Universal Innovations LLC v. CS Industries Inc. et al
Filing
92
MEMORANDUM OPINION providing construction for the claim terms in dispute. Signed by Judge Richard G. Andrews on 12/11/2012. (nms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
UNIVERSAL INNOVATIONS, LLC,
Plaintiff,
v.
Civil Action No. 11-501-RGA
CS INDUSTRIES, INC.; BUYSEASONS, INC.
d/b/a CELEBRATE EXPRESS and
CELEBRATEEXPRESS.COM, BIRTHDAY
EXPRESS and BIRTHDAYEXPRESS.COM,
and COSTUME EXPRESS and
COSTUMEEXPRESS.COM; and PARTY
CITY CORPORATION,
Defendants.
MEMORANDUM OPINION
Dominick T. Gattuso, PROCTOR HEYMAN, LLP, Wilmington, DE; Delphine W. Knight
Brown (argued), CURTIS, MALLET-PREVOST, COLT & MOSLE LLP, New York, NY.
Attorneys for Plaintiff Universal Innovations, LLC.
Kelly E. Farnan (argued), RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE.
Attorneys for Defendant Party City Corporation.
December
!l,
2012
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Plaintiff Universal Innovations, LLC filed this patent infringement action against
Defendants CS Industries, Inc., BuySeasons, Inc., d/b/a Celebrate Express and
Celebrateexpress.com, Birthday Express and Birthdayexpress.com, Costume Express and
Costumeexpress.com, and Party City Corporation on June 6, 2011. (D.I. 1). Universal alleges
that the Defendants infringe U.S. Patent No. 5,187,512 ("the '512 Patent"). (D.I. 1). The '512
Patent, entitled "Film Cassette Containing Pre-Exposed Film," relates to "apparatus and
processes for pre-exposing only certain portions of the frames of a film strip before the strip is
exposed in a camera." '512 Patent at col.lll.l4-16. Presently before the Court is the matter of
claim construction. Briefing on claim construction was completed on September 28, 2012, and
the Court held a Markman hearing on November 14,2012. Two terms are in dispute.
I.
CLAIM CONSTRUCTION
Claim construction is a question of law. Markman v. Westview Instruments, Inc., 52 F.3d
967,977-78 (Fed. Cir. 1995), aff'd, 517 U.S. 370, 388-90 (1996). When construing patent
claims, a court considers the literal language of the claim, the patent specification and the
prosecution history. !d. at 979. Of these sources, the specification is "always highly relevant to
the claim construction analysis. Usually it is dispositive; it is the single best guide to the
meaning of a disputed term." Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005)
(citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed·. Cir. 1996)). However,
"[e]ven when the specification describes only a single embodiment, the claims of the patent will
not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim
scope using 'words or expressions of manifest exclusion or restriction."' Liebel-Flarsheim Co. v.
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Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (quoting Teleflex, Inc. v. Ficosa N Am. Corp.,
299 F.3d 1313, 1327 (Fed. Cir. 2002)).
A court may consider extrinsic evidence, including expert and inventor testimony,
dictionaries and learned treatises, in order to assist it in understanding the underlying technology,
the meaning of terms to one skilled in the art and how the invention works. Phillips, 415 F.3d at
1318-19; see also Markman, 52 F.3d at 979-80. However, extrinsic evidence is considered less
reliable and less useful in claim construction than the patent and its prosecution history. Phillips,
415 F .3d at 1318-19 (discussing "flaws" inherent in extrinsic evidence and noting that extrinsic
evidence "is unlikely to result in a reliable interpretation of a patent claim scope unless
considered in the context of intrinsic evidence").
In addition to these fundamental claim construction principles, a court should also
interpret the language in a claim by applying the ordinary and accustomed meaning of the words
in the claim. Envirotech Corp. v. AI George, Inc., 730 F.2d 753,759 (Fed. Cir. 1984). Ifthe
patent inventor clearly supplies a different meaning, however, then the claim should be
interpreted according to the meaning supplied by the inventor. Markman, 52 F.3d at 980. If
possible, claims should be construed to uphold validity. In re Yamamoto, 740 F.2d 1569, 1571
(Fed. Cir. 1984).
A.
Claim 8: "Means for defining (a) two film holding cavities and (b) an
exposure frame opening located intermediate said cavities"
Defendant's Proposed Construction:
This is a means-plus-function term governed
by 35 U.S.C. § 112, ~ 6.
Function:
Apparatus for housing a pre-exposed frame of
a film strip in a camera of the disposable type.
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Structure:
A film roll receiving cavity 114 and a film
canister or cassette receiving chamber 116
disposed on opposite sides of an exposure
frame 112. Projecting from the top wall ofthe
film canister receiving chamber 116 is a fork
118 which is rotatable by the external film
advancing knob 110 in the clockwise
direction as viewed in FIG. 8.
Universal Innovations does not believe that
this term requires construction. However, if
the Court sees fit to construe this term,
Universal Innovations proposes the
following:
Plaintiff's Proposed Construction:
Structure:
The film holding cavities are shown in FIG. 7
and 8 and identified in their associated
descriptions as being the cavities denoted by
reference numerals 114 and 116. Similarly,
the exposure frame is denoted by reference
numeral 112. The structure in the
specification which performs the recited
functions ofthis claim element is the curved
interior portions of the front part of the
camera housing, 100 and the interior
periphery of the camera housing located
laterally between those curved portions and
between the lens and film in the depth
direction (the portion into which light will
pass when the shutter is opened), as
illustrated in FIG. 8.
Thus, the recited "means for defining"
element is the curved interior portions of the
front part of the camera housing between the
lens and film through which light will pass
when the shutter is opened.
Function:
Apparatus for housing a pre-exposed frame of
Court's Construction:
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a film strip in a camera of the disposable type.
Structure:
A film roll receiving cavity 114 and a film
canister or cassette chamber 116 disposed on
opposite sides of an exposure frame 112.
Because the parties agree that this term is in a "means-plus-function" format, the Court
will construe it accordingly with the function being "apparatus for housing a pre-exposed frame
of a film strip in a camera of the disposable type" and the corresponding structure being "a film
roll receiving cavity 114 and a film canister or cassette chamber 116 disposed on opposite sides
of an exposure frame 112."
The parties agree on the function. (D.I. 82 at 10-11 ). Thus, the only dispute as to this
term is the corresponding structure. The parties agree that the film holding cavities are denoted
by reference numerals 114 and 116. The crux of the dispute, therefore, is whether the
corresponding structure includes a fork 118 and a knob 110. The Court finds that it does not.
The film holding cavities are shown in Figures 7 and 8 and identified in their associated
descriptions as being the cavities denoted by reference numerals 114 and 116. Similarly, the
exposure frame is denoted by reference numeral 112. The specification does not describe a fork
118 or knob 110 as being part of the term "means for defining (a) two film holding cavities and
(b) an exposure frame opening located intermediate said cavities."
B.
Claim 8: "Means for configuring said exposure frame opening such that the
periphery of said opening corresponds with the periphery of said unexposed
portion of said frame so as to prevent further exposure of said first latent
image during the forming of a second latent image in the unexposed portion
of said frame by image carrying light rays passing through said exposure
frame opening during an exposure"
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This is a means-plus-function term governed
by 35 u.s.c. § 112, ~ 6.
Defendant's Proposed Construction:
Function:
Ensuring that as light enters the lens and
shutter only that which passes through the
exposure aperture in the mask will strike the
film frame.
Structure:
The exposure frame 112 is formed with film
guiding and supporting tracks 120 on both
sides thereof. In one of the tracks 120, there
is a sprocket wheel 122 of a metering pawl
partially projecting out of the surface. When
assembling the film package 98, a mask 141
is attached to and positioned over the track
120 and a roll130 of film 126, preferably 35
mm, is held at its end by a member 128 and a
cassette 124 by a member 134.
Universal Innovations does not believe that
this term requires construction. However, if
the Court sees fit to construe this term,
Universal Innovations proposes the following
definition:
Plaintiff's Proposed Construction:
Function:
Redefining of the exposure frame opening so
that only the previously unexposed portion
will be exposed to light when the second
image is formed.
Structure:
Either integrally formed or separate opaque
mask 141 between the camera lens and the
film that aligns with that portion of the film
strip that has been previously exposed and
must be blocked from the second exposure.
Thus, the "means for configuring" element is
the opaque mask in the camera, which can be
either removable or integrally formed with the
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camera housing, that blocks light from
exposing the previously exposed portion of
the film.
Function:
Ensuring that the light entering through the
lens and shutter only strike the unexposed
portion of the film frame.
Court's Construction:
Structure:
The exposure frame 112 is formed with film
guiding and supporting tracks 120 on both
sides thereof. In one of the tracks 120, there
is a sprocket wheel 122 of a metering pawl
partially projecting out of the surface. When
assembling the film package 98, a mask 141
is attached to and positioned over the track
120 and a roll130 of film 126, preferably 35
mm, is held at its end by a member 128 and a
cassette 124 by a member 134.
Because the parties also agree that this term is in a "means-plus-function" format, the
Court will construe it accordingly, with the function being "ensuring that the light entering
through the lens and shutter only strike the unexposed portion of the film frame" and the
corresponding structure being "the exposure frame 112 is formed with film guiding and
supporting tracks 120 on both sides thereof. In one of the tracks 120, there is a sprocket wheel
122 of a metering pawl partially projecting out ofthe surface. When assembling the film
package 98, a mask 141 is attached to and positioned over the track 120 and a roll130 of film
126, preferably 35 mm, is held at its end by a member 128 and a cassette 124 by a member 134."
The specification supports this interpretation of the function. For example, the
specification describes an invention where "[e]ach frame ofthe strip is ... masked and exposed
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to light which passes through nonopaque areas of the mask in order to expose the underlying film
to an image contained on said nonopaque areas of the mask." '512 Patent at col.2ll.48-52. The
specification further describes that "[t]he mask prevents exposure of one portion of the film unit
while a different portion of the film unit is exposed to said image on the mask." Id at col.2 ll.5255. Finally, the specification also explains that "[i]n order for the invention to work properly, the
first frame on the film strip must be aligned precisely with the mask used with the second
exposure." Id at col.3 11.43-45.
With respect to the corresponding structure, the primary dispute is whether the mask 141
can be either removable or integrally formed with the camera housing. The Court finds that the
corresponding structure does not include a removable mask because the specification does not
link a removable mask 141 to the corresponding structure that performs the means for
configuring function in a disposable camera. See id at fig. 8, col.8 11.53-59 (explaining mask
141 is part of internal structure in preferred embodiment). Because the specification does not
clearly disclose how to incorporate a removable mask 141 into a disposable camera or clearly
link a removable mask to the "means for configuring" function, a removable mask 141 is not part
of the "means for configuring" term.
Additionally, a removable mask is not an equivalent structure to an integrated mask. A
removable mask is added to the camera after manufacture and allows a photographer to take
pictures with or without the mask. !d. at col.811.23-42. Thus, the removable mask does not
perform the claimed function in substantially the same way as the integrated mask and is not an
equivalent structure. See Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir.
1999).
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The parties also dispute whether "the roll of film, supported by a member, and a cassette,
supported by a member" are part of the corresponding structure. The specification recites that
"[t]he exposure frame 112 is formed with film guiding and supporting tracks 120 on both sides
thereof. In one of the tracks 120, there is a sprocket wheel 122 of a metering pawl partially
projecting out of the surface." !d. at co1.811.11-14. The specification further recites: "When
assembling the film package 98, a mask 141 is attached to and positioned over the track 120 and
a roll130 of film 126, preferably 35mm, is held at its end by a member 128 and a cassette 124 by
a member 134." !d. at col.811.15-18. Universal contends that the corresponding structure does
not include "the roll of film, supported by a member, and a cassette, supported by a member"
because they "are not included in the 'means for configuring' term." (D.I. 82 at 19). However, if
the roll of film is not held in its proper place, the periphery of the exposure frame opening will
not correspond with the periphery of the unexposed portion of said frame, preventing further
exposure of the first latent image. See id. at col.3 ll.42-45. Under a means-plus-function
limitation, the corresponding structure that enables the function is part of the claimed term. See
Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311-12 (Fed. Cir. 2001).
Thus, "a roll of film 126 held at its end by a member 128 and a cassette 124 by a member 134"
are part of the corresponding structure that performs the claimed function.
The claim terms will be construed as set forth above.
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