Ascion, LLC v. Tempur Sealy International, Inc. et al

Filing 136

MEMORANDUM OPINION & ORDER and ORDER ON CLAIM CONSTRUCTION: The claim terms listed shall be construed as listed herein. Signed by Judge Joseph M. Hood on 7/28/2021.(KM)cc: COR

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 1 of 44 - Page ID#: 4275

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF KENTUCKY
CENTRAL DIVISION at LEXINGTON
ASCION, LLC,
Plaintiff,
v.
TEMPUR SEALY INTERNATIONAL,
INC., et al.,
Defendants.

)
)
)
)
)
)
)
)
)
)

Case No.
5:17-cv-403-JMH
MEMORANDUM OPINION
AND ORDER
ON CLAIM CONSTRUCTION

***
This matter is before the Court for claim construction. The
parties have submitted briefs in support of their proposed claim
constructions. Additionally, a Markman hearing on this matter was
held on December 11, 2017. [DE 121]. The Court’s findings are
described below.
I. FACTUAL AND PROCEDURAL BACKGROUND
In this patent case, Plaintiff Ascion, LLC (“Reverie”) brings
infringement claims against Defendant Tempur Sealy International,
Inc. and Tempur-Pedic Management, LLC (collectively “Tempur”),
alleging infringement of 31 claims across seven patents related to
adjustable bed frames, mattresses, and accessories. This action
was originally filed in the United States District Court for the
Eastern District of Michigan, before being transferred to this
Court on October 16, 2017. [DEs 88, 89].

1

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 2 of 44 - Page ID#: 4276

Presently before the Court is the task of claim construction
with respect to 21 disputed claims contained in the patents.
Notably, prior to being transferred, Judge Denise Page Hood of the
Eastern District of Michigan found that construction of 21 claims
(four of which both parties sought to address, plus an additional
17 identified by Tempur) was “reasonable in light of the fact that
Plaintiff has asserted seven patents and 31 claims across those
patents.” [DE 87 at 5].
On December 11, 2017, the Court conducted a Markman hearing,
at which the parties presented oral argument in support of their
claim construction contentions. [DE 121]. Prior to the hearing,
the parties submitted claim construction briefs with voluminous
documentary exhibits. [DEs 50, 56, 61; DEs 51, 57, 62].
The

patents

at

issue

are

as

follows:

U.S.

Patent

Nos.

8,682,457 (“the ‘457 Patent”); 8,909,357 (“the ‘357 Patent”);
8,046,116 (“the ‘116 Patent”); 8,565,934 (“the ‘934 Patent”);
9,044,366 (“the ‘366 Patent”); 8,869,328 (“the ‘328 Patent”); and
U.S. Design Patent No. D720,553 (“the ‘D553 Patent”).
A. PATENTS AT ISSUE
1. The ‘457 Patent
The ‘457 Patent, filed in 2011, relates to the wireless
control of an adjustable bed. [DE 50-3; DE 51-5]. It is part of
what Tempur has called the “Family of Patents,” which also includes

2

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 3 of 44 - Page ID#: 4277

the ‘328, ‘116, and ‘934 Patents. These patents all share similar
specifications.
2. The ‘328 Patent
The ‘328 Patent, filed in 2007, also relates to the wireless
control

of

an

adjustable

bed.

[DE

50-8].

More

specifically,

however, it deals with a two-way wireless communication system
“adapted to” communicate between a handheld remote control and the
adjustable bed controller. [Id.]. This ‘328 Patent is part of the
“Family of Patents” that share identical specification and common
file histories.
3. The ‘116 Patent
The

‘116

Patent

relates

to

the

wireless

control

of

an

adjustable bed that is associated with a second system, in which
both the bed and the second system are controlled by a modular
control system. [DE 50-5; DE 51-2]. Filed in 2007, the ‘116 Patent
is part of the patent group, repeatedly referred to as the “Family
of Patents,” which share identical specification and histories.
4. The ‘934 Patent
The ‘934 Patent is the last of the “Family of Patents” which
relate to the wireless control of adjustable beds and share
identical specification and histories. The ‘934 Patent, which was
also filed in 2007, deals specifically with the touch screen

3

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 4 of 44 - Page ID#: 4278

control of an adjustable bed and the storage of bed positions in
memory. [DE 50-6; DE 51-10].
5. The ‘357 Patent
The ‘357 Patent, filed in 2012, is unrelated to the “Family
of Patents,” however, it also covers the usage of a remote control
to adjust side-by-side bed foundations. [DE 50-4]. The Abstract
for this patent explains that it “concerns a communication system
adapted to communicate between a handheld remote control and a
first adjustable bed controller of a first adjustable bed facility,
and a second communication system adapted to communicate” between
the two controllers. [DE 50-4 at 2].
6. The ‘366 Patent
The

‘366

Patent

concerns

adjustable

mattress

support

facility, or an adjustable bed with a deck-on-deck appearance.
More precisely, this patent covers a specific orientation for the
metal support structure of an adjustable bed foundation. [DE 507; DE 51-6]. The ‘366 Patent was filed in 2014.

4

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 5 of 44 - Page ID#: 4279

7. The D553 Patent
Finally,

the

D553

Patent

involves

a

specific

ornamental

adjustable bed design. [DEs 50 at 11; 51 at 6]. Accordingly, the
following figures demonstrate the appearance of D553:

[DE 50-9; DE 51-7].
B. CLAIM TERMS AT ISSUE
Disputed Terms, Phrases, or
Clauses

Patent(s)

Claim(s)

‘116
‘934
‘457

1, 21, 33, 40
1
23

‘328
‘457

1, 13
20

‘457

20

‘328

1, 13

‘328

1, 13

“increment value”
“value representative of an
acceptable value”
“an actuator position”
“capable of two-way wireless
communication with”
“two-way wireless
communication system”
“two-way wireless
communication system adapted
to communicate”
“initiate a communication
from the adjustable bed
controller to the handheld
remote control”

5

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 6 of 44 - Page ID#: 4280

“providing feedback to a
user on the handheld remote
control to indicate the
success of the command”
“code key indicating that
commands can be received and
executed therebetween”
“unique communication link
“second system”
“the row representing a
position of an adjustable
bed”
“the row representing the
user-selected bed position”
“wood”
“a controller of the
component”
“the controller”
“control command”
“mechanically controlled”
“the position recall
command”
“optionally one or more”
“substantially flat” and
“substantially raised”

‘457

20

‘457

20

‘934
‘116
‘116

1
1, 21, 33, 40
1, 21, 33, 40

‘934

1

‘366
‘934

1, 13, 14, 25
2

‘934
‘934
‘934
‘328

4
6
7
1

‘357
‘366

1
1, 25

In addition to the above claim terms at issue, the parties
also dispute the claimed design of the D553 Patent.
II. STANDARD OF REVIEW
Claim construction is an issue of law. See Markman v. West
View

Instruments,

Inc.,

517

U.S.

370,

388-90

(1996).

“The

appropriate starting point […] is always with the language of the
asserted claim itself.” Comark Comm, Inv. V. Harris Corp., 156
F.3d 1186 (Fed. Cir. 1998). “[T]he claims of a patent define the
invention to which the patentee is entitled the right to exclude.”
6

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 7 of 44 - Page ID#: 4281

Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
F.3d 1111, 1115 (Fed. Cir. 2004).
Claim terms “are generally given their ordinary and customary
meaning as understood by a person of ordinary skill in the art.”
Thorner v. Sony Comp. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.
Cir. 2012). It is the claims that measure the invention. SRI Int’l
Matushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985).
In the event of ambiguity regarding claim terms, courts must
first look to the intrinsic evidence—that is, the claim itself,
the specifications, the prosecution history, and prior art cited
in the patent—to resolve any ambiguities. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
In Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
2005), the Federal Circuit provided guidance on the hierarchy of
evidentiary sources for claim construction. First, “the claims
themselves provide substantial guidance as to the meaning of
particular terms.” Id. at 1314.
Second,

the

claims

“must

be

read

in

view

of

the

specification.” Id. “The specification is always highly relevant
to the claim construction analysis. Usually, it is dispositive; it
is the single best guide to the meaning of a disputed term.”
Conceptronic,

Inc.,

90

F.3d

at

1582.

Indeed,

“[w]hen

the

specification explains and defines a term used in the claims,
without ambiguity or incompleteness, there is no need to search
7

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 8 of 44 - Page ID#: 4282

further for the meaning of the term.” Multiform Desiccants, Inc.
v. Medzam Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998).
Third, a court “should also consider the patent's prosecution
history, if it is in evidence.” Phillips, 415 F.3d at 1317. The
prosecution history limits the interpretation of claim terms so as
to

exclude

any

interpretation

that

was

disclaimed

during

prosecution. Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d
1570, 1576 (Fed. Cir. 1995).
Thus, the claims, specification, and prosecution history are
“intrinsic

evidence”

and

are

the

favored

sources

for

claim

construction. Phillips, 415 F.3d at 1317. In most circumstances,
analysis

of

the

intrinsic

evidence

alone

will

resolve

claim

construction disputes. See Vitronics, 90 F.3d at 1583.
However, if intrinsic evidence does not resolve ambiguities,
courts

may

also

look

to

extrinsic

evidence.

While

extrinsic

evidence “can shed light on the relevant art,” such evidence “is
less significant than the intrinsic record in determining the
legally operative meaning of claim language.” C.R. Bard, Inc. v.
United States 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)); Phillips, 415 F.3d at 1317.
Nevertheless,

claim

construction

always

begins

with

the

language of the claim and asks “how a person of ordinary skill in
the art understands a claim term.” Phillips, 415 F.3d at 1317-18;
8

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 9 of 44 - Page ID#: 4283

1224. A “person of ordinary skill in the art is deemed to read the
claim term not only in the context of the particular claim in which
the dispute term appears, but in the context of the entire patent,
including the specification.” Id. at 1313.
III. DISCUSSION
Given the number of claims and terms at issue, the Court will
separate its analysis into four categories. First, the Court will
consider the four terms which both parties have offered proposed
constructions for. Next, the Court will consider the remaining
terms which Tempur has proposed its own constructions for. Third,
the

Court

will

consider

the

claims

that

Tempur

has

raised

challenges of indefiniteness against. Finally, the Court will
discuss the claimed design of the D553 Patent.

9

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 10 of 44 - Page ID#: 4284

A. TERMS BOTH PARTIES SEEK TO CONSTRUCT
1. “two-way wireless communication” (‘457 Patent, Claim 20; ‘328
Patent, Claims 1, 13)
Reverie’s Proposed Construction Tempur’s Proposed Construction
A system in which each node is
able to, but need not,
directly or indirectly
transmit and receive a
wireless signal. The wireless
signal may include, but is not
limited to, infrared (IR),
wireless USB (WUSB),
ultrawideband (UWB), radio
frequency (RF), cellular, WiFi (IEEE 802.11), and
Bluetooth signals or
communication protocols

[“capable of two-way wireless
communication with”, ‘457
Patent]: Wirelessly
communicating back and forth
with
[“two-way wireless
communication system,” ‘457
Patent]: System for wirelessly
communicating back and forth
between the controller and the
handheld remote control
[“two-way wireless
communication system adapted
to communicate,” ‘328 Patent]:
System for wirelessly
communicating back and forth

This term appears in two separate patents. In Claim 20 of the
‘457 Patent, this term appears in the phrase “the controller
capable of two-way wireless communication with a handheld remote
control.” [DE 1-2 at 38]. It is also asserted in Claims 1 and 13
of the ‘328 Patent, which provide “a two-way wireless communication
system adapted to communicate between a handheld remote control
and an adjustable bed controller; the handheld remote control
having a user interface adapted to initiate a transmission of a
10

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 11 of 44 - Page ID#: 4285

preset recall command from the handheld remote control to the
adjustable bed controller using the two-way wireless communication
system to return to a present recall position.” [DE 1-7 at 37]. To
provide greater context, Claim 20 of the ‘457 Patent states:
A system comprising: an adjustable bed having machineadjustable articulated portions; a controller for the
adjustable bed, the controller including a wireless
interface, the controller capable of two-way wireless
communication with a handheld remote control, wherein
the handheld remote control is communication matched to
the adjustable bed controller with a code key indicating
that commands can be received and executed therebetween;
and the handheld remote control capable of: transmitting
a control signal to the adjustable bed controller using
the two-way wireless communication system; and providing
feedback to a user on the handheld remote control to
indicate the success of the command.
[DE 1-2 at 38, Claim 20 of the ‘457 Patent (emphasis added)].
Reverie proposes a construction involving three components.
First,

Reverie’s

construction

lists

examples

of

various

communications protocols that could be used for two-way wireless
communication. [DE 50 at 14]. Reverie maintains that this is
necessary because “two-way wireless communication” is not limited
to any one specific communication technology. [Id.].
Tempur
protocols

is

contends

that

overbroad

and

Reverie’s
that

it

list

of

communication

inappropriately

imports

embodiments into its proposed construction. [DE 56 at 8]. The Court
agrees that the inclusion of these embodiments is unnecessary to
the interpretation of the term at issue, but not for the reason
that Tempur has argued. While Tempur acknowledges that the patents
11

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 12 of 44 - Page ID#: 4286

contemplate

communication

by

radio

frequency,

infrared,

and

Bluetooth, it reads the claim as limited to only those methods.
[DE

56

at

8-9].

This

ignores

communications

by

“the

like,”

including cellular and Wi-Fi connections which are utilized by
cell phones or smart phones. Notably, these are implicated by the
‘457

Patent

specification,

explaining

that

“the

cellular

communication may utilize a cell phone, a smart phone, or the like
to provide the communication method with the control box 134.” [DE
51-5 at 24].
Reverie

proposes

that

the

communication

between

the

controller and the remote need not be direct, and instead, may be
routed through an intermediary, like a Wi-Fi router. [DE 50 at
15]. Reverie points to the specification and several embodiments
as evidence of this. The Court agrees. The ‘457 Patent, for
example, teaches that “[t]he various controlled functions (e.g.
actuators 104 or external devices) may be able to communicate using
the

wireless

technology,

may

use

an

intermediate

wireless

receiver, or the like to communicate with the control box 134.”
[DE 1-2 at 24]. Moreover, particularly with regard to utilizing
cell phones or smart phones, cellular communications necessarily
rely on intermediaries to establish bidirectional communications—
something easily understood by a person of ordinary skill in the
art.

This

function

is

also

described

in

the

‘457

Patent

specification, teaching that “the wireless technology may include
12

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 13 of 44 - Page ID#: 4287

Bluetooth, ultra-wideband (UWB), wireless USB (WUSB), IEEE 802.11,
cellular, or the like. [DE 50-8 at 24].
Reverie’s proposed construction states that the system be
“able to, but need not” communicate by two-way wireless protocols.
[DE 50 at 15]. Reverie argues that its proposed construction is
consistent

with

the

patent

specifications

because

the

specifications use the permissive word “may” each time they discuss
such communication. [DE 50 at 13]. Reverie explains that its
construction flows directly from claim terms “capable of” and
“adapted to,” as used in Claim 20 of the ‘457 Patent and Claim 1
of the ‘328 Patent, respectively. [Id. at 15-18]. Reverie also
points to the specifications in the patents where the permissive
word “may” is used. For example, the specifications in the ‘328
Patent state that, “[i]n an embodiment, the remote may communicate
to the receiver 130 and the receiver may transmit the received
user command request to the control box 134,” and “the control box
134 may interface with the receiver 130, remote 148.” [Id. at 17
(emphasis added)].
Tempur

argues

functionality,

and

that

the

plain

prosecution

language

history

of

the

contradict

claims,

Reverie’s

optionality argument. [DE 56 at 14-15]. On this point, the Court
agrees with Tempur.
Reverie’s

proposal

thus

makes

the

two-way

wireless

communication function optional. In a vacuum, the terms “capable
13

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 14 of 44 - Page ID#: 4288

of” and “adapted to” may be permissive. However, in light of the
entirety of the patent claims, it is clear that bidirectional
communication

is

a

necessary

component

of

“two-way

wireless

communication with a handheld remote control, wherein the handheld
remote control is communication matched to the adjustable bed
controller with a code key indicating that commands be received
and executed therebetween.” [DE 1-2 at 38, Claim 20 of the ‘457
Patent (emphasis added)]. That is, the language and intrinsic
record demonstrate that the

system

must have the ability to

communicate between the remote control and the bed controller; it
is not enough to simply have the ability to do so. Notably, other
courts have also found that “capable of” does not imply an optional
function. See, e.g., Andover Healthcare, Inc. v. 3M Co., No. 13cv-843, 2015 WL 2227786, at *5 (D. Del. May 11, 2015); Raytheon
Co. v. Indigo Sys. Corp., 682 F. Supp. 2d 717, 713 (E.D. Tex.
2010).
Accordingly, the Court adopts the following construction: “a
system

for

wirelessly

communicating

directly or indirectly.”

14

back

and

forth,

either

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 15 of 44 - Page ID#: 4289

2. “code key” (‘457 Patent, Claim 20); “unique communication link”
(‘934 Patent, Claim 1)
Reverie’s Proposed Construction
[“code key”]: Any indicator
that allows a remote control
to pair with an adjustable bed
controller

Tempur’s Proposed Construction
Unique identifier included at
the beginning of, the end of,
or as part of the transmission
of a control command

[“unique communication link”]:
Plain and Ordinary Meaning
Generally, this

term refers to

a type of indicator, or

identifier, that connects the remote control with the adjustable
bed. As relevant to the term “code key,” Claim 20 of the ‘457
Patent states:
A system comprising: an adjustable bed having machineadjustable articulated portions; a controller for the
adjustable bed, the controller including a wireless
interface, the controller capable of two-way wireless
communication with a handheld remote control, wherein
the handheld remote control is communication matched to
the adjustable bed controller with a code key indicating
that commands can be received and executed therebetween;
and the handheld remote control capable of: transmitting
a control signal to the adjustable bed controller using
the two-way wireless communication system; and providing
feedback to a user on the handheld remote control to
indicate the success of the command.
[DE 1-2 at 38, Claim 20 of the ‘457 Patent (emphasis added)].
Reverie argues that the only construction that is consistent
with the claim wording, specification, and prosecution history of
the ‘457 Patent is “any indicator that allows a remote control to
pair with an adjustable bed controller.” [DE 50 at 18].

15

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 16 of 44 - Page ID#: 4290

Tempur counters, suggesting that Reverie’s construction is
both overbroad and redundant of the rest of Claim 20 of the ‘457
Patent.
requires

Specifically,
that

“the

Tempur

handheld

maintains
remote

that

control

the
is

‘457

Patent

communication

matched to the adjustable bed controller with a code key indicating
that commands can be received and executed therebetween.” [DE 56
at 19 (citing Claim 20 of the ‘457 Patent)]. As such, Tempur
suggests that “any indicator” is overly broad and provides no
guidance as to what a “code key” is or how it actually operates.
[Id.]. Tempur maintains that the second part of Reveries’ proposed
construction (“that allows a remote control to pair with an
adjustable bed controller”) is redundant of the claim language.
[Id.]. This, Tempur explains, essentially reads out “code key”
from the claim by reiterating the surrounding language of Claim 20
without providing an understanding of what or how the “code key”
operates. [Id. at 19-20].
The Court agrees with Defendant in part. Replacing “code key”
with Reverie’s construction would read as follows: “wherein the
handheld remote control is communication matched to the adjustable
bed controller with [any indicator that allows a remote control to
pair with an adjustable bed controller] indicating that commands
can be received and executed therebetween.” [DE 1-2 at 38 (emphasis
added)].

While

the

description

may

still

be

accurate,

the

redundancy in the terms provides no additional clarity as to what
16

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 17 of 44 - Page ID#: 4291

the

“code

key”

is,

or

how

it

functions.

However,

Tempur’s

construction, also problematically turns Claim 20 into a method
claim, rather than a system claim, in its description of how and
when the code key is transmitted. See, e.g., Markem-Imaje Corp. v.
Zipher Ltd., 657 F.3d 1293, 1301 (Fed. Cir. 2011); Innogenetics,
N.V. v. Abbott Labs., 512 F.3d 1363, 1370 (Fed. Cir. 2008).
Nevertheless, the Court finds that construing “code key” to
mean “unique identifier” provides additional clarity to what the
“code key” actually is, without dictating how and when it is
transmitted. This construction may be more helpful to a jury,
without limiting or broadening the scope of the patent claim.
Tempur

also

argues

that

“unique

communication

link”

as

described in Claim 1 of the ‘934 Patent should follow suit and be
constructed synonymously with “code key.” [DE 51 at 18]. Reverie,
on the other hand, suggests that the plain language is sufficient
for this term, as it is separate from “code key.” The Court agrees.
The specification of the ‘934 Patent teaches that the “unique
communication link” may be established through a variety of ways,
including, but not limited to, a code key. [DE 50-6 at 24, 35].
Moreover,

the

‘934

Patent’s

use

of

“code

key”

and

“unique

communication link” clearly demonstrates they are not synonymous.
[DE 57 at 15]. Therefore, no construction is needed for “unique
communication link.”

17

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 18 of 44 - Page ID#: 4292

3. “the adjustable bed controller further adapted to initiate a
communication from the adjustable bed controller to the handheld
remote control to indicate that the adjustable bed controller has
responded to the position recall command” (‘328 Patent, Claims 1,
13)
Reverie’s Proposed Construction
The adjustable bed controller
is able to, but need not,
indicate to the remote control
that it has responded to the
position recall command

Tempur’s Proposed Construction
The adjustable bed controller
further adapted to initiate a
communication from the
adjustable bed controller to
the handheld remote control to
indicate that the adjustable
bed controller has
successfully completed the
position recall command

The dispute over this phrase is similar to the one involving
“two-way communication,” in that the parties disagree as to whether
the bed controller may or may not indicate to the remote control
that it has responded to the position recall command. As before,
Tempur contends that the bed controller must have this function.
[DE 56 at 22-26]. Reverie, on the other hand, maintains that the
term “adapted to” provides that the controller be able to, but
need not utilize this function. [DE 50 at 21-23]. For similar
reasons as explained above, the Court agrees with Tempur on this
point.
Although “adapted to” has been read by some courts in other
contexts to align with “capable of,” in a permissive-sense, the
patent

specification

and

intrinsic
18

evidence

support

Tempur’s

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 19 of 44 - Page ID#: 4293

reading. That is, “adapted to,” in this context, indicates that
the controller does in fact utilize the described function. It is
not enough that it simply has the ability to do so, and then does
not. “Adapted to” must be more than a permissive or optional
capability here. See Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
672 F.3d 1335, 1349 (Fed. Cir. 2012); Boston Scientific Corp. v.
Cordis Corp., 2006 WL 3782840, at *3 (N.D. Cal. Dec. 20, 2006).
Notwithstanding, the Court disagrees with Tempur on whether
the function is limited to “successful” completion. As Reverie
correctly points out, the ‘328 Patent specification provides that
the communication from the adjustable bed controller to the remote
control can indicate success or lack of success. [DE 50 at 23].
Specifically, it teaches that the feedback may indicate “that the
command was successful, failed, is in progress, in conflict with
a command in progress, failed for safety reasons, or the like.”
[DE 50-8 at 35]. Thus, while the patent contemplates successful
completion of a command as part of its main function, and must be
able to communicate such, the communication need not necessarily
be limited to success alone. In this manner, “responded to” should
not be rewritten to mean “successfully completed.” See Phoenix
Licensing, LLC v. Advance Am., No.

2:15-CV-1367, 2016 WL 6217180,

at *26-30 (E.D. Tex. Oct. 25, 2016).

19

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 20 of 44 - Page ID#: 4294

Accordingly,

the

Court

finds

that

neither

party’s

construction is proper; and that the plain language, where “adapted
to” is construed as a mandatory function, is sufficient.
4. “wood” (‘366 Patent, Claims 1, 10, 13, 14, 25)
Reverie’s Proposed Construction Tempur’s Proposed Construction
Wood products, including wood
Solid wood, oriented strand
cut from a log and engineered
board, or plywood
or composite wood
Claim 1 of the ‘366 Patent is directed to “[a]n adjustable
mattress support facility” that comprises, among other components,
“a wood base frame.” [DE 50-7 at 104]. The other asserted claims,
including Claims 10, 13, 14, and 25 use the term in the context of
“a wood base frame,” or “the frame, the head board, and the foot
and back deck being formed of wood.” [Id. at 104-105; DE 50 at
24].
The parties agree that the term “wood” includes solid wood
cut from a log, oriented strand board, and plywood; however, they
disagree as to whether the term extends beyond what Tempur has
proposed. [DEs 50 at 24-28; 56 at 26-29]. Specifically, Tempur
argues that its proposed construction adequately includes the
types of wood that are mentioned in the specification. [DE 56 at
26-29]. Tempur continues by stating that the term “wood” should be
limited to these examples, and that any other type of wood would
unreasonably expand the scope of the ‘366 Patent. [Id. at 27-29].

20

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 21 of 44 - Page ID#: 4295

Reverie agrees that “wood” includes the types identified by Tempur.
[DE 50 at 24]. Nevertheless, Reverie argues that the phrase “such
as” and “and the like” expand beyond these examples to include
other types of engineered or composite woods. [Id. at 25].
The Court agrees with Reverie. As Reverie points out, the
‘366 Patent specification explains that the adjustable bed frame
may consist of “foundation materials, such as oriented strand board
(OSB), plywood, and the like.” [DE 50 at 25, citing ‘366 Patent at
48:58-61]. Although Tempur has cautioned against broadening the
scope of the term “wood,” Reverie’s construction does not. In fact,
“engineered or composite wood,” appears to fully encompass the
examples listed in the ‘366 Patent, like plywood and OSB. Moreover,
Reverie’s construction is consistent with the ‘366 Patent because
the phrases “such as” and “and the like,” in the context of the
term “wood,” are not meant to be overly limited to just the
specifically identified examples of plywood and OSB; rather, it is
meant to include other types of woods similar to plywood and OSB.
Consequently, the Court adopts the following construction: natural
wood, and engineered or composite wood.
B. ADDITIONAL CONSTRUCTIONS PROPOSED BY TEMPUR
In addition to the terms above with competing constructions
by the parties, Tempur has proposed the following terms. Reverie
has argued that the plain meaning is clear. Thus, the dispute

21

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 22 of 44 - Page ID#: 4296

around the following terms is whether or not construction is
necessary at all.
1. “increment value,” (‘116 Patent, Claims 1, 21, 33, 40; ‘934
Patent, Claim 1); “value representative of an acceptable value,”
(‘457 Patent, Claim 23); and “an actuator position”(‘328 Patent,
Claims 1, 13)
Reverie’s Proposed Construction Tempur’s Proposed Construction
Plain and Ordinary Meaning
[“increment value,” ‘116
Patent, Claims 1, 21, 33, 40;
‘934 Patent, Claim 1]:
Increment angle of rotation,
not measured by clock or
counter increments, and
directly realizable by the
actuator
[“value representative of an
acceptable value,” ‘457
Patent, Claim 23]: Value
representative of an
acceptable angle of rotation,
not measured by clock or
counter increments, and
directly realizable by the
actuator
[“an actuator position,” ‘328
Patent, Claims 1, 13]: An
angle of rotation, not
measured by clock or counter
increments, and directly
realizable by the actuator
These terms relate to the storage of bed position information.
The parties’ disagreement stems from whether the phrase should be
read uniformly or whether each should be afforded a distinct

22

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 23 of 44 - Page ID#: 4297

construction. In addition, the parties dispute the extent that
intrinsic evidence should come into play, or whether the plaining
meaning alone is sufficient.
Temper contends these overlapping terms and constructions
should be read in conjunction with one another because they are
used in the same manner and context across each of the relevant
patents. [DE 51 at 3]. Reverie argues that Tempur’s construction
must be rejected because it conflates three distinct terms. [DE 57
at 16]. Reverie maintains that the phrase “increment value,” as
used in the ‘116 and ‘934 Patents, is a term for values stored in
memory to represent bed position or vibration motor setting. [Id.
at 9]. According to Reverie, these “increment values” may be a
measurement scale, a number of rotations of the actuator, the
vibration frequency of the vibration motor, or other increment
scale, but are not limited to bed position. [Id.].
The Court agrees with Tempur. Despite Reverie’s attempt to
differentiate the three claims terms, a reading of the terms shows
that they are all refer to information stored for bed positions.
As Tempur points out, “increment value” is used in the ‘116 and
‘934 Patents address storage of bed position data. [DE 62 at 7].
For example, the ‘116 Patent and ‘934 Patent specifications teach
that: “the available positions 212 may be a set of increments of
section positions that may include a set of actuator 104 positions,
a set of actuator 104 activation times, bed section rotation
23

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 24 of 44 - Page ID#: 4298

angles, or the like.” [DE 51-2 at 23 (‘116 Patent); DE 51-10 at
26-27 (‘934 Patent)]. Similarly, the term “an actuator position,”
from the ‘328 Patent claims, is used in much the same way that
“increment value” is used in the ‘116 and ‘934 Patents. [DE 62 at
7; DE 50-8 at 37-38].
Reverie argues that Tempur attempts to read in unsupported
limitations to the term “value representative of an acceptable
value”

in

the

‘457

Patent.

[DE

57

at

10].

However,

Reverie

concludes by referring to it as “an increment value related to
position.” [Id.]. As Tempur points out, this actually tends to
support its argument that this term be read in the same manner as
the other value-related terms in the ‘116, ‘934, and ‘328 Patents.
[DE 62 at 7-8].
Finally, Reverie insists that

disclaimer is inapplicable

because the patentee distinguished the invention form prior art,
rather than disclaiming the scope. [DE 57 at 19]. Reverie attempts
to argue that there is a difference between disavowing scope and
distinguishing from prior art; and, while true, the prosecution
history of the ‘934 Patent suggests that the patentee disavowed
internal or external clock or counter increments in distinguishing
the ‘934 Patent from U.S Patent No. 6,681,425 (referred to as
“Leventhal”).
Leventhal’s

Specifically,
approach,

a

the

patentee

processor,

at

argued
a

that

under

minimum,

must

“independently operate ‘an internal or external clock or counter.’
24

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 25 of 44 - Page ID#: 4299

By

contrast,

the

claimed

invention

[the

‘934

Patent]

stores

actuator values directly so that a control signal can be issued
directly to the corresponding hardware.” [DE 51-3 at 9-10]. “By
allocating a row of a table to a particular user-selected bed
position, and by storing in that location an increment value that
is directly realizable by an actuator, the processing and memory
footprint

for

position

recall

is

usefully

minimized

for

implementation with minimal control circuitry.” [Id.]. Thus, in
order to avoid prior art, the patentee disclaimed measurement by
clock or counter. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
1323 (Fed. Cir. 2003).
As the patentee made clear, the actuator must be able to act
upon

the

stored

value

directly,

without

further

analysis,

including without being measured by either clock or counter. As
Tempur explains, any value stored as actuator operation time or
extension distance would require measurement by clock or counter.
[DE 51 at 9]. Consequently, given the prosecution history and the
patentee’s disclaimer, the only remaining disclosed option of
measurement is by the angle of rotation. Accordingly, the Court
adopts Tempur’s construction of all three terms.

25

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 26 of 44 - Page ID#: 4300

2. “second system” (‘116 Patent, Claims 1, 21, 33, 40)
Reverie’s Proposed Construction Tempur’s Proposed Construction
Plain and Ordinary Meaning
System peripheral to the
adjustable bed
The dispute concerning the term “second system” essentially
boils down to where the second system is located, or how it is
associated with the adjustable bed.
Tempur argues that “second system” be construed as a “system
peripheral to the adjustable bed,” or separate from the adjustable
bed. [DE 51 at 18]. Reverie maintains that the term “peripheral”
leads to more confusion and includes a limitation on the claims.
[DE 57 at 10-11]. Accordingly, Reverie contends that the plain
meaning of the term “second system” is sufficiently clear and
indicates that the system need not be entirely separate from the
adjustable bed. [Id.]. The Court agrees.
The term “peripheral” seems to suggest that the second system
be located apart from the adjustable bed. To be sure, the second
system is a separate system, to the extent that it functions
independent of the first system. On this point, both parties seem
to agree. However, simply because the second system has functions
different from the first system does not necessarily mean it must
be located separate from the adjustable bed. While it is true that
the ‘116 Patent specification allows for the second system to be
separate from the adjustable bed, it does not require it. [DE 51-

26

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 27 of 44 - Page ID#: 4301

2 at 26]. It is enough that the second system merely be associated
with the adjustable bed.
The term “associated with” requires commonality and does not
address the location or physical connection. See Server Tech.,
Inc. v. Am. Power Conversion Corp., 657 Fed. Appx. 1030, 1033-34
(Fed.

Cir.

2016).

specification,

This

which,

is
for

consistent
example,

with
teaches

the

‘116

that

Patent

the

air

purification facility “may be part of the adjustable bed facility
102, a freestanding device or facility, or the like.” [DE 57 at
11]. Thus, the ‘116 Patent provides that the second system could
be within the adjustable bed itself or separate from it, as long
as it is associated with the adjustable bed.
Accordingly, the Court agrees with Reverie that the term
“second system” requires no further construction beyond its plain
meaning.
3. “the row representing” (‘116 Patent, Claims 1, 21, 33, 40;
‘934 Patent, Claim 1)
Reverie’s Proposed Construction Tempur’s Proposed Construction
Plain and Ordinary Meaning
[“the row representing a
position of an adjustable
bed,” ‘116 Patent]: The row
representing a preset position
of the adjustable bed
[“the row representing the
user-selected bed position,”
‘934 Patent]: The row
representing the user-selected
preset bed position

27

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 28 of 44 - Page ID#: 4302

Tempur calls for the addition of the word “preset” to the
language of the ‘116 and ‘934 Patents to read “the row representing
a preset position of the adjustable bed,” in Claims 1, 21, 33, and
40 of the ‘116 Patent; and “the row representing the user-selected
preset bed position,” in Claim 1 of the 934 Patent. [DE 51 at 21].
Tempur argues that this word is consistent with the specification
and the prosecution history. [Id.].
Reverie contends that the word “preset” limits the claims
and, besides appearing in one embodiment, appears essentially no
where

in

the

intrinsic

record

when

referring

to

the

“row

representing” claims. [DE 57 at 13-14]. Moreover, Reverie argues
that the prosecution history cited by Tempur does not even involve
the “row representing” limitation. [Id. at 14]. As such, Reverie
maintains that the plain language is clear and adding the word
“preset” is unnecessary. The Court agrees.
Relevant to this term dispute, Claim 1 (and other similar
claims) of the ‘116 Patent provides that controlling the adjustable
bed

includes:

“identifying

a

row

in

a

data

table,

the

row

representing a position of the adjustable bed; within the row,
identifying an increment value specifying an available position of
the adjustable bed; and causing a component of the adjustable bed
to meet the increment value.” [DE 50-5 at 34 (emphasis added)]. As
the language makes clear, the adjustable bed position relies on
rows within a data table, wherein increment values specifying
28

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 29 of 44 - Page ID#: 4303

available positions are identified. [Id.]. To an extent, this may
be considered a manufacturer “preset” in that each row and data
point are “preset” positions. However, as constructed by Tempur,
adding the word “preset” to the language seems superfluous on the
one hand, and on the other hand may unnecessarily limit the scope
of the patent claims.
A final concern, as Reverie correctly points out, is that
courts may not read embodiments into the claims, even where it is
the only embodiment. See, e.g., EPOS Techs. Ltd. v. Pegasus Techs.
Ltd., 766 F.3d 1338, 1341 (Fed. Cir. 2014). Thus, the Court finds
that the plain language, particularly in the context of the
surrounding language, is sufficient.
4. “providing feedback to a user on the handheld remote control
to indicate the success of the command” (‘457 Patent, Claim 20)
Reverie’s Proposed Construction Tempur’s Proposed Construction
Plain and Ordinary Meaning
Providing feedback from the
controller to the receiver to
the user on a handheld remote
control to confirm the success
of the control signal
Tempur has not asked the Court to construe any of the words
in the claim, but rather, proposes an addition to the claim
language: “providing feedback from the controller to the receiver
to the user on a handheld remote control to indicate the success
of the control signal.“ [DE 51 at 15-16 (emphasis added on the

29

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 30 of 44 - Page ID#: 4304

additional terms)]. First, Tempur argues that these changes are
necessary

because

in

order

to

“indicate

the

success

of

the

command,” the feedback must originate from the bed controller.
[Id. at 16]. Additionally, Tempur maintains that success of the
command must relate to the control signal because that signal was
originally provided from the remote control to the controller.
[Id.].
Reverie submits that this claim term is also clear on its
face. Reverie argues that the specification states that the control
box may, rather than must, interpret the remote command into a
command the actuator may understand and may transmit the command
to extend the head section actuator to move the head section up.
[DE 57 at 12]. Reverie again maintains that the word “may” is
permissive and not a mandatory function. [Id.]. As a result,
Reverie explains that the feedback need not originate from the
controller. [Id. at 13].
Although functionally the feedback may originate from the
controller, as Reverie points out, Claim 20 of the ‘457 Patent is
silent on the matter. Specifically, the passage in dispute states:
A system comprising: an adjustable bed having machineadjustable articulated portions; a controller for the
adjustable bed, the controller including a wireless
interface, the controller capable of two-way wireless
communication with a handheld remote control, wherein
the handheld remote control is communication matched to
the adjustable bed controller with a code key indicating
that commands can be received and executed therebetween;
and the handheld remote control capable of: transmitting
30

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 31 of 44 - Page ID#: 4305

a control signal to the adjustable bed controller using
the two-way wireless communication system; and providing
feedback to a user on the handheld remote control to
indicate the success of the command.
[DE 1-2 at 38, Claim 20 of the ‘457 Patent (emphasis added)]. Thus,
Claim 20 of the ‘457 Patent merely contemplates that the handheld
remote control be capable of providing feed back to indicate the
success of the command. Ultimately, Tempur’s proposed addition
concerning the origin of the feedback seems to turn system Claim
20 of the ‘457 Patent into a method claim, when Claim 20 is silent
on the matter.
Tempur’s

proposed

replacement

of

the

word

“indicate”

to

“confirm” is also improper. As discussed above, the ‘457 Patent
functions, like the ‘328 Patent, are not limited to success alone,
which the word “confirm” may imply. Instead, the specification
teaches that the feedback may indicate how successful the command
was,

that

is:

that

the

command

has

failed,

is

in

progress,

conflicts with another command, or the like, in addition to
confirming its success. [DE 57 at 13; DE 50-3 at 35-36].
Accordingly, the Court finds that no construction is needed
here.
C. CLAIMS CHALLENGED FOR INDEFINITENESS
Tempur contends that the following claims terms are invalid
as indefinite because the language fails to inform about the scope

31

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 32 of 44 - Page ID#: 4306

of their respective patents. [DE 51 at 25-30]. The Court will
consider each term in turn.
As an initial matter, Tempur has the

burden of proving

indefiniteness by clear and convincing evidence. See BASF Corp. v.
Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). A
patent claim is indefinite only if when “read in the light of the
specification delineating the patent, and the prosecution history,
[the claim] fail[s] to inform, with reasonable certainty, those
skilled in the art about the scope of the invention.” Nautilus,
Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124, 189
L.Ed.2d 37 (2014).
1. “a controller of the component” and “the controller” (‘934
Patent, Claims 2, 4)
Tempur alleges that the term “a controller of the component
of the adjustable bed” in Claim 2 of the ‘934 Patent has no
antecedent basis for the component in Claim 1. [DE 51 at 25-26].
Reverie argues that the claim read as a whole identifies what
“component”

is

recited

in

Claim

2,

as

the

only

thing

being

controlled in Claim 1 is the actuator. [DE 57 at 21-22]. Reverie
also points to the abstract which states that “a component of the
adjustable bed is controlled to meet the increment value,” and
“the component includes at least one of an actuator and a vibration
motor.” [Id. at 22].

32

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 33 of 44 - Page ID#: 4307

Although not explicitly stated, a person of ordinary skill
reviewing the ‘934 Patent in its entirety would readily understand
that the “controller of the component” is the controller of the
actuator. Therefore, to the extent necessary, the “the component”
referenced in Claims 2 and 4 are construed to mean the actuator.
2. “control command” (‘934 Patent, Claim 6)
Although Tempur argues indefiniteness as grounds to invalid
this

claim,

the

arguments

seem

more

grounded

in

claim

differentiation. [DE 51 at 26-27]. Under 35 U.S.C. § 112, a
dependent claim must add a limitation to those recited in the
independent claim. While the doctrine of claim differentiation
requires that the limitations in a parent claim be construed to be
different in scope from those in dependent claims, it does not
necessarily mean that they are mutually exclusive. TecSec, Inc. v.
Adobe Sys. Inc., 658 Fed. Appx. 570 (Fed. Cir. 2016). The only
requirement is that the limitation in the parent be at least broad
enough to encompass the limitation in the dependent claim. Id.
(citing Tr. of Columbia Univ. in City of New York v. Symantec
Corp., 811 F.3d 1359, 1370 (Fed. Cir. 2016)).
The parent claim at issue here in the ‘934 Patent, Claim 1,
identifies “a control command from a user.” [DE 50-6 at 37]. Claim
6, the dependent claim, recites a “user command.” [Id.]. While the
terms

certainly

relate

to

similar

33

functions,

they

are

not

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 34 of 44 - Page ID#: 4308

necessarily equal in scope. Claim differentiation only requires
“the limitation in the parent to be at least broad enough to
encompass the limitation of the dependent claim.” TecSec, Inc.,
658 Fed. Appx. at 577. While Tempur maintains the claim is invalid
because Reverie has not differentiated between Claims 1 and 6, it
is Tempur that carries the burden of proof. BASF Corp., 875 F.3d
at 1365. Here, Tempur has not demonstrated why the claim is
invalid, simply because it may overlap with the parent claim.
3. “mechanically controlled” (‘934 Patent, Claim 7)
For similar reasons as the term “command control,” Tempur’s
challenge of “mechanically controlled” in Claim 7 of the ‘934
Patent also fails. [DE 51 at 27]. That is, Tempur has failed to
meet its burden for invalidating a claim. BASF Corp., 875 F.3d
at 1365.
4. “the position recall command” (‘328 Patent, Claim 1)
Tempur contends that the term “position recall command” in
Claim 1 of the ‘328 Patent has no antecedent basis, and therefore
is indefinite. This argument fails because, as Reverie points out,
the beginning of Claim 1 describes the handheld remote control as
“having a user interface adapted to initiate a transmission of a
present recall command from the handheld remote control to the
adjustable bed using the two-way wireless communication system to

34

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 35 of 44 - Page ID#: 4309

return to a preset recall position.” [DE 50-8 at 37 (emphasis
added)].
5. “optionally one or more” (‘357 Patent, Claim 1)
Tempur challenges the term “optionally one or more” from Claim
1 of the ‘357 Patent, contending that it renders the bounds of the
invention indefinite. [DE 51 at 27-28]. In support, Tempur cites
to Hockeyline, Inc. v. Stats, LLC, which found that the term
“optionally provides,” as used in the patent’s Claim

9, was

“superfluous, since it may or may not be part of the invention.”
No. 1:13-cv-1446, 2013 WL 11091886, at *6 (S.D.N.Y. Dec. 16, 2013).
Tempur contends that the Federal Circuit affirmed Hockeyline in
2016, and should, as a consequence, be the controlling authority.
[DE 51 at 27-28; DE 62 at 10].
Reverie maintains that patent examiners’ acceptance of such
terms is evidence that optional limitations are not indefinite per
se. [DE 57 at 25-26]. Although Reverie does not discuss Hockeyline,
Reverie cites other cases indicating that no such per se rule
exists, and where similar terms have been upheld. [Id.]. The Court
agrees.
First, Tempur’s reliance on the Federal Circuit’s decision in
Hockeyline

is

misplaced.

Shortly

after

the

district

court’s

decision in Hockeyline, the case was stayed due to an ongoing
appeal before the Patent Trial and Appeal Board (“the Appeal

35

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 36 of 44 - Page ID#: 4310

Board”),

involving

different

claims

Hockeyline, Inc. v. Stats, LLC,

of

the

same

patent.

No. 1:13-cv-1446, at DE 46.

Ultimately, the Appeal Board invalidated a number of claims,
including Claims 1 and 8 of the patent at issue in Hockeyline.
The Appeal Board’s decision was then affirmed by the Federal
Circuit. See Hockeyline, 670 Fed. Appx. 703 (Fed. Cir. 2016). Thus,
it was the Appeal Board’s decision, not the district court’s that
was affirmed by the Federal Circuit in 2016. Notably, the Federal
Circuit’s decision to invalidate Claim 9 was based on the Appeal
Board’s invalidation of, among others, Claims 1 and 8, which were
parents to Claim 9. Id. at DEs 46, 53. That is, neither the Federal
Circuit’s, nor the Appeal Board’s decisions made any determination
concerning

the

term

“optionally

provides,”

despite

Tempur’s

contention otherwise.
Notwithstanding, other courts have upheld similar language.
See, e.g., Mosaid Techs., Inc. v. Freescale Semiconductor, Inc.,
No. 6:11-CV-173, 2013 WL 1253516, at *3 (E.D. Tex. Apr. 29, 2013).
For example, in 2015, the Federal Circuit upheld the phrase
“optionally topped with inert
supported

by

the

gas,” in part, because it was

specification

and

modified

the

surrounding

language. See Cadence Pharm. Inc. v. Exela PharmSci Inc., 780 F.3d
1364, 1372-73 (Fed. Cir. 2015). Likewise, “optionally,” as used
here in Claim 1 of the ‘357 Patent, modifies “one or more of
implementing

a

safety

feature,
36

communicating

an

error,

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 37 of 44 - Page ID#: 4311

communicating

a

software

update,

communicating

a

preference,

communicating a setting, and communicating a report.” [DE 50-4 at
110]. Tempur has provided no indication as to how the term or those
it modifies lack clarity, nor has Tempur given a sufficient reason
for invalidating Claim 1 of the ‘357 Patent. Consequently, Tempur
fails to meet the necessary burden. BASF Corp., 875 F.3d at 1365.
6. “substantially flat” and “substantially raised” (‘366 Patent,
Claims 1, 25)
Tempur

argues

that

the

terms

“substantially

flat

and

substantially raised, as used in Claims 1 and 25 of the ‘366 Patent
are also indefinite. [DE 51 at 28-29]. Specifically, Tempur states
that the terms suffer by failing to specify to what degree they
are

measured.

[Id.].

Without

guidance

from

the

claims,

specification, or prosecution history to demonstrate how flat or
raised the positions must be to be “substantial,” the claims are
indefinite.
Reverie maintains that this is not necessary. The Court
agrees. Courts have repeatedly held that there is no per se rule
that the term “substantially” is indefinite; in fact, many have
found

it

precise.

sufficiently
See,

e.g.,

definite,
Mfg.

despite

Resources

not

Int’l,

being

perfectly

Inc.

v.

Civiq

Smartscapes, LLC, No. 17-269-RGA, 2018 WL 4627661, at *7 (D. Del.
Sep. 27, 2018); Exmark Mfg. Co. v. Briggs & Stratton Power Prods.

37

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 38 of 44 - Page ID#: 4312

Grp., No. 8:10CV187, 2011 WL 5976264, at *5 (D. Neb. 29, 2011);
Raytheon Co. v. Indigo Sys. Corp., 682 F. Supp. 2d 717, 727 (E.D.
Tex. 2010). Moreover, the Federal Circuit has also upheld the use
of “substantially” as a term of degree. Aventis Pharm. Inc. v.
Amino Chems. Ltd., 715 F.3d 1363, 1377 (Fed. Cir. 2013); Sonix
Tech. Co. v. Publ’ns Int’l Ltd., 844 F.3d 1370, 1377 (Fed. Cir.
2017); Tinnus Enters., LLC v. Telebrands Corp., 846 F.3d 1190,
1206 (Fed. Cir. 2017).
Thus,

the

Court

finds

that

the

term

“substantially”

is

sufficiently definite for a person of ordinary skill in the art to
determine its meaning.
D. CLAIMED DESIGN OF THE D553 PATENT
As shown above, the parties dispute aspects of the D553 design
patent and Tempur has offered a proposed construction in order to
describe the D553 Patent in words.
“Whether a design patent is infringed is determined by first
construing the claim to the design, when appropriate, and then
comparing it to the design of the accused device.” Oddzon Prods.,
Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404 (Fed. Cir. 1997). “A
design patent only protects the novel, ornamental features of the
patented design.” Id. at 1405. “Where a design contains both
functional and non-functional elements, the scope of the claim
must be construed in order to identify the non-functional aspects
of the design as shown in the patent.” Id. “[T]he preferable course
38

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 39 of 44 - Page ID#: 4313

ordinarily

will

be

for

a

district

court

not

to

attempt

to

‘construe’ a design patent claim by providing a detailed verbal
description of the claimed design.” Egyptian Goddess, Inc. v.
Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008). “Thus, the general
rule that now governs design claim construction is that ‘the
illustration in the drawing. . . is its own best description.’”
WCM Inds., Inc. v. IPS Corp., No. 2:13-cv-02019-JPM-tmp, 2014 WL
8508559, at *50 (W.D. Tenn. Nov. 10, 2014) (internal citations
omitted).
Nonetheless, “the scope of [a] claim must be construed in
order to identify the non-functional aspects of the design as shown
in the patent.” Richardson v. Stanley Works, Inc., 597 F.3d 1288,
1293 (Fed. Cir. 2010). “If the patented design is primarily
functional rather than ornamental, the patent is invalid. However,
when the design also contains ornamental aspects, it is entitled
to a design patent whose scope is limited to those aspects alone
and does not extend to any functional elements of the claimed
article.” Id. at 1293-94.
Here, Reverie has proposed the following construction, which
essentially just points to the design patent figures above: “The
ornamental design for an adjustable bed as shown and described in
Figures 1-2.” However, Tempur contends that more is required in
order accurately portray the images in written form. To that end,
Tempur seeks to add the following description:
39

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 40 of 44 - Page ID#: 4314

The ornamental design for an adjustable bed, as shown
and described in Figures 1-2, where the head segment of
the top body support portion is thinner than the foot
segment of the top body support portion, where the head
segment of the top body support portion overhangs the
head portion of the bottom frame portion, where the sides
of the head, torso, leg, and foot segments of the top
body support portion do not overhang the bottom frame
portion, where the foot segment of the top body support
portion does not overhang the foot portion of the bottom
frame portion, and where the bottom frame portion is a
closed frame.
[DE 51 at 23]. Tempur believes this construction of the D553 patent
reflects its ornamental features. [Id.].
Reverie maintains that Tempur’s proposal is overly narrow and
conflicts with the intrinsic evidence. In particular, Reverie
takes issue with Tempur’s limitation requiring that the head
segment of the top body support portion to be thinner than the
foot segment. [DE 57 at 29-32]. Although Figure 1 appears to show
a thinner top portion, Reverie argues that Figure 1 was drawn to
show perspective; Figure 2, on the other hand, offers a direct
comparison of the thickness of the bed segments, demonstrating
that they have “substantially the same thickness.” [Id. at 30].
In light of the prosecution history and case law, the Court
agrees with Reverie that no construction is needed for the D553
Patent. First, upon application, the patent examiner stated that
“the claimed design has a body support portion or surface with
four

segments

that

are

quite

thin

and

each

segment

has

substantially the same thickness.” [DE 51-9 at 6]. This was in

40

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 41 of 44 - Page ID#: 4315

comparison to a similar design patent, U.S. Patent No. 6, 276,011
(referred to as “Antinori”), which the examiner noted differences
in segment thickness. [Id. at 7].
When referring to the lengths of the D553 segment portions,
the examiner noted that “the upper and lower portions have nearly
identical lengths, giving an appearance of a unified whole.” [Id.
at 8]. To Tempur’s point, the examiner did not describe the D553
Patent

as

having

any

substantial

overhang,

particularly

as

compared to Antinori, which the examiner found to “overhang[]
dramatically.” [Id.]. The examiner went on to note that the D553
Patent and Antinori had several differences, including “different
overhangs.” [Id.]. To be sure, while the D553 Patent does not have
“dramatic” overhang, the patentee did acknowledge that the “top
portion overhangs slightly at the head of the bed, but does not
overhang at the foo[t] of the bed, giving the bed a generally
unified appearance.” [DE 51-8 at 4].
Nevertheless, although claim construction can be used to
guide the fact finder through issues, verbal claim constructions
of design patents may increase “the risk of placing undue emphasis
on particular features of the design and the risk that a finder of
fact will focus on each individual described feature in the verbal
description rather than on the design as a whole.” Sport Dimension,
Inc. v. Coleman Co., Inc., 820 F.3d 1316, 1320 (Fed. Cir. 2016)
(citing Egyptian Goddess, Inc., 543 F.3d at 680)). Accordingly,
41

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 42 of 44 - Page ID#: 4316

the Court finds that no construction is needed as the D553 Patent
is best represented by its own photographic illustration. See,
e.g., WCM Inds., 2014 WL 8508559, at *50. Notwithstanding, to the
extent

necessary,

the

segments

will

be

construed

as

being

substantially the same thickness, with a top portion that overhangs
slightly at the head of the bed.
IV. CONCLUSION
Accordingly, for the reasons articulated above, the terms
SHALL be construed as follows:
CLAIM TERM
“two-way wireless
communication” and “two-way
wireless communication system”
[‘457 Patent, Claim 20]

COURT’S CONSTRUCTION
A system for wirelessly
communicating back and forth,
either directly or indirectly

“two-way wireless
communication system”
[‘328 Patent, Claims 1, 13]
“code key”
[‘457 Patent, Claim 20]

Unique identifier

“unique communication link”
[‘934, Claim 1]

Plain Meaning

“the adjustable bed controller
further adapted to initiate a
communication from the
adjustable bed controller to
the handheld remote control to
indicate that the adjustable
bed controller has responded

Plain Meaning; where “adapted
to” is construed as a
mandatory function

42

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 43 of 44 - Page ID#: 4317

to the position recall
command”
[‘328 Patent, Claims 1, 13]
“wood”
[‘366 Patent, Claims 1, 10,
13, 14, 25]

Natural wood, and engineered
or composite wood

“increment value”
[‘116 Patent, Claims 1, 21,
33, 40; ‘934 Patent, Claim 1]

Increment angle of rotation,
not measured by clock or
counter increments, and
directly realizable by the
actuator

“value representative of an
acceptable value”
[‘457 Patent, Claim 23]

Value representative of an
acceptable angle of rotation,
not measured by clock or
counter increments, and
directly realizable by the
actuator

“an actuator position”
[‘328 Patent, Claims 1, 13]

An angle of rotation, not
measured by clock or counter
increments, and directly
realizable by the actuator

“second system”
[‘116 Patent, Claims 1, 21,
33, 40]

Plain Meaning

“the row representing”
[‘116 Patent, Claims 1, 21,
33, 40; ‘934 Patent, Claim 1]

Plain Meaning

“providing feedback to a user
on the handheld remote control
to indicate the success of the
command”
[‘457 Patent, Claim 20]

Plain Meaning

43

Case: 5:17-cv-00403-JMH Doc #: 136 Filed: 07/28/21 Page: 44 of 44 - Page ID#: 4318

“a controller of the
component”
[‘934 Patent, Claim 2]
“the controller”
[‘934 Patent, Claim 4]

Not indefinite or invalid; to
the extent necessary, the “the
component” referenced in
Claims 2 and 4 are construed
to mean the actuator.

“control command”
[‘934 Patent, Claim 6]

Not indefinite or invalid

“mechanically controlled”
[‘934 Patent, Claim 7]

Not indefinite or invalid

“the position recall command”
[‘328 Patent, Claim 1]

Not indefinite or invalid

“optionally one or more”
[‘357 Patent, Claim 1]

Not indefinite or invalid

“substantially” flat, raised
[‘366 Patent, Claims 1, 25]

Not indefinite or invalid

D553 Design Patent

No construction; to the extent
necessary, segments are
construed as “substantially
the same,” with a top portion
that overhangs slightly at the
head of the bed.

IT IS SO ORDERED.
This the 28th day of July, 2021.

44