PDT Original Designs, LLC v. Hangemright.com, LLC
Filing
41
MEMORANDUM DECISION AND ORDER. Signed by Judge David C. Nye. (caused to be mailed to non Registered Participants at the addresses listed on the Notice of Electronic Filing (NEF) by (jp)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF IDAHO
PDT ORIGINAL DESIGNS, LLC,
Case No. 4:17-cv-00315-DCN
Plaintiff,
MEMORANDUM DECISION AND
ORDER
v.
HANGEMRIGHT.COM, LLC,
Defendant.
I. INTRODUCTION
The Court held a Markman hearing on August 2, 2018, to interpret the claims of
Plaintiff PDT Original Designs, LLC’s (“PDT”) utility patent (United States Patent No.
8,915,382 (“’382 patent”)). The Court’s interpretation is set forth below.
II. BACKGROUND
A. Procedural Background
On August 2, 2017, PDT filed suit against Defendant HangEmRight.com LLC
(“HangEmRight”). In this action, PDT seeks damages and a permanent injunction against
HangEmRight for infringement of its ‘382 patent. PDT alleges that HangEmRight sells
products which are protected by one or more claims and designs in the ‘382 patent.
MEMORANDUM DECISION AND ORDER - 1
HangEmRight denies infringement. The Court now engages in the first step of the twopart infringement analysis: claim construction.
B. Patent at Issue
The sole patent at issue in this case is the ‘382 patent. The ‘382 patent discloses
“an apparatus and system . . . for supporting a ski on a support structure. The apparatus
includes a ski support member, a spacer, and a coupling element.” Dkt. 35-1, abstract. In
layman’s terms, the ‘382 patent covers devices (similar to a small nob, hook, or hanger)
upon which a person can hang a single ski1 in a vertical, upright, position for storage
purposes. Storing a ski in this manner keeps the skis off the ground—thus avoiding
unwanted damage. PDT’s patented method for hanging skis also requires less space than
storing skis horizontally.
III. LEGAL STANDARD
The Court begins with the first step of the two-step infringement analysis—
determining the scope and meaning of the patent claims at issue. See Markman v.
Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
(1996). The construction of a patent is a question of law for the Court to decide. Id.; see
also O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir.
1
The Court uses “single ski” to describe how the ski is hung, but skis could be hung either
individually or together as a pair. If hung together, the first ski is hung on the device and the
second ski is attached to the first ski, back to back, with each ski’s brakes holding the other
together. Even if that is the case—that a pair of skis is hung on a single support—still only one
ski physically engages with the device itself.
MEMORANDUM DECISION AND ORDER - 2
2008) (“When the parties present a fundamental dispute regarding the scope of a claim
term, it is the court’s duty to resolve it.”). At the same time, the Court is not required to
construe every limitation present in a patent’s asserted claims. O2 Micro Int’l Ltd, 521
F.3d at 1359. “In some cases, the ordinary meaning of claim language . . . may be readily
apparent even to lay judges, and claim construction in such cases involves little more
than the application of the widely accepted meaning of commonly understood words.”
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005) (en banc).
To interpret the claims, the Court must look first to the intrinsic evidence of
record, i.e., the patent itself, including the claims, the specification and, if in evidence, the
prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996). Such intrinsic evidence is the most significant source of the legally operative
meaning of disputed claim language. Id.
In evaluating the intrinsic evidence, the Court examines first the words of the
claims themselves, both asserted and nonasserted, to define the scope of the patented
invention. Id. Although words in a claim are generally given their ordinary and
customary meaning, a patentee may choose to be his own lexicographer and use terms in
a manner other than their ordinary meaning, so long as the special definition of the term
is clearly stated in the patent specification or file history. Id.
Intrinsic evidence also includes the prosecution history of the patent, if in
evidence, which includes the complete record of all proceedings before the Patent and
Trademark Office (PTO), including any express representations made by the applicant
regarding the scope of the claims. As such, the record before the PTO is often of critical
MEMORANDUM DECISION AND ORDER - 3
significance in determining the meaning of the claims. Included within an analysis of the
file history may be an examination of the prior art cited therein. Id.
In most situations, an analysis of the intrinsic evidence alone will resolve any
ambiguity in a disputed claim term. In such circumstances, it is improper to rely on
extrinsic evidence.
IV. ANALYSIS
PDT’s patent protects the designs of various apparatuses for hanging skis in a
vertical position. At issue here is the language of the preamble, five phrases that appear in
each claim, and four phrases from independent claims. The Court will address each in
turn.
1. The Preamble
In the ‘382 patent, each of the asserted independent claims (1, 12, and 17) contain
the following preamble:
[a]n apparatus for supporting a ski on a support structure, the ski having a
binder tow piece and a binder heel piece coupled to a deck surface of the ski,
the binder tow piece having a boot retention flange extending parallel to the
deck surface of the ski, wherein the deck surface and boot retention flange
define a receiving space for receiving a toe end of a ski boot . . ..
MEMORANDUM DECISION AND ORDER - 4
Dkt. 35-1, Claim 1, 12, 17. While both sides agree that the preamble is referring to a
common ski, PDT asserts that the preamble is limiting as it discusses subsequent
elements, while HangEmRight argues that the preamble does not limit the claims.
“Generally, the preamble does not limit the claims.” Allen Eng’g Corp. v. Bartell
Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). However, the preamble may be
limiting “when the claim drafter chooses to use both the preamble and the body to define
the subject matter of the claimed invention.” Bell Communications Research, Inc. v.
Vitalink Communications Corp., 55 F.3d 615, 620 (Fed.Cir.1995). If the preamble is
“necessary to give life, meaning and vitality” to the claim, then the claim preamble
should be construed as limiting. Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). This is
determined “on the facts of each case in view of the claimed invention as a whole.” In re
Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987); see also Applied Materials, Inc. v. Advanced
Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996) (“Whether a
preamble stating the purpose and context of the invention constitutes a limitation . . . is
determined on the facts of each case in light of the overall form of the claim, and the
invention as described in the specification and illuminated in the prosecution history.”).
One way that a preamble can be limiting is when the preamble provides an
antecedent basis for the ensuing claim terms. Metabolite Labs., Inc. v. Corp. of Am.
Holdings, 370 F.3d 1354, 1358-62 (Fed. Cir. 2004). Antecedent basis occurs when a term
in the preamble is essential to understanding the limitation or term in the body of the
claim. Id.
MEMORANDUM DECISION AND ORDER - 5
PDT asserts that the reoccurring use of the word “the”2 in the body of the claims is
a sign that the preamble is providing antecedent basis as these references are to
explanations (of objects or designs) laid out in the preamble. Additionally, PDT points to
the Examiner’s reasons for allowance and his references to these terms when he
explained the differences between this patent and other patents. See Dkt. 35-5, at 14-15.
For its part, HangEmRight asserts that the preamble is not limiting because the ski,
the binder toe piece, and the other descriptions relative to the ski have no bearing on the
invention itself (i.e. they are not part of the invention) but are only recited for context.
HangEmRight asserts that the ‘382 patent claims a device that is positioned between the
ski and the ski binder toe piece, but that it does not specifically reference a ski. According
to HangEmRight, a person could hang anything from the hook and all the language
specific to skis is not limiting because it is not a necessary part of the invention. The
Court disagrees.
While various items could potentially be hung from the devices of the ‘382 patent,
the whole purpose of the invention is to “support[] a ski on a support structure.” Dkt. 351, abstract. Explaining the various pieces of a ski is not just helpful, or an example of
what could be hung; it is the whole purpose of the ‘382 patent. The language of the
preamble is limiting as it gives meaning to the various claims, defines their scope, and
aids third-parties in understanding the parameters of the claimed inventions.
2
For example, Claim 1 utilizes: “the binder tow piece,” “the receiving space,” “the boot
retention flange,” “the deck surface,” and “the ski.”
MEMORANDUM DECISION AND ORDER - 6
For these reasons, the Court accepts PDT’s proposed construction and reads the
preamble in claims 1, 12, and 17 as limiting.
2. “A ski support member”
Each of the asserted claims requires a “ski support member.” The parties agree
that this is the part of the design that physically supports the ski, or upon which the ski
physically rests (the piece depicted as 206 below). However, the parties dispute whether
the ski support member must be designed with an overall shape intended to engage and
support a ski and whether the ski support member must be a separate element from the
spacer and coupling mechanism. The Court will analyze both arguments.
A. Dimensions and overall shape
MEMORANDUM DECISION AND ORDER - 7
PDT argues that the ski support member must be shaped in such a way as to
engage and support a ski. In other words, the ski support member’s shape should match
the interior of the ski binding’s shape—similar to a ball going into a joint—and
complement each other. HangEmRight asserts that shape is not an essential element and
anything that holds up a ski will suffice.
In support of its proposed construction, PDT references the specifications of the
‘382 patent and the various references to how the ski support piece “engages the binder
toe piece,”3 is “positioned within the receiving space,”4 and is placed in that location as to
“prevent[] rotation of the ski.”5
HangEmRight contends that the shape of the ski support piece is irrelevant, that it
simply must be positioned within the receiving space (between the toe binder piece and
the heel binder piece), and should hold the ski vertical to qualify. It appears that PDT
agrees with this assertion. PDT is not claiming that the ski support member must be
contoured to match the ski binder exactly (arguably it could have done this—after all,
PDT does use phrases such as “having a contour that matches a contour of the receiving
space” in other claims of the ‘382 patent), but simply that it must have an overall shape to
engage and support the ski. HangEmRight also contends that Figure 11 of the ‘382 patent
contradicts PDT’s proposed construction as it is simply a round nob.
3
Dkt 34-1, at 5:30-31; 7:62-65.
4
Dkt. 34-1, at 5:29-30; 7:13-14.
5
Dkt. 34-1, at 7:26.
MEMORANDUM DECISION AND ORDER - 8
In light of Figure 11, HangEmRight contends that any functional language is
superfluous and that the ski support member is anything that can be positioned within the
receiving space. PDT reiterates that the support member should be—at least—similar in
shape to better engage and hold the ski upright.
While it is true that the patent is devoid of words or phrases indicating that this
support member should be shaped to fit a ski, that is the whole point of the invention.
Like the preamble, HangEmRight’s construction obliviates the phrases in the ‘382 patent
to the point that they have no meaning at all. It is true that arguably anything could hold
up a ski if it fit in the space between the bindings, but that is beyond the point. This is not
a design patent where the drawings control, but rather a utility patent that describes an
outcome or process, i.e., holding up skis. The ski support member must do that: support a
ski so that it does not fall. Accordingly, some shaping is necessary. An object shaped
larger or smaller than the space—or shaped contrary to the receiving space—could result
in the ski falling off the hook. This outcome defeats the purpose of the invention.
Furthermore, while HangEmRight claims that an exact shape is unnecessary, PDT’s
MEMORANDUM DECISION AND ORDER - 9
definition does not require an exact shape either, but rather that the piece has “an overall
shape intended to engage and support a ski.”
B. Separate element
HangEmRight contends that the ski support member is a separate element from the
spacer and coupling element. While it is true that some of the claims visually appear to
have three separate elements—and the specifications specifically note that the
embodiment depicts separate components—the specifications also outline that “one of
skill in the art will recognize that in certain embodiment the ski support member [] and
the spacer [] may be a single unitarily molded component.” Dkt. 35-1, 6:11-15.
Therefore, while some preferred embodiments of the ‘382 patent are comprised of three
separate and distinct physical elements, this is not a limiting factor that the Court will
inject into the claim language.
In conclusion, the Court finds that interpreting the ski support member as meaning
“the part of the apparatus for supporting a ski with dimensions and an overall shape
intended to engage and support a ski” is in line with the patent’s intended purpose.
Furthermore, while there are instances where the ski support member is separate
from the spacer and coupling elements, the ‘382 patent also covers a single unit structure.
The Court will therefore not read the ski support member as necessarily being a separate
physical element. The Court adopts PDT’s proposed construction.
The next two claims are described in Independent Claims 1 and 12, go hand in
hand, and require some preliminary explanation relevant to both disputed claims.
MEMORANDUM DECISION AND ORDER - 10
The ‘382 patent describes the ski apparatus as “comprising” a ski support
member.6 In turn, the ‘382 patent describes the ski support member as comprising “a ski
engaging portion and a binder engaging portion.”7 The ski engaging portion is defined as
“having a substantially flat surface engageable with at least one of the deck surface of the
ski and an element disposed on the deck surface of the ski to maintain the ski in a
desirable orientation”8 while the binder engaging portion is defined as having “a first
surface positioned opposite a second surface with an end surface extending between the
first surface and the second surface.”9 In both instances, the parties seem to agree that this
is a three-dimensional shape made up of two surfaces—a front and a back—with a piece
that connects the two surfaces—i.e. the top. However, HangEmRight again asserts that
various elements must be separate.
Because this concept is slightly confusing, the Court will utilize the following
excerpt from Figure 4 of the ‘382 patent. The “first surface” is depicted as 408; the
“second surface” is depicted as 410; the “ski engaging portion” is depicted as 404; and
the “binder engaging portion” is depicted as 406. PDT asserts that there can be overlap in
the descriptions and the elements. HangEmRight disagrees.
6
Dkt. 34-1, at 14:61.
7
Id. at 14:61-62.
8
Id. at 15:4-8.
9
Id. at 14:63-66.
MEMORANDUM DECISION AND ORDER - 11
3. “Ski engaging portion”
Here, the Court notes that the parties proposed constructions for ski engaging
portion are not wholly inapposite—at least as to general shape and purpose—except that
HangEmRight asserts that the ski engaging portion must be separate from any first and
second surface. In other words, HangEmRight suggests that the portion of the invention
that actually engages with the ski must be separate from the front of the ski support
member.
First, there is nothing to suggest—in this case or broadly speaking—that a single
physical element cannot serve a dual purpose. Second, there is nothing to suggest that is
MEMORANDUM DECISION AND ORDER - 12
actually what is occurring in this case. The intrinsic evidence in this case supports the
idea that elements can overlap. The ski support member, of necessity, must engage a ski.
The fact that the ski support member’s front surface and the “ski engaging portion” are
the same physical structure is not incongruent with the specifications of the patent itself.10
Critically, the ski support member is said to have a ski engaging portion. In other
words, while the word “comprising” appears—at least to HangEmRight—to lead to the
conclusion that the elements must be separate, the word “portion” lends credence to the
idea that the ski support member is made up of “portions”—one of which is the ski
engaging portion. In other words, as shown in Figure 4, the flat surface (410) includes the
ski engaging portion (404).
Finally, one is left to wonder what physical shape HangEmRight’s definition
would take. If the flat surface is separate from the first and second surface, it would
appear that HangEmRight is implying there must be, in essence, a third surface. This
concept does not find support in the record.
For these reasons the Court rejects HangEmRight’s proposed construction. PDT’s
construction, however, adds unnecessary language. The ski engaging portion of the ski
support member does just that: engages the ski in order to keep it upright. The wording is
10
Importantly, it is not as if PDT is trying to add an element where one does not exist. To use the
except from Figure 4, it is clear that the flat surface 410 and the ski engaging portion 404 point to
the same surface or plane—i.e. the “front” face of the object.
MEMORANDUM DECISION AND ORDER - 13
not difficult to understand and further defining the phrase is unnecessary. The Court will
leave this term as written. See Phillips, 415 F.3d at 1312.
4. “Binder engaging portion”
The argument here is very similar to the previous disputed term. The parties do not
appear to disagree that the element’s shape is one consisting of two sides and a top.
However, HangEmRight again asserts that the binder engaging portion must be different
from the ski engaging portion. HangEmRight’s position is that because Claims 1 and 12
specifically state that the ski support member “comprises” a ski engaging portion and a
binder engaging portion”—i.e. because each is listed separately—each must be an
independent element. HangEmRight contends that “the ski support member cannot have
only one portion nor can these portions be the same” and were it so, “Plaintiff’s proposed
construction would render one or other of the terms ‘ski engaging portion’ or ‘binder
engaging portion’ meaningless.” Dkt. 37, at 24. The Court disagrees.
Here, as before, there is nothing to suggest that a single structure cannot include
two separate features. The Court reincorporates the idea of “portions” here. The ski
engaging portion and a binder engaging portion make up the ski support member;
MEMORANDUM DECISION AND ORDER - 14
however, this listing of the elements in sequence does not mean they must be separate
and distinct physical elements. In fact, HangEmRight seems to agree with this concept.
Many of HangEmRight’s arguments in this case center around the idea that
elements must be separate or independent. HangEmRight clarified at oral argument that
this idea of separate does not necessarily mean separate physically—i.e. that you could
take the pieces apart and hold them in two hands—but rather that the parts have separate
functions and that PDT must point to what those functions are. Admittedly,
HangEmRight gave this explanation in response to another disputed claim term, but that
exact concept—that parts need not be separate physically, but have separate functions—is
how PDT explains the ski engaging portion and the binder engaging portion here, and yet
HangEmRight takes issue with that explanation.
Again, using Figure 4 as an example, the flat surface (410) can include both the
ski engaging portion (404) and the binder engaging portion (406) as laid out in the plain
language of the ‘382 patent. Simply because each serves a separate and unique purpose,
does not mean that they cannot coexist within the same physical design element. The
Court, therefore, cannot accept HangEmRight’s “separate and independent” argument.
The remainder of HangEmRight’s proposed construction—similar to PDT’s
proposed construction—simply restates the first and second surface concept as two
opposite sides with an end in between. This added language is unnecessary. The terms
“first surface” and “second surface” are easy enough to understand—restating them as
“front and back,” or “side one and two” etc., is redundant. Accordingly, the Court rejects
MEMORANDUM DECISION AND ORDER - 15
both party’s constructions and will leave this disputed phrase as written. See Phillips, 415
F.3d at 1312.
5. “Spacer”
Next, each of the asserted claims require a “spacer” that is “positioned between the
ski support member and the support structure.” The spacer’s purpose is clear: there must
be space between the ski support member (the element upon which the ski rests) and the
support structure (the surface upon which the ski support member is mounted—such as a
wall) so that the binder toe piece and heel piece have sufficient room to avoid hitting the
support structure.
The parties do not seem to dispute that the spacer provides certain space, or
distance, between the ski support member and the support structure. HangEmRight’s
proposed construction, however, again adds that the spacer must be a separate element.
While it is true that the word spacer is listed separately from the ski support
member and the coupling piece in the claim, the Court is not convinced that the spacer is
truly a “separate element”—at least not in all circumstances.
The claim states that the spacer is “positioned” between the support member and
the support structure, but not that it is a separate piece or individual component. In some
embodiments this very well may be the case; but, as previously noted, the ‘382 patent
MEMORANDUM DECISION AND ORDER - 16
appears to cover both a “separate elements” design and a “single unit” design.11 Because
the ‘382 patent covers both designs, there is no reason to exclude the single unit design as
HangEmRight suggests.
Because both sides agree that the spacer provides “space,” there is no reason to
utilize PDT’s construction, and because the Court does not find support for the
proposition that the spacer is always a separate element, there is no reason to use
HangEmRight’s construction. Accordingly, the Court rejects both parties proposed
constructions and will give the term “spacer” its ordinary and customary meaning. See
Phillips, 415 F.3d at 1312.
6. “A support structure”
The final element related to all claims is the support structure. The support
structure is what the apparatus attaches to. PDT claims that the support structure must be
a wall or something sufficient to hold the weight of a pair of skis. HangEmRight asserts
that the support structure can be any surface on which the apparatus could be mounted.
11
“One of skill in the art will recognize that in certain embodiment the ski support member []
and the spacer [] may be a single unitarily molded component.” Dkt. 35-1, 6:11-15 (emphasis
added).
MEMORANDUM DECISION AND ORDER - 17
PDT supports its proposed construction with the idea that the support structure is
depicted as a “wall” in the figures of the ‘382 patent, as well as the intrinsic language of
the specifications that “one of skill in the art will recognize . . . that the support structure
[] may be any other structure capable of support[ing] the weight of a ski or pair of skis.”
Dkt. 35-1, at 5:24-28.
HangEmRight, on the other hand, asserts that because there is no actual definition
in the ‘382 patent, there is no reason to limit the claim and while a wall is a good
possibility, a stand, post, length of wood, or even a door or cabinet face would be
acceptable.
Both party’s lists include a board, wall, stand, or post and are thus in agreement
that these “structures” are acceptable. PDT, however, takes issue specifically with
HangEmRight’s idea that a cabinet or drawer face could be utilized, asserting that
something like that would be too small or too weak to hold the weight of a pair of skis.
The problem with PDT’s argument is that there is no context for any of the
suggested items—including the structures the parties agree on. The Court can imagine a
large cabinet or closet with the apparatus mounted on the door (either on the inside or
outside) that would hold the weight of a ski. This, however, is somewhat irrelevant. The
question is not necessarily what could hold a pair of skis, but how the term “support
structure” should be defined within the parameters of the ‘382 patent and its intended use.
The Court is unwilling to list certain examples (as both sides have done) as it will unduly
limit the patent and could create further disagreement in the future if either party found
an example of another structure not previously listed. The function or purpose of the
MEMORANDUM DECISION AND ORDER - 18
support structure, however, is to adequately support the ski support member with skis
attached. This is a more appropriate definition.
Accordingly, the Court rejects both sides proposed constructions that identify
specific examples and interprets “support structure” as “any surface or structure capable
of supporting the weight of a ski or pair of skis.”
The Court next moves to the phrases within specific claims of the ‘382 patent that
are in dispute.
7/8. Contour that matches the contour of the receiving space12
Claims 5, 11, and 18 describe either an “end surface” or a “substantially rigid
loop” that is “contoured to match . . . the receiving space.” PDT postures that this
inherently means the apparatus must be similar in size, shape, and curvature in order to
“match the contours” of the receiving space. HangEmRight asserts that this phrase simply
means anything that fits within the receiving space.
In support of its position, PDT looks again to phrases within the specifications that
explain (for example) that the “end surface [] of the binder engagement portion [] is
contoured to match a contour of . . . the end surface [] of the receiving space [] [such that
12
These two phrases were originally two separate disputes; however, because they are so closely
related, the parties addressed them in tandem. The Court will follow this pattern.
MEMORANDUM DECISION AND ORDER - 19
the] engagement . . . operates to limit lateral movement of the ski . . . [and] also operation
to limit rotation of the ski . . . [to] prevent[] tipping of the ski . . . from side to side.” Dkt.
35-1, 8:49-59 (emphasis added).
HangEmRight contends that PDT is adding more to the claim than was originally
intended. While this may be true, HangEmRight does the same thing—just with different
words.
HangEmRight asserts that because empty space cannot have a “contour,” the
Court should define this phrase to allow anything that would fit well within the receiving
space—regardless of general shape and size. This misses the mark for multiple reasons.
First, as already noted, HangEmRight’s definition in this area does not clarify the claims,
but rather opens the phrases up to almost unlimited possibilities. The purpose of claim
construction is to define terms so that a jury can determine whether infringement has
occurred. Broadening the definitions as suggested could have the opposite effect.
Second, there is nothing in the intrinsic, or extrinsic, record to support the
proposition that these terms were meant to mean that anything that can fit in the receiving
space should be allowed. HangEmRight’s entire argument on this topic is devoid of any
citations, examples, or evidence to support its proposed construction.
Third, HangEmRight has not proffered anything in support of its proposition that
the receiving space cannot have a contour. As PDT points out, contour means “shaped to
fit the outline or form of something.” See “Contour”, THE AM. HERITAGE DICTIONARY
(2018). In this case, it seems apparent that the receiving space must have “contour”—i.e. a
MEMORANDUM DECISION AND ORDER - 20
general outline or shape—vis-à-vis the shape of the ski that is placed upon it, otherwise
the ski would fall off.
HangEmRight’s proffered definition of anything with two sides and an end that
can fit into the receiving space is far too vague. The only way the ski binding can
meaningfully engage with the ski support member is if it has a similar design. However,
there is no reason to explicitly list size, shape, and curvature—as PDT suggests—as that
is what “contour” means. In other words, PDT’s proposed construction doesn’t
necessarily define the phrase is question, it just states it differently.13 Furthermore, trying
to define “contour” with specific examples may backfire and add more confusion than
just using the word “contour” itself. The Court will give the phrases in question their
plain and ordinary meaning without further definition. See Phillips, 415 F.3d at 1312.
9. “Contact bumper positioned between the deck surface”
This disputed phrase is found solely in Claims 9 and 10 which discloses a “contact
bumper positioned between the deck surface of the ski and the substantially flat surface
13
The Court is not trying to mince words: saying something differently—particularly in a way
that adds clarity—could be seen as defining. The Court is simply saying that in this case, there is
no reason to do either (define or elaborate) as the word “contour” is readily understandable.
MEMORANDUM DECISION AND ORDER - 21
of the ski engaging portion of the ski support member.” Dkt. 35-1, 15:57-60. The purpose
of this bumper—somewhat similar to the spacer—is to position the ski in such a way as
to avoid interference between the toe and heel binder pieces and the ski support structure.
The sole dispute here is whether the bumper is a separate and independent element that is
attached, or coupled, to the flat surface of the ski support structure, or if it is a single
molded unit. The bumper is illustrated below as figure 910.
HangEmRight relies on PDT’s use of the word “coupled”—or similar iterations—
throughout the ‘382 patent for its assertion that the bumper is a separate element:
“[a]ccording to some implementations, a contact bumper is positioned between the deck
surface of the ski and the substantially flat surface of the ski engaging portion of the ski
support member”;14 “[i]n one embodiment, a contact bumper is coupled to the ski
14
Dkt. 35-1, 3:1-4.
MEMORANDUM DECISION AND ORDER - 22
engaging portion . . .”;15 “in other embodiments, contact bumpers are positioned on the
ski support members between the deck surface of the ski and the ski support member. .
.”;16 “in certain embodiments, a contact bumper is coupled to the spacer . . .”;17 “[i]n
certain embodiments, coupling elements couple the contact bumpers and the ski support
members to the spacer”;18 “[i]n certain embodiments, a coupling element couples the ski
support member to the spacer. A second coupling element couples the contact bumper to
the spacer.”19
In light of these references, it does appear that the contact bumper is not
contemplated in each and every claim. Additionally, unlike the spacer—where there were
phrases indicating that it could be either a separate or molded unit—there are no such
phrases that reference the bumper. However, this cuts both ways. While there are no
phrases confirming the bumper could be attached as a separate feature or molded as one,
there are also no phrases confirming that it couldn’t. Furthermore, while the definition of
“coupled” and “positioned” could further be debated as to whether or not one is more
consistent with being a separate element or not, this is of little consequence to the court.
15
Id. at 11:5–11.
16
Id. at 13:23–30.
17
Id. at 13:24–29.
18
Id. 13:39-41
19
Id. at 14:1-4.
MEMORANDUM DECISION AND ORDER - 23
At oral argument, HangEmRight admitted that its original definition was too narrow and
that the word “positioned” should be used instead of attached or coupled.
Even with this admission, the question of whether the bumper is “positioned” as a
separate element remains. Frankly, the language of the ‘382 patent is inconclusive and
without clear evidence that this piece must be a separate unit, the Court is hesitant to
accept HangEmRight’s strict definition of this disputed claim.
Finally, PDT’s definition provides a nice explanation of the bumper’s purpose, but
it does not necessarily resolve the dispute.20 The Court rejects this construction as well.
In sum, the Court will leave the “contact bumper” phrase as written. There is no
conclusive evidence to support the theory that the bumper must always be a separate unit.
While the word “coupled” does seem to have an air of disconnectedness, the same cannot
necessarily be said of the word “positioned,” which could mean that the bumper is
positioned—or attached—as a separate “add-on” feature or that the ski support member
and the bumper are a single molded unit with different portions “positioned” in certain
ways and for certain purposes. While the Court’s definition—or lack thereof—may leave
open the question of whether the bumper is a separate element, such a conclusion does
not appear to contradict the specifications of the ‘382 patent itself. Moreover, as both
20
PDT elaborates on how the bumper extends from the flat surface and where it is positioned
and how it is shaped, however, HangEmRight does not appear to disagree with the general shape
or purpose of the bumper, only whether it is a separate element or not.
MEMORANDUM DECISION AND ORDER - 24
sides agree the word “positioned” is best, the Court will simply leave the phrase as
written. See Phillips, 415 F.3d at 1312.
10. “Ski support member comprises a substantially rigid loop having a contour”
The final disputed phrase is similar to claims 7 and 8 as it relates to contouring.
Claim 11 discloses a “ski support member compris[ing] a substantially rigid loop having
a contour that matches a contour of the receiving space.” Dkt. 35-1, at 15:66 - 16:2. As
with the previous claims regarding contours, PDT simply asks the Court to define the
claim as having a similar size, shape, and curvature. In this case, HangEmRight does not
seem to dispute the curvature argument, but insists that the rigid loop must be separate
from the flat surface.
PDT asserts that neither the claims themselves, nor the specifications, indicate that
the substantially rigid loop must be separate from the substantially flat surface of the ski
engaging portion. This is true—the patent never states either way whether the rigid loop
is separate from, or overlapping with, the flat surface that engages the ski. In support of
its proposition, PDT references figure 10 which shows that the two embodiments can
overlap.
In certain embodiments, the ski support member 1002 comprises a
substantially rigid loop having a contour that matches a contour of the
receiving space 120 within the binder toe piece 110 such that the ski support
member 1002 is matingly receivable within the receiving space 120. In one
MEMORANDUM DECISION AND ORDER - 25
embodiment, the ski engaging portion 1004 of the support member 1002 is
substantially flat to engage the deck surface 104 of the ski 102. . .
Dkt. 35-1, 11:36-43 (emphases added).
In light of this non-restrictive language, the Court cannot find support for
HangEmRight’s proposed construction that the rigid loop must be separate from the flat
surface. Nonetheless, there is also no reason to add the description suggested by PDT.
The additional language—particularly about the structure itself (“spanning an opening
that resists deformation under the weight of a ski”)—adds more substance to the claim
rather than clarifying what is already written.
As the Court noted with respect to claims 7 and 8, the word “contour” is not
difficult to understand—in fact it means “shaped to fit”—and adequately describes the
shape of the loop. Further defining of this term is unnecessary. The Court elects to leave
the claim as written.
MEMORANDUM DECISION AND ORDER - 26
V. ORDER
The Court construes the disputed claims as follows:
1.
Preamble – Limiting.
2.
Ski support member – “The part of the apparatus for supporting a ski with
dimensions and an overall shape intended to engage and support a ski.”
3.
Ski engaging portion – as written in the patent.
4.
Binder engaging portion – as written in the patent.
5.
Spacer – as written in the patent.
6.
Support structure – “any surface or structure capable of supporting the
weight of a ski or pair of skis.”.
7./8. Contour phrases – as written in the patent.
9.
Contact bumper – as written in the patent.
10.
Rigid loop – as written in the patent.
DATED: September 11, 2018
_________________________
David C. Nye
U.S. District Court Judge
MEMORANDUM DECISION AND ORDER - 27
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