Clerisy Corporation et al v. AirWare Holdings Incorporated, et al

Filing 102

ORDER, the Court construes the disputed claim terms and enters the claim construction Order as set forth in this document (see order for complete details). Signed by Senior Judge Paul G Rosenblatt on 7/23/13.(REW)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE DISTRICT OF ARIZONA

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Clerisy Corporation, et al.,

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Plaintiffs,

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v.

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Airware Holdings, Inc., et al.,

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Defendants.

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CV 12-2110-PHX-PGR

ORDER

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After holding a Markman hearing on June 10, 2013, the Court enters the following
claim construction Order.

I. Background

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Plaintiff Reed Transition Technologies, LLC, is the owner by assignment of United

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States Patent No. 6,295,982 (“the Patent”), issued by the United States Patent and

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Trademark Office (“PTO”) on October 2, 2001. (Doc. 59, Ex A.) The Patent is for an

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“Apparatus for and Methods of Administering Volatile Substances into an Inhalation Flow

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Path.” (Id.) Plaintiff Clerisy Corp. manufactures, markets, and distributes Aromahaler®

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Nasal SoftStrips™ using the patented apparatus. Defendants market, sell, and distribute

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“AIR” branded nasal products, which, like the Nasal SoftStrips, are infused with

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aromatherapeutic essential oils.

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Plaintiffs allege that Defendants are infringing the Patent. On July 26, 2012, they filed

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a complaint in the Western District of New York. The case was transferred to the District

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of Arizona in October 2012. Plaintiffs filed an amended complaint on November 11, 2012.

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(Doc. 59.) Defendants filed an answer and counterclaims on December 6, 2012. (Doc. 62.)

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The parties have asked the Court to construe eight of the Patent’s claim terms.

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Pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996), the Court

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must construe the claims as a matter of law. The parties have filed briefs supporting their

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proposed constructions of the terms. Having considered the arguments and evidence

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presented in the parties’ briefs, exhibits, and at the Markman hearing, the Court construes the

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disputed terms as set forth below.

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II. Legal standards

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Section 112 of the Patent Act provides that a patent specification “shall contain a

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written description of the invention, and of the manner and process of making and using it

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in such full, clear, concise, and exact terms as to enable any person skilled in the art to which

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it pertains . . . to make and use the same.” 35 U.S.C. § 112. The section further provides that

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a specification “shall conclude with one or more claims particularly pointing out and

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distinctly claiming the subject matter which the applicant regards as his invention.” Id. “It

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is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to

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which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,

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1312 (Fed.Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,

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381 F.3d 1111, 1115 (Fed.Cir. 2004)).

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Claim construction, which is the determination of the meaning of the terms in a patent,
is a question of law exclusively within the province of the Court. Markman, 517 U.S. at 372.
To interpret claims, the court first considers the claims themselves. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996). The court should “look to the words
of the claims themselves,” giving them “their ordinary and customary meaning,” unless
clearly stated otherwise. Id. The “ordinary and customary” meaning of a claim term is “the
meaning that the term would have to a person of ordinary skill in the art in question at the

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time of the invention.” Phillips, 415 F.3d at 1313 (9th Cir. 2005); see also Texas Digital Sys.,

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Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.Cir. 2002) (“The terms used in the claims

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bear a ‘heavy presumption’ that they mean what they say and have the ordinary meaning that

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would be attributed to those words by persons skilled in the relevant art.”).

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After the claims themselves, the court looks to the patent specification. Vitronics, 90

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F.3d at 1582. The specification is highly relevant to the claim construction analysis and

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usually is dispositive. Phillips, 415 F.3d at 1315. The specification is the single best guide

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to the meaning of a disputed term. Id. Courts therefore relies heavily on the written

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description of the claims in the specification for guidance when conducting claim

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construction. Id. at 1317.

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The specification may give a special definition to a claim term that differs from the

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meaning it otherwise would have. Id. at 1316. In such cases, the inventor’s special definition,

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or lexicography, governs. Id. In other cases, the specification intentionally may disclaim or

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limit the scope of the claim. Id.

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When reviewing the specification, however, courts must avoid reading limitations

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from the specification into the claims. Id. at 1323. To avoid importing limitations, the court

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must consider the purposes of the specification, which are to teach and enable those of skill

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in the art to make and use the invention and to provide the best way for doing so. Id.

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In addition to the claims themselves and the specification, courts should consider the

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patent’s prosecution history. Phillips, 415 F.3d at 1317. The prosecution history consists of

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the record of the proceedings before the PTO and includes the prior art cited during the
examination of the patent. Id. The prosecution history, which is part of the “intrinsic
evidence,” provides evidence of how the PTO and the inventor understood the patent. Id. The
prosecution history often informs 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 the prosecution, thereby making the claim scope narrower than it otherwise would
be. Id.

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Although the intrinsic evidence is the most important for claim construction, the court

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also may rely on extrinsic evidence if necessary. Extrinsic evidence is all evidence external

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to the patent and prosecution history, such as expert and inventor testimony, dictionaries, and

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learned treatises. Id. Although it may prove useful, extrinsic evidence is less significant than

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the intrinsic record for determining the meaning of claim language. Id. In most situations,

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analysis of the patent and its prosecution history will resolve any ambiguity in a disputed

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claim term. Vitronics, 90 F.3d at 1583.

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“Ultimately, the interpretation to be given a term can only be determined and

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confirmed with a full understanding of what the inventors actually invented and intended to

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envelop with the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250

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(Fed.Cir. 1998) (citing Markman, 517 U.S. at 389). “The construction that stays true to the

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claim language and most naturally aligns with the patent’s description of the invention will

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be, in the end, the correct construction.” Id. Therefore, “[a] claim construction is persuasive,

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not because it follows a certain rule, but because it defines terms in the context of the whole

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patent.” Id.

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III. Discussion

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The parties agree that the “key teaching” of the Patent is “introducing a vapor of

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volatile substance into an inhalation flow path.” The abstract of the patent reads: “A method

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of introducing a vapor of a volatile substance into an inhalation flow path of a respiratory

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organ, the method comprising the steps of providing a carrier having a volatile substance and

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engaging the carrier at the inhalation flow path of the respiratory organ.” (Doc. 59, Ex. A.)

The patent includes 17 claims. (Id.) Plaintiffs accuse Defendants of infringing claims
1, 11, and 15. (Id.) Claims 1 and 11 are independent claims. (Id.) They are directed,
respectively, to a method and a vehicle for “introducing a vapor of at least one volatile
substance into an inhalation flow path of a respiratory organ.” (Id.) The method comprises
the steps of:
providing a carrier conformable to a surface of the skin;

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providing the carrier with at least one volatile substance;
providing a barrier coupled to a surface of the carrier, the barrier being
substantially impermeable to the one or more volatile substances carried by
the carrier; and
engaging the carrier to the surface of the skin proximate an inhalation flow
path of a respiratory organ with the barrier adapted to be interposed between
the carrier and the skin to prevent the one or more volatile substances from
contacting the skin.

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(Id.)
All of the disputed terms are in Claims 1 and 11. The parties’ proposed constructions

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of the terms are set forth in their opening claim construction briefs. (Docs. 85, 88.)

The chart below summarizes the Court’s construction of the contested claim terms.

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It is followed by the Court’s supporting analysis.
Disputed Claim Term

Construction

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Volatile substance

“A substance that readily vaporizes or evaporates.”

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Carrier

“The portion of the vehicle or device that carries or
provides at least one volatile substance.”

Barrier

“The portion of the vehicle or device that prevents
contact between the skin and the volatile
substance.”

Coupled to

“Connected to.”

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Substantially impermeable to
one or more volatile substances

“Preventing passage of most or all of the one or
more volatile substances.”

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Proximate an inhalation flow
path

“Close to or within the entrance to the mouth and/or
the nasal passages and not on the bridge of the
nose.”

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Engaging the carrier to a surface
of the skin

“Attaching the vehicle to the skin.”

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Means for engaging the carrier
to the surface of the skin

Function: “Attaching the vehicle to the skin
proximate an inhalation flow path.”
Structure: “Adhesive, clamp, deformable element,
or deformable member.”

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A.

“Volatile substance”
Claims 1 and 11 refer to a method and vehicle “providing the carrier with at least one

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volatile substance.” Plaintiffs define “volatile substance” as “a substance that is readily

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vaporizable, including, for example, essential oils.” Defendant propose the following

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construction: “a liquid or solid material that readily evaporates at ambient pressure and

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temperature.”

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The parties agree that “the technical meaning of a volatile substance is a substance

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that readily transitions to a gas or vapor (i.e. vaporizes)” (Doc. 89 at 3) or “a substance that

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readily vaporizes or evaporates” (Doc. 91 at 7). Defendants argue, however, that Plaintiffs’

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construction is incomplete and potentially misleading. They contend that it is accurate to

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qualify “volatile substance” with the phrase “liquid or solid” because a substance that

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vaporizes is by definition not a gas. (Id.) They also argue that adding the phrase is

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appropriate because “volatile substance” is a “technical chemistry term that a lay jury may

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not know.” (Id. at 4.) Defendants likewise assert that the phrase “at ambient pressure and

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temperature” is technically accurate and proper. (Id. at 5.)

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Plaintiffs argue that it is inappropriate to read these additional limitations into the

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specification. The Court agrees. “Where a specification does not require a limitation, that

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limitation should not be read from the specification into the claims.” Intel Corp. v. U.S. Int’l

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Trade Comm’n, 946 F.2d 821, 836 (Fed.Cir. 1991). Neither of the limitations proposed by

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Defendants is required, nor would a jury would not fail to understand what is meant by

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“substance” or “readily”

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Accordingly, the Court will construe “volatile substance” as “a substance that readily
vaporizes or evaporates.”

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“Carrier,” “Barrier,” “Substantially impermeable to one or more volatile

substances,” and “Coupled to.”
Claims 1 and 11 specify a vehicle and method “providing a barrier coupled to a
surface of the carrier, the barrier being substantially impermeable to the one or more volatile
substances carried by the carrier.”
Plaintiffs define “carrier” as “a portion of the vehicle or device that carries or provides

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at least one volatile substance.” Defendants propose the following construction: “a distinct

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layer comprised of a substantially absorbent material that can take up and hold the volatile

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substance, while allowing the release of the vapor of the volatile substance.” Plaintiffs define

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“barrier” as “a portion of the vehicle or device that prevents contact between the skin and the

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volatile substance.” Defendants propose “a distinct layer comprised of a different material

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than the carrier that prevents the volatile substance from contacting the skin.”

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In support of their proposed constructions, Defendants assert that “carrier” and

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“barrier” must be defined as separate and distinct layers, composed of different materials,

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because the two layers perform opposing functions. Defendants note that the vehicles

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disclosed in the specification are composed of distinct barrier and carrier layers, and that “in

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describing four of the five embodiments, the patentee explicitly states that the vehicle is

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‘comprised of a series of layers.’” (Doc. 85 at 3.) Defendants also argue that the “carrier”

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must consist of a “substantially absorbent material” and that the term “portion,” as used by

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Plaintiffs, is too broad.

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Plaintiffs counter that the claims of the Patent require only the presence of a “carrier”

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and “barrier” in the vehicle or device. There is no requirement of “distinct layers,” and the

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phrase does not occur in the claims. Plaintiffs argue that a single material can be used as a

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“carrier” and a “barrier.” They further assert that the manner in which the vehicle carries a

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volatile substance while preventing contact with the skin is a design choice. Therefore,

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although a “carrier” may consist of a substantially absorbent material, as it is in one of the

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design choices described in the Patent, such a definition is not required.
The Court finds Plaintiffs’ position more convincing, and will adopt their proposed
constructions of “barrier” and “carrier.” Plaintiffs correctly note that “Defendants’ proposed
constructions rely on limitations imported from the specification into the claims.” (Doc. 91
at 2.) As the court explained in Phillips, “although the specification often describes very
specific embodiments of the invention, we have repeatedly warned against confining the
claims to those embodiments. . . . In particular, we have expressly rejected the contention that

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if a patent describes only a single embodiment, the claims of the patent must be construed

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as being limited to that embodiment.” 415 F.3d at 1323; see Liebel-Flarsheim Co. v. Medrad,

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Inc., 358 F.3d 898, 906 (Fed.Cir. 2004) (reiterating that “this court has expressly rejected the

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contention that if a patent describes only a single embodiment, the claims of the patent must

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be construed as being limited to that embodiment”).

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Furthermore, “[t]hat claims are interpreted in light of the specification does not mean

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that everything expressed in the specification must be read into all the claims.” Teleflex, Inc.

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v. Ficosa North America Corp., 299 F.3d 1313, 1326 (Fed.Cir. 2002) (quoting Raytheon Co.

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v. Roper Corp., 724 F.2d 951, 957 (Fed.Cir. 1983)). In Teleflex, the court ruled that the term

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“clip” was not confined to the embodiment described in specification, which would limit

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“clip” to a structure having a single pair of legs. 299 F.3d 1313, 1326–28. The court

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explained that there were no clear statements in the specification or prosecution history

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indicating that the scope of claim should be so limited, noting, for example, that “[t]he

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language of asserted claim 1 does not support limiting the claim to a ‘single pair of legs.’

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Neither ‘single’ nor ‘pair of legs’ appears in claim 1.” Id. at 1327. The court concluded that

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the district court “erred by importing the ‘single pair of legs’ limitation from the specification

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into the claim.” Id. at 1328.

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A similar analysis applies to Defendants’ attempt to import into claims 1 and 11 the

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limit of “distinct layers.” The phrase “distinct layer” does not appear in the claims or the

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specifications. Defendants note that the embodiments describe vehicles containing carrier and

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barrier layers. Similarly, Defendants assert that because all of the embodiments disclosed in
the specification include a carrier made of a substantially absorbent material, the term carrier
must be so defined. Again, however, it is improper to confine a claim to the embodiments set
forth in the specification. Moreover, “the specification need not describe every embodiment
of the claimed invention.” Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed.Cir.
2001); see Epistar Corp. v. International Trade Com’n, 566 F.3d 1321, 1337 (Fed.Cir. 2009)
(rejecting accused infringer’s argument that the term “substrate” had to have a certain

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thickness, provide structural support, and be limited to a single layer since the disclosure in

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the specification was only for an “exemplary” embodiment).

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Plaintiffs also argue that the “distinct layer” limitation would improperly exclude “an

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embodiment disclosed in the specification in which the carrier is comprised of several layers

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sandwiched together.” (Doc. 91 at 3.) This embodiment includes a carrier that consists of two

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other members “sandwiched together with a suitable adhesive and each consisting of a

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natural or synthetic sponge-like or substantially absorbent,” with a “macrocapsule containing

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one or more volatile substances” captured between the members. (Doc. 86-1, col. 6, ll. 8-12,

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and FIG. 16.) As Plaintiffs note, in this embodiment the carrier, being comprised of two

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members and a macrocapsule, cannot accurately be defined as a “distinct layer.” Courts

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“normally do not interpret claim terms in a way that excludes embodiments disclosed in the

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specification.” Oatey Co. v. IPS Corp., 514 F. 3d 1271, 1276 (Fed.Cir. 2008). For this reason

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too, the “distinct layer” limitation is not properly imported into the claim.

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In addition, Defendants’ proposed construction of carrier is inappropriate under the

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doctrine of claim differentiation, which holds that “the presence of a dependent claim that

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adds a particular limitation raises a presumption that the limitation in question is not found

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in the independent claim.” Liebel–Flarsheim, 358 F.3d at 910; see Curtiss–Wright Flow

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Control Corp. v. Velan, Inc., 438 F.3d 1374, 1381 (Fed.Cir. 2006) (explaining that “claim

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differentiation takes on relevance in the context of a claim construction that would render

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additional, or different, language in another independent claim superfluous”); Phillips, 415

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F.3d at 1315 (“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.”).
Furthermore, independent claims are generally given broader scope so as to avoid rendering
corresponding dependent claims redundant. Id. at 1324 (citing Dow Chem. Co. v. United
States, 226 F.3d 1334, 1341 (Fed.Cir.2000)).
Dependent claim 12 describes a “vehicle of claim 11, wherein the carrier includes a
substantially absorbent member.” Therefore, there is a presumption that the “substantially

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absorbent member limitation,” contrary to Defendants’ construction, is not found in

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independent claim 11. Defendants are correct that the written description can overcome the

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claim differentiation presumption in certain circumstances, but those circumstances are not

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present here. The effect of ignoring the doctrine in this case “would render the dependent

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claims superfluous or even invalid.” Abbott Laboratories v. Sandoz, Inc., 529 F.Supp.2d 893,

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907 (N.D.Ill. 2007).

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Next, Plaintiffs define “substantially impermeable to one or more volatile substances”

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as “preventing passage of most or all of the one or more volatile substances.” Defendants

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argue that the phrase does not need to be construed beyond its plain meaning. The Court will

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adopt Plaintiffs’ construction, which is consistent with the ordinary and customary meaning

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of the words, and accurately describes the function of the barrier as set forth in the

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specification.

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Finally, Plaintiffs define “coupled to” as “connected or adjacent to.” Defendants

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propose the following definition: “the distinct carrier layer is affixed to the distinct barrier

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layer.” The parties agree that “connected” is a fair construction of “coupled to.” (Doc. 85 at

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12.)

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Plaintiffs argue that their definition is consistent with the construction of the term

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adopted by the court Federal Circuit in Johnson Worldwide Associates, Inc. v. Zebco Corp.,

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175 F.3d 985, 992 (Fed.Cir. 1999), which held that the “clear meaning” of coupled “is not

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limited to a mechanical or physical coupling.” Defendants counter that this definition is

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inappropriate because a physical or mechanical coupling is required to connect the barrier
to the carrier; mere adjacency would not hold the carrier and barrier together. They also cite
the American Heritage Dictionary, which defines “adjacent” as “Close to; lying near” and
“Next to; adjoining.”
The Court finds neither party’s definition of “couple to” satisfactory. While the Court
has rejected Defendants’ “distinct layers” limitation on the terms barrier and carrier, it
concludes that Plaintiffs’ proposed construction is overly expansive. “Adjacent,” which can

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be defined as merely close to or near, is not consistent with Plaintiffs’ characterization of

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their claims, which describe the carrier and barrier as being connected rather than merely

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near each other. Accordingly, the Court will construe the term “coupled to” as “connected

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to.”

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C.

“Proximate an inhalation flow path,” “Engaging the carrier to a surface of the

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skin,” and “Means for engaging the carrier to the surface of the skin.”

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Claims 1 and 11 specify a vehicle and method “engaging the carrier to the surface

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of the skin proximate an inhalation flow path of a respiratory organ with the barrier adapted

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to be interposed between the carrier and the skin to prevent the one or more volatile

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substances from contacting the skin.” The parties’ proposed constructions of these terms

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address the placement of the device and the mechanism by which it is held in place.

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Plaintiffs define “proximate an inhalation flow path” as “close to or within the

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entrance to the mouth and/or the nasal passages.” Defendants’ proposed construction is

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“substantially immediately adjacent to the nasal or oral cavity openings, and not on the

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bridge of the nose or inserted into the nasal cavity openings.”

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The parties agree that “‘proximate an inhalation flow path’ means ‘close to’ or

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‘substantially immediately adjacent to’ the openings of the mouth (oral cavity) or nasal

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passages.” (Doc. 89 at 14.) Defendants contend, however, that “the plain meaning of ‘close

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to’ or immediately adjacent to’ does not include inside of.” (Id.)

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Plaintiffs argue that their construction of the term is supported by the specification,
which includes embodiments where the device is inserted into the nose. They note that the
specification for vehicle 20 states that “the entrance of mouth 22 and entrances of nose 23
as defined by the external openings into each of the nasal passages define inhalation flow
paths” and that “vehicle 20 is preferably worn against the skin adjacent or otherwise in one
or more of inhalation paths 24 and 25.” (Doc. 86-1, Col. 3, lines 14–19, 58–64). Figure 4 also
shows the vehicle inserted into the nose.
Defendants assert, however, that the prosecution history shows that Plaintiffs

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disclaimed any embodiments in which the devise is inserted into the nose. (Doc. 85 at

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13–15.) According to Defendants, this disclaimer supercedes the embodiments in the

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specification.

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During prosecution of claims, the Examiner cited U.S. Pat. Nos. 5,706,800 to Cronk

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(“Cronk”) and 888,869 to Clark (“Clark”). (Doc. 86, Ex. G.) The Cronk reference discloses

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a nasal dilator strip attached to the bridge of the nose. (See id., Ex. F). Defendants argue that

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the “patentee unambiguously gave away embodiments of a device that is attached to the

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bridge of the nose.” (Doc. 85 at 14.) Plaintiffs acknowledge that the patentee distinguished

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his invention from Cronk by stating that “Cronk does not teach the use of a vehicle proximate

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the inhalation flow path. The bridge of the nose is a substantially [sic] distance form [sic] the

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flow path.” (Id., Ex. H at 9.) Plaintiffs note, however, that “the accused products in this case

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are not placed on the bridge of the nose,” and argue there is no issue for the Court to resolve.

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(Doc. 88 at 15.) The Court agrees with Defendants that Plaintiffs clearly and unmistakably

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disavowed embodiments of vehicles positioned on the bridge of the nose. See Omega

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Engineering, Inc, v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed.Cir. 2003)

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The Clark reference discloses an inhaler that is inserted into the nose. (Id.) The

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patentee argued that Clark did not disclose a carrier that is “positioned proximate the flow

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path” but instead “actually blocks the flow path.” (Id.) The examiner removed the Clark

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reference. According to Defendants, however, by “blocks the flow path,” the patentee

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necessarily meant “inserted into the nostrils.” (See Docs. 85 at 15, 89 at 12.) Therefore,

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Defendants argue, because the patentee’s characterization of the invention as being placed
“proximate” the flow path did not include being inserted into the nose, “Plaintiffs have
forever given up those embodiments and cannot now as a matter of law attempt to recapture
those same embodiments in litigation.” (Doc. 85 at 15.)
As additional evidence that Plaintiffs disclaimed embodiments inserted into the nose,
Defendants cite the patentee’s cancellation of proposed claim 22. (Doc. 89 at 12–13.) Claim
22 included the requirement that the vehicle be “within, at or below the openings of the

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respiratory organ.” (Doc. 91, Ex. J at 34.) The patentee believed the claim was allowable

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because “within, at or below the openings of the respiratory openings while leaving said

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openings unrestricted is believed to define over the cited references.” (Id. at 38.) The

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patentee later cancelled claim 22. The record shows that “the Examiner indicated to [the

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patentee’s counsel] that prior art cited in prior office actions, specifically U.S. Patent No.

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5,706,800 to Cronk et al and U.S. Patent No. 888,869 to Clark, read on the newly submitted

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claim 22. Applicant agreed to cancel claim 22 because claims 1–16 and claim 21 are

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allowable over the prior art of record.” (Id. at 41.)

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Plaintiffs argue that the patentee simply agreed to cancel proposed claim 22 in order

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to facilitate issuance of the patent, because the Examiner had already allowed claims 1–16

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and claim 21. They note that notwithstanding the applicant’s statements regarding Clark, the

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Examiner allowed claims inserting the device into the nose: dependent claim 15, which states

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that, “The vehicle of claim 11, wherein the means includes a deformable element deformably

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engagable against the respiratory organ,” and dependent claim 16, “The vehicle of claim 11,

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wherein the means includes a clip clippingly engagable against the respiratory organ.”

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Plaintiffs also note that there were several differences between proposed claim 22 and

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the issued claims; for example, in contrast to the claims that were issued, claim 22 did not

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include the limitation of a “barrier.” Therefore, Plaintiffs argue, because the requirement in

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proposed claim 22 that the vehicle be “within, at or below the openings of the respiratory

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organ” was not the only distinction between the proposed and issued claims, the cancellation

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of claim 22 did not constitute a disclaimer.
The Court agrees with Plaintiffs that these details of the applicant’s cancellation of
proposed claim 22 do not support a finding of disclaimer. “[F]or prosecution disclaimer to
attach, our precedent requires that the alleged disavowing actions or statements made during
prosecution be both clear and unmistakable.” Omega, 334 F.3d at 1325–26; see Computer
Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed.Cir. 2008) (“prosecution
disclaimer does not apply to an ambiguous disavowal.”) There is no “clear and

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unmistakable” disavowal if the statements are subject to “more than one reasonable

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interpretation.” Seirus Innovative Accessories, Inc. v. Bula America, Inc., No. 08-CV-2234

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H(WMC), 2010 WL 5585509, at *2 (S.D.Cal. October 14, 2010) (quoting SanDisk Corp. v.

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Memorex Prods., Inc., 415 F.3d 1278, 1287 (Fed.Cir. 2005)). Here, the statements made

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concerning the Clark reference and withdrawn claim 22 are subject to more than one

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reasonable interpretation.

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Based on the foregoing, the court will construe “proximate an inhalation flow path”

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as “close to or within the entrance to the mouth and/or the nasal passages and not on the

9

bridge of the nose.”

10

Plaintiffs define “engaging the carrier to a surface of the skin” as “bringing the vehicle

11

into contact with the skin.” Defendants’ proposed definition is “adhering to the surface of the

12

skin.”

13

Defendants contend that their construction is consistent with the ordinary meaning of

14

“engaging.” (Doc. 85 at 15.) They also argue that the patentee surrendered all non-adhesive

15

claims during prosecution of the Patent—specifically, “embodiments using deformable

16

members or clips to position the device in the nasal cavities.” (Doc. 89 at 15.)

17

As described above, the Court finds there was no disclaimer related to embodiments

18

of the vehicle inserted into the nose. The Court also finds, as discussed in more detail below,

19

that there was no disclaimer of embodiments using deformable members or clips. The

20

specification disclosed a clamp and a deformable element that could be used to keep the

21
22
23
24
25
26
27

vehicle in contact with the skin. The Court concludes, therefore, that Defendants’ proposed
construction of “adhering to the surface of the skin” is too narrow and improperly limits the
scope of the claim. See Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1301
(Fed.Cir. 2003) (“Absent a clear disclaimer of particular subject matter, the fact that the
inventor anticipated that the invention may be used in a particular manner does not limit the
scope to that narrow context.”).
However, the Court agrees with Defendants that Plaintiffs’ construction—“bringing

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1

the vehicle into contact with the skin”—is imprecise. In every embodiment described, the

2

vehicle is attached to, not merely brought into contact with, the skin, whether by an adhesive,

3

a clamp, or a deformable element. Therefore, the Court will construe “engaging the carrier

4

to a surface of the skin” as “attaching the vehicle to the skin.”1

5

The parties agree that “means for engaging the carrier to the surface of the skin” is a

6

“means-plus-function” term governed by 35 U.S.C. § 112(f). Construction of a means-plus-

7

function limitation involves two steps. Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.,

8

296 F.3d 1106, 1113 (Fed.Cir. 2002). First, the court must identify the claimed function. Id.

9

The court must construe the function to include the limitations contained in the claim

10

language, and only those limitations. Id. It is improper to narrow the scope of the function

11

beyond the claim language, or to broaden the scope of the claimed function by ignoring clear

12

limitations in the claim language. Id.

13

After identifying the claimed function, the court must determine what structure, if any,

14

disclosed in the specification corresponds to the claimed function. Id. In order to qualify as

15

corresponding, the structure must not only perform the claimed function, but the specification

16

must clearly associate the structure with performance of the function. Id. To determine the

17

structures, the court must “consider the specification as a whole, and to read all portions of

18

the written description, if possible, in a manner that renders the patent internally consistent.”

19

Budde v. Harley–Davidson, Inc., 250 F.3d 1369, 1379–80 (Fed.Cir. 2001). “[P]roper

20

construction should account for ‘all structures in the specification corresponding to the

21
22
23

claimed function’ and it would be error to limit the structure to be just the preferred
embodiment.” Seirus, 2010 WL 5585509, at *2 (quoting Callicrate v. Wadsworth Mfg., Inc.,
427 F.3d 1361, 1369 (Fed.Cir. 2005)).

24
25
1

26
27
28

This construction is supported by dictionary definitions of the words engage, adhere,
and attached. Engage is defined as “to come together and interlock.” Adhere: “to hold fast
or stick by or as if by gluing, suction, grasping, or fusing.” Attach: “to make fast (as by tying
or gluing).” Merriam-Webster’s Collegiate Dictionary (11th ed. 2008).
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1

The means-plus-function limitation covers both distinct and alternative structures.

2

Creo Prods., Inc. v. Presstek, Inc., 305 F.3d 1337, 1345 (Fed.Cir. 2002). Additionally,

3

“[w]hen multiple embodiments in the specification correspond to the claimed function,

4

proper application of § 112[] generally reads the claim element to embrace each of those

5

embodiments.” Micro Chemical, Inc. v. Great Plains Chemical Co., Inc., 194 F.3d 1250,

6

1258–59 (Fed.Cir. 1999).

7

Plaintiffs’ proposed construction of function is “bringing the vehicle into contact with

8

the skin.” Defendants propose “attaching the carrier to the surface of the skin proximate an

9

inhalation flow path.” Neither construction is satisfactory. As Plaintiffs note, Defendants’

10

proposed construction, which describes the function as attaching the carrier to the surface of

11

the skin, is inconsistent with the claim language: “means for engaging the carrier to a surface

12

of skin proximate an inhalation flow path of the respiratory organ with the barrier adapted

13

to be interposed between the carrier and the surface of skin.” (Doc. 59, Ex. A, col. 8, ll.

14

37–42). Thus, while the vehicle comes into contact with the skin, the barrier is designed to

15

be interposed between the carrier and the skin. Contrary to Defendants’ proposed

16

construction, therefore, there is no requirement that the carrier itself must come into contact

17

with the skin. Next, for the reasons discussed above, Plaintiff’s description of function as

18

bringing the vehicle “into contact with” the skin is imprecise. Accordingly, the Court will

19

construe the function as “attaching the vehicle to the skin proximate an inhalation flow path.”

20

For the corresponding structure, Plaintiffs propose “adhesive, clamp, deformable

21
22
23
24
25
26
27

element, deformable member, and equivalents thereof,” while Defendants propose “adhesive
and equivalents thereof that were not disclaimed in prosecution.” Plaintiffs argue that their
construction is supported by the claims and specification. The Court agrees. Dependent
claims of the Patent provide that the means include an “adhesive” (claim 13), “a deformable
element” (claim 15), and “a clip” (claim 16). Similarly, the specification provides that:
user 21 may then engage adhesive backing 33 to his or her body proximate one
or more of inhalation flow paths 24 and 25 such as, as shown in FIG. 1,
adjacent the external openings of the nasal passages of nose 23.

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1

Deformable member 55 thus permits the clamping of vehicle 50 against not
only septum 56, but also to the external sidewalls 57 and 58 of nose bounding
the external openings into the nasal passages if so desired.

2
3

Clamp 61 permits the clipping engagement of vehicle 50 against, for instance,
one of at least the septum and external sidewalls bounding the external
openings of the nasal passages of the nose of a user.

4
5

(Doc. 59, Ex. A, col. 3, ll. 41–44; col. 4, ll. 20–25, 49–52.)

6

Defendants again seek to limit the corresponding structure to “adhesive.” The Court

7

has rejected Defendants’ argument that the applicant surrendered the all non-adhesive

8

structures encompassed by the disputed “means for” claim language.

9

Defendants argue that the patentee failed to “clearly link” certain structures with the

10

claimed function. (Doc. 85 at 17.) Specifically, they argue that the patentee does not clearly

11

state that the clip and deformable element are for “engaging the vehicle to the skin proximate

12

an inhalation flow path.” Defendants cite, for example, the patentee’s statement that the

13

structures are for clamping or clipping “of vehicle 50 against not only septum 56, but also

14

to the external sidewalls 57 and 58 of nose bounding the external openings into the nasal

15

passages if so desired.” (Doc. 59, Ex. A, col. 4, ll. 20–25, 49–52; see FIG. 4 & 5.). According

16

to Defendants, therefore, the structures do not engage the vehicle to the skin proximate an

17

inhalation flow path, and this failure “to clearly associate the structures with the function

18

results in those structures not being covered by means-plus-function claiming.” (Doc. 89 at

19

17.)

20
21
22
23
24
25
26
27

The Court disagrees. Having rejected Defendants’ contention that Plaintiffs
disclaimed embodiments inserted into the nose, and having construed “proximate an
inhalation flow path” as “close to or within the entrance to the . . . nasal passages . . . ,” the
Court finds that the clip and deformable element do engage the vehicle to the skin proximate
an inhalation flow path.
Accordingly, “[a]fter considering the specification as a whole and reading the written
description in a manner that renders the patent internally consistent,” Budde, 250 F.3d at
1379–80, the Court concludes that the specification and claim history clearly link or associate

28
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1

the deformable element and clip to the function attaching the vehicle to the skin. See Omega,

2

334 F.3d at 1322; see also Seirus, 2010 WL 5585509, at *2.2 The Court will construe

3

structure to include the embodiments disclosed in the specification: adhesive, clamp,

4

deformable element, or deformable member.

5

IV. Conclusion

6
7

For the foregoing reasons, the Court construes the disputed claim terms as set forth
above.

8

IT IS SO ORDERED.

9

DATED this 23rd day of July, 2013.

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13
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24
25
26
27
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2

In Seirus, the court construed terms for a patented ski mask and scarf, including the
term “securing means.” 2010 WL 5585509, at *7. The court noted that, “The specification
discloses that ‘a variety of snaps, strings, or other fastening devices’ may be used as a
securing means. The specification further discloses that co-acting fasteners, such as
VELCRO, can be used as a securing means in a preferred embodiment.” Id. The court
therefore defined securing means” to be these identified structures—namely, snaps, strings,
co-acting fasteners, and other fastening devices. Id., at *7
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