Caron et al v. Quickutz Inc.

Filing 198

ORDER that QuicKutz's Motion for Reconsideration of Claim Construction Order or in the Alternative Motion for Clarification of Claim Construction Order [Dckt. No. 176] (Doc. 186 ) is denied. See order for details. Signed by Judge Neil V. Wake on 10/16/12. (NKS)

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WO

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IN THE UNITED STATES DISTRICT COURT

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FOR THE DISTRICT OF ARIZONA

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James Jeffery Caron and Spellbinders Paper
Arts Company, LLC, an Arizona limited
liability company,

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No. CV-09-02600-PHX-NVW
ORDER

Plaintiffs,

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vs.

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QuicKutz, Inc., a Utah corporation,

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Defendant.

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Before the Court is QuicKutz’s Motion for Reconsideration of Claim Construction

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Order or in the Alternative Motion for Clarification of Claim Construction Order [Dckt.

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No. 176] (Doc. 186).

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QuicKutz contends that the Court erred by including the phrase “intended to be
used for” or “intended to be used to” in the following constructions:

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 “embellishing template” (claims 28, 35) shall be construed as “a die having

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features intended to be used for cutting, embossing, and/or stenciling on

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sheet media”;

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 “embellishing wall” (claim 28) shall be construed as “a solid projection

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from the body of the die or template intended to be used to form an

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embossed impression in sheet media, or to cut sheet media, or both”; and

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 “media embossing aperture” (claim 18) shall be construed as “an opening

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in the die capable of, and intended to be used for, embossing sheet media.”

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(Doc. 176.) For each of these terms, Spellbinders’ proposed constructions included the
adjective “predetermined” to modify “shape” or “pattern.” The Court found that “the
entire thrust of the patent is that these openings have intentionally defined shapes, and
that an end-user would purchase a die because the user can emboss[, cut, or stencil] the
die’s intentionally defined pattern into paper or similar materials.” (Id.) However, the
Court also found that “predetermined” does not adequately exclude other intentional
features that may also be capable of forming random or inadvertent cutting, embossing,
or stenciling, even though not intended for that purpose. (Id.)
First, QuicKutz contends that intent cannot be the basis for determining
infringement or anticipation. Plaintiffs agree that the intent to infringe is not an element
of proving infringement or anticipation.
QuicKutz also contends that because the term “media embossing aperture” is
recited functionally, not structurally, “the appropriate inquiry is whether an aperture is
capable of embossing, not whether the aperture was intended to emboss.” However, both
parties agree that a patent applicant is free to recite features of an apparatus either
structurally or functionally and may assume the risks associated with defining an element
functionally. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
Relying on authority applying the doctrine of equivalents, QuicKutz further
contends that a system can infringe if it is capable of performing an infringing function
even if the infringing function is not an intended use of the system. See Intel Corp. v.
U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991); Vulcan Eng’g Co. v. Fata
Aluminum, Inc., 278 F.3d 1366, 1375 (Fed. Cir. 1990) (“When the claimed function is
performed in the accused system, by the same or equivalent structure, infringement of
that claim element is established.”). Here, however, replacing “intended to be used for”
with “capable of” would make the constructions overbroad because almost any tangible
object is capable of making some accidental or unintended cut, mark, or threedimensional impression in paper or card stock.

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In the context of the ’634 Patent,

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therefore, it is inappropriate to use the phrase “capable of” instead of “intended to be used
for” in the constructions of the terms “media embossing aperture,” “embellishing
template,” and “embellishing wall.” See Koito Manuf’g Co., Ltd. v. Turn-Key-Tech, LLC,
381 F.3d 1142, 1150 n.2 (Fed. Cir. 2004) (noting that an element of forethought and
planning was “a logically essential part of the patent”).
Second, QuicKutz contends that a claim term is indefinite if intent is required.
More specifically, QuicKutz contends that the disputed constructions including the
phrase “intended to be used for” are indefinite because they lack an objective standard.
A patent specification must “conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the inventor or a joint
inventor regards as the invention.” 35 U.S.C. § 112(b). “[C]laims are construed as one
skilled in the art would understand them in light of the specification of which they are a
part.” Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1340-41 (Fed. Cir. 2003). “[A]
patentee need not define his invention with mathematical precision in order to comply
with the definiteness requirement.” Id. at 1341. The definiteness requirement “does not
compel absolute clarity,” and “[o]nly claims ‘not amenable to construction’ or ‘insolubly
ambiguous’ are indefinite.’” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
1347 (Fed. Cir. 2005).

“Whether a claim is invalid for indefiniteness requires a

determination whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Morton Int’l, Inc. v. Cardinal Chem. Co., 5
F.3d 1464, 1470 (Fed. Cir. 1993); see also SmithKline Beecham Corp. v. Apotex Corp.,
403 F.3d 1331, 1340-41 (Fed. Cir. 2005) (the test for indefiniteness depends on whether
the claim delineates to a skilled artisan the bounds of the invention). To be definite,
however, “[t]he scope of claim language cannot depend solely on the unrestrained,
subjective opinion of a particular individual purportedly practicing the invention,” but
must provide some objective standard. Datamize, 417 F.3d at 1350.

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Here, the constructions using the phrase “intended to be used for” are not
ambiguous or without objective standard. As previously found, “the entire thrust of the
patent is that these openings have intentionally defined shapes, and that an end-user
would purchase a die because the user can emboss[, cut, or stencil] the die’s intentionally
defined pattern into paper or similar materials.” It is not necessary to decide who must
exhibit the requisite intent, when intent is determined, whether intent can change, and
what showing is required to establish intent. It can be determined objectively whether a
person skilled in the art would conclude that a die has an opening or projection that will
cut, emboss, and/or stencil in an intended shape or pattern.
IT IS THEREFORE ORDERED that QuicKutz’s Motion for Reconsideration of
Claim Construction Order or in the Alternative Motion for Clarification of Claim
Construction Order [Dckt. No. 176] (Doc. 186) is denied.
Dated this 16th day of October, 2012.

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