Motorola Mobility, Inc. v. Apple, Inc.
Filing
158
NOTICE by Apple, Inc., Motorola Mobility, Inc. of Filing Supplemental Authority on Claim Construction (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8)(Giuliano, Douglas)
Exhibit 3
Page 1
BETTER BAGS, INC., Plaintiff, v. REDI BAG USA LLC, Defendant.
CIVIL ACTION NO. H-09-3093
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
TEXAS, HOUSTON DIVISION
2011 U.S. Dist. LEXIS 6093
January 21, 2011, Decided
January 21, 2011, Filed
PRIOR HISTORY: Better Bags, Inc. v. Redi Bag USA
LLC, 2010 U.S. Dist. LEXIS 18309 (S.D. Tex., Mar. 2,
2010)
Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995)
(en banc), aff'd, 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed.
2d 577 (1996).
COUNSEL: [*1] For Better Bags, Inc., Plaintiff,
Counter Defendant: Anastassios Triantaphyllis, LEAD
ATTORNEY, Triantaphyllis Law Firm, Houston, TX.
I. BACKGROUND
For Redi Bag USA LLC, Defendant, Counter Claimant:
Joseph J Zito, LEAD ATTORNEY, Zito tlp, Washington,
DC.
JUDGES: KEITH P. ELLISON, UNITED STATES
DISTRICT JUDGE.
OPINION BY: KEITH P. ELLISON
OPINION
This case involves two patents for devices used to
dispense plastic bags such as those used in the produce
sections of grocery stores. Plaintiff/Counter-Defendant
Better Bags, Inc. ("Better Bags") is the owner of the '833
Patent, which discloses a floor-standing dispensing
assembly for supporting packs of plastic bags, including a
hook with an inclined [*2] segment and a "header" that
holds a pack of plastic bags and that attaches to the
floor-standing dispenser. Defendant/Counter-Plaintiff
Redi Bag USA LLC ("Redi Bag") is the owner of the
'137 Patent, which discloses a dispenser in which plastic
bags are attached to a header so that when the top of a
bag is detached, the bottom of the bag remains in a pouch
rather than falling to the floor.
MEMORANDUM AND ORDER
Claim 1 of '833 Patent provides 1:
In this patent infringement suit, the parties seek
construction of several terms contained in the asserted
claims of U.S. Patent Nos. 5,732,833 (the "'833 Patent")
and 7,314,137 (the "'137 Patent"). This Court held a
hearing on January 14, 2011, during which the parties
presented argument in support of their proposed
constructions. This Court now construes the disputed
claim terms as a matter of law under Markman v.
A floor standing dispensing assembly
for dispensing plastic bags, the dispensing
assembly comprising:
a base member;
a vertical member
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2011 U.S. Dist. LEXIS 6093, *2
attached to said
member;
a support
comprising:
base
hook
an
attachment
segment for
attaching to
said vertical
member;
an inclined
planer
segment;
and
a
substantially
horizontal
segment;
an outer frame assembly
attached to said vertical
member;
and
a plurality of dips
mounted to said outer
frame assembly.
(Doc. No. 26-1, at col. 8, ll. 18-30.) Claim 3 of that patent
provides:
A dispensing assembly for dispensing
plastic bags of the type stacked onto one
another and having a lower bag portion
and a disposable upper portion, the
dispensing assembly having a plurality of
support hooks for supporting the stack of
plastic bags, wherein the improvement
[*3] comprises: a header connected to the
disposable upper portion of the stack of
plastic bags, said header is made from a
substantially rectangular piece of plastic
having a handle formed from a generally
central area of said substantially
rectangular piece with said substantially
rectangular piece folded longitudinally,
said header having a continuous front
flange and a continuous back flange along
the length of said header, said header
including a pair of upper tabs, each said
upper tab having a hole there through for
hanging the stack of plastic bags.
(Id. at col. 8, ll. 35-51.)
1 The claims at issue in this case are not limited
to those quoted in this section. The court quotes
several claims in full here, however, in order to
provide some context to the disputed terms.
Claim 1 of the '137 Patent provides:
A bag dispenser comprising: a header,
said header comprising a front wall and a
rear wall attached together to form a
recess; a bag, said bag comprising a
perforation line dividing the bag into a
first section and a second section, said first
section being situated within said header
recess and retained between said front wall
and said rear wall of said header; a pouch,
said pouch comprising [*4] a front wall
having a bottom edge, side edges and a top
edge, and a rear wall having a bottom edge
and side edges, said bottom edge and said
side edges of said front wall and said
bottom edge and said side edges of said
rear wall, respectively, being joined
together to form said pouch, said top edge
of said front wall being unattached so as to
define an opening for said pouch spaced
from said header; and means for attaching
said pouch to said header such that at least
a portion of said second section of said
bag may extend through said pouch
opening and within said pouch.
(Doc. No. 27-1, at col. 4, ll. 24-40.)
II. LEGAL STANDARD
A. Claim Construction
Claim construction is a matter of law, and thus the
task of determining the proper construction of all
disputed claim terms lies with the Court. Markman, 517
U.S. at 372. The Federal Circuit has opined extensively
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2011 U.S. Dist. LEXIS 6093, *4
on the proper approach to claim construction, most
notably in its recent opinion in Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc).
The goal of a Markman hearing is to arrive at the
ordinary and customary meaning of a claim term in the
eyes of a person of ordinary skill in the art. Phillips, 415
F.3d at 1313. In order [*5] to do so, the Court should
first look to intrinsic evidence to decide if it clearly and
unambiguously defines the disputed terms of the claim.
Vitronics Corp. v. Conceptronic, Inc., 90 F. 3d 1576,
1585 (Fed Cir. 1996). The intrinsic evidence includes the
claims themselves, the specification, and the prosecution
history. Phillips, 415 F.3d at 1314.
Words of a claim are generally given their ordinary
and customary meaning, which is the meaning a term
would have to a person of ordinary skill in the art after
reviewing the intrinsic record at the time of the invention.
O2 Micro Int'l Ltd. v. Beyond Innovation Technology Co.,
521 F.3d 1352, 1360 (Fed. Cir. 2008). Thus, the inquiry
into how a person of ordinary skill in the art understands
a claim term provides an objective baseline from which
to begin claim interpretation. Phillips, 415 F.3d at 1313.
That starting point is based on "the well-settled
understanding that inventors are typically persons skilled
in the field of the invention, and that patents are
addressed to, and intended to be read by, others of skill in
the pertinent art." Id. A district court is not obligated to
construe terms with ordinary meanings, lest trial courts
be [*6] inundated with requests to parse the meaning of
every word in the asserted claims. O2 Micro Intern., 521
F.3d at 1360; see also Biotec Biologische
Naturverpackungen GmbH & Co. KG v. Biocorp, Inc.,
249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding no error in
non-construction of "melting"); Mentor H/S, Inc. v. Med.
Device Alliance, Inc., 244 F.3d 1365, 1380 (Fed. Cir.
2001) (finding no error in lower court's refusal to
construe "irrigating" and "frictional heat").
The claims themselves provide substantial guidance
as to the meaning of particular claim terms. Phillips, 415
F.3d at 1314. To begin with, the context in which a term
is used in the asserted claim can be highly instructive. Id.
Other claims of the patent in question, both asserted and
unasserted, can also be valuable sources of enlightenment
as to the meaning of a claim term. Vitronics, 90 F.3d at
1582. Because claim terms are normally used consistently
throughout the patent, the usage of a term in one claim
can often illuminate the meaning of the same term in
other claims. Phillips, 415 F.3d 1303.
In addition, the specification, or the part of the patent
where the inventor describes and illustrates the invention
in significant [*7] detail, "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, 90 F.3d at 1582. The importance of the
specification in claim construction derives from its
statutory role. The close kinship between the written
description and the claims is enforced by the statutory
requirement that the specification describe the claimed
invention in "full, clear, concise, and exact terms." 35
U.S.C. § 112 P 1,. Consistent with that general principle,
cases recognize 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. In other cases, the specification may
reveal an intentional disclaimer, or disavowal, of claim
scope by the inventor. In that instance as well, the
inventor has dictated the correct claim scope, and the
inventor's intention, as expressed in the specification, is
regarded as dispositive. Id. The specification may also
resolve ambiguous claim terms that are not sufficiently
clear to permit the scope of the [*8] claim to be
ascertained from the words alone. Teleflex, Inc. v. Ficosa
N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).
Notably, while the specification may describe very
specific embodiments of the invention, the claims are not
to be confined to these embodiments. Ventana Medical
Systems, Inc. v. Biogenex Laboratories, Inc., 473 F.3d
1173, 1181 (Fed. Cir. 2006) (quoting Phillips, 415 F.3d
at 1323). However, the importance of limiting language
in the specification has been discussed by the Federal
Circuit in terms that favor a restrictive reading. For
example, in Lizardtech, Inc. v. Earth Resource Mapping,
Inc., 433 F.3d 1373, 1375 (Fed. Cir. 2006), the court
stated:
However, in whatever form the claims
are finally issued, they must be
interpreted, in light of the written
description, but not beyond it, because
otherwise they would be interpreted to
cover inventions or aspects of an invention
that have not been disclosed. Claims are
not necessarily limited to preferred
embodiments, but, if there are no other
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2011 U.S. Dist. LEXIS 6093, *8
embodiments, and no other disclosure,
then they may be so limited. One does not
receive entitlement to a period of
exclusivity for what one has not disclosed
to the public.
See [*9] also Honeywell Int'l, Inc. v. ITT Indus., Inc.,
452 F.3d 1312 (Fed. Cir. 2006) (holding that the
meaning of a claim was limited to the single embodiment
disclosed in the specification). There is "a fine line
between reading a claim in light of the specification, and
reading a limitation into the claim from the
specification." Comark Communications, Inc. v. Harris
Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998).
Finally, the prosecution history, which has been
designated as part of the "intrinsic evidence," consists of
the complete record of the proceedings before the U.S.
Patent and Trade Office ("PTO") and includes the prior
art cited during the examination of the patent. Like the
specification, the prosecution history provides evidence
of how the PTO and the inventor understood the patent.
Phillips, 415 F.3d at 1317. Yet, because the prosecution
history represents an ongoing negotiation between the
PTO and the applicant, rather than the final product of
that negotiation, it often lacks the clarity of the
specification and thus is less useful for claim construction
purposes. Id. Still, "a patentee may limit the meaning of a
claim term by making a clear and unmistakable
disavowal of scope [*10] during prosecution." Purdue
Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136
(Fed. Cir. 2006); see also Omega Engineering Inc. v.
Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003)
(finding that the doctrine of prosecution disclaimer is
well established and precludes patentees from recapturing
through claim construction specific meanings disclaimed
during prosecution). A patentee could do so, for example,
by clearly characterizing the invention in a way to try to
overcome rejections based on prior art. See, e.g.,
Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340,
1349 (Fed. Cir. 2004) (limiting the term "transmitting" to
require direct transmission over telephone line because
the patentee stated during prosecution that the invention
transmits over a standard telephone line, thus disclaiming
transmission over a packet-switched network); Alloc v.
Int'l Trade Comm'n, 342 F.3d 1361, 1372 (Fed. Cir.
2003) (finding the patentee expressly disavowed floor
paneling systems without "play" because the applicant
cited the feature during prosecution to overcome prior
art); Bell Atl. Network Servs. v. Covad Commc'ns Group,
Inc., 262 F.3d 1258, 1273 (Fed. Cir. 2001) (limiting
operation [*11] of the "transceiver" to the three stated
modes because of clearly limiting statements made by the
patentee to try to overcome a prior art rejection).
Only if there is still some genuine ambiguity in the
claims, after consideration of all available intrinsic
evidence, should a trial court resort to extrinsic evidence,
such as expert witness testimony, dictionary definitions,
and legal treatises. See Vitronics, 90 F3d at 1585. While
extrinsic evidence "can shed useful light on the relevant
art," it is "less significant than the intrinsic record in
determining 'the legally operative meaning of claim
language.'" C.R. Bard, Inc. v. U.S. Surgical Corp., 388
F.3d 858, 862 (Fed. Cir. 2004) (quoting Vanderlande
Indus. Nederland BV v. Int'l Trade Comm'n, 366 F.3d
1311, 1318 (Fed. Cir. 2004)). The judicial arbiter must be
sufficiently informed so that she may step into the shoes
of the ordinary skilled artisan. It is here that the use of
extrinsic evidence makes the most sense.
B. Means-Plus-Function Claims
35 U.S.C. Section 112, P 6 provides:
An element in a claim for a combination
may be expressed as a means or step for
performing a specified function without
the recital of structure, material, [*12] or
acts in support thereof, and such claim
shall be construed to cover the
corresponding structure, material, or acts
described in the specification and
equivalents thereof (emphasis added).
Means-plus-function claims contain only purely
functional limitations but do not provide the structures
that perform the recited function. See Phillips, 415 F.3d
at 1311; Envirco Corp. v. Clestra Clearnroom, Inc., 209
F.3d 1360, 1365 (Fed. Cir. 2000). Section 112, P 6
allows a patentee to "describe an element of his invention
by the result accomplished or the function served, rather
than describing the item or element to be used."
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520
U.S. 17, 27, 117 S. Ct. 1040, 137 L. Ed. 2d 146 (1997).
The claim is then interpreted with reference to, and as
limited by, the related structure disclosed in the patent for
performing the function recited in the claim, or the
equivalents thereof. Welker Bearing Co. v. PHD, Inc.,
550 F.3d 1090, 1099 (Fed. Cir. 2008); Chiuminatta
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2011 U.S. Dist. LEXIS 6093, *12
Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145
F.3d 1303, 1308 (Fed. Cir. 1998). "Sufficient structure
exists when the claim language specifies the exact
structure that performs the functions in question without
need to resort [*13] to other portions of the specification
or extrinsic evidence for an adequate understanding of the
structure." TriMed, Inc. v. Stryker Corp., 514 F.3d 1256,
1259-60 (Fed. Cir. 2008).
determine the corresponding structures disclosed in the
specification that perform that function. Welker Bearing,
550 F.3d at 1097; [*14] Minks v. Polaris Indus., Inc.,
546 F.3d 1364, 1377 (Fed. Cir. 2008).
This Court must determine, as a matter of law,
whether a phrase should be construed as a
means-plus-function term. Welker Bearing, 550 F.3d at
1096. If the word "means" is used in a claim element, in
combination with a function, the court must presume that
Section 112, P 6 applies unless the claim recites a
sufficient structure to perform the function. Id.; TriMed,
514 F.3d at 1259; Micro Chem., Inc. v. Great Plains
Chem Co., 194 F.3d 1250, 1257 (Fed. Cir. 1999). If the
word "means" is not used, the presumption is that a claim
falls outside of Section 112, P 6. Micro Chem., 194 F.3d
at 1257. This presumption is rebutted by showing that the
claim element recites a function without reciting
sufficient structure for performing that function. Watts v.
XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000). If
means-plus-function analysis applies, a court must first
determine what the claimed function is and then
The parties disagree about the construction of seven
terms in the '833 Patent. Better Bags argues that none of
the terms needs construction, but also provides proposed
alternative constructions. Redi Bag argues that two terms
should be construed as means-plus-function claims, and
that several others need constructions. The parties
previously disputed two other terms--"disposable upper
portion"
and
"rectangular
piece
folded
longitudinally"--but now agree that those terms need no
construction. The Court addresses each of the disputed
terms in turn.
Term, Phrase, or Clause
III. ANALYSIS OF CLAIM TERMS
A. '833 Patent
1. "A dispensing assembly for dispensing plastic
bags"
2. "A plurality of support hooks for supporting the
stack of plastic bags"
Better Bags' Proposal
Redi Bag's Proposal
No construction required,
This element recites
function and thus
or in the alternative:
invokes
35 USC § 112 P6.
1. "a dispensing
assembly for dispensing
"a collection of parts
"a floor standing
plastic bags"
put together to form a
dispensing assembly with
unit that can be used to
a vertical member
dispense plastic bags"
attached to a base
member. The assembly
does not include the
plastic bag pack and
header."
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2011 U.S. Dist. LEXIS 6093, *14
This element recites
function and thus
No construction
invokes
required,
35 USC § 112 P6.
or in the alternative:
"The hooks have an upper
2. "a plurality of
support hooks for
supporting the stack of
plastic bags"
horizontal segment, an
"more than one support
inclined segment and an
hook for supporting the
attachment segment. A
stack of plastic bags"
plurality means two
hooks equally spaced
apart from the center."
Redi
[*15] Bag argues that these are
means-plus-function terms under 35 U.S.C. § 112 P 6,
while Better Bags argues they are not. Better Bags also
contends that none of the limitations of Redi Bag's
proposed constructions should be read into the terms.
First, the Court finds it inappropriate to adopt the
limitations that Redi Bag proposes. Better Bags argues
that this term is in "Jepson" format, as described in 37
C.F.R. § 1.75(e):
Where the nature of the case admits, as
in the case of an improvement, any
independent claim should contain in the
following order:
(1) A preamble comprising a general
description of all the elements or steps of
the claimed combination which are
conventional or known,
(2) A phrase such as "wherein the
improvement comprises," and
(3) Those elements, steps and/or
relationships which constitute that portion
of the claimed combination which the
applicant considers as the new or
improved portion.
The Court agrees. Both of these terms are contained in
the preamble of claim 3, followed by the phrase "the
improvement comprises" and a description of elements of
the header that are claimed as new. The terms describe
"the elements or steps of the claimed combination which
are conventional [*16] or known" rather than the claimed
new types of "dispensing assembly" and "support hooks"
described in claims 1 and 2. Thus, the Court finds it
inappropriate to include the limitations of claims 1 and 2
in construing these terms.
Next, the Court finds that these are not
means-plus-function terms under Section 112 P 6.
Because these claim elements do not use the word
"means," there is a presumption that they are not
means-plus-function terms. Micro Chem., 194 F.3d at
1257; see also Lighting World, Inc. v. Birchwood
Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004)
("the presumption flowing from the absence of the term
'means' is a strong one that is not readily overcome").
Redi Bag argues that Section 112 P 6 still applies because
the terms describe functions but do not describe any
structures. However, the Federal Circuit has held that, to
avoid application of Section 112 P 6, a claim term need
not "denote a specific structure." Lighting World, 382
F.3d at 1358. "Instead, . . . it is sufficient if the claim
term is used in common parlance or by persons of skill in
the pertinent art to designate structure, even if the term
covers a broad class of structures and even if the term
identifies [*17] the structures by their function." Id. at
1359-60. As the Court concluded above, these terms refer
to already-existing dispensing assemblies and support
hooks. As a result, the structures described in claim 3,
while not referring to one specific structure, are sufficient
under Lighting World to avoid application of Section 112
P 6. Redi Bag has not presented sufficiently persuasive
Page 7
2011 U.S. Dist. LEXIS 6093, *17
arguments to overcome the strong presumption that these
terms are not covered by Section 112 P 6. 2
2 Redi Bag relies on Mas-Hamilton Group v.
LaGard, Inc., in which the Federal Circuit
affirmed a district court's finding that a term was
covered by Section 112 P 6 even though it did not
include the word "means." 156 F.3d 1206, 1214
(Fed. Cir. 1998). In that case, however, the
district court found that "lever moving element"
was not a "known structure in the lock art" and so
the claim did not describe any structure. Id. at
Term, Phrase, or Clause
1213-14. In the instant case, by contrast, the Court
finds that "dispensing assemblies" and "support
hooks" do refer to known structures such as those
described in the background section of the patent,
so Mas-Hamilton Group does not alter the
holding.
Because both of these terms would be clear [*18] to
a person of ordinary skill in the art, the Court finds that
they require no construction.
3. "A header"
Better Bags' Proposal
Redi Bag's Proposal
"The plastic structure part
"a thing to which something
hangs on or by which
hang the stack of bags
something is hung"
3. "a header"
of the bag pack used to
from the dispensing
assembly."
At the Markman hearing, Redi Bag suggested a
revised construction of "the structure used to hang the
stack of bags from the dispensing assembly." However,
Better Bags still disputes the inclusion of ". . . from the
dispensing assembly" in this term. 3
3 Redi Bag indicated in its Responsive Brief that
the parties had agreed to Redi Bag's proposed
construction, Doc. No. 28, at 14, and so did not
provide the Court with briefing as to why "from
the dispensing assembly" should be included.
Redi Bag did, however, present arguments for its
inclusion at the hearing.
The Court finds it inappropriate to read such a
limitation into this term. Nothing in the patent requires
the term itself to be limited to hanging bags "from the
Term, Phrase, or Clause
dispensing assembly." To the extent that the claims are
limited to such a use, that will be made clear by the
entirety of the claim [*19] language, not by the Court
reading the limitation into the simple term "a header."
Moreover, such a limitation would potentially be
confusing, as claims 5, 6, 7, and 8 describe a "dispensing
assembly" as including "a header." There could thus be
the unnecessary implication that, for those claims, a
header must hang a stack of bags from an apparatus of
which the header itself is a part. Therefore, the Court
finds it appropriate to adopt the revised construction that
Redi Bag proposed at the hearing, with the omission of
"from the dispensing assembly." "A header" is thus
construed to mean "the structure used to hang the stack of
bags."
4. "A handle formed from a generally central area"
Better Bags' Proposal
Redi Bag's Proposal
"the part of a
"An extension
4. "a handle
thing formed
extending
formed from
from the generally
up from the
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2011 U.S. Dist. LEXIS 6093, *19
a generally
central
central area of
central area"
area of the
the header so
thing that may
as to form a
be lifted,
handle. The
grasped, seized,
handle cannot
held, etc.
extend the
by the hand"
length of the
header."
This dispute essentially concerns whether the
"handle" must extend up from the header or whether a
hole in the header that does not extend up (using [*20]
which one could hold the header) could constitute a
"handle." As with the previous term, Redi Bag argues
that limitations should be included in the term, while
Better Bags argues they should not.
The Court is again unconvinced that the patent
requires limitations to be read into this term. Redi Bag
states that its proposal "recites the handle that is in the
claim, in the specification and therefore in the patent,"
but does not point to specific language requiring that it be
read into the claim term. While Redi Bag's proposed
limitations may describe the specific embodiment of the
invention described in the patent, it is well established
that each feature of the specific embodiment described in
the specification does not constitute a limitation on the
patent claims. See, e.g., Ventana Medical Systems, Inc. v.
Biogenex Laboratories, Inc., 473 F.3d 1173, 1181 (Fed.
Cir. 2006) ("Although the specification often describes
very specific embodiments of the invention, we have
Term, Phrase, or Clause
repeatedly warned against confining the claims to those
embodiments.") (internal citation omitted); Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1325 (Fed.
Cir. 2003) ("courts must take extreme care when [*21]
ascertaining the proper scope of the claims, lest they
simultaneously import into the claims limitations that
were unintended by the patentee"). It is up to the jury to
determine whether the term, as construed by the Court,
applies to an allegedly infringing product. See PPG
Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355
(Fed. Cir. 1998) ("after the court has defined the claim
with whatever specificity and precision is warranted by
the language of the claim and the evidence bearing on the
proper construction, the task of determining whether the
construed claim reads on the accused product is for the
finder of fact"). The Court thus finds that the term
"handle formed from a generally central area" is clear and
needs no construction.
5. "A continuous front flange and a continuous back
flange"
Better Bags' Proposal
Redi Bag's Proposal
"a continuous
"the flange
5. "a continuous
front projection
must be
front flange
used for strength
continuous,
and a continuous
or for attaching
providing
back flange"
to another
rigidity to the stack
object and
of bags
a continuous
held by the header"
back projection used for
Page 9
2011 U.S. Dist. LEXIS 6093, *21
strength or for
attaching to
another object"
At the hearing, Redi Bag agreed [*22] to Better
Bags' alternative construction. Better Bags' insists that no
construction is needed because a person of ordinary skill
in the art would understand the meaning of the word
"flange."
Better Bags' proposed alternative construction is
essentially an insertion of a dictionary definition of
"flange" into the term. Better Bags contends that no
construction at all is needed. However, it is not fully clear
that "flange" has a clear meaning, and in an effort to
reach an agreement, Redi Bag agreed to accept Better
Bags' alternative construction. In the interest of caution
and clarity, the Court finds it appropriate to adopt that
construction. Accordingly, this term is construed to mean
"a continuous front projection used for strength or for
attaching to another object and a continuous back
projection used for strength or for attaching to another
object."
6. "A pair of upper tabs"
Term, Phrase, or Clause
Better Bags' Proposal
Redi Bag's Proposal
6. "a pair of upper tabs"
"two upper projections"
"two separate small
extensions, extending
vertically on both sides of
and spaced apart from the
central area of the header,
forming hanging tabs. The
tabs are separate from the
handle."
Redi Bag argues that the [*23] upper tabs must be
spaced equally apart from the center of the header in
order to function. Better Bags contends that there is no
such requirement in the invention. At the hearing, Redi
Bag argued that "any two upper projections" would not
satisfy the invention or its purpose. However, Redi Bag
cannot point to anything in the patent or elsewhere that
requires a reading of these limitations into the term. The
Court finds that "a pair of upper tabs" is clear and that no
construction is needed.
7. "Elongate opening through said handle for hanging
the stack of plastic bags"
Term, Phrase, or Clause
Better Bags' Proposal
Redi Bag's Proposal
7. "elongate opening
"an opening
"An opening in the handle
through said handle for
through the handle for
for hanging the header on a
hanging the stack of
hanging the stack of
wide hook. The opening
plastic bags"
plastic bags, the
must be sufficiently
Page 10
2011 U.S. Dist. LEXIS 6093, *23
opening having a
elongated to cooperate
length larger than
with a central support hook
its width"
to provide lateral stability."
Redi Bag argues that the invention involves only a
specially designed hook, while Better Bags contends that
such a limitation would improperly confine the invention
to particular embodiments and examples [*24] given in
the specification. As with the other terms discussed
above, Redi Bag points to nothing in the patent that
requires these limitations to be read into the claim term.
The Court finds that this term is clear and needs no
construction.
B. '137 Patent
terms in the '137 Patent. The parties previously disputed
two other terms--"a header" and "a rear wall having a
bottom edge and side edges"--but now agree that those
terms need no construction. The Court addresses each of
the disputed terms in turn.
1. "A front wall having a bottom edge, side edges, and
a top edge"
2. "Said top edge of said front wall being unattached
so as to define an opening for said pouch spaced from
said header"
The parties disagree about the construction of three
Term, Phrase, or Clause
Better Bags' Proposal
Redi Bag's Proposal
Better Bags' Proposal
"The front wall has a
bottom edge, two side
edges and a top edge
1. "a front wall having
that extends from the
a bottom edge, side
first side edge on one
edges, and a top edge"
Needs no construction,
end to the second side
or in the alternative:
edge on the other end.
"the front wall has a
The front wall has four
bottom edge, two side
borders, namely the top
edges and a top edge"
edge, the bottom edge
and the two side edges."
2. "said top edge of
"The top edge of the
Needs no construction,
said front wall being
front wall that extends
unattached so as to
from the first side edge
define an opening for
of the front wall to the
said pouch spaced from
second side edge of the
"at least a portion of
said header"
front wall is only
the top edge must be cut
or in the alternative:
Page 11
2011 U.S. Dist. LEXIS 6093, *24
attached to the side
away or open to allow
edges and defines an
the formation of a pouch
opening formed between
opening so that bags can
the front wall and the
be retrieved from the
back wall. There is
pouch"
space between the header
and the opening."
Redi [*25] Bag argues that these terms need no
construction, while Better Bags argues that the
limitations it proposes are required by the prosecution
history of the patent. Specifically, on June 1, 2007, a PTO
examiner rejected claims 1-2, 5-6, 11-12, and 15-16 of
the '137 Patent application as being anticipated by U.S.
Patent No. 3,306,492 to Kugler (the "Kugler Patent").
(Doc. No. 29-1, PTO Office Action.) The Kugler Patent,
which issued in 1967, discloses a device for dispensing
plastic bags in which the bags are pulled out through an
oval-shaped opening in the front wall, generally speaking
in the manner of a tissue box. In response to the rejection,
the inventor of the '137 Patent amended the claims to
describe the pouch as:
. . . comprising a front wall having a
bottom edge, side edges and a top edge,
and a rear wall having a bottom edge and
side edges, said bottom edge and said side
edges of said front wall and said bottom
edge and said side edges of said rear wall,
respectively, being joined together to form
said pouch, said top edge of said front wall
being unattached so as to define [an
opening] for said pouch spaced from said
header . . . .
(Doc. No. 29-3, at 4-6.) The response noted, [*26] "The
pouch is now required to have front and rear walls, the
bottom edge and side edges of which are joined to form
the pouch, with the top edge of the front wall unattached
so as to form the pouch opening," and "[t]he dispensing
bag 12 of Kugler has no front wall with an unattached top
edge. Further, the bottoms of consumer bag 14 do not
extend through the oval opening 26." (Id. at 8-9.)
It is well established that a patent's "prosecution
history limits the interpretation of claim terms so as to
exclude any interpretation that was disclaimed during
prosecution." Southwall Technologies, Inc. v. Cardinal
IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995). "The
doctrine of prosecution disclaimer attaches where an
applicant, whether by amendment or by argument,
unequivocally disavowed a certain meaning to obtain his
patent." Schindler Elevator Corp. v. Otis Elevator Co.,
593 F.3d 1275, 1287 (Fed. Cir. 2010); see also id.
(disclaimer must be "clear and unmistakable," and
"ambiguous disavowal will not suffice").
Better Bags argues that, in distinguishing the '137
Patent from the Kugler Patent, the inventors limited their
claims to those in which, among other things, the front
wall extends from one [*27] side edge to the other side
edge, and the top edge of the front wall is only attached
to the side edges. At the hearing, the parties made clear
that this dispute arises specifically in the context of
whether the '137 Patent would cover a device in which
the front wall of the pouch was unattached to the header
in the center but was attached closer to the sides, creating
an opening in which only part of the top of the bags was
outside of the pouch. The central issue in construing both
of these terms, thus, is whether the top edge of the front
wall of the pouch must be completely unattached from
the header--in other words, whether the top edge must
attach only to the two side edges, leaving the tops of the
bags outside of the pouch all the way across the header.
The Court finds no "clear and unmistakable"
disavowal of all embodiments in which the top edge of
the pouch is partially attached to the header, and thus is
not only attached to the two side edges. In amending the
claims to distinguish the Kugler Patent, it the inventors of
the '137 Patent clearly disavowed embodiments in which
the top edge was completely attached to the header so
that opening does not touch the top of the device, [*28]
as in the Kugler Patent. However, the inventors did not
need to disavow any more than that in order to
Page 12
2011 U.S. Dist. LEXIS 6093, *28
distinguish the Kugler Patent, and it is not clear that they
did so.
Moreover, the language of the amendment (including
the two disputed terms at issue) does not require that the
top edge be attached in no place to the header. Rather, it
requires that it be "unattached so as to define [an
opening] for said pouch spaced from said header." An
embodiment in which the middle of the front wall is
unattached from the header but the sides of the front wall
are attached would still be "unattached so as to define an
opening . . ." and so could be covered by the claims.
Similarly, the phrase "a front wall having a bottom edge,
side edges, and a top edge" does not restrict the claim in
this way, as a partially unattached embodiment would
still have a front will with a bottom edge, side edges, and
a top edge.
Better Bags also argues that the prosecution history
requires Better Bags' proposed limitations because, if the
front wall is partially attached, the bottoms of the bags
would not "extend through" the opening until they were
removed from the pouch, and this would contradict the
inventors' [*29] statement that accompanied the
amendment. However, although the inventors indeed
noted that in the Kugler Patent "the bottoms of consumer
bag 14 do not extend through the oval opening 26," the
amendment to the claim language uses the terminology
"first section" and "second section" of the bags, and states
Term, Phrase, or Clause
that the "at least a portion of said second section of each
of said bags may extend through said pouch opening and
within said pouch." (Doc. No. 29-3, at 5-6.) Thus, while
the inventors noted that the bottoms of the bags did not
extend through the opening in the Kugler Patent, the
amended language states that "at least a portion" (rather
than the entirely) of the second section of the bag must
extend through the opening and into the pouch. The Court
cannot find that on this basis that the inventors clearly
and unequivocally disavowed all embodiments in which
part of the front wall is attached to the header.
Accordingly, with regard to the first term, "a front
wall having a bottom edge, side edges, and a top edge,"
the Court finds that no construction is needed. With
regard to the second term, "said top edge of said front
wall being unattached so as to define an opening for said
pouch [*30] spaced from said header," the Court finds it
appropriate to clarify the meaning by adopting Redi Bag's
proposed construction, "at least a portion of the top edge
must be cut away or open to allow the formation of a
pouch opening so that bags can be retrieved from the
pouch."
3. "Means for attaching said pouch to said header
such that at least a portion of said second section of
said bag may extend through said pouch opening and
within said pouch"
Better Bags' Proposal
Redi Bag's ProposalD
35 U.S.C. § 112, P 6
3. "means for attaching
said pouch to said
"The pouch is attached
header such that at
to the header so that a
least a portion of said
portion of the second
second section of said
section of the bags can
bag may extend through
extend through the pouch
said pouch opening and
opening into the pouch.
"the pouch is attached
within said pouch"
The second section of
to the header so that a
the bags must pass
portion of the second
through the opening to
section of the bags can
extend into the pouch.
extend through the pouch
Needs no construction,
or alternatively,
Page 13
2011 U.S. Dist. LEXIS 6093, *30
The first section of the
opening into the pouch"
bags does not extend
through the opening and
is not within the
pouch."
Better Bags argues
[*31] that this a
means-plus-function term governed by Section 112 P 6,
while Redi Bag contends it needs no construction.
Because the word "means" is used, there is a presumption
that it is governed by Section 112 P 6. The function
described is "attaching said pouch to said header such
that at least a portion of said second section of said bag
may extend through said pouch opening and within said
pouch," and no structure is identified in the claim.
Therefore, the claim is governed by Section 112 P 6.
The Court next must look to the specification to
determine which structure or structures are disclosed to
accomplish the named function. In the '137 Patent, the
only structure disclosed as a means for attaching the
pouch and header is "back sheet." (See Doc. No. 27-1, at
col. 3, ll. 47-52.) The specification describes the back
sheet as "preferably made of the same plastic sheet
material as the bag walls, but considerably thicker stock
than the walls of the bags, to give the back considerably
more strength than the bag walls." (Id. at col. 3, ll.
38-41.) The specification also states, "Preferably, rear
wall of the pouch is integral with back sheet so that the
pouch and the attaching means can [*32] be
manufactured together." (Id. at 50-52.) Thus, this term is
limited to a structure including a back sheet and its
equivalents as a means to accomplish the stated function.
A second issue arises because the functions
described in the specification and the claim are worded
differently. Whereas in the claim term the stated function
is "attaching said pouch to said header such that at least a
portion of said second section of said bag may extend
through said pouch opening and within said pouch," the
specification states that the "[b]ack sheet 22 constitutes a
means for attaching pouch 24 and header 10 such that the
bottom section of each of the bags 20 may be extend [sic]
through opening 36 and within pouch 24." The latter
language is similar to that used by the inventors in the
amendments in noting that, in the Kugler Patent, "the
bottoms of consumer bag 14 do not extend through the
oval opening 26." (Doc. No. 29-3, at 9.) As discussed
above, the inventors amended the claim language to state
only that "at least a portion of" the second section of the
bags must extend through the opening and within the
pouch. However, they did not similarly amend the
specification language. 4
4
The inventors' [*33] failure to amend the
specification language may have been mere
inadvertence. However, "the district court can
correct an error only if the error is evident from
the face of the patent." Group One, Ltd. v.
Hallmark Cards, Inc., 407 F.3d 1297, 1303 (Fed.
Cir. 2005). Where no certificate of correction has
been issued, the court may only correct an error if
"(1) the correction is not subject to reasonable
debate based on consideration of the claim
language and the specification and (2) the
prosecution history does not suggest a different
interpretation of the claims." Novo Industries,
L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354
(Fed. Cir. 2003). If there is indeed an error in the
'137 Patent, it is not evident from the face of the
patent but instead requires looking to the
prosecution history. Moreover, whether there is an
error is subject to reasonable debate. Therefore,
the Court finds that it cannot alter the language of
the specification.
The Court finds that the specification language that
"the bottom section of each of the bags may be extend
[sic] through opening and within pouch" constituted a
more-specific function rather than a structure that
accomplishes that function. The [*34] language is clearly
analogous to that in the means-plus-function claim
language, which the Court above found to not disclose a
structure. 5 Therefore, the structure for purposes of this
term is not limited to those in which the bottom section of
each bag may be extended through the opening and
within the pouch. The limitations of Better Bags'
proposed construction are not supported by the language
Page 14
2011 U.S. Dist. LEXIS 6093, *34
of the patent, so the Court declines to adopt them.
5 If the Court had found that this specification
language described a structure, it would also need
to find that the claim language described a
structure, in which case it would not be covered
by Section 112 P 6.
The Court finds that this term falls within 35 U.S.C.
§ 112 P 6, and it thus limited to the disclosed structures
and their equivalents. The function of "attaching said
pouch to said header such that at least a portion of said
second section of said bag may extend through said
pouch opening and within said pouch" is accomplished
using:
A back wall, preferably made of the
same plastic sheet material as the bag
walls, but considerably thicker stock than
the walls of the bags, to give the back
considerably more strength than the bag
walls. [*35] Preferably, rear wall of the
pouch is integral with back sheet so that
the pouch and the attaching means can be
manufactured together.
IV. CONCLUSION
The Court hereby construes the disputed terms and
phrases as follows:
Terms in '833 Patent
Term, Phrase, or Clause
Court's Construction
"a dispensing assembly for
No construction needed
dispensing plastic bags"
"a plurality of
support hooks for
No construction needed
supporting the stack
of plastic bags"
"a header"
"the structure used to hang the stack of
bags"
"a handle formed
No construction needed
from a generally
central area"
"a continuous front
"a continuous front projection used for
flange and a
strength or for attaching to another object
continuous back
and a continuous back projection used for
flange"
strength or for attaching to another object"
"a pair of upper tabs"
No construction needed
"elongate opening
through said
handle for hanging
the stack of
plastic bags"
No construction needed
Page 15
2011 U.S. Dist. LEXIS 6093, *35
Term, Phrase, or Clause
Court's Construction
"a front wall
No construction needed
having a bottom edge,
side edges, and a
top edge"
"said top edge of
"at least a portion of the top edge must be
said front wall being
cut away or open to allow the formation of
unattached so as to
a pouch opening so that bags can be
define an opening
retrieved from the pouch"
for said pouch
spaced from said
header"
"means for attaching
Construed pursuant to 35 U.S.C. § 112 P 6
said pouch to
as using "a back wall, preferably made of
said header such
the same plastic sheet material as the bag
that at least a
walls, but considerably thicker stock than
portion of said
the walls of the bags, to give the back
second section of said
considerably more strength than the bag
bag may extend
walls. Preferably, rear wall of the pouch is
through said pouch
integral with back sheet so that the pouch
opening and
and the attaching means can be
within said pouch"
manufactured together."
/s/ Keith P. Ellison
IT [*36] IS SO ORDERED.
KEITH P. ELLISON
SIGNED at Houston, Texas, on this the 21st day of
January, 2011.
UNITED STATES DISTRICT JUDGE
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