freal Foods LLC et al v. Hamilton Beach Brands, Inc. et al

Filing 282

MEMORANDUM OPINION Signed by Judge Colm F. Connolly on 8/2/2019. (nmf)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
F'REAL FOODS, LLC and
RICH PRODUCTS
CORPORATION,
Plaintiffs,

v.

Civil Action No. 16-41-CFC

HAMILTON BEACH
BRANDS, INC. and HERSHEY :
CREAMERY COMPANY,
Defendants.:

Rodger D. Smith II, Michael J. Flynn, MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
Wilmington, Delaware; Guy W. Chambers, Ellen P. Liu, Peter Colosi, SIDEMAN &
BANCROFT LLP, San Francisco, California
Counsel for Plaintiffs

Francis Di Giovanni, Thatcher A. Rahrneier, DRINKER BIDDLE & REATH LLP,
Wilmington, Delaware; William S. Foster, Jr., Brianna L. Silverstein, DRINKER
BIDDLE & REATH LLP, Washington, District of Columbia
Counsel for Defendants

MEMORANDUM OPINION

August 2, 2019
Wilmington, Delaware

COLMF.C0LLY
UNITED STATES DISTRICT JUDGE

Plaintiffs f'real Foods, LLC and Rich Products Corporation filed this lawsuit
accusing Defendants Hamilton Beach Brands, Inc. and Hershey Creamery
Company of infringing four patents for commercial blenders: United States Patent
Numbers 5,803,377 (the "#377 patent"), 7,144,150 (the "#150 patent"), 7,520,658
(the "#658 patent"), and 7,520,662 (the "#662 patent"). I granted summary
judgment of infringement of two of the asserted claims. See D.I. 141 (claim 21 of
the #662 patent); D.I. 142 (claim 15 of the #150 patent). The case was then tried to
a jury, which found infringement of the remaining asserted claims in three of the
four asserted patents and noninfringement of the #377 patent. See D.I. 263. The
jury also found that Defendants' infringement was not willful and that certain
claims were not invalid as obvious. See id The jury awarded damages totaling
$3,233,869. See id.
At trial, the parties stipulated under Rule 39(a)(l) of the Federal Rules of
Civil Procedure that I would decide indefiniteness issues under 35 U.S.C. § 112
solely based on post-trial briefing, without going beyond the expert reports already
submitted in connection with earlier summary judgment briefing, and without

submitting an advisory verdict on any subsidiary factual questions to the jury. 1 See
Tr. 11 :2-12:7. In the post-trial briefing, Defendants argue-based on the
requirement of "sufficient mass"-that one of the two asserted claims of the # 150
patent and the five asserted claims of the #658 patent are invalid for indefiniteness.

See D.I. 271; D.I. 274. The challenged claims require that the blender have a
"splash shield"-which covers the top of a cup or "vessel" in which the substance
is blended-with "sufficient mass" such that the splash shield is heavy enough to
hold the cup in place in a cupholder rather than having the cup be propelled
upward or dislodged, for example, by the force of the blades spinning. See # 150
patent, claim 22; #658 patent, claims 1, 5, 6, 10, & 11. Defendants argue that "the
intrinsic record provides no guidance as to where the line should be drawn between
the claimed 'sufficient mass' and a mass that is insufficient." See D.I. 271 at 3. I
disagree. The challenged claims define the term "sufficient mass" by its function
and a person of ordinary skill in the art (POSITA) could easily determine by
simply observing the blender in action whether the splash shield had a "sufficient

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I denied Defendants' motion for summary judgment on the indefiniteness issues
in part because the sworn testimony of Plaintiffs' expert created a dispute of
material fact about whether one of skill in the art would be able to understand by
observation whether the challenged claim limitation was met with reasonable
certainty. See D.I. 245 at 5-6. As the parties have so stipulated, I will resolve that
dispute of material fact based on the same evidence that was before me at summary
judgment.
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mass" to be covered by the disputed claim limitation. Accordingly, the challenged
claims are not indefinite.

I.

DISCUSSION
A.

LEGAL STANDARDS

"[A] patent is invalid for indefiniteness if its claims, read in light of the
specification delineating the patent, and the prosecution history, fail to inform,
with reasonable certainty, those skilled in the art about the scope of the invention."
Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898,901 (2014).

"Indefiniteness is a matter of claim construction, and the same principles that
generally govern claim construction are applicable to determining whether
allegedly indefinite claim language is subject to construction." Praxair, Inc. v.
ATM/, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008), abrogated on other grounds by
Nautilus, 572 U.S. at 901. As in claim construction, in making an indefiniteness

determination, the district court may make "any factual findings about extrinsic
evidence relevant to the question, such as evidence about knowledge of those
skilled in the art, [which] are reviewed for clear error." See BASF Corp. v.
Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). "Any fact critical to

a holding on indefiniteness ... must be proven by the challenger by clear and
convincing evidence." Cox Commc 'ns, Inc. v. Sprint Commc 'n Co. LP, 838 F.3d

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1224, 1228 (Fed. Cir. 2016) (alteration in original) (quoting Intel Corp. v. VIA

Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003)).

B.

ANALYSIS

The claims define the requirement that the "splash shield" have "sufficient
mass" in clear functional terms. The challenged claims describe a blender that
includes a "[cup]holder" for a cup or "vessel" in which a frozen substance (like a
milkshake) is blended. E.g., #658 patent, claim 1, at 4:45--48. A "splash shield"
sits atop the cup. E.g., #658 patent, claim 1, at 4:59-61. The claims require the
"splash shield" to have "sufficient mass to retain the vessel within the holder."
#150 patent, claim 22; #658 patent, claim 1; see also #658 patent, claim 5
(dependent on claim l); #658 patent, claim 6 ("the mass of the splash shield
preventing separation of the holder and the vessel during translation"); #658
patent, claims 10 & 11 (dependent on claim 6). The claims therefore define
"sufficient mass" functionally: the splash shield must be heavy enough to keep the
cup in the cupholder.
Judge Sleet's claim construction captures the claims' functional definition of
the "sufficient mass" term. He "adopt[ed] the plain and ordinary meaning of the
term [as] proposed by Plaintiffs and the PTO":
The term "sufficient mass to retain the vessel
within the holder during relative axial movement of the
mixing element and vessel from the first position to the
second position when liquid is present in the vessel" in
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the [#]658 patent is construed to be "the splash shield is
heavy enough to create sufficient downward force on the
vessel so as to retain the vessel within the holder when
the mixing element moves upwardly in the vessel from
the first position to the second position when liquid is
present."
D.I. 83 at 2. This claim construction reflects the claims' requirement for the splash
shield to be heavy enough that the gravitational force of the splash shield alone is
"sufficient" to overcome any countervailing forces that could otherwise dislodge
the cup from the cupholder, such as the upward force from the blades spinning.
Judge Sleet's construction finds support in portions of the written
description shared by both the #150 and #658 patents:
Weighting the shield is of further advantage if it is heavy
enough to create sufficient downward force on the cup to
overcome any upward force created by the mixing blade
being moved upwardly in the cup. The mixing blade can
create such upward force as the mixing blade moves
upwardly in the cup, imparting an upward force on the
cup as a result of suction force or the viscous nature of
the product being mixed in the cup. This can occur when
the cup is lowered by the holder during mixing (i.e. when
the cup is reciprocated to cause the mixing blade to pass
through the cup's contents several times) and/or when the
cup is lowered away from the blade after
blending/mixing. Making the weight of the shield
sufficient to overcome this upward lifting force on the
cup causes the cup to remain seated in the cup holder
without any other mechanical means of retaining it in the
cup holder, such as clamping or gripping mechanisms or
the springs or lid placement and retention mechanisms
previously described.

# 150 patent at 4:9-26; #658 patent at 4:3-20.
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Judge Sleet's construction recognized that including some additional means
for keeping the cup in the cupholder does not preclude having a splash shield that
is heavy enough, by its own weight, to keep the cup in place. See D.I. 83 at 3 n.3
("Defendants argue that the 'sufficient mass' in Claim 1 should ... include the
language 'without any other mechanical means.' The court disagrees. Including
'without any other mechanical means' contradicts the specification and prosecution
history, which explain that while other 'retention means' are not necessary to hold
the cup in place during mixing, the claim itself does not exclude adding additional
retention 'means' to the device." (emphasis in original) (citations omitted)). The
claim language just requires the splash shield to be heavy enough to keep the cup
in the cupholder, regardless of any additional means of restraining the cupholder.
Despite the ease and simplicity of determining whether a splash shield does
or does not have "sufficient mass," Defendants argue that the term is indefinite
because the sufficiency of the mass can vary depending upon such things as the
viscosity of the mixture in the cup and the speed of the blades' rotational and
vertical movements. D.I. 271 at 5. It is well-established, however, that claims
involving terms of degree are not inherently indefinite. Sonix, 844 F .3d at 13 77.
On the contrary, "[c]laim language employing terms of degree has long been found
definite where it provided enough certainty to one of skill in the art when read in
the context of the invention." Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,

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1370 (Fed. Cir. 2014) (citing Eibel Process Co. v. Minn. & Ontario Paper Co., 261
U.S. 45, 65-66 (1923)). Moreover, "what can be seen by the normal human eye ..
. [may] provide[] an objective baseline through which to interpret the claims."

Sonix Tech. Co. v. Publ'ns Int'/, Ltd., 844 F.3d 1370, 1378 (Fed. Cir. 2017). In
this case, it is obvious and a matter of common sense that, as Plaintiffs' expert
averred in his declaration, "it is very easy for one of ordinary skill in the art to
determine whether sufficient mass has been achieved for their particular blender by
simply observing whether the cup stays in the holder during blending or not." See
D.I. 201 at 17-19, ,r,r 36-39. As a result, I find that Defendants have not proven by
clear and convincing evidence that a person of ordinary skill in the art would not
be able simply to observe whether a splash shield is heavy enough to keep the cup
in the cupholder during blending.
II.

CONCLUSION

The challenged claims in the two patents for commercial blenders require a
"splash shield" that sits atop a cup or "vessel" in a cupholder and has "sufficient
mass" or weight to hold the cup in the cupholder. This "sufficient mass" limitation
is defined by its function in the claims and a POSITA could easily determine
whether a splash shield had sufficient mass. The challenged claims, therefore, are
not indefinite.

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