Defendants,
AUTEL ROBOTICS USA LLC and AUTEL AERIAL TECHNOLOGY CO., LTD., Defendants-Counterclaim Plaintiffs.

          Jody C. Barillare and Amy M. Dudash, MORGAN, LEWIS & BOCKIUS LLP, Wilmington, DE Kelly E. Farnan and Christine D. Haynes, RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE David M. Farnum and Sherry X. Wu, ANOVA LAW GROUP, PLLC, Sterling, VA Willard K. Tom, Jon R. Roelike, Ryan Kantor, and Bradford A. Cangro, MORGAN, LEWIS & BOCKIUS LLP, Washington, DC Attorneys for Plaintiffs-Counterclaim Defendants

          Anne Shea Gaza, Robert M. Vrana, and Samantha G Wilson, YOUNG CONAWAY STARGATT & TAYLOR, LLP, Wilmington, DE Timothy C. Bickham, John Caracappa, Jonathan B. Sallet, Scott M. Richey, Beau M. Goodrick, and Andrew Xue, STEPTOE & JOHNSON LLP, Washington, DC Michael Flynn-O'Brien, STEPTOE & JOHNSON LLP, San Francisco, CA Attorneys for Defendants-Counterclaim Plaintiffs


          STARK U.S. District Judge

         Plaintiffs-Counterclaim Defendants SZ DJI Technology Co., Ltd., DJI Europe B.V., and DJI Technology Inc. (collectively, "DJI") filed suit against Defendants-Counterclaim Plaintiffs Autel Robotics USA LLC and Autel Aerial Technology Co., Ltd. (collectively, "Autel") on August, 11, 2016, alleging infringement of U.S. Patent Nos. 9, 016, 617 (the '"617 Patent"), 9, 284, 049 (the '"049 Patent"), 9, 321, 530 (the '"530 Patent"), and D691, 514 (the "D'514 Patent"). (D.I. 1) The patents-in-suit relate to technology and operation of unmanned aerial vehicle ("UAV") products.

         Presently before the Court is the issue of claim construction. The parties completed briefing on July 29, 2019. (D.I. 359, 361, 374, 377) The parties' submissions included expert declarations and excerpts of expert reports. (D.I. 360, 362, 375, 378, 379) The Court held a claim construction hearing on October 3, 2019. (D.I. 407)


         The 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. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citation and internal quotation marks omitted). "[T]here 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.

         "[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." 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).

         While "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).

         It is 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).

         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. 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) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)) (alteration in original) (internal quotation marks omitted).

         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), aff'd, 517 U.S. 370 (1996). The prosecution history, which is "intrinsic evidence," "consists of the complete record of the proceedings before the [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, ... 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).

         Finally, "[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 Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).


         A. "The ornamental design for a rotor aircraft, substantially as shown and described" [2]


Plain and ordinary meaning.

Alternatively, "the ornamental design for a rotor aircraft, substantially as shown and described in Figures 1-7."



Alternatively, "a full monocoque quadcopter having: a cruciform housing having four branches that flare to meet one another to form a central body; the logo depicted in Figure 5; a rectangular battery compartment cover on the front side of the central body of the aircraft; a round light on the back side of the central body of the aircraft; two relatively dark stripes on each of the front branches; indicator lights along the underside of the branches between the rotors and the central body; and four substantially parallel legs that include an inward curve near where they attach to the central body and that include front-to-rear crossbars at the bottom of the legs."


"The ornamental design for a rotor aircraft, substantially as shown and described in Figures 1- 7."

         Autel argues that the D'514 Patent is invalid because it fails to distinguish between claimed ornamental and unclaimed functional features, the design is primarily functional rather than ornamental, and a POSA would not be able to determine whether the design of another UAV is "substantially" similar to the claimed features of the D'514 Patent. (D.I. 361 at 10; D.I. 377 at 2) Autel argues that the figures in the patent fail to distinguish between the claimed design and the embodying article or ornamental features. (D.I. 361 at 12; D.I. 377 at 2-3)

         Photographs as well as drawings are accepted by the USPTO. See, e.g., 37 C.F.R. § l.84.[3] In particular, as Autel concedes (D.I. 361 at 12), photographs are acceptable in a design patent if they "are the only practicable medium for illustrating the claimed invention," 37 C.F.R. § 1.84. Here, the figures in the D'514 Patent are appropriate, as the patent claims all ornamental aspects of the claimed design.

         The D'514 Patent does not attempt to claim functional elements; rather it claims a design that happens to have function. The design is not governed solely by function, as the design is not the only possible form of the article that could perform its function. Indeed, DJI points to many other possible designs that would perform the same function (see, e.g., D.I. 359 at 11; Braasch Decl. ¶¶ 29-39), and Autel's expert concedes that alternative designs exist (Eby Decl. ¶ 29). The availability of alternative designs is "an important - if not dispositive - factor in evaluating the legal functionality of a claimed design." Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,796 F.3d 1312, 1329-30 (Fed. Cir. 2015); see also L.A. Gear, Inc. v. Thorn McAn Shoe Co.,988 F.2d 1117, ...

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