Luv N Care Ltd v. Laurain et al

Filing 110

MEMORANDUM ORDER re 62 Memorandum Order. Signed by Magistrate Judge Joseph H L Perez-Montes on 4/23/2018. (crt,Bunting, M)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF LOUISIANA
MONROE DIVISION
LUV N’ CARE LTD,
Plaintiff

CIVIL ACTION NO. 3:16-CV-00777

VERSUS

JUDGE DOUGHTY

LINDSEY LAURAIN, ET AL.,
Defendants

c

MAGISTRATE JUDGE PEREZ-MONTES

CLAIM CONSTRUCTION MEMORANDUM ORDER
Before the Court is the issue of claim construction. The parties have fully
briefed the issue. (Docs. 79, 83, 84). The parties agreed, and the Court determined,
a claim construction hearing was not required. (Doc. 96).
I.

Background
LNC filed a Complaint, as amended, against Lindsey Laurain (“Laurain”) and

EZPZ for damages and injunctive relief for false advertising, false representation,
unfair competition under the Lantham Act, 15 U.S.C. §§ 1051, et seq., and the
Louisiana Unfair Trade Practices and Consumer Protection Law, La. Rev. Stat.
51:1401, et seq. (Doc. 21). LNC also seeks a declaratory judgment under 28 U.S.C.
§§ 2201 and 2202 that LNC violates no valid claim of EZPZ’s 1 design patent, utility

At the time LNC filed this action, the intellectual property (“IP”) that is the subject of this action
listed Laurain as the title owner. (Doc. 31). Subsequent to the filing of this action, Laurain
documented a transfer of her right, title, and interest in and to the IP to EZPZ. (Doc. 31). Laurain
was dismissed without prejudice by Joint Motion for Voluntary Partial Dismissal. (Doc. 32). Although
it is clear the patent application and file history were prosecuted on behalf of Laurain, the Court will
refer to EZPZ in place of Laurain to avoid confusion.
1

patent, or any other intellectual property right of EZPZ. (Doc. 21). The alleged
intellectual property rights at issue are:
(1) On July 17, 2014, Laurain filed United States Patent Application No.
14/333,682 (“the ‘682 Utility Application”) for Surface Contact Self-Sealing
Integrated Tablewear and Dining Mat. (Doc. 21, Doc. 27).
(2) On December 3, 2014, Laurain filed a design patent application for Dining
Mat with Integrated Tablewear, and on December 15, 2015, the United
States Patent and Trademark Office (“USPTO”) issued United States
Patent No. D745,327 (“the ‘327 Design Patent”). (Doc. 21, Doc. 27).
(3) On March 17, 2016, the application for the ‘682 Utility Application
published as United States Published Patent Application No.
2016/0073805, Surface Contact Self-Sealing Integrated Tablewear and
Dining Mat (“the ‘805 Publication”). (Doc. 27).
(4) On October 11, 2016, the USPTO issued United States Patent No.
9,462,903, Surface Contact Self-Sealing Integrated Tablewear and Dining
Mat (“the ‘903 Utility Patent”). (Doc. 21, Doc. 27).
LNC seeks an injunction and damages for EZPZ’s alleged acts of false
advertising, false representation, and unfair competition allegedly based on false
claims of infringement. (Doc. 21). LNC alleges the product giving rise to this action
is a feeding mat, which is an integrated self-sealing silicone place mat with a built-in
bowl or plate that attaches to the table using suction. (Doc. 21). LNC alleges EZPZ
has no valid existing intellectual property right that covers any aspect of LNC’s
feeding mats. (Doc. 21). LNC alleges EZPZ sells competing feeding mats. (Doc. 21).
EZPZ filed an Answer to Complaint, Answer to Amended Complaint, and
Counterclaim against LNC alleging that LNC infringed the ‘903 Utility Patent and
the ‘327 Design Patent, violated 15 U.S.C. § 1114 and 15 U.S.C. § 1125(a), and
unfairly competed with EZPZ in violation of state and common law. (Doc. 27). EZPZ
seeks monetary damages and a permanent injunction against LNC. (Doc. 27).

2

LNC answered EZPZ’s Counterclaim asserting various affirmative defenses.
(Doc. 33). EZPZ amended its Counterclaim asserting claims against third party
Counter-Defendants Admar International, Inc. (“Admar”) and Nouri E. Hakim
(“Hakim”). (Doc. 40). Defendants Admar, Hakim, and LNC answered asserting
various affirmative defenses. (Doc. 45). The parties now seek claim construction as
to the disputed terms in the ‘903 patent. (Docs. 79, 83, 84).
II.

Law and Analysis
A patent describes “the exact scope of an invention and its manufacture to

‘secure to [the patentee] all to which he is entitled, [and] to apprise the public of what
is still open to them.’” Markman v. Westview, Inc., 517 U.S. 370, 373 (1996) (citation
omitted). The patent application contains a specification describing the invention “in
such full, clear, concise, and exact terms as to enable any person skilled in the art . .
. to make and use the same.” 35 U.S.C. § 112. The specification concludes with “one
or more claims particularly pointing out and distinctly claiming the subject matter
which the inventor . . . regards as the invention.” Id. Claims may be written in
independent or dependent form.

Id.

Dependent claims shall be construed to

incorporate by reference all the limitations of the claim to which it refers. Id. “[I]t is
only fair (and statutorily required) that competitors be able to ascertain to a
reasonable degree the scope of the patentee’s right to exclude.” Markman v. Westview
Instruments, Inc., 52 F. 3d 967, 978 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996).
Patent claim construction is a question of law for the court. Markman v.
Westview, Inc., 517 U.S. at 372. “Victory in an infringement suit requires a finding

3

that the patent claim[s] ‘cover[ ] the alleged infringer’s product . . .’ which in turn
necessitates a determination of ‘what the words in the claim[s] mean.’” Markman,
517 U.S. at 374 (citations omitted). The meaning and scope of any disputed terms
and limiting expressions in the claims are determined by the court as a matter of law.
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.Cir.1999) (citing
Markman, 52 F.3d at 976 and EMI Group North America, Inc. v. Intel Corp., 157 F.3d
887, 891 (Fed.Cir.1998)). “[O]nly those terms need be construed that are in
controversy, and only to the extent necessary to resolve the controversy.” Vivid
Techs., Inc., 200 F.3d at 803 (citing U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d
1554, 1568 (Fed. Cir. 1997) (claim construction is for “resolution of disputed
meanings”).
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the
invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water,
Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004);
Markman, 517 U.S. at 373-74). The goal of claim construction, then, is to give proper
meaning and scope to claim language by giving claim terms their ordinary and
customary meanings, according to the customary understanding of an artisan of
ordinary skill at the time of the invention. Id. at 1312–13.
“[T]he ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan
after reading the entire patent.” Id. at 1321. While “the claims themselves provide
substantial guidance as to the meaning of particular claim terms,” the context of the

4

surrounding words of the claim also must be considered.

Id. at 1314 (citations

omitted). Furthermore, “[o]ther claims of the patent in question, both asserted and
unasserted, can also be valuable sources of enlightment . . . [b]ecause claim terms are
normally used consistently throughout the patent . . .” Id. (internal citation omitted).
To construe a claim, a court first looks to the intrinsic evidence of record, which
is the “patent itself, including ‘the claims, the specification [or written description,]
and, if in evidence, the prosecution history’”. Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996) (citing Markman, 52 F.3d at 979). “[T]here is no
magic formula or catechism for conducting claim construction.” Phillips, 415 F.3d at
1324. Instead, the court is free to attach the appropriate weight to appropriate
sources “in light of the statutes and policies that inform patent law.” Id. (citing
Vitronics, 90 F.3d at 1582).
The court starts with the actual language of the claim. “If the claim language
is clear on its face, then [the court’s] consideration of the rest of the intrinsic evidence
is restricted to determining if a deviation from the clear language of the claims is
specified.” Interactive Gift Express, Inc. v. Compuserve, Inc. 256 F.3d 1323, 1331
(Fed. Cir. 2001). The specification always can and should be used as an important
source support for claim interpretation. Phillips, 415 F.3d at 1315-17. In addition to
the specification, a court “should also consider the patent’s prosecution history, if it
is in evidence.” Markman, 52 F.3d at 980. The prosecution history, which is “intrinsic
evidence,” “consists of the complete record of the proceedings before the PTO [Patent
and Trademark Office] and includes the prior art cited during the examination of the

5

patent.” Phillips, 415 F.3d at 1317. “[T]he prosecution history can often inform the
meaning of the claim language by demonstrating how the inventor understood the
invention and whether the inventor limited the invention in the course of prosecution,
making the claim scope narrower than it would otherwise be.” Id. (citations omitted).
Further, the well-established doctrine of prosecution disclaimer “preclud[es]
patentees from recapturing through claim interpretation specific meanings
disclaimed during prosecution.” Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 1314,
1323 (Fed. Cir. 2003). By distinguishing the claimed invention over the prior art, an
applicant is indicating what the claims do not cover. Spectrum Int’l v. Sterilite Corp.,
164 F.3d 1372, 1378-79 (Fed. Cir. 1988). This promotes the public notice function of
the intrinsic evidence and the public’s reliance on definitive statements made during
prosecution. Omega Eng’g, Inc., 334 F.3d at 1324.
When construing claims, the intrinsic evidence of the meaning of the claims
are the primary resources; while helpful, extrinsic sources like dictionaries and
expert testimony cannot overcome more persuasive intrinsic evidence. Finisar Corp.
v. DirecTV Grp., Inc., 523 F.3d 1323, 1328 (Fed. Cir. 2008) (citing Phillips, 415 F.3d
at 1318). “Extrinsic evidence consists of all evidence external to the patent and
prosecution history, including expert and inventor testimony, dictionaries, and
learned treatises.” Phillips, 415 F.3d at 1317 (citing Markman, 52 F.3d at 980).
“[H]eavy reliance on the dictionary divorced from the intrinsic evidence risks
transforming the meaning of the claim term to the artisan into the meaning of the
term in the abstract.” Id. at 1321. The Court should instead focus on how the patentee

6

used the claim term in the claims, specification, and prosecution history, rather than
starting with a broad definition and whittling it down. Id.
In some cases, “the district court will need to look beyond the patent’s intrinsic
evidence and to consult extrinsic evidence in order to understand, for example, the
background science or the meaning of a term in the relevant art during the relevant
time period.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837 (2015).
While extrinsic evidence “may be useful” to the court, it is “less reliable” than intrinsic
evidence, and its consideration “is unlikely to result in a reliable interpretation of
patent claim scope unless considered in the context of the intrinsic evidence.”
Phillips, 415 F.3d at 1318-19.

However, conclusory, unsupported assertions by

experts as to the definition of a claim term are not useful. Phillips, 415 F.3d at 1318.
Where the intrinsic record unambiguously describes the scope of the patented
invention, reliance on any extrinsic evidence is improper. See Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d
at 1583).
“The construction that stays true to the claim language and most naturally
aligns with the patent’s description of the invention will be, in the end, the correct
construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250
(Fed. Cir. 1998). Where two alternative claim constructions are equally plausible
based on the instrinsic evidence, claims should be construed so as to preserve their
validity. Phillips, 415 F.3d at 1327-28.

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III.

Construction of Disputed Claim Terms 2
The ‘903 patent contains 9 claims, of which 3 are independent claims (claims

1, 5, and 9), and 6 of the claims are dependent on one of the independent claims.
(Docs. 79-2, 83-1). The disputed claim terms appear in claims 1, 2, 5, and 9. (Doc. 792, 83-1). The parties dispute whether the preambles of claims 1, 5, and 9 are limiting.
(Doc. 79, 83, 84). The parties also seek claim construction of the following disputed
terms:

(1) “planar portion” (claims 1, 2, 5, and 9); (2) “an entirely suffuse

undersurface” (claim 1); and (3) “an undersurface entirely suffuse upon the planar
portion” (claims 5, and 9). 3 (Docs. 79, 83, 84).
The parties dispute claim terms in the ‘903 patent. (Docs. 79, 83). The parties agree no claim
construction is required for the claim terms in the ‘327 patent. (Docs. 79, 79-4, 83).

2

EZPZ seeks to exclude LNC’s extrinsic evidence, to the extent LNC failed to respond to EZPZ’s
requests (Docs. 79-5, 79-6) that LNC disclose the specific evidence it intended to rely upon in its claim
construction. (Doc. 79). EZPZ relies upon SCVNGR, Inc. v. DailyGobble, Inc., 2017 WL 3332224, *1*2 (D.R.I. 2017) (striking expert declaration accused infringer submitted with its claim construction
briefing to support its argument on indefiniteness when scheduling order required parties to disclose
the proposed claim constructions and supporting intrinsic evidence, and party first identified its expert
declaration in its opening claim construction brief).
3

Here, the record shows that August 11, 2017 was the deadline for the parties to exchange proposed
claim constructions and extrinsic evidence (including identification of any experts expected to submit
a declaration regarding claim construction, if any). EZPZ shows that LNC submitted its disclosures
on August 11, 2017 (Doc. 79-4), which identified the extrinsic evidence LNC relies upon. (Doc. 79-4).
However, EZPZ asserts the disclosure merely identified the “types” of extrinsic evidence, rather than
provide the specific extrinsic evidence LNC intended to rely on for its claim construction. (Doc. 79-4).
EZPZ argues LNC relies extensively on extrinsic evidence in its claim construction. (Doc. 79-4).
In reviewing the record, it appears that the extrinsic evidence at issue includes: the Webster
Dictionary definitions of “planar” and “suffuse” (Docs. 83-14, 83-15, respectively); the Bass publication
(Doc. 83-8); the Lion Publication (Doc. 83-5); the Kerr patent (Doc. 83-9); the Stravitz patent (Doc. 834); and the declaration of Hakim, and its attachments (Doc. 83-2).
It is permissible for the district court in its sound discretion to admit and use extrinsic evidence,
bearing in mind the flaws inherent in each type of evidence and assessing that evidence accordingly.
Phillips, 415 U.S. at 1319. Given that the ordinary and plain meaning of the disputed claim terms is
evident and may be construed from the intrinsic record, it would be improper for the Court to rely on
the extrinsic evidence. Vitronics Corp., 90 F.3d at 1583 (“In most situations, an analysis of intrinsic
evidence alone will resolve any ambiguity in a disputed claim term. In such circumstances, it is
improper to rely on extrinsic evidence.”); Phillips, 415 F.3d at 1321 (“[O]verly relying on a broad

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Claim 1 discloses:
A surface contact self-sealing integrated tableware and dining mat
comprising a rubberlike planar portion having a raised perimeter
delimiting at least one concavity surrounding at least one receptacle
above an upper surface and an entirely suffuse undersurface upon which
said mat is disposed, said sealable contact preventative of lateral
displacement of the planar portion across the underlying surface,
wherein said sealable contact creates a partial vacuum when attempts
to separate the undersurface from the underlying surface are made
except at an outer edge of the planar portion, whereby removal of the
planar portion from the underlying surface is effective only be peeling
the undersurface from the underlying surface starting first at the outer
edge.
Claim 2 discloses:
The surface contact self-sealing integrated tableware and dining mat of
claim 1 wherein the planar portion extends laterally beyond the raised
perimeter whereby the planar portion extends surrounding the at least
one concavity.
Claim 5 discloses:
A surface contact self-sealing integrated tableware and dining mat
comprising:
a nontoxic polymeric planar portion;
an outer edge parametrically bounding said planar portion;
an undersurface entirely suffuse upon the planar portion, said
undersurface disposed to sealably contact an underlying surface upon
which the planar portion is disposed;
an upper surface; and

dictionary definition for claim interpretation risks reaching an overbroad interpretation of the claim.”).
Thus, EZPZ’s motion to exclude the extrinsic evidence is moot. To the extent that it is not moot, the
Court gives little weight to the extrinsic evidence. “A court should discount any expert testimony ‘that
is clearly at odds with the claim construction mandated by the claims themselves, the written
description, and the prosecution history, in other words, with the written record of the patent.’”
Phillips, 415 F.3d at 1318 (citing Key Pharms. V. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir.
1998)). Additionally, LNC refers to its extrinsic evidence in support of its non-infringement arguments
(Doc. 83), which the Court has already ruled will be addressed subsequent to and separate from claim
construction. (Doc. 96).

9

a raised perimeter disposed within the upper surface, said raised
perimeter defining a convacity wrought above the upper surface of the
planar portion to delimit at least one receptacle upon the planar portion;
wherein the undersurface sealably contacts an underlying surface upon
which the planar portion is disposed, said undersurface thereby
preventing lateral displacement of the planar portion upon said
underlying surface by frictional engagement therewith and, further,
creation of a partial vacuum between the undersurface and the
underlying surface when attempt is made to remove said planar portion
away from said underlying surface, whereby foodstuffs are positional
interior to the at least one receptacle, said receptacle thence maintained
in desired position by action of the planar portion contacting said
underlying surface, and removal of said planar portion from said
underlying surface is effective only when said planar portion is lifted
from said underlying surface first at the outer edge of the planar portion.
Claim 9 discloses:
A surface contact self-sealing integrated tableware and dining mat
comprising:
a silicone planar portion;
an outer edge parametrically bounding the planar portion;
an undersurface entirely suffuse upon the planar portion, said
undersurface disposed to sealably contact an underlying surface upon
which the planar portion is disposed;
an upper surface; and
a raised perimeter disposed within the upper surface, said raised
perimeter defining a convacity wrought above the upper surface of the
planar portion to delimit at least one receptacle upon the planar portion;
wherein the undersurface sealably contacts an underlying surface upon
which the planar portion is disposed, said undersurface thereby
preventing lateral displacement of the planar portion upon said
underlying surface by frictional engagement therewith and, further,
creation of a partial vacuum between the undersurface and the
underlying surface when attempt is made to remove said planar portion
away from said underlying surface, whereby foodstuffs are selectively
positional interior to the at least one receptacle, said receptacle thence
10

maintained in desired position upon the underlying surface by action of
the planar portion contacting said underlying surface, and removal of
said planar portion from said underlying surface is effective only when
said planar portion is separated from said underlying surface first at the
outer edge of the planar portion.
(Docs. 79-2, 83-1).
A.

The preambles of claims 1, 5, and 9 are limiting.

Disputed Claim Term
“A surface contact selfsealing integrated
tableware and dining mat
comprising” (preamble)

EZPZ’s Construction
The preambles of claims
1, 5, and 9 are limiting.

LNC’s Construction
“[T]he preamble does not
provide antecedents for
ensuing claim terms and
is therefore not limiting
and does not require
construction.”

The preamble is an introductory statement that precedes the body of the patent
claim. Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed.
Cir. 1989). A recurring issue in claim construction, including in this case, is whether
the preamble is a “substantive” limitation such that the preamble itself can be used
to define or limit the claim scope.
Whether or not the preamble acts as a limitation is properly an issue of claim
construction, and therefore a matter of law within the province of the court.
Markman, 52 F.3d at 979. There is no presumption that the preamble either is or is
not a claim limitation, and no litmus test to apply. Corning Glass Works, 868 F.2d
at 1257. “[C]lear reliance on the preamble during prosecution to distinguish the
claimed invention from the prior art transforms the preamble into a claim limitation
because such reliance indicates the use of the preamble to define, in part, the claimed
invention.” Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808-09 (Fed.
11

Cir. 2002) (citing Bristol-Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368,
1375 (Fed. Cir. 2001) (a preamble may limit when employed to distinguish a new use
of a prior art apparatus or process)). In order to limit the claim, the preamble must
be “necessary to give life, meaning, and vitality to the claim.” Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (citations omitted).
The preamble preceding the body of each independent claim in the ‘903 patent
states: “[A] surface contact self-sealing integrated tableware and dining mat
comprising . . . .” (Docs. 79-2, 83-1). Here, the parties dispute whether the preamble
is limiting.
EZPZ argues the preambles of claim 1 (and related dependent claims), claim 5
(and related dependent claims), and claim 9 are limiting. (Docs. 79, 79-3). EZPZ
contends that during prosecution, EZPZ relied on the preamble to distinguish the
claimed

invention

from

the

prior

art.

(Doc.

79).

EZPZ

asserts

that

“on December 9, 2015, the USPTO rejected claims 1, 5, and 9, among others on the
basis it contended the claims were obvious based on two prior patents, referred to by
their inventors’ names, ‘Bass’ and ‘Lion.’” (Doc. 79). The USPTO stated:
Regarding Claim 1, Bass discloses a surface contact self-sealing
integrated tableware and dining mat comprising a planar portion 10
(figure 5) having a raised perimeter delimiting at least one concavity
above an upper surface 20 (figure 5), and entirely suffuse undersurface
(figure 5) disposed for sealable contact with an underlying surface upon
which said mat is disposed for sealable contact with an underlying
surface upon which said mat is disposed, said sealable contact
preventative of lateral displacement of the planar portion across the
underlying surface, wherein said sealable contact creates a partial
vacuum when attempts to separate the undersurface from the
underlying surface are made except at an outer edge of the planar
portion, whereby removal of the planar portion from the underlying
12

surface is effective only by peeling the undersurface from the underlying
surface starting first at the outer edge (figure 5). Bass does not disclose
a rubberlike planar portion. However, Lion teaches nontoxic silicone
(Paragraph 36). Therefore, it would have been obvious for one of
ordinary skill in the art before the effective filing date of the claimed
invention to modify Bass to include a vacuum seal and nontoxic silicone,
as taught by Lion, in order to allow easy movement and sealing without
losing sealable contact with the underlying surface and a flexible
durable material.
(Docs. 79-7, 79-8).
EZPZ asserts the USPTO had similar rejections for claims 5 and 9. (Docs. 797, 79-8). EZPZ contends that on March 9, 2016, EZPZ responded to the Office Action,
distinguishing their present invention’s “self-sealing” requirement from Bass, Lion,
and any other prior art. (Docs. 79-7, p. 79-9). EZPZ argues it expressly relied on the
preamble phrase during prosecution to distinguish prior art, by arguing that the
invention must be configured to be self-sealing. (Doc. 79).
EZPZ also contends that when the limitations in the body of the claim are
derived from the preamble, or when the claim drafted uses both the preamble and
body to define the subject matter of the claimed invention, the preamble provides an
antecedent basis for the body of the claim. (Doc. 79). EZPZ cites Claim 1, for example,
which recites an “integrated tableware and dining mat.” (Docs. 79, 79-2).

The

additional references in the body of Claim 1 thereafter refer to the “mat” as “said
mat,” referring back to the “integrated tableware and dining mat” in the preamble.
(Docs, 79, 79-2).

EZPZ contends the same language is used in the respective

preambles of claims 5 and 9. (Doc. 79). EZPZ claims those preambles are also
limiting. (Doc. 79).

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LNC concedes the preamble of Claim 1 is limiting. (Doc. 83). However, LNC
asserts that the file history should not be considered in incorporating the preamble
into the body of the claim in Claims 5-9. (Doc. 83). LNC argues the preambles in
Claims 5-9 are not limiting. 4 (Doc. 83). LNC asserts EZPZ cites no authority for the
proposition that the file history can be used to incorporate the preamble into the body
of the claim. (Doc. 83). LNC contends that whether the preamble is limiting is based
on the words in the claim and not some statement from the prosecution history. (Doc.
83).
When the preamble serves as an antecedent basis for limitations in the claim
body, the preamble can be limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d
1332 (Fed. Cir. 2003). EZPZ distinguished itself from prior art relying on the “selfsealing” requirement referenced in the preambles of claims 1, 5, and 9. (Docs. 79-7,
83-13). EZPZ clearly relied upon the language of the preambles to distinguish its
present invention. The preamble is the same in Claims 1, 5, and 9. The term “selfsealing” only appears in the preambles, not the body of the claims. (Doc. 79-2, 83-1).
EZPZ argued in the prosecution history the “self-sealing” qualities of its present
invention that distinguish its product from prior art. (Docs. 79, 79-2, 83-13).
In this case, it is clear that the patent office considered aspects of the claimed
invention embodied in the preamble necessary to distinguish ‘903 from the prior art.
Specifically, the file history shows an applicant-initiated interview summary, dated
December 14, 2015. (Docs. 79-7, p. 177, 83-12). This summary reflects that, during

4

The preambles of Claims 5 and 9 are independent. Claims 6-8 are dependent on Claim 5.

14

the interview, the examiners agreed the previous rejection was improper based on
the Lion reference which fails to teach the self-sealing property. (Docs. 79-7, p. 177,
83-12). Because language limiting the claims is found only in the preamble, and this
language was relied upon in distinguishing ‘903 from prior art, the Court holds that
the preambles to claims 1, 5, and 9 are limiting. 5
B.

The meaning of “planar portion”

Disputed Claim Term

EZPZ’s Construction

“planar portion” (claims
1, 2, 5, 9)

“a part that includes an
area that relates to a
plane”

LNC’s Construction
“’Planar portion’ has its
plain and ordinary
meaning of a flat surface.
A flat surface is one that
is not curved.”

The term “planar portion” is used in independent claims 1, 5, and 9, and in
dependent claim 2 in the ‘903 patent. (Doc. 79-2).
EZPZ’s proposed construction
EZPZ proposes that the term “planar portion” should align with the intrinsic
record. (Doc. 79). EZPZ proposes that the term “planar portion” means “a part that
includes an area that relates to a plane.” (Doc. 79). EZPZ contends that “planar
portion” is not merely a surface, as LNC contends, but a three-dimensional object.

LNC includes dependent claims 6-8 in its proposed construction that the preamble is not limiting.
(Doc. 83). Here, the dependent claims 6-8 use the same terms in the claim on which they are
dependent, Claim 5. “[C]laim terms are presumed to be used consistently throughout the patent, such
that the usage of the term in one claim can often illuminate the meaning of the same term in other
claims.” Research Plastics, Inc. v. Federal Packaging Corp., 421 F.3d 1290, 1295 (Fed. Cir. 2005)
(citing Phillips, 415 F.3d at 1313-14, and Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed.
Cir. 2001)). On the other hand, “[w]hen different words or phrases are used in separate claims, a
difference in meaning is presumed.” Nystrom v. TREX Co., 424 F.3d 1136, 1143 (Fed. Cir. 2005)
(citations omitted). Claims 6-8 are dependent on Claim 5, which the Court has found the preamble
to be limiting.
5

15

(Doc. 79). EZPZ contends that the claims further define the “planar portion” as
having a raised perimeter delimiting at least one concavity as well as upper and
under surfaces. (Doc. 79). EZPZ states that Claim 1 recites a “mat comprising a
rubberlike planar portion having a raised perimeter delimiting at least one concavity
surrounding at least one receptacle above an upper surface and an entirely suffuse
undersurface.” (Docs. 79, 79-2). Additionally, EZPZ asserts Claims 5 and 9 similarly
recite both an “upper surface” and an “undersurface” of the “planar portion” and a
“raised perimeter within the upper surface.”

(Doc. 79).

EZPZ contends LNC

disregards the context of the claims when it refers to the “planar portion” as merely
a “flat surface,” which is not proper under Phillips, 415 F.3d at 1313. (Doc. 79).
EZPZ further states the words “flat” and “curved” do not appear anywhere in
the specification of the ‘903 patent. (Doc. 79). EZPZ contends the claims specifically
recite the type of material that must be used for the “planar portion,” materials that
are flexible.

(Doc. 79).

EZPZ contends that the flexible material (rubberlike,

polymeric, or silicone) may be configured to contact a surface continually, even if that
surface is not flat. (Doc. 79). EZPZ asserts that construing the term “planar portion”
to mean “flat” and “not curved” would be nonsensical in context of the claims, and
ignores that the claimed mat can be configured to a variety of different underlying
surfaces. (Doc. 79). 6

EZPZ asserts that LNC indicates it relies on the plain and ordinary meaning of “planar portion,” but
contends that (even if it were extrinsic evidence properly provided), it is improper to rely upon because
such evidence contradicts the controlling intrinsic evidence. (Doc. 79).
6

16

LNC’s proposed construction
LNC argues that the term “planar portion” should have its plain and ordinary
meaning of a flat surface, one that is not curved. (Docs. 79-4, 83). LNC contends
EZPZ will lose on non-infringement if it is held to constructions requiring the “planar
portion” limitation requiring a flat non-curved mat. (Doc. 83). LNC states the Court
must start with the plain meaning – in accordance with ordinary language. (Doc. 83).
LNC contends the plain meaning of “planar” is the generally accepted dictionary
definition. (Doc. 83). LNC, however, contends extrinsic sources are not required to
construe the term “planar.” (Doc. 83). LNC states that the ‘903 patent and its
prosecution history show EZPZ intended “planar” to mean flat with no curves. (Doc.
83).
LNC asserts the Webster’s New International Dictionary, Second Edition
Unabridged (“Webster”), defines “planar” to mean “of a plane, lying in one plane.”
(Docs. 83, 83-14). LNC states the word “plane” is derived from the Latin planaris,
meaning flat. (Doc. 83). LNC contends the term planar is used to describe “portion.”
(Doc. 83). LNC states the adjectival definition, according to Webster, is “without
elevations or depressions; even, level; flat; forming part of a plane; as a plane surface.”
(Docs. 83, 83-14).
LNC asserts the written description of “planar portion 20” is shown in every
drawing as a flat object with no curvature. (Doc. 83). LNC argues no structural
details of the planar portion 20 are provided other than that it can be constructed of

17

various materials such as silicone. (Doc. 83). LNC further argues the written text
and drawings of the ‘903 patent specification are consistent with the plain and
ordinary meaning of planar as flat and not curved. (Doc. 83).
LNC contends EZPZ, through its first amendment, distinguished its invention
from prior art that disclosed suction cups. (Doc. 83). LNC states that EZPZ argued
during prosecution that the claimed invention teaches away from Stravitz, and is
directed to a mat, “a generic term for a piece of fabric or flat material, generally placed
on a floor or other flat surface.” (Doc. 83). LNC asserts EZPZ distinguished its claim
from Stravitz who teaches suction-providing means. (Doc. 83). LNC contends EZPZ
conceded during claim prosecution that the ‘903 patent excludes curved structures
such as a suction cup. (Doc. 83).
The Court’s Construction
The ordinary meaning of a term must be determined in the context of the
written description and the prosecution history. Phillips, 415 F.3d at 1313; see also
Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (“We cannot
look at the ordinary meaning of the term . . . in a vacuum.”). The Court looks to the
intrinsic record (claims, specification, prosecution history) to determine the ordinary
meaning of the term “planar portion.” The context of the surrounding words of the
claim also must be considered in determining the ordinary and customary meaning
of those terms. See ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir.
2003). The claims are part of “a fully integrated written instrument” that “must be
read in view of the specification, of which they are a part.” Markman, 52 F.3d at 978-

18

79. In addition to the specification, the claim terms must be construed in light of the
prosecution history in the USPTO. Markman, 52 F.3d at 980.
Here, the Court construes the term “planar portion” in light of the context of
the ‘903 patent. To construe the term “planar portion” as flat or not curved would
ignore the context of the specification and prosecution history, and read a limitation
in the claim that is not referenced in the claim. Having carefully reviewed the claims
and the specifications, the Court finds the term “planar portion” should be construed
as “a part of an area relating to a plane.”
C.

The meaning of “an entirely suffuse undersurface” and “an undersurface
entirely suffuse upon the planar portion”

Disputed Claim Term

EZPZ’s Construction

“an entirely suffuse
undersurface” (claim 1)

“a continuous
undersurface without
other separate adhering
elements disposed
thereon”

“an undersurface entirely
suffuse upon the planar
portion” (Claims 5, 9)

“an undersurface that is
continuous on the planar
portion, without other
separate adhering

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LNC’s Construction
“Suffuse is used in the
‘903 patent claims,
specification and
prosecution history to
mean a continuous, flat
surface, as spread over as
with a liquid. The
remaining terms in the
phrase have their plain
and ordinary meaning.
The phrase “suffuse
undersurface” is used in
conjunction with the term
“planar portion” to
emphasize that the
undersurface is flat and
not curved.”
“Suffuse is used in the
‘903 patent claims,
specification and
prosecution history to
mean a continuous, flat

elements disposed
thereon”

surface, as spread over as
with a liquid. The
remaining terms in the
phrase have their plain
and ordinary meaning.
The phrase “undersurface
entirely suffuse” is used
in conjunction with the
term “planar portion” to
emphasize that the
undersurface is flat and
not curved.”

The term “an entirely suffuse undersurface” is used in claim 1 in the ‘903
patent. (Docs. 79-2, 83-1). The term “an undersurface entirely suffuse upon the
planar portion” is used in claims 5 and 9 in the ‘903 patent. (Docs. 79-2, 83-1). Given
the similarities of the terms, and arguments thereof, both parties address
construction of the terms together. Therefore, the Court will likewise address the
construction of the two terms together.
EZPZ’s proposed construction
EZPZ proposes that an “entirely suffuse undersurface” should be construed to
mean “a continuous undersurface without other separate adhering elements disposed
thereon.” (Doc. 79). EZPZ also proposes that “an undersurface entirely suffuse upon
the planar portion” should be construed to mean “an undersurface that is continuous
on the planar portion, without other separate adhering elements disposed thereon.”
(Doc. 79).
EZPZ argues that the goal of claim construction is to make the meaning of the
claim terms clear to a jury, and to be able to replace the disputed terms with the

20

proposed constructions. (Doc. 79). EZPZ argues LNC’s construction is, in fact, the
same construction proposed for “planar portion,” and is incorrect because it is
inconsistent with the intrinsic record. (Doc. 79). EZPZ asserts there is no support in
the record for the word “flat” or “as spread over as with a liquid.” (Doc. 79). EZPZ
further contends LNC’s construction ignores the different claim terms by contending
that the terms “suffuse undersurface” and “planar portion” are essentially the same.
(Doc. 79). EZPZ argues if the terms were intended to have the same meaning, it
would have used the same term. EZPZ cites Helmsderfer v. Bobrick Washroom
Equip., Inc., 527 F.3d 1379, 1381-82 (Fed. Cir. 2008) (citing CAE Screenplates Inc. v.
Heinrick Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of
evidence to the contrary, we must presume that the use of these different terms in
the claims connotes different meanings.”).
EZPZ contends “flat” and “not curved” do not appear anywhere in the
specification. (Doc. 79).

EZPZ further contends LNC’s proposed constructions

present that “suffuse undersurface” and “undersurface entirely suffuse” mean the
same thing.

(Doc. 79).

EZPZ argues LNC’s constructions both emphasize the

undersurface is flat and not curved, ignoring the term “entirely” and the arguments
made by EZPZ during prosecution for allowance of the claims over the prior art. (Doc.
79).

EZPZ contends the claim terms should be construed to consider the term

“entirely.” (Doc. 79). EZPZ further argues that it is incorrect to apply the plain
meaning of the entire disputed term except for the word “suffuse,” as proposed by
LNC. (Doc. 79). EZPZ argues the Court must consider the prosecution history and

21

intrinsic evidence, specifically the use of the term “entirely” to distinguish the
invention from prior art. (Doc. 79).
LNC’s proposed construction
LNC proposes essentially the same construction for both “an entirely suffuse
undersurface” and “an undersurface entirely suffuse upon the planar portion.” (Doc.
83). LNC proposes “[s]uffuse is used in the ‘903 patent claims, specification and
prosecution history to mean a continuous, flat surface, as spread over as with a liquid.
The remaining terms in the phrase have their plain and ordinary meaning.” (Doc.
79-4).

LNC further contends “[t]he phrase ‘suffuse undersurface’ is used in

connection with the term ‘planar portion’ to emphasize that the undersurface is flat
and not curved.” (Doc. 79-4). LNC also proposes “[t]he phrase ‘undersurface entirely
suffuse’ is used in conjunction with the term ‘planar portion’ to emphasize that the
undersurface is flat and not curved.” (Doc. 79-4).
LNC contends the disputed term “suffuse” is used in slightly different ways in
the independent claims but the meaning is always the same. (Doc. 83). LNC contends
in Claim 1, the term is “an entirely suffuse undersurface,” and in Claims 5 and 9, the
term is “an undersurface entirely suffuse.” (Doc. 83). LNC asserts there is no
practical difference between the two descriptions. (Doc. 83).
LNC argues that Examiner Volz issued a 2nd Office Action (Doc. 83-7),
rejecting all claims in the application. (Doc. 83). LNC asserts the Examiner cited the
Bass and Kerr references that together described all the limitations of the claims
including a planar portion with a suffuse undersurface. (Doc. 83). LNC contends

22

EZPZ filed a 2nd Amendment (Doc. 83-10), amending the claims to emphasize the
undersurface was entirely suffuse. (Doc. 83). LNC contends the term “suffuse” was
agreed to mean “continuous” or “spread out.” (Doc. 83-10).
LNC noted it was also stated the invention excludes the use of suction cups.
(Doc. 83-10). LNC contends Examiner Volz then finally rejected (Doc. 83-11) EZPZ’s
patent application essentially arguing the combination of Bass and Lion disclosed
entirely the claimed invention. (Doc. 83). LNC asserts that after a video conference
interview (Doc. 83-12), Examiner Volz and Examiner Mathew agreed the reliance on
Lion was improper, and the final rejection was withdrawn. (Doc. 83). LNC contends
that with EZPZ’s 3rd Amendment, it acknowledged the language was limiting
language and explicitly limits the scope of the claim. (Doc. 83-13). LNC asserts that
EZPZ again distinguished its invention from mats with suction cups, supporting the
non-obviousness to overcome the Examiners’ rejection. (Doc. 83). LNC states this was
done by EZPZ arguing the claim language requiring a suffuse undersurface
distinguished the invention from prior art. (Doc. 83). LNC states EZPZ amended its
claims a third time to add “entirely” as a limitation to the phrase “suffuse
undersurface.” (Doc. 83). LNC argues EZPZ’s purpose was to avoid the prior art’s
explicit teaching of adhesive (and suction cups).
LNC contends, therefore, the term suffuse requires that the entire
undersurface be flat and smooth. (Doc. 83). LNC states suffuse has its plain and
ordinary meaning “to spread,” consistent with the Webster’s dictionary definition
(Doc. 83-15) “to overspread, as with a fluid.” (Doc. 83). LNC argues this definition

23

imparts the notion of flat and smooth. (Doc. 83).

LNC contends the dictionary

definition of the term is consistent with its ordinary meaning. (Doc. 83). LNC states
suffuse is a verb, but is used as an adjective to describe the undersurface. (Doc. 83).
More specifically, LNC contends the term “suffuse” is used to describe the
undersurface 24 of planar portion 20 in the description. LNC argues their
construction is consistent with the description of suffuse undersurface 24 in the
written text and drawings of the ‘903 patent, and the prosecution history. (Doc. 83).
The Court’s Construction
Here, the Court construes the terms “an entirely suffuse undersurface” and “an
undersurface entirely suffuse upon the planar portion” in light of the context of the
‘903 patent. To construe both terms as “flat or not curved,” as LNC proposes, would
ignore the context of the specification and prosecution history, and read a limitation
in the claim that is not referenced in the claim. The prosecution history reflects that
EZPZ distinguished its product from prior art, specifically arguing that its selfsealing claims teach away from an adhesive or suction cups. (Docs. 79-7, 83-13).
EZPZ included by amendment the term “entirely” to “better disclose the entirely of
the suffuse undersurface whereby no suction cups or other irregularities or roughness
is enabled”. (Docs. 79-11, 83-13). EZPZ argued during prosecution “the self-sealing
quality of the present invention only when attempts to separate the undersurface
from an underlying surface is better enabled, whereby use of adhesives, suction cups,
or other “active” means of adherence to a surface is obviated.” (Doc. 79-11).

24

The language of the claims should receive their “ordinary and customary
meaning” unless the patentee, acting as “his own lexicographer,” used the terms in a
different manner and defined the special meaning in the patent specification or file
history.” Vitronics, Corp., 90 F.3d at 1582. EZPZ conceded during prosecution that
the term “suffuse” means “continuous” or “spread out.” (Doc. 79-11). EZPZ argued
its amendment’s “limitation that the entirety of the undersurface be rendered
‘suffuse’ with reference to the planar portion was made in order to rule out any prior
art which could be said to have a ‘suffuse undersurface’ in addition to other elements
disposed thereon, such as, for example, a plurality of suction cups intermittently
disposed upon a ‘suffuse undersurface,’ or a suffuse undersurface and an irregular,
rough, or other uneven surface.” (Doc. 79-11).
EZPZ agreed no suction cups or adhesive are necessary for the “suffuse
undersurface” to perform the “sealable contact with an undersurface.” (Doc. 79-11).
EZPZ did not, however, use the terms flat or not curved in its claims or in its
prosecution of the invention. Additionally, the specification and file history show the
“silicone or rubberlike nontoxic substrate is yielding, whereby injury from force
contact therewith is obviated.” (Doc. 79-2). Both parties submit that EZPZ argued
the invention functions on an “uneven underlying surface” (Docs. 79, 83, 84).
Having carefully reviewed the claims and the specifications, the Court adopts
EZPZ’s construction of the two terms.

The Court finds that LNC’s proposed

construction of “suffuse” as a “continuous, flat surface, as spread over with a liquid”
to be inconsistent with the intrinsic record which concedes the term “suffuse” to mean

25

“continuous” or “spread out.” The Court further finds LNC’s proposed constructions
of both “suffuse undersurface” and “undersurface entirely suffuse” used in
conjunction with “planar portion” to mean “flat and not curved” is also inconsistent
with the intrinsic record. Both proposed constructions insert a limitation which does
not appear in the claims, specification, or file history. Additionally, it is clear that
during prosecution, EZPZ amended its claims to distinguish itself from prior art, in
that “entirely” meant that the “entirely suffuse undersurface” and “undersurface
entirely suffuse” were without other elements “disposed thereon,” such as a plurality
of suction cups or adhering elements.
The Court finds that insertion of the limitations of “flat” or “not curved” would
read out the use of the terms “entirely” and “suffuse” in its context with the rest of
claims, as well as ignore the flexible property of the materials argued in the file
history. The Court finds the term “an entirely suffuse undersurface” should be
construed as “a continuous undersurface without other separate adhering elements
disposed thereon.”

The Court further finds the term “an undersurface entirely

suffuse upon the planar portion” should be construed as “an undersurface continuous
on the planar portion, without other separate adhering elements disposed thereon.”
IV.

Conclusion
For the foregoing reasons,
IT IS HEREBY ORDERED that the disputed claim terms in the ‘903 patent in

this case are construed as follows:

26

Claim Term
“A surface contact
self-sealing
integrated
tableware and
dining mat
comprising”
(preamble)
“planar portion”
(claims 1, 2, 5, 9)

“an entirely
suffuse
undersurface”
(claim 1)

“an undersurface
entirely suffuse

EZPZ’s
Construction
The preambles of
claims 1, 5, and 9
are limiting.

LNC’s
Construction
“[T]he preamble
does not provide
antecedents for
ensuing claim
terms and is
therefore not
limiting and does
not require
construction.”
“a part that
“Planar portion”
includes an area
has its plain and
that relates to a
ordinary meaning
plane”
of a flat surface. A
flat surface is one
that is not curved.
“a continuous
Suffuse is used in
undersurface
the ‘903 patent
without other
claims,
separate adhering specification and
elements disposed prosecution
thereon”
history to mean a
continuous, flat
surface, as spread
over as with a
liquid. The
remaining terms
in the phrase have
their plain and
ordinary meaning.
The phrase
“suffuse
undersurface” is
used in
conjunction with
the term “planar
portion” to
emphasize that
the undersurface
is flat and not
curved.
“an undersurface Suffuse is used in
that is continuous the ‘903 patent
27

Court’s Construction
“A surface contact
self-sealing integrated
tableware and dining
mat comprising” is
limiting. (preambles
of claims 1, 5, and 9)

“a part relating to a
plane” (claims 1, 2, 5,
9)

“a continuous
undersurface without
other separate
adhering elements
disposed thereon”

“an undersurface
continuous on the

upon the planar
portion” (Claims
5, 9)

on the planar
portion, without
other separate
adhering
elements disposed
thereon”

claims,
specification and
prosecution
history to mean a
continuous, flat
surface, as spread
over as with a
liquid. The
remaining terms
in the phrase have
their plain and
ordinary meaning.
The phrase
“undersurface
entirely suffuse” is
used in
conjunction with
the term “planar
portion” to
emphasize that
the undersurface
is flat and not
curved.

planar portion,
without other
separate adhering
elements disposed
thereon”

THUS DONE AND SIGNED in chambers in Alexandria, Louisiana, this
23rd
_______ day of April, 2018.
______________________________
Joseph H.L. Perez-Montes
United States Magistrate Judge

28