Regalo International, LLC v. Munchkin, Inc.

Filing 87

MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 12/6/16. (ntl)

INTHEUNITED·STATESDISTRICT:COURT
·FOR THE DISTRICT OF UELAWARE
REGALO INTERNATIONAL, LLC,
Plaintiff,
°C.A. No. 15-1103-LPS

v.
MUNCHKIN, INC.,
Defendant.

Dennis.J.Butler, PANITCH SCHWARZE BELISARIO & NADEL, LLP, Wilmington, DE
Frederick A. Teece, Bryon T. W assennan, and Kimberly Chotkowski, P ANITCH SCHWARZE
BELISARIO & NADEL, LLP., Philadelphia, PA
Attom~ys

for Plaintiff.

John ·w. Shaw and David M. Fry, SHAW KELLER LLP., Wilmington, DE
R. Cameron Garrison and Travis W. McCallon, LATHROP & GAGE LLP, Kansas City, MO
Attorneys for "Qefendant

MEMORANDUM ·OPINION

December 6, 2016
Wilmington, Delaware

.f

~~j~

ST~ U.S. District Judge:

:PlaintiffRegalo International, LLC ("Regalo") filed suit against Defendant Munchkin,
Inc. ("Munchkin"}in November 2015~ alleging infringement of U.S. Patent Nos. 8,555,436 (the
"'463 patent"), 7,137,158 (the '"158 patent"), and 7,178,184 (the "'184 patent"). The patents are
directed to bed rail systems that can be used to prevent a child from falling out of bed. Presently
before the Court is the construction of disputed terms of the patents'. claims.
The parties submitted claim construction briefs (:p.I. 57, 58, 60, 61) and the Court held a
claim construction hearing on October 7, 2016 (see D.I. 84 ("Tr.")).

I.

LEGAL STANDARDS
· The ultimate question of the proper construction of a patent is a question of law . .See

TevaPharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837 (2015) (citing Markman v. Westview
·Instruments, Inc., 517 U.S. 370, 388-91 (1996)). "It is a bedrock principle of patent,law that the
claims of a patent define the invention to which the patentee is entitled the right to exclude."
Phillips v.AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted).
"[T]here is no magic formula or catechism for conducting claim construction." Id. at 1324.
Instead, the court is free to attach the appropriate weight to appropriate sources "in light of the
statutes and policies that inform patent law." Id.
"[T]he words of a claim are generally given their ordinary and customary meaning ...
[which is] the meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the patent application."
Id. at 1312~13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a
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claim term is its meaning to the ordinary artisan after reading ~he entire patent." Id. at 1321
I

I
I
I

1

(internal quotation marks omitted). The patent specification· "~s always highly relevant to the
.

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claim construction analysis. usually, it is dispositive; it is the single best guide to the meaning of
a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
While "the claims themselves provide substantial guidance as to the meaning of particular
claim terms," the context of the surrounding words of the claim also inust be considered.

Phillips, 415 F.3d at 1314. Furthermore, "[o]ther claims of the patent in question, both asserted
and unasserted, can also be valuable sources of enlightenment ... [b ]ecause- claim terms are
normally used consistently throughout the patent ...." Id. (internal citation omitted).
- It is likewise true that"[ d]ifferences among claims can also be a useful guide .... For
example, the presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent claim." Id. at 131415 (internal citation omitted). This "presumption is especially strong when the limitation in
dispute is the only meaningful difference between an independent and dependent claim, and one
party is urging that the limitation in the dependent claim should be read. into the independent
claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d-1298, 1303 (Fed. Cir. 2003).
It is also possible that "the specification may reveal a special definition given to a claim

term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]venJ
when the specification describes only a single embodiment, the claims of the patent will not be
read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
using words or expressions of manifest exclusion or restriction." Hill-Rom Servs., Inc. v. Stryker

Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358
2

F.3d 898, 906 (Fed. Cir. 2004)) (internal quotation marks omitted).
In addition to the specification, a court "should also consider the patent's prosecution
history, if it is in evidence." Markman v. Westview Instruments, 1nc., 52 F.3d 967, 980 (Fed. Cir.
1995), aff'd, 517 U.S. 370 (1996). The prosecution history, which is "intrinsic evidence,"
"consists of the complete record of the proceedings before the PTO [Patent and Trademark
Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d
at 1317. "[T]he prosecution history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the
invention in the course of prosecution, making the claim scope narrower than it would otherwise
be." Id.
In some cases, "the district court will need to look beyond the patent's intrinsic evidence

and to consult extrinsic evidence in order to understand, for example, the background science or
the meaning of a term in the relevant art during the relevant time period." Teva, 135 S. Ct. at
841. Extrinsic evidence "consists of all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d
at 980. For instance, technical dictionaries can assist the court in determining the meaning of a
term to those of skill in the relevant art because such dictionaries "endeavor to collect the
accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d
at 1318. In addition, expert testimony can be useful "to ensure that the court; s understanding of
the technical aspects of the patent is consistent with that ·of a person of skill in the art, or to
establish that a particular term in the patent or the prior art has a particular meaning in the
pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and

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testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from
bias-that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be
useful" to the court, it is "less reliable" than intrinsic evidence, and its consideration "is unlikely
to result in a reliable interpretation of patent claim scope unless considered in the context of the
intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously describes.the
scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182F.3d1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90

F.3d at 1583). ·
Finally, "[t]he construction that stays true to the claim language and niost naturally aligns
with the patent's description of the invention will be, in the end, the correct construction."
Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. '1998). It follows

that "a claim interpretation that would exclude the inventor's device is rarely the correct
interpretation." Osram GmbHv. Int'! Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007)
(quoting Modine Mfg. Co. v. U.S. Int'! Trade Comm 'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).
II.

CONSTRUCTION OF DISPUTED TERMS

A.

"vertical support members" 1

Regalo
weight bearing parts that are positioned in a generally upright orientation in an operating
configuration
Munchkin
support members that extend at a right angle to the horizontal plane .

1

This term appears in claim 15 ofthe'436 patent.
4

Court
weight bearing parts that are positioned in a generally upright orientation in an operating
configuration

The parties agree that the vertical support members are upright when the bed rails are in
an operating configuration. They disagree about whether the vertical support members must be
perfectly vertical.

Munchkin contends that, because the patentee did not qualify the term "vertical" in any
way, the Court should construe the term to require that the support members be perfectly vertical
- that is, at a right angle to the horizontal plane.

R~galo

argues that the patent allows for some

wiggle room, noting that the description of a preferred embodiment describes the vertical support
members as '~at generally a right angle, or slightly iess than a right angle, relative to the guard rail
frame" (which is positioned horizontally). See '436 pat. col. 7:24-26. Similarly, when
explaining how to position the guardrail in the "locked and upright position," the specification
explains that the rail is swung "upwardly to be relatively vertical or swung slightly through the
vertical," and then "locked in the upright and operating position." See id. at 9:32-46. In
Regalo' s view, this description suggests that the patentee used the term "vertical" in a loose
sense, meaning "generally upright," rather than in a strict sense, requiring a 90-degree angle to
·the horizontal plane.
Munchkin argues that this portion of the specification supports the opposite conclusion.
Muchkin notes that the patent uses the terms "relatively vertical" or "slightly through the
vertical," to describe the possible states of the support members just before they are locked into
position, and uses the term "upright" to describe their position after being locked into position.
Muchkin urges the Court to give meaning to that difference by finding that the support members

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are adjusted from being near-vertical before being locked into position to perfectly vertical
afterward. (D .I. 5 8 at 6-7)
The Court is not persuaded that the patentee intended to distinguish between "upright"
and "relatively vertical"/"slightly through the vertical." As Regalo notes, the patent does not
suggest a reason that the process of locking the bed rail would require the further adjustment
from "relatively vertical" to "vertical." (D.I. 61 at 3) The Court understands that "relatively
vertical" and "slightly through the vertical" refer to two acceptable, final, operating positions for
the claimed bedrails, and thus finds that "upright" refers to a range of positions including
"relatively vertical" and "slightly through the vertical" as well as the perfectly vertical position.

B.

"engaged to,". "engaging between," "engaging," "engage" 2

Regalo
to.come together
Munchkin
directly attached or secured to, and not merely touching
Court
to attach or secure
The parties agree that the term "engage" denotes attaching or securing two things to each
other. They disagree about whether the term requires direct attachment (excluding attachment by
some third mechanism) that is achieved by something more than merely touching.
The patents use the term "engage" to describe a wide variety of physical relationships.
As is undisputed, some of these relationships constitute "direct attachments" that amount to more.
than "merely touching." See, e.g., '158 pat. col. 17:64-18:2 and Fig. 10 (describing method of

2

This term appears in claims 9, 17, and 22 of the '184 patent and claims 4-6, 8, 9, and 18
of the ' 15 8 patent.
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attaching perforated shaft to rod having spring-loaded peg protruding radially from its axis by
sliding shaft over rod while rod's spring is compressed until rod is aligned with perforation of
shaft, allowing spring to decompress and causing peg to extend through perforation so that rod
and shaft are locked together). However, the patents also use the term "engage" to describe
attaching two objects to each other via a third component. See, e.g., '436 pat. col 6:50-52 and
Fig. 9A. Further, the patents use the term "engage" to describe a relationship in which one object
grips another such that they are effectively secured to each other. See, e.g., '184 col. 1:42-46 and
Fig. 7C (describing bed rail "hug[ging]" a bed). Thus, while the Court agrees that the term
"engage" refers to the act of "attaching or securing," the Court is not persuaded that "engaging"
requires direct attachment or securing that is more than merely touching. 3

C.

''rail portion" 4

Regalo
a portion of the bed rail that extends upwardly from the leg portion when in an operating
configuration
Munchkin
a portion of the bed rail that extends upwardly from the leg portion when in an operating
condition, including any connection or connecting mechanism to the leg portion5
Court
a portion of the bed rail that extends upwardly from the leg portion when in an operating
configuration

3

This interpretation of the patents does not contradict the reexamination history of the
'158 and '184 patent (see D.I. 58 at 7-10 (recounting patent examiner's finding that "engag[ing]"
requires "attachment" and patentee's representations that two items that are "engaged" with each
other are "connect[ed]")).
4

This term appears in claims 9, 17, and 22 of the ' 184 patent and claims 4-6, 8, 9, and 18
of the ' 15 8 patent.
5

Munchkin amended its proposed construction in its response brief. (See, e.g., Tr. at 54)
7

The parties disagree about whether the "rail portion" of the claimed bed rail includes only
that portion of the beci rail that extends upward from the leg portion beyond the sleeping surface,
such that it can prevent a child from rolling out of bed when the bed rail is in its operating
configuration. Regalo argues that this construction is consistent with the description of "rail.
portion" outlined in the specifications of the disputed patents. See '15 8 pat. col. 1:28-33; '184
pat. col. 1:38-40.
Munchkin does not disagree that this term includes the structure Regalo cites. But
Munchkin contends that because "engagement" requires "direct attachment," and the "rail
portion" is "engaged to" the leg portion of the bed rail, it follows that the proper construction of
"rail portion" must include "any connection or connecting mechanism to the l_eg portion."
However, as discussed above, the Court disagrees with Munchkin's view that the term "engage"
requires direct attachment. Therefore, the Court will adopt Regalo' s proposed construction.

D.

"wherein the rail portion and the leg portion can be relatively swingable to
each other and away from each other" 6

Regalo
the rail portion and the leg portion can pivot or swing toward and away from each other
Munchkin
a hinge mechanism or joint is located at the end of the rail portion such that the entire frame
pivots with respect to the leg portion
Court
the rail portion and the leg portion can pivot or swing toward and away from each other
The parties agree that this term requires the rail and leg portions of the claimed bed rails
to pivot or "swing" relative to one another. They disagree about whether this claim requires the

6

This term appears in claims 17 and 22 of the '184 patent.
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presence of a "hinge mechanism or joint" to facilitate that pivoting.
Munchkin argues that the term "relatively swingable" invokes 35 U.S.C. § 112 if 6.
Because the claim term does not use the word "means," Munchkin must overcome a rebuttable
presumption that 35 U.S.C. 112 if 6 does not apply. See Watts v. XL Sys., Inc., 232 F.3d 877, 880
(Fed. Cir. 2000). To overcome that presumption, Munchkin must prove by a preponderance of
the evidence that the clam does not recite sufficiently definite structure for performing the
claimed function. See Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1372 (Fed. Cir.
2003).
"[A] proper determination of whether the claim limitations should be construed as
means-plus-function limitations requires an understanding of one of ordinary skill in the art." Id.
at 1374. Specifically, a Court must consider whether the recited claim language would invoke in
the mind of such a person a specific structure or class of structures. See Lighting Ballast Control

LLC v. Philips Elecs. N Am. Corp., 790 F.3d 1329, 1338 (Fed. Cir. 2015); see also Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (considering whether claim term had
"well understood structural meaning").
Munchkin has not explained why a person of ordinary skill in the art at the time of the
invention would not know what specific class of structures could be used to attain the "relatively
swingable" character of the recited bed rails and legs. For this reason, Munchkin has not met its
burden of proving that 35 U.S.C. 112 if 6 applies, and the Court will not construe this claim to
require a hinge or a joint like those disclosed in the specification.

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E.

"wherein the rail portion and the leg portion can be relatively drawn .to each
other and away from each other" 7

Regalo
the rail portion and the leg portion can pivot or swing toward and away from each other
Munchkin
a hinge mechanism or joint is located at an end of the rail portion such that the entire frame
pivots with respect to the leg portion
Court
the rail portion and the leg portion can pivot or swing toward and away from each other
The parties agree that this claim term should have the same construction as "wherein the
rail portion and the leg portion can be relatively swingable to each other and away from each
other." (D.I. 57 at 13; DJ. 58 at 14) Accordingly, the Court has adopted that construction. ,

F.

- "tub~lar portion" 8

Regalo
a portion shaped like a tuJJe or a sleeve

I

Munchkin
a tube formed by a sheet folded over and secured to itself, ·having an opening 1ocated only
along a lengthwise ax.is
·Court
a portion shaped like a tube or a sleeve
The parties agree that the term "tubular portion" refers to a structure shaped like a·tube,.
but disagree about whether that tubular shape must be formed by a "sheet folded over and
secured to itself." The claims and specification refer to the term "tubular portion~' several times.
One preferred embodiment describes folding a sheet of fabric over itself and securing the fabric

7

This term appears in claims 4-6, 8, 9, and 18 of the '158 patent.

8

This term appears in claims 17 and 22 of the '184 patent.
10

to itself with stitches, so as to form a "tubular portion" of the' sheet. See '184 pat. col. 12:32-35.
However, other preferred embodiments refer to "tubular" components, such as the "rigid portions
or tubular portions of the legs" of the bed rail, that are not made from a sheet folded over itself.

Id. at 5:61-62.
Munchkin explains (for the first time in its responsive brief) that it seeks to limit the term
"tubular portion" only in the context of claim terms directed to a "sheet section having a tubular
. portion." (D.I. 60 at 9-10) However, to limit the term "tubular portion" in one context but not in
other contexts would be unnecessarily confusing to the fact-finder. Further, even in the context
of the sheeting limitations, it would be the term "sheet section," not "tubular portion," that might
impose the requirement that the tube or sleeve be formed from a "sheet folded over and secured
to itself." The parties did not present this term to the Court for construction.

G.

"sleeve"9

Regalo
a portion shaped like a tube or sleeve for receiving tubes from the rail portion or frame
Munchkin
a tube formed by a sheet folded over and secured to itself, having an opening located only
along a lengthwise axis
Court
a portion shaped like a tube or sleeve for receiving tubes from the rail portion or frame

The parties agree that the "sleeves" of the claims are made of sheeting, and that the
sleeves are designed to receive tubes from the rail portion or frame. They disagree, however,
about whether the specification requires that the claimed sleeves be "formed by a sheet folded
over and secured to itself' and whether they have openings "located only along a lengthwise

9

This term appears in claim 18 of the ' 15 8 patent.
11

axis." Although the specification includes examples of preferred embodiments in which sheeting
is folded over and secured to itself to form a sleeve, see, e.g., '158 pat. col. 12:59-61, nothing in
the claims requires that the tubular portion be formed this way (as opposed to, for example, by
attaching two sheets to each other along parallel lengths). Nor is there a basis in the specification
(i.e., lexicography or disavowal) for importing this limitation into the claims. Similarly, nothing
in the specification or claims requires the sheet to have an opening along only the lengthwise
'

'

axis.

H.

"sheeting" 10

Regalo
material for covering at least part of the rail portion
Munchkin
·material for covering at least part of the rail portion frame, but does not include mesh
Court
material for covering at least part of the rail portion
The parties disagree about whether the term "sheeting" includes within its scope only the
material that covers the rail portion of the bed frame (i.e., the sleeves that cover the rails) or
whether it can also include mesh extending between the sleeves. See, e.g., '158 pat. Fig. 9. The
Court finds that sheeting can include such a mesh; in fact, the specification discloses a preferred
embodiment in which the sheeting "includes a resilient mesh ... engaged to inner portions of the
sleeves." '158 pat. col. 18:54-59. Nothing in the disputed claims suggests that this preferred
embodiment is excluded from their scope.

10

This term appears in claims 4, 5, 8, 9, and 18 of the '158 patent. ·
12

"predefined acute angle" 11

I.

Regalo
a predetermined angle less than ninety degrees
Munchkin
a single predetermined angle less than ninety degrees
Court
a predetermined angle foss than ninety degrees
The disputed claim term appears in the context of limitations that require a bed rail to be
capable of locking its rail portion into a position that forms a predefined acute angle with its leg
portion. The parties disagree about whether the term "predefined acute angle" requires that the
bed rail be capable of locking the rail portion at one and only one predetermined angle, or
whether the claims include within their scope bed rails that can be locked at two or more
predetermined angles.
The disputed limitations appear in the context of "comprising" claims. '15 8 pat. col.
22:29-32. As a general rule, in open-ended claims containing the transitional phrase
"comprising," an indefinite article "a" or "an" carries the meaning "one or more." See Baldwin
Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008). The Federal Circuit has
described the exceptions to this rule as "extremely limited;" a patentee must "evince[] a clear
intent to limit 'a' or 'an' to 'one."' Id. Munchkin has not cited intrinsic evidence that meets this
high burden.
Munchkin argues that, although the term "comprising" may create a presumption that a
list of claim elements is non-exclusive, it does not render open-ended every word or phrase of a

11

This term appears in claim 4-6, 8, and 9 of the '158 patent.
13

claim limitation. (D.I. 58 at 18-19 (citing CANVS Corp v. U.S., 126 Fed. Cl. 106, 109 (Fed. Cl..
2016)) 12 Here, however, the pre-defined acute angle at which the bed rail maybe lociked is not
merely a description of the element recited in the claim; it is essential to the claim limitation.
Claim 4, for example, recites:
The bed rail according to claim 1, wherein the rail portion can be
locked at a fabricated predefined acute angle relative to the leg
portion ·to minimize any gap between the rail portion and the first side
of the bed~
'158 pat. col. 22:29-32. Because claim 1 separately claims a "rail portion," claim 4 il:ltroduces
only a limitation directed to "lock[ing] at a predefined acute angle." The limitation specifies.
locking at a "predefined acute angle" because such an angle is necessary to achieve the
limitation's stated goal of "minimiz[ing] any gap betwe~n the rail portion and the first side of the
bed." See·' 158 pat. col. 8:20-41 (explaining that "[t]he provision of an acute angle between the
rail portion ... and the leg portion .... works to close off any gap ... and sets the rail portion ...
as close to the sleeping surface ... as possible"); id. Fig. 8. As the patent explains, a range of
acute angles could be acceptable to achieve this goal. Nothing in the patent suggests a reason
· why the patentee would limit the claims to embodiments that allow locking at just one predefined
acute angle.
Since Munchkin has

fail~d

to rebut the presumption that the requirement of locking at "a"

12

CANVS is inapposite. In CANVS, the Court construed a "comprising" term containing a
limitation directed to "an optical input structured to define a line of sight" as allowing for more
than one .optical input, with each optical input having a single line of sight. Id. at 116. But there
. the parties agreed that each optical input had a single line of sight. Id. The only dispute was
whether the patentee specified "an optical input having [a single} line of sight" in order to
indicate that the claims should cover embodiments of the invention having only one optical
input. Id.
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predefined acute angle is non-limiting, the Court adopts Regalo's proposed construction.

III.

CONCLUSION
The Court will construe the disputed claim terms as described above. An appropriate

Order follows.

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