Li-Ming Cheng et al v. Lowe's Home Centers, LLC et al

Filing 140

CLAIM CONSTRUCTION ORDER (SEE DOCUMENT FOR SPECIFICS). Parties shall submit a joint proposed schedule order regarding outstanding dates and deadlines by July 10, 2017 by Judge Otis D. Wright, II. (lc) .Modified on 6/26/2017. (lc).

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O 1 2 3 4 5 6 7 United States District Court Central District of California 8 9 10 11 ZIPSHADE INDUSTRIAL (B.V.I.) Corp., Case № 2:14-cv-05934-ODW (JC) 12 Plaintiff/Counter-Defendant, 13 v. CLAIM CONSTRUCTION ORDER 14 LOWES HOME CENTERS, LLC; 15 WHOLE SPACE INDUSTRIES; and 16 DOES 1–50, inclusive, 17 Defendants/Counter-Claimants. 18 19 I. INTRODUCTION 20 This patent infringement case involves patent number 8,245,756 (“the ’756 21 Patent”) entitled “Pull Down, Push Up, Shade Apparatus” owned by Plaintiff-Counter 22 Defendant Zipshade International Corporation (“Zipshade”). 23 (“FAC”) ¶ 9, ECF No. 17.) Defendant-Counterclaimant Wholespace Industries Ltd. 24 (“Wholespace”) manufactures Roman shades for Defendant-Counterclaimant Lowe’s 25 Homecenter’s Allen + Roth Brand which allegedly include an infringing apparatus. 26 (Id. ¶¶ 10, 13–19.) (First Am. Compl. 27 The ’756 Patent allows for the raising or lowering of window shades and 28 Venetian blinds (collectively “window coverings”) by hand. (’756 Patent, Col. 1:10– 1 13, 22–24, ECF No. 120-2.) Before Plaintiff’s invention, such window coverings 2 were typically raised or lowered with the assistance of a pull-cord. (Id. at Col. 1:10– 3 17.) Designing out the pull-cord makes window coverings easier to manipulate and 4 eliminates any risk of strangulation for small children. (Id. at Col. 1:17–20.) In 5 addition to eliminating the pull-cord, the invention also ensures that window 6 coverings are “automatically kept level.” (Id. at Col. 1:26–27.) 7 On June 9, 2016, the Court held a claim construction hearing regarding the five 8 most significant terms as identified by the parties: rotary member, rotor, primary 9 line/lifting cord, secondary line, and coupled. 10 11 (ECF No. 139.) This claim construction order defines those terms. II. FACTUAL BACKGROUND 12 13 14 15 16 17 18 19 20 21 22 23 As might be expected for a common household item like a window covering, 24 the ’756 Patent references a long list of prior art dating back decades. The ’756 Patent 25 is a continuation in part from patent number 6,837,294 (Appl. No. 10/623,776) (“the 26 ’294 Patent”), which itself is a continuation in part from patent number 6,991,020 27 (Appl. No. 10/360,305) (“the ’020 Patent”). 28 2 1 This case began when Plaintiff filed a complaint alleging a single cause of 2 action for infringement on July 29, 2014. (Compl. ¶¶ 13–19, ECF No. 1.) Plaintiff 3 filed a first amended complaint on August 15, 2014. (ECF No. 17.) On November 4 10, 2014, Defendants each filed an answer and a counterclaim requesting declaratory 5 relief (noninfringement and invalidity). (ECF Nos. 46–47, 50–51.) Plaintiff filed 6 answers to the counterclaims on December 12, 2014. (ECF Nos. 70–71.) 7 On January 5, 2015, Defendant Wholespace filed a petition for inter partes 8 review of the ’756 Patent (IPR 2015-00488). (See Stip. to Stay 2, ECF No. 76.) On 9 July 24, 2015, the PTAB denied Defendant Wholespace’s request for inter partes 10 review in its entirety citing Defendant Wholespace’s failure to: “identify clearly the 11 grounds and references on which [it] is relying to assert that the challenged claims are 12 not patentable; . . . to specify sufficiently where the limitations of the challenged 13 claims are taught or suggested by the cited references; and . . . to provide a sufficiently 14 detailed explanation of the significance of the citations to these references and the 15 Judkins declaration—as required under [various statutes and federal rules].” 16 Wholespace Indus. v. Zipshade Indus. Corp., IPR2015-00488, at 18 (PTAB July 24, 17 2015). In short, Defendant Wholespace’s argumentation and use of references was so 18 poor that the PTAB believed institution of inter partes review would be a waste of 19 time. Id. (“we are not persuaded that the record before us demonstrates a reasonable 20 likelihood that [Defendant Wholespace] will prevail in establishing that at least one 21 challenged claim would have been obvious”). 22 On July 29, 2015, Defendant Wholespace filed another petition for IPR seeking 23 to correct the problems highlighted by the PTAB in its July 24, 2015 decision. (Status 24 Report 2–3, ECF No. 82.) On January 29, 2016, the PTAB again rejected Defendant 25 Wholespace’s request for IPR. Wholespace Indus. v. Zipshade Indus. Corp., IPR 26 2015-01632, at 10 (PTAB Jan 29, 2016). 27 Wholespace’s new petition was substantially the same as its previous petition. Id. at 28 9. 3 The PTAB concluded that Defendant 1 On February 16, 2016, Plaintiff and Defendants submitted their Joint Claim 2 Construction and Prehearing Statement. (ECF No. 98.) Plaintiff and Defendants 3 agreed that the five most significant (and likely case dispositive) terms are: rotary 4 member, rotor, primary line/lifting cord, secondary line, and coupled. (Joint Claim 5 Construction Prehearing Statement (“JCCPS”) 50, ECF No. 98.) 6 agreed on little else. Plaintiff proposed five additional terms for construction and 7 Defendants put forth countless other terms/phrases for construction based on the sides’ 8 initial exchange of terms. (Id. at 2–49.) However, they 9 Defendants pointed out in the statement that Plaintiff changed many of its 10 proposed constructions and disclosed its expert witness only four days before the Joint 11 Claim Construction and Prehearing Statement was due in violation of the Northern 12 District of California Local Patent Rules 4-1 and 4-2, which require the exchange of 13 constructions and citations to supporting evidence at least twenty-one days prior to the 14 submission of the Joint Claim Construction and Prehearing Statement. (See id. at 53– 15 58; see also N.D. Cal. Patent L.R. 4-1, 4-2). Based on this failure to disclose, 16 Defendants requested that the Court compel Plaintiff to use its originally proffered 17 terms and constructions. (JCCPS 58.) Defendants also requested that the Court 18 exclude Plaintiff’s expert witness from testifying. (Id. at 59.) Plaintiff responded by 19 arguing that its redefinition of terms was merely a narrowing of its original list 20 necessary to comply with the Court’s ten-term limit and that there was still plenty of 21 time for Defendants to depose the witness before the claim construction hearing. (Id. 22 at 60.) 23 On March 15, 2016, Defendants filed a “Motion to Strike Plaintiff’s Expert 24 Witness and Expert Witness Summary” from the Joint Claim Construction and 25 Prehearing Statement. 26 arguments they made in the Joint Claim Construction and Prehearing Statement. 27 (Mot. 2–10, ECF No. 105.) Plaintiff also put forth largely the same arguments it made 28 in the Joint Claim Construction and Prehearing Statement, adding that Northern (ECF No. 105.) Defendants put forth largely the same 4 1 District of California Local Patent Rule 4-41 allows for the identification of a witness 2 in either the preliminary exchange or in the Joint Claim Construction and Prehearing 3 Statement. (Opp’n 5–8, ECF No. 109.) The Magistrate Judge took the middle road: 4 granting in part and denying in part Defendants’ motion. (ECF No. 115.) She ordered 5 Plaintiff to produce an expert report and make its expert available for deposition and 6 allowed Defendants to identify a rebuttal witness. (Id.) 7 On July 15, 2016, the United States Patent and Trademark Office (“PTO”) 8 granted ex parte reexamination of the ’756 Patent in light of a “substantial new 9 question of patentability.” (RJN, Ex. A at 6, ECF No. 118.) On January 17, 2017, the 10 PTO issued a reexamination certificate affirming the patentability of all twenty-four of 11 the patent’s claims. (ECF No. 127-1.) No changes were made to the claim language, 12 specification, or figures. (Id.) 13 On February 21, 2017, the Court issued an order setting the remaining dates and 14 deadlines for claim construction. (ECF No. 130.) On March 30, 2017, Defendants 15 submitted their claim construction brief. (ECF No. 131.) In their brief, Defendants 16 continued to evince a lack of clarity as to exactly which terms would be construed at 17 the claim construction hearing. (Defs. Br. 1–4, ECF No. 131.) Defendants also filed a 18 supplement to their claim construction brief requesting that the Court exclude “the 19 report” of Plaintiff’s expert witness, Dr. Pratt, and “any testimony” relating to the 20 report at the claim construction hearing. (Defs. Suppl. Br. 1, ECF No. 132.) 21 With Plaintiff and Defendants seemingly still at odds over exactly which terms 22 would be construed at the claim construction hearing, the Court took action to impose 23 some order on the process. On April 7, 2017, the Court informed the parties that it 24 would construe the five most significant terms, which the parties had already briefed 25 and agreed were likely to be case dispositive. (ECF No. 135.) On April 26, 2017, 26 Plaintiff filed its reply. (ECF No. 136.) 27 28 1 The Court has adopted the Northern District of California’s Local Patent Rules. (See Patent Standing Order, ECF No. 10.) 5 1 On June 9, 2017, the Court received a demonstration of the technology and held 2 a claim construction hearing. (See ECF No. 139.) At the conclusion of that hearing, 3 the Court took the matter under submission. (Id.) 4 III. LEGAL STANDARD 5 Claim construction is an interpretive matter “exclusively within the province of 6 the court,” that begins with an analysis of the claim language itself. Markman v. 7 Westview Instruments, Inc., 517 U.S. 370, 372 (1996). This process involves an 8 analysis of how a person of ordinary skill in the art (“POSITA”) would interpret the 9 relevant term(s) in light of both the claim in which the term appears and of the entire 10 patent. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Accordingly, 11 claims must be read in light of the specification, which is “always highly relevant to 12 the claim construction analysis.” Id. at 1315 (internal quotations omitted). That being 13 said, the general rule is that limitations from the specification may not be imported 14 into the claims. Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186–87 15 (Fed. Cir. 1998). “[T]he line between construing terms and importing limitations can 16 be discerned with reasonable certainty and predictability if the court’s focus remains 17 on understanding how a person of ordinary skill in the art would understand the claim 18 terms.” Phillips, 415 F.3d at 1323. 19 The “ordinary and customary meaning” of disputed claim terms is at the heart 20 of claim construction. Phillips, 415 F.3d at 1312–13 (internal quotations and citations 21 omitted). 22 customary” will supersede: (1) when a patentee sets out a definition and acts as his 23 own lexicographer; or (2) when the patentee disavows the full scope of a claim term 24 either during prosecution or in the specification. Thorner v. Sony Comput. Entm’t Am. 25 LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). 26 27 However, in two situations, meanings other than the “ordinary and IV. DISCUSSION A. Admissibility of the Plaintiff’s Expert Witness’s Report/Testimony 28 6 1 Plaintiff and Defendants are sharply divided on the issue of whether evidence 2 offered by Plaintiff’s expert, Dr. Pratt, should be admitted. Defendants put forth two 3 arguments for excluding Dr. Pratt’s report and testimony. (Defs. Suppl. Br. 2–5.) 4 5 1. Dr. Pratt Does Not Possess Sufficient Experience in the Window Coverings Industry to be an Expert or a POSITA 6 First, Defendants argue that Plaintiff’s expert does not have sufficient 7 experience in the window coverings industry to qualify either as an expert or a 8 POSITA. (Id. at 1, 3–4.) In support of this position, Defendants point out that Dr. 9 Pratt admitted during his deposition that he has no window covering design 10 experience and that he would not be considered a POSITA in that industry. (Id.) 11 Based on these statements and Dr. Pratt’s background, Defendants argue that this case 12 is substantially similar to Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316 (Fed. 13 Cir. 2016) in which the Federal Circuit affirmed a Central District of California 14 court’s decision to exclude an expert witness. (Defs. Br. 24.) In Sport Dimension, the 15 issue was whether an industrial design consultant with four decades of experience 16 could provide expert testimony about the design of personal floatation devices, i.e. 17 lifejackets. 820 F.3d at 1323. In finding that the district court did not abuse its 18 discretion in excluding the expert, the Federal Circuit noted that the expert disclaimed 19 any expertise in the field of personal floatation devices, that his opinions were based 20 on his “imagination” rather than any actual experience, and that he never designed a 21 personal floatation device as part of his employment. Id. 22 In response, Plaintiff puts forth a number of cases indicating that experts need 23 only meet minimal standards to be admitted under Federal Rule of Evidence 702. 24 (Reply 11, ECF No. 136.) For instance, in Icon-IP Pty Ltd. v. Specialized Bicycle 25 Components, Inc., the court emphasized that the Ninth Circuit “contemplates a broad 26 conception of expert qualifications” and that an expert “need not be officially 27 credentialed in the specific [subject] matter [area] under dispute” to be admitted. 87 28 F. Supp. 3d 928, 938 (2015) (quoting Hangarter v. Provident Life & Accident Ins. 7 1 Co., 373 F.3d 998, 1015 (9th Cir. 2004) (emphasis in original) and Massok v. Keller 2 Indus., Inc., 147 Fed. Appx. 651, 656 (9th Cir. 2005)); see also United States v. 3 Garcia, 7 F.3d 885, 889–90 (9th Cir. 1993) (noting this “lack of particularized 4 expertise goes to the weight accorded [to] . . . testimony, not to the admissibility of 5 [one’s] opinion as an expert” (emphasis added)). The other cases Plaintiff cites 6 confirm this broad conception. See e.g., People v. Kinder Morgan Energy Partners, 7 L.P., 159 F. Supp. 3d 1182, 1190 (S.D. Cal. 2016).2 8 After thoroughly reviewing the cases presented by both sides, the Court has 9 determined that the report and testimony of Plaintiff’s expert should not be excluded 10 on relevance grounds. This case is less about the specifics of window coverings and 11 more about the function of a mechanism. 12 expertise in mechanisms and related education to provide valuable insight on this 13 topic. (See Pratt Report, Ex. 1 at 23 (indicating an explicit expertise in “mechanisms,” 14 and masters degree in mechanical engineering), 24 (indicating work experience 15 developing mechanisms), ECF No. 120-3); see also Fed. R. Evid. 702 (courts should 16 take into account whether an expert’s “specialized knowledge will help [them] 17 understand the evidence or to determine a fact in issue.”). Dr. Pratt is a POSITA with 18 regard to mechanisms. Dr. Pratt possesses sufficient general 19 In so finding, the Court notes that the present case is distinguishable from Sport 20 Dimension. While not every industrial designer may have sufficient knowledge of 21 personal floatation devices to opine on that subject, every engineer in possession of 22 graduate degree in mechanical engineering should be able to understand the 23 interworkings of a pulley system. Indeed, Plaintiff’s expert presents, as part of his 24 report, a sample problem from a third-year engineering textbook that is designed to 25 test engineering students’ knowledge of pulley systems. (Pratt Report 16.) 26 27 28 2 It must be noted that none of the cases Plaintiff cites concern the admissibility of expert testimony at a claim construction hearing. 8 1 The Court also notes that its decision here is consistent with its previous 2 decision in Farstone Techonology, Inc. v. Apple Inc., No. 8:13-CV-1537-ODW, 2015 3 WL 857706, at *4 (C.D. Cal. Feb. 27, 2015). In Farstone Technology, the issue was 4 whether an expert with a doctorate degree in electrical engineering and teaching 5 experience in software and hardware design was sufficiently qualified to testify at a 6 claim construction on the subject of backup/recovery systems even though he lacked 7 specific experience “design[ing] or implement[ing] backup/recovery systems.” 2015 8 WL 857706, at *4. The Court found that he was, noting that his background was 9 sufficiently related to the subject of backup/recovery systems. Id. 10 Based on the related nature of Dr. Pratt’s experience, past cases decided by this 11 Court, and the Ninth Circuit’s general consensus that “[t]he threshold for [expert] 12 qualification is low for purposes of admissibility,” the Court will not exclude Dr. 13 Pratt’s report or testimony on relevance grounds. In re ConAgra Foods, Inc., 302 14 F.R.D. 537, 550–51 (C.D. Cal. 2014) (quoting PixArt Imaging, Inc. v. Avago Tech. 15 Gen. IP (Singapore) Pte. Ltd., No. C 10–00544 JW, 2011 WL 5417090, at *4 (N.D. 16 Cal. Oct. 27, 2011)). 17 2. Dr. Pratt Failed to Read the Patent Owner’s Statement and Prosecution 18 History of the Parent Patents Before Authoring His Report 19 Defendants’ second argument is that Dr. Pratt’s report should be excluded 20 because it is based on an incomplete review of the record. (Defs. Br. 23; Defs. Suppl. 21 Br. 5.) 22 owner’s statement of IPR2015-00488 and did not review arguments presented during 23 prosecution of U.S. Patent Application Nos. 10/623,776 and 10/360,305.” (Defs. Br. 24 23.) Specifically, Defendants argue that Dr. Pratt did not review “the patent 25 Plaintiff does not deny that Dr. Pratt failed to review the patent owner’s 26 statement for IPR2015-00488 and the relevant parent patent prosecution histories in 27 preparing his report. (Reply 14.) However, Plaintiff argues that Dr. Pratt did review 28 the majority of relevant materials (the ’756 Patent, the prosecution history of the ’756 9 1 Patent, and the Joint Claim Construction and Prehearing Statement) and that Dr. 2 Pratt’s failure to review the patent owner’s statement and the parent patent prosecution 3 histories is inconsequential as these materials ultimately have no effect on any of the 4 constructions. (Id.) 5 Federal Rule of Evidence 702 instructs courts to consider expert testimony 6 where (1) the testimony is based upon sufficient facts or data; (2) the testimony is the 7 product of reliable principles and methods; and (3) the expert has reliably applied the 8 principles and methods to the facts of the case. The Court finds that while Dr. Pratt 9 may not have reviewed certain relevant evidence in preparing his report, this oversight 10 does not warrant the draconian measure of exclusion. Primiano v. Cook, 598 F.3d 11 558, 564 (9th Cir. 2010) (“[s]haky but admissible evidence is to be attacked by cross 12 examination, contrary evidence, and attention to the burden of proof, not exclusion.”). 13 Dr. Pratt’s opinions still have some value despite his failure to review the entire 14 record. As the Court is now acutely aware of the specific shortcomings of Dr. Pratt’s 15 report, it is more than capable of accounting for those shortcomings and will reduce 16 the weight given to Dr. Pratt’s report where appropriate. 17 B. Constructions 18 1. Rotary Member (34 & 35 in figure) 19 20 21 22 23 24 25 26 27 28 10 1 2 3 4 5 6 7 8 9 Plaintiff’s Proposed Construction Defendants’ Proposed Construction A pulley within the counterbalance A single pulley such that a double mechanism coupled in some way to a pulley is two rotary members and is not spring and having a unique axis of a single rotary member. (Defs. Br. 9.) rotation with one or more receiving surfaces. (Pl. Opening Br. 4, ECF No. 120.) Areas of Disagreement Between the Parties: 10 Plaintiff and Defendants disagree over whether a “rotary member” may have 11 more than one receiving surface. 12 Plaintiff’s Opening Argument: 13 Plaintiff’s argument is simple: neither the claim nor the specification indicates 14 that rotary members must possess a specific number of receiving surfaces. 15 Opening Br. 4.) Plaintiff argues that the defining feature of a rotary member is not the 16 number of receiving surfaces it possesses but rather its unique axis of rotation. (Id. 4– 17 6.) Plaintiff’s expert echoes this assessment. (Pratt Report 9.) 18 Defendants’ Response: (Pl. 19 Defendants’ sole argument is based on a disclaimer/disavowal3 Plaintiff 20 allegedly made in the patent owner’s statement for IPR2015-00488. (Defs. Br. 6–7.) 21 Defendants contend that Plaintiff disclaimed/disavowed any multi-receiving surface 22 structure from being a rotary member. (Id. at 7.) Specifically, Defendants point to 23 Plaintiff’s argument in the patent owner’s statement regarding the Bixler patent (prior 24 art). 25 /// 26 27 28 3 Most of the case law seems to treat disclaimer and disavowal similarly often referring to “disclaimer or disavowal.” See e.g., David Netzer Consulting Eng’r LLC v. Shell Oil Co., 824 F.3d 989, 994 (Fed. Cir. 2016) (referencing “disclaimer or disavowal”). The Court uses disclaimer/disavowal to mean “disclaimer or disavowal” in this decision. 11 1 2 3 4 5 6 7 8 Plaintiff’s Proposed Construction A pulley within the upper elongated Defendants’ Proposed Construction A single pulley. (Defs. Br. 9.) member having a unique axis of rotation and configured to entrain one or more primary lines on one or more receiving surfaces. (Pl. Opening Br. 5.) Areas of Disagreement Between the Parties: 9 Plaintiff and Defendants disagree over whether a “rotor” may have more than 10 one receiving surface. 11 Plaintiff’s Opening Argument: 12 As in the rotary member context, Plaintiff argues that neither the claims nor the 13 specification indicates that a rotor must possess a specific number of receiving 14 surfaces. (Pl. Opening Br. 5–7.) Plaintiff also points to Dr. Pratt’s report in which he 15 indicates that it is “common” for a pulley (singular) to have multiple receiving 16 surfaces separated by grooves. (Pratt Report 12, 16.) For instance, Dr. Pratt provides 17 the following example from an Ebay listing: 18 19 20 21 22 23 Defendants’ Response: 24 Defendants argue that Plaintiff “explicitly” disclaimed/disavowed that a 25 “multiple pulley structure” was not a rotor.4 (Defs. Br. 6–7.) Specifically, Defendants 26 27 28 4 Defendants mix up “pulley” with “receiving surface.” What Defendants mean is that Plaintiff explicitly disclaimed/disavowed that a single pulley could have multiple receiving surfaces. 14 1 separate pulleys. See Jelic Depo. 44:5–45:1, ECF No. 136-2. He agreed that it would. 2 Jelic Depo. 45:2. 3 describes a single rotor with multiple receiving surfaces. Jelic Depo. 45:3–45:12. In 4 sum, Plaintiff does not appear to have clearly and unmistakably disclaimed/disavowed 5 before the PTAB that a single rotor may not possess multiple receiving surfaces. Moreover, Jelic could not identify any language in Toti that 6 After reviewing the language of the claims and the specification, the Court has 7 not found any support for limiting the definition of rotor to a structure with a single 8 receiving surface. Further, Defendants have not put forth any argument that such a 9 limitation exists in the language of the claims or the specification. Accordingly, the 10 Court adopts Plaintiff’s proposed construction: a rotor is a pulley within the upper 11 elongated member having a unique axis of rotation and configured to entrain one or 12 more primary lines8 on one or more receiving surfaces. 3. Primary Line(s)/Lifting Cord(s)9 (104, 105, 113, 114, 115) in the figure 13 14 on the left and (20, 21) in the figure on the right 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8 The primary line aspect of the definition is taken from independent Claim 1 of the ’756 Patent, which discloses a “pulley assembly having a first rotor and a second rotor wherein said first primary line is entrained around the first and second rotors.” (’756 Patent, Col. 6:60–63.) 9 The parties agreed at the claim construction hearing that primary line is synonymous with lifting cord. For ease of reference, the Court will use primary line instead of primary line/lifting cord for the remainder of the decision. 18 1 2 3 4 5 6 7 8 9 10 11 Plaintiff’s Proposed Construction Defendants’ Proposed Construction A cord-like member (or cord-like A single cord cannot be both first and portion of another member) having a second primary lines. (Defs. Br. 11.) unique pathway through the window covering system and adapted to support the weight of a lower elongated member and collapsible member. (Pl. Opening Br. 10.) Areas of Disagreement Between the Parties: Plaintiff and Defendants disagree over whether one cord can be the first primary 12 and second primary lines described in the patent. 13 Plaintiff’s Opening Argument: 14 Plaintiff argues that what defines each primary line is its unique pathway 15 through the window covering system, not whether it is comprised of a distinct cord. 16 (Pl. Opening Br. 10.) In support of this construction, Plaintiff points to Figure 17 17 (shown above) which appears to show a loop at 106 rather than two terminal ends. 18 (Id.) Doubling down on this point, Plaintiff highlights a portion of the transcript from 19 the deposition of Defendants’ witness, Ralph Jelic, in which he notes that the loop at 20 106 allows for the possibility that a single cord could be multiple primary lines as 21 defined by Plaintiff. (Id. at 11.) 22 Defendants’ Response: 23 24 Defendants first argue that the plain meaning of primary line is a single cord. (Defs. Br. 11.) 25 Second, Defendants argue that 106 does not depict a loop at all. 26 Defendants point out that the specification indicates that “106 joins ends of 104 and 27 105 with secondary line 107.” (Id. (emphasis added); see also ’756 Patent, Col. 6:31.) 28 Third, Defendants point out that the specification indicates the primary lines have two 19 (Id.) 1 “terminals,” one of which is connected to the lower support member and the other of 2 which is connected to the junction (the point where the primary line and secondary 3 line are coupled). (Id. at 10.) Fourth, Defendants point out that their expert, who is 4 undisputedly a POSITA, believes that one skilled in the art would construe each 5 primary line as a separate and distinct cord. (Id. at 11.) 6 Plaintiff’ Reply: 7 Plaintiff makes similar arguments to those made in its opening brief: that the 8 language of the claims does not require each primary line be an individual cord and 9 that Figure 17 shows a looping cord that constitutes two primary lines. (Reply 6.) 10 Plaintiff also contends that the ends joined at 106 need not be terminal, instead they 11 may be conceptual—meaning that even though the cord remains intact, there is a point 12 at the junction which delineates one primary line from the other. (Id.) 13 The Court’s Analysis: 14 While Plaintiff’s arguments are not entirely without merit, the Court finds them 15 unpersuasive. The Court simply does not buy the argument that “ends” can be a 16 conceptual point on a cord—this runs counter to the plain and ordinary meaning of 17 ends. First, this notion leaves it is unclear exactly where the proposed ends would be 18 located—where one primary line would end and the other would begin. Second, it 19 would mean that the word “terminals” refers to different structures at different places 20 in the specification (even within the same sentence): “terminals” at the junction would 21 refer to a fold and “terminals” at the lower member would refer to two terminal ends. 22 (’756 Patent, Col 2:39–45 (“Yet another object includes containment in the upper 23 support of all of the primary rotors and the tensioning means; the provision of primary 24 lines that have first terminals operatively connected to said lower elongated member, 25 below said upper support; and wherein the primary lines have second terminals 26 operatively connected to said junction, within the upper support.” (emphasis added)).) 27 /// 28 /// 20 1 2 3 4 5 6 7 Plaintiff’s Proposed Constructions Secondary Line: a member having a Secondary Line: a line coupled with unique pathway through the window the primary lines so that the secondary covering system and adapted to couple a line has an endwise connection with the primary line to a counterbalance primary lines, and this endwise mechanism. (Pl. Opening Br. 7) connection does not pass over any rotor. (Opp’n 14.) 8 9 Defendants’ Proposed Constructions Areas of Disagreement Between the Parties: 10 Plaintiff and Defendants disagree over whether the connection between the 11 primary and “secondary line” may pass over any rotor and whether the connection 12 must be endwise. 13 Plaintiff’s Opening Argument: 14 Plaintiff argues that the language of the claims does not contain a limitation 15 requiring that the connection not pass over any rotor. (Pl. Opening Br. at 8.) Plaintiff 16 also points to the deposition testimony of Defendants’ witness Ralph Jelic stating the 17 same. (Id.) 18 Defendants’ Response: 19 Defendants point to language in the specification indicating that the connection 20 in the above picture moves between rotor fifty and the counterbalancing mechanism 21 depending on the height of the window covering. (Defs. Br. 14; see also ’756 Patent, 22 Col. 5:44–48 (“[The rotors] serve to entrain the primary lines 20 and 21 in back and 23 forth relation collecting those lines as seen in FIGS. 3 and 4, so as to enable the 24 junction 22 to travel between rotor 50 and the line 24.”).) 25 Defendants also argue that Plaintiff disclaimed during the prosecution of the 26 parent ’020 Patent that its invention does not have a connection that passes over a 27 rotor. (Defs. Br. 15–16.) Specifically, Defendants contend that Plaintiff argued 28 Akerstrom (prior art) was distinguishable from its patent because Akerstrom allowed 23 1 Defendants discuss notes only a “preference,” thus allowing for the possibility that the 2 line is shorter and that the connection does pass over a rotor. (Id. at 9–10.) 3 The Court’s Analysis: 4 i. Whether the connection must not pass over any rotor 5 While this is a complex and difficult determination well-argued by both sides, 6 the Court ultimately sides with Defendants. Saunders Grp., Inc. v. Comfortrac, Inc., 7 492 F.3d 1326, 1335–36 (Fed. Cir. 2007) (“Cases such as this one, in which 8 predecessor applications or patents were drawn to narrow claims and in which the 9 claims in the successor application are arguably broader than the invention described 10 11 in the specification, present difficult questions of . . . claim construction . . . .”) Defendants’ proposed limitation does not appear in the ’756 Patent’s claim 12 language. 13 specification and any relevant disclaimer/disavowals, and if necessary, on the opinions 14 of their experts. As the previous paragraphs show, the specification does not strongly 15 favor either party. 16 Description that suggests the connection in the depicted embodiment does not pass 17 over any rotor, Plaintiff highlights language from the same section of the patent that 18 appears to specifically contemplate embodiments in which the connection does pass 19 over a rotor. (Compare ’756 Patent, Col. 5:44–48 (“[The rotors] serve to entrain the 20 primary lines 20 and 21 in back and forth relation collecting those lines as seen in 21 FIGS. 3 and 4, so as to enable the junction 22 to travel between rotor 50 and the line 22 24.”), with id. at Col. 2:32–35 (“[T]he primary rotors preferably include a first rotor 23 having spacing from the counter-balancing means which exceeds the path of travel, 24 for shade or blind height adjustment between uppermost and lowermost portions.” 25 (emphasis added)).) 26 Therefore, the parties’ arguments necessarily turn on language in the While Defendants highlight language from the Detailed Defendants, however, make a strong argument steeped in principles of 27 disclaimer/disavowal that ultimately sways the Court. 28 identifying two possible sources for disclaimer/disavowal: Plaintiff’s statements to the 25 Defendants begin by 1 PTO in connection with the ’020 Patent and the ’020 Patent’s specification. See Poly- 2 Am., L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) (“Disavowal can 3 be effectuated by language in the specification or the prosecution history.” (citing 4 Phillips, 415 F.3d at 1316–17)). Defendants pointed out at the claim construction 5 hearing that Plaintiff argued to the PTO during the prosecution of the ’020 Patent that 6 its apparatus was distinguishable from prior art precisely because the connection 7 between its primary and second line does not pass over any rotor. Therefore, by 8 implication, Plaintiff’s statements disclaim/disavow coverage of any apparatus with a 9 connection that passes over a rotor. Poly-Am., L.P., 839 F.3d at 1136 (noting that a 10 disclaimer/disavowal need not be “explicit”); Ekchian v. Home Depot, Inc., 104 F.3d 11 1299, 1304 (Fed. Cir. 1997) (“[S]ince, by distinguishing the claimed invention over 12 the prior art, an applicant is indicating what the claims do not cover, he is by 13 implication surrendering such protection.”). Defendants also point out that the ’020 14 Patent’s specification makes the same disclaimer/disavowal using even broader 15 language: “It is yet another object of the invention to provide a path of travel for the 16 defined line connection or interconnection, which extends lengthwise of the upper 17 support, and which does not pass over any rotors, and whereby possible derailment of 18 that connection by a rotor is prevented.” (’020 Patent, Col. 1: 53–57). 19 Plaintiff responded at the claim construction hearing by arguing that 20 Defendants’ arguments to the PTO cannot be disclaimers/disavowals because they 21 merely repeat and seek to justify claims of the patent; they do not narrow the ’020 22 Patent’s claim scope. See e.g. Heuft Systemtechnik GmbH v. Indus. Dynamics Co., 23 Ltd., 282 Fed. Appx. 836, 839 (Fed. Cir. 2008) (“Prosecution disclaimer occurs when 24 a patentee, either through argument or amendment, surrenders claim scope during the 25 course of prosecution.” (emphasis added)). However, this reasoning misses the mark; 26 published case law makes clear that a disclaimer/disavowal can occur from a simple 27 statement differentiating the patent in question from prior art and that language of a 28 specification or patent claim can, by itself, function as a disclaimer/disavowal. See 26 1 Ekchian, 104 F.3d at 1304; Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 2 1372 (Fed. Cir. 2014) (indicating that disclaimer/disavowal only requires “the 3 specification [or prosecution history] make[ ] clear that the invention does not include 4 a particular feature” (quoting SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., 5 Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)); see also Poly-Am., L.P., 839 F.3d at 6 1136. 7 Defendants next argue that these disclaimers/disavowals should carry through 8 to the ’756 Patent because they relate to the invention “as a whole.” As Defendants 9 correctly stated at the claim construction hearing, a disclaimer/disavowal may be 10 imported from a parent patent to a child patent either where the patents share the same 11 claim language or where the disclaimer/disavowal is directed to the scope of the 12 invention “as a whole.” See Implicit L.L.C. v. F5 Networks, Inc., No. 14-CV-02856- 13 SI, 2015 WL 2194627, at *12 (N.D. Cal. May 6, 2015). Examples of language 14 directed to the scope of the invention as a whole include “‘the present invention 15 requires . . .’ or ‘the present invention is . . .’ or ‘all embodiments of the present 16 invention are . . .’” Id. (quoting Hill-Rom Servs., 755 F.3d at 1372). 17 The Court agrees with Defendants that the statements in the prosecution history 18 and specification were meant to apply to the invention as a whole. While some 19 portions of the prosecution history discussing “not pass[ing] over any rotor” reference 20 the language of what ultimately became Claim 1 of the ’020 Patent, Plaintiff’s 21 discussion elsewhere in the prosecution history is not so limited. (See Defs. Br., Ex. 22 O at 1578 (“In amended claim 1 . . .”).) For instance, on page 1617 of Exhibit L 23 attached to Defendant’s claim construction brief, Plaintiff discusses the difference 24 between his “structure,” which does not have a connection that “passes over” any 25 rotor and the “opposite” prior art. 26 specification offers some clarification. The specification indicates that “It is yet 27 another object of the invention to provide . . . a connection . . . which does not pass 28 over any rotor.” (’020 Patent, Col. 1: 53–57.) The language “[i]t is yet another object The Court also finds that the ’020 Patent’s 27 1 of the invention” is very similar to “the present invention requires,” or “the present 2 invention is” and thus strongly suggests that this language refers to the invention as a 3 whole rather than just Claim 1.11 Taken together, the prosecution history and the 4 specification of the ’020 Patent convince the Court that any disclaimer/disavowal 5 regarding “not pass[ing] over a rotor” was meant to apply to the invention as a whole 6 and is thus properly imported from parent to child despite variations in claim language 7 between the two patents. See Regents of Univ. of Minnesota v. AGA Med. Corp., 717 8 F.3d 929, 943 n.8 (Fed. Cir. 2013). 9 At this point, the Court believes it is useful to take a step back and examine 10 more broadly what is going on here. The ’020 Patent’s specification, the arguments 11 made during prosecution of the ’020 Patent, and Plaintiff’s own statements during the 12 claim construction hearing, make clear that at least one of the reasons the PTO 13 allowed the ’020 Patent was because its connector did not pass over any rotor. This 14 seemingly small inventive step is actually quite meaningful—it ensures that the lines 15 do not derail and that the connector does not get stuck behind the rotor causing the 16 window covering to jam. Plaintiff then filed for and obtained the ’756 Patent which was a continuation- 17 18 in-part of the ’020 Patent. 19 construction process, it appears Plaintiff was attempting, among other things, to obtain 20 coverage not only of an apparatus containing its previous invention, a connector that 21 does not pass over any rotor, but also of the very prior art that it distinguished in order 22 11 23 24 25 26 27 28 Based on Plaintiff’s arguments during the claim The Court is aware of only one case discussing whether the “object” of an invention refers to the invention as a whole, and that case does not definitively resolve the issue. See Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1025 (Fed. Cir. 2015). In Pacing Technologies, the Federal Circuit indicated that use of “object of the present invention” “will not always rise to the level of disclaimer” which suggests that in most instances this language does refer to the invention as a whole and function as a disclaimer/disavowal. Id. (emphasis added). In dicta, the court surmised that one exception might be where the number of “objects” is so numerous as to render it “unlikely” that they were meant to apply to the invention as a whole. Id. The court suggested that a patent with nineteen separate “objects” of invention might be subject to this exception. Id. Here, the ’020 Patent appears to have six “objects” of invention, less than a third of the nineteen “objects” of invention the court suggested might be too numerous. (See ’020 Patent, Col. 1: 31–Col. 3:23.) 28 1 to obtain the ’020 Patent: an apparatus’ containing connectors that do pass over a 2 rotor. The Court will not allow such a maneuver, especially where, as here, Plaintiff 3 has received and is receiving the benefit of filing the ’756 Patent as a continuation-in- 4 part application.12 5 apparatuses containing a connection that does not pass over any rotor. The Court finds the ’756 Patent’s coverage is limited to 6 ii. Endwise Nature of the Connection 7 Defendant argues that the nature of the secondary line’s connection to the 8 primary line(s) is “endwise,” meaning an end coupled with an end. (See generally 9 Defs. Br. 14–16.) While Plaintiff has disputed what an end looks like (a fold versus a 10 terminal end, as addressed in the primary line context above), it has never disputed 11 that the connection is anything but “endwise.” Indeed, Plaintiff’s attorney stated in no 12 uncertain terms at the claim construction hearing, “I’m saying that the two primary 13 lines have an endwise connection to the secondary line, and that would be correct.” The language of the claims and the specification supports Defendants’ inclusion 14 15 of “endwise” in the construction of secondary line. Claim 1 indicates that the 16 secondary line has a “distal end coupled to a primary line.” (’756 Patent, Col. 6:57– 17 59.) The Detailed Description in the specification notes a joining of “ends . . . 104 18 and 105 [primary lines] with secondary line 107” and “secondary line 117 joined to 19 ends of 113–115.” (Id., Col. 6:31–32, 36–37.) The language of the claims confirms 20 that the secondary line’s connection with the primary line is via an end and the 21 specification makes clear that the primary lines’ connection with the secondary line is 22 via an end—therefore, the Court finds that it is reasonable to infer that the connection 23 is “endwise.” 24 Defendants also go on to argue that Plaintiff made certain disclaimers in 25 connection with the ’294 Patent that also suggest the connection is “endwise.” (See 26 27 28 12 The Court is well aware that the primary use of continuation-in-part applications is to allow for the addition of new subject matter to an existing patent, which might have the effect of broadening claim coverage. However, the Court does not believe this broadening was meant to allow for the capture of prior art, especially prior art which a patentee explicitly distinguished. 29 1 of the lift cords.” (emphasis added)).) However, in Defendants’ opposition brief they 2 indicated that the “only” remaining areas of disagreement with regard to coupled were 3 the issues now addressed in the context of the secondary line construction: whether 4 the connection passes over any rotor and whether the connection is endwise. (Defs. 5 Br. 13.) Further, Defendants did not argue that the connection could only be direct 6 during the claim construction hearing. The Court can find no support in either the 7 language of the claims or the specification for limiting coupled to a direct connection, 8 and Defendants have not identified such support. Accordingly, the Court adopts 9 Plaintiff’s construction: joined or linked, directly or indirectly. 10 /// 11 /// 12 /// 13 /// 14 /// 15 /// 16 /// 17 /// 18 /// 19 /// 20 /// 21 /// 22 /// 23 /// 24 /// 25 /// 26 /// 27 /// 28 /// 31

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