The Gillette Company v. Dollar Shave Club, Inc.

Filing 380

MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 5/30/17. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
THE GILLETTE COMPANY,
Plaintiff,
C.A. No. 15-1158-LPS

v.
DOLLAR SHAVE CLUB, INC., DORCO
COMPANY LTD. and PACE SHAVE, INC.,
Defendants.

Jack B. Blumenfeld and Rodger D. Smith II, MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
Wilmington, DE
Mark J. Abate, Jeffrey A. Simes, Steven J. Bernstein, Alexandra D. Valenti, and Tyler Doh,
GOODWIN PROCTER LLP, New York, NY
Jennifer A. Albert and Charles T. Cox, GOODWIN PROCTER LLP, Washington, DC
Elaine Herrmann Blais and Kevin J. DeJong, GOODWIN PROCTER LLP, Boston, MA
Attorneys for Plaintiff.

John W. Shaw, Karen E. Keller, and David M. Fry, SHAW KELLER LLP, Wilmington, DE
Gregory S. Arovas, KIRKLAND & ELLIS LLP, New York, NY
F. Christopher Mizzo and Helena D. Kiepura, KIRKLAND & ELLIS LLP, Washington, DC
Bao Nguyen, KIRKLAND & ELLIS LLP, San Francisco, CA
Charles K. Verhoeven, Terry L. Wit, Morgan W. Tovey, and James D. Judah, QUINN
EMANUEL URQUHART & SULLIVAN, LLP, San Francisco, CA
Attorneys for Defendants.

MEMORANDUM OPINION
May 30, 2017
Wilmington, Delaware

U.S. District Judge:

Plaintiff Gillette Company ("Gillette") brought this suit against Defendants Dollar Shave
Club, Dorco Company Ltd., and Pace Shave, Inc. (collectively, "DSC"), alleging infringement of
U.S. Patent No. 6,684,513, which claims coatings on razor blades and methods for making razor
blades having those coatings. Presently before the Court is the issue of claim construction. The
parties submitted technology tutorials (see D.t 284, 285) and briefs (see D.I. 286, 289, 307, 311).
Both parties also submitted expert declarations (see D.I. 287, 290, 309, 312), which the Court has
considered. The Court held a claim construction hearing on April 3, 2017. (See Tr.)

I.

LEGAL STANDARDS

The ultimate question of the proper construction of a patent is a question of law. ·See Teva
Pharm. 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
claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321

1

(internal quotation marks omitted). The patent 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." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
Wh1le "the claims themselves provide substantial guidance as to the meaning of particular
claim terms," the context of the surrounding words of the claim also must be considered.

Phillips, 415 F.3d at 1314. Furthermore, "[o]ther claims oftJ:ie 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]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." 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, ifit is in evidence." Markman v. Westview Instruments, Inc., 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.

Nonethel~ss,

courts must not lose sight of the fact that "expert reports and
3

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., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90

F.3d at 1583).
Finally, "[t]he construction that stays true to the claim language and most 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. lnt'l Trade Comm'n, 505F.3d1351, 1358 (Fed. Cir. 2007)
(quoting Modine Mfg. Co. v. U.S. Int'! Trade Comm 'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).

4

II.

CONSTRUCTION OF DISPUTED TERMS

A.

"amorphous material" 1

Gillette
"material lacking long-range crystalline order"

DSC
"material having no detectable crystal structure"
Court
"material lacking long-range crystalline order, wherein such material may include
nanocrystalline inclusions"
The parties agree that, fundamentally, an amorphous material is one that is not crystalline.
But on the spectrum of materials from entirely amorphous to single crystalline, they disagree on
the degree of crystallinity that a material may have while still being considered amorphous, as
that term is used in the '513 patent. DSC contends that a material must be completely
amorphous, such that an otherwise amorphous material containing one crystalline inclusion
cannot be considered amorphous; and DSC suggests that its proposed construction captures this
requirement of complete exclusion of crystalline material. (See Tr. at 47-49; D.I. 289 at 17)
Gillette disagrees, arguing that references in the intrinsic record to diamond-like carbon- a
preferred amorphous material - allow an amorphous material to contain nanocrystalline
inclusions. (See Tr. at 22-23)
Having considered the intrinsic record, as well as each party's expert opinions and
extrinsic sources cited therein, the Court determines that Gillette's proposed construction - that
an amorphous material is one that lacks long-range crystalline order- and Gillette's
understanding that some crystalline inclusions may be present in such material, is consiste~t with .

1

This term appe.ars in claims 1, 6, 20, and 24 of the '513 patent.
5

the meaning an ordinarily skilled artisan would assign to the term in the context of the '513
patent. (See D.I. 287

at~

35; D.I. 286 at 5 n.4; D.I. 287 Ex. 1 at 639 ("The absence oflong-range

order is the defining characteristic of the atomic arrangement in amorphous solids."); Ex. 2 at I.2
(defining "amorphous solid" as "[a] solid that lacks long-range order in the arrangement of its
atoms"))
The claims, specification, and prosecution history demonstrate that the patentee
considered diamond-like carbon to be an exemplary amorphous material. Claim 1 recites a "hard
coating being made of amorphous material containing carbon." '513 patent col. 411. 6-8. Claim
2, which depends from claim 1, requires that the "hard carbon coating" - that is, the amorphous
material- "comprises diamond-like carbon material." Col. 411. 13-14. Similarly, the
specification describes diamond-like carbon as "an amorphous carbon material that exhibits
many of the desirable properties of diamond but does not have the crystalline structure of
diamond." Col. 3 11. 1-4. The prosecution history also confirms that diamond-like carbon is an
amorphous material. After stating that "the hard coating is made of 'amorphous material,'"
which "exclude[ s] crystalline material," the patentee explained that "[s]uch amorphous material
includes 'diamond-like carbon."' (D.I. 249 Ex.Cat 771) Accordingly, the intrinsic record
indicates that diamond-like carbon must be included within any proper construction of
"amorphous material."
Gillette's expert opines that, when the patent application was filed, it was known in the art
that diamond-like carbon is a "material that is amorphous, but contains nanocrystalline material
within an amorphous matrix." (D.I. 309

at~

9; see also D.I. 309 Ex. 13 at 1668 ("All DSC films

are substantially amorphous, but some micro or nano-crystalline inclusions of all carbon forms
6

can be found in the amorphous [] matrix.")) Hence, Gillette suggests that the correct
construction of amorphous should allow the amorphous material to include some nanocrystalline
inclusions, to account for this known characteristic of some diamond-like carbon materials. DSC
contends that even if some types of diamond-like carbon include some crystalline material, it
does not follow that "amorphous" should be given a definition to include those types of
diamond-like carbon. Rather, DSC argues that those diamond-like carbon materials containing
crystalline material do not fall within the meaning of amorphous, and only diamond-like carbon
that does not include crystallites or crystalline inclusions is properly considered amorphous. (See
Tr. at 41-42)
The Court is not persuaded that the patentee made any distinction between different types
of diamond-like carbon materials. The claims, specification, and prosecution history consistently
categorize diamond-like carbon as an amorphous material, and do not qualify this
characterization in any way or limit it to a subset of diamond-like carbon materials. Thus, the
Court agrees with Gillette that the meaning of amorphous must encompass all types of diamondlike carbon, some of which contain crystalline inclusions.
Accordingly, the Court will construe "amorphous material" to mean "material lacking
long-range crystalline order, wherein such material may include nanocrystalline inclusions."

7

B.

"overcoat layer of a chromium containing material" 2

Gillette
No construction needed
Or, "a layer of chromium containing material on top of the layer of [hard coating] (for claims
1, 20, 24) I [hard carbon containing material] (for claims 28, 35)"
Alternatively, "a chromium containing layer between a [hard coating (for claims 1, 20, 24) I
hard carbon containing material (for claims 28, 35)] and a PTFE layer" (See Tr. at 65-66)
DSC
"intermediate layer of chromium containing material that itp.proves adhesion to the layer of
[hard coating (for claims 1, 20, 24) I hard carbon containing material (for claims 28, 35)]"

Court
"a chromium containing layer between a [hard coating (for claims 1, 20, 24) I hard carbon
containing material (for claims 28, 35)] and a PTFE layer"
The parties dispute the meaning of "overcoat." Gillette contends that "overcoat" simply
means that the overlayer layer is on top of the hard coating layer. DSC counters that the overcoat
layer plays a specific role in the invention to improve adhesion of the outer PTFE layer to the
hard coating layer.
Gillette asserts that "overcoat" has an ordinary meaning that should apply here, giving the
example of an overcoat one might wear over a suit. But Gillette does not demonstrate that this is
a well-established usage in the relevant art. More importantly, even ifthere were an ordinary
meaning of "overcoat," the patent is clear that the overcoat layer is not the top layer; instead, as
is undisputed, the overcoat layer must have another layer over it: the PTFE layer. Because the
Court finds that there is no ordinary meaning to be applied, the term will be construed
consistently with the disclosure in the intrinsic record. See Indacon, Inc. v. Facebook, Inc., 824

2

This term appears in claims 1, 20, 24, 28, and 35 of the '513 patent.
8

F.3d 1352, 1357 (Fed. Cir. 2016).
DSC argues that the specification discloses that improved adhesion is a required function
of the overcoat layer, making it appropriate for the construction to include that limitation. In
describing some advantages of particular embodiments, the specification indica~es that ".[t ]he use
of a chromium containing overcoat layer provides improved adhesion of the
polytetrafluorethylene outer layer to the_ hard coating layer." Col. 211. 14-16. The patent also
states that the "[ o]vercoat layer [] is used to reduce the tip rounding of the hard coated edge and
to facilitate bonding of the outer layer to the hard coating while still maintaining the benefits of
both." Col. 3 11. 5-8. According to DSC, these statements support limiting the overcoat to one
that improves adhesion. But DSC's proposal runs counter to two principles of claim
construction: (1) the impropriety ofimportin~ limitations from the specification, see Hill-Rom,
755 F.3d at 1371, and (2) the instruction not to read function or purpose limitations into
structural terms, see Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1368 (Fed. Cir. 2012).
By contrast, the intrinsic record is consistent with Gillette's second alternative proposed
construction: the overcoat layer is a chromium containing layer that is positioned between a hard
coating layer and a PTFE layer. Figure 1 shows the structure of the claimed razor blade, with the
overcoat layer 18 being between the hard coating layer 16 and the PTFE layer 20. During
prosecution, the patentee explained that "[t]he inventors found that, by using a chromium
containing layer between an amorphous hard coating material and a PTFE layer, they could
maintain the good edge strength provided by hard coating and have reduced tip rounding with
repeated shaves." (D.I. 249 Ex.Cat 810) (emphasis added)
It is true that other claim language already describes, to some extent, the spatial

9

relationship between the three claimed layers: the overcoat is "on said layer of hard coating," and
the outer layer of PTFE is "over said overcoat layer." Col. 411. 9-12. But there are two sides to
the hard coating layer, such that a layer may be on top or on bottom of that layer. (See Tr. at 9495) Gillette's proposed construction makes explicit that the overcoat layer is positioned on the
hard coating layer such that it is between the hard coating layer and the PTFE layer.
Accordingly, the Court will adopt Gillette's alternative construction.
"

C.

"carbon containing material, doped with another element" 3

Gillette
"carbon containing material, with another element added"
DSC
"carbon containing material, whereby another element is introduced into the material in small
amounts to modify certain properties of the material"
Court
''carbon containing material, whereby another element is introduced into the material in small
amounts to modify certain properties of the material"
"wherein said hard coating _is doped with another element" 4
Gillette
"wherein the hard coating has another element added"
DSC
"wherein another element is introduced into the hard coating in small amounts to modify
. certain properties of the coating"
Court
"wherein another element is introduced into the hard coating in small amounts to modify
certain properties of the coating"
Gillette contends that the te~ "doped" encompasses the addition of another element in

3

This term appears in claims 28 and 35 of the '513 patent.

4

This term appears in claims 19 and 23 of the '513 patent.
10

any amount and that nothing in the intrinsic record supports limiting the quantity that may be
added. DSC counters that this "doped" is a term of art with an ordinary meaning.
The Court agrees with DSC that "doped" has an ordinary meaning in the field of coating
materials. According to DSC's expert, Dr. Watts, "doping a material (i.e., a 'host material') is
generally understood to mean introducing only a small amount of a dopant to the host material to
modify certain properties of the host material." (D.I. 290

at~

35) Dr. Watts identifies

dictionaries froni the relevant period, which define "dope" as "[t]o add impurities (called
dopants) to a substance, usually a solid, in a controlled manner to cause the substance to have
certain desired properties" (D.I. 289 Ex. 9), and "dopant" as "an impurity added usu[ ally] in
minute amounts to a pure substance to alter its properties" (D.I. 289 Ex. 8). These sources
support DSC's proposal. Notably, Gillette does not supply an expert opinion to refute that the
term has an ordinary meaning or to suggest that the ordinary meaning is something other than
what DSC proposes.
Accordingly, the Court will adopt DSC's proposed. constructions, which are consistent
with the meaning a person of ordinary skill in the art would assign to the terms.

III.

CONCLUSION .
The Court construes the disputed terms as explained above. An appropri~te Order

follows.

11