M-Edge International Corporation v. LifeWorks Technology Group LLC

Filing 71

MEMORANDUM AND ORDER re: Patent Claim Construction. Signed by Judge Marvin J. Garbis on 2/16/2016. (nd2s, Deputy Clerk)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
M-EDGE INTERNATIONAL
CORPORATION,
Plaintiff
vs.

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CIVIL ACTION NO. MJG-14-3627

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Defendant

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LIFEWORKS TECHNOLOGY
GROUP LLC,

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MEMORANDUM AND ORDER RE PATENT CLAIM CONSTRUCTION
Pursuant to the Scheduling Order, the parties have filed
materials relating to what they specify as material claim
construction issues.

The Court has held a hearing regarding

claim construction issues (a Markman1 hearing) and has had the
benefit of the arguments of counsel.

I.

BACKGROUND
A.

The Alleged Invention

Plaintiff M-Edge International Corporation ("M-Edge"] sues
Defendant Lifeworks Technology Group LLC ("Lifeworks") for
infringement of US Patent No. 8,887,910 "Low Profile Protective
Cover Configurable as a Stand" ("the '910 Patent").

1
Markman v. Westview Instruments, Inc., 517 U.S. 370, 390
(1996).

The invention "relates generally to a protective casing or
cover for an electronic device having a display, the protective
casing or cover having a very low profile that can be unfolded
to be configured as a stand for the electronic device." '910
Patent 1:6-10.

B.

The Claim Terms at Issue

Lifeworks contends that certain terms that appear in two
independent claims, claims 1 and 6,2 of the '910 Patent require
judicial construction.

M-Edge contends that all such terms have

their plain and ordinary meaning.
The claims are set forth hereafter, with the terms at issue
emphasized.
Independent Claim 1:
A protective cover for an electronic device
comprising:
a front cover;
a rear cover including a middle rear cover,
an exterior rear cover, and a folding
portion that connects the middle rear cover
to the exterior rear cover;
an articulable back that connects the rear
cover to the front cover;

2

Lifeworks has included in the Joint Claim Construction
Statement [ECF No. 28] a request to construe the term "friction
coefficient" in Claim 2 that, regretfully, presents a complete
misunderstanding of the term in question. It suffices to
observe that a "friction coefficient" is not a force.

2

a holding sheet that forms a plane and is attached
to an inner surface of the exterior rear cover and is
not attached to the middle rear cover, the
holding sheet having openings formed in the

plane and located at corners of the holding sheet to
form bands, the bands configured to attach to
corners of the electronic device for
securing the electronic device to the
protective cover; and

an anti-slip pad attached to an inner surface
of the front cover.
'910 Patent 6:52-67.
Independent Claim 6:
An electronic device casing comprising:
a front cover sheet;
a rear cover sheet including a middle
section, an exterior section, and a hinge
portion that connects the middle section to
the exterior section of the rear cover
sheet, the front cover and the rear cover
having inner surfaces that face each other
when the electronic device casing is in a
closed state;
a spine portion that connects the rear cover
sheet to the front cover sheet;

an elastic flat holding mat that forms a plane and
is attached to an inner surface of the exterior
section of the rear cover sheet and is not
attached to the middle section of the rear
cover sheet, the holding mat having openings

formed in the plane and located at corners of the
holding mat, the openings configured to pull
over corners of the electronic device so
that the openings engage with the corners of
the electronic device for securing the
electronic device to the casing; and

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an anti-slip pad attached to the inner surface
of the front cover sheet.
'910 Patent 7:17-37.
II.

DISCUSSION
A.

General Principles of Claim Construction

"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."

Innova/Pure Water, Inc. v. Safari Water

Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)
(citing Aro Mfg., Co. v. Convertible Top Replacement Co., 365
U.S. 336, 339 (1961)).
The construction of patent claims is a matter for the
Court.

Markman, 517 U.S. at 390. A court need only construe,

however, claims "that are in controversy, and only to the extent
necessary to resolve the controversy." Vivid Techs., Inc. v. Am.
Science Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
(citations omitted).
When a court relies solely upon the intrinsic evidence—the
patent claims, the specification, and the prosecution history—
the court's construction is a determination of law. See Teva
Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
"In some cases, however, the district court will need to look
beyond the patent's intrinsic evidence and to consult extrinsic

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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."

Id.

The Court must construe claim terms as they would be
understood, in the context of the patent, by one of ordinary
skill in the pertinent art.
As expressed in Phillips v. AWH Corp.:
We have frequently stated that the
words of a claim are generally given their
ordinary and customary meaning. We have
made clear, moreover, that the ordinary and
customary meaning of a claim term is the
meaning that the term would have to a person
of ordinary skill in the art in question at
the time of the invention, i.e., as of the
effective filing date of the patent
application.
. . . .
Importantly, the 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 disputed term
appears, but in the context of the entire
patent, including the specification.
415 F.3d 1303, 1312-13 (Fed. Cir. 2005)(internal quotations
omitted).
Ultimately, "in all aspects of claim construction, 'the
name of the game is the claim.'" Apple Inc. v. Motorola, Inc.,
757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998)).

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A term's context in the

asserted claim can be instructive, other asserted or unasserted
claims can aid in determining the claim's meaning, and
differences among the claim terms can also assist. Phillips, 415
F.3d at 1314-15.

"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."
Id. at 1316 (quoting Renishaw PLC v. Marposs Societa' per
Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).

B.

Construction of the Claim Terms
1.

A Sheet or Mat that forms a plane
a.

Claim 1

Claim 1 includes the limitation of "a holding sheet that
forms a plane. . . ."

'910 Patent 6:59.

Lifeworks seeks to have the Court state:
The holding sheet includes a single piece of
flexible material and forms a single plane.
Joint Cl. Constr. Stmt. 2, ECF No. 28.
The Court does not find that the claim should be construed
as limited to a holding sheet that is a single piece of
material.

Indeed, not only is this restriction absent from the

claim itself but the disclosure includes an embodiment, one of
three, in which the holding sheet "is made of two different
layers." '910 Patent 6:32-33.

The Court finds Lifeworks'

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reliance upon Retractable Techs., Inc. v. Becton, Dickinson &
Co., 653 F.3d 1296 (Fed. Cir. 2011) ("RTI") misplaced.3
In RTI, the Federal Circuit found it appropriate, in the
context of the patent there at issue, to import into claim
language a limitation that the term "body" was limited to a "one
piece body."

Id. at 1305.

The appellate court found

justification for this action in regard to a patent in which the
specifications "expressly recite that 'the invention' has a body
constructed as a single structure, expressly distinguish the
invention from the prior art based on this feature, and only
disclose embodiments that are expressly limited to having a body
that is a single piece."

Id.

The '910 Patent does not have

these three attributes.4
There is no doubt, as agreed by M-Edge, that the term "a
holding sheet" means one, i.e., not more than one, holding sheet
and the term "a" plane means one, not more than one, plane.

In

the unlikely event that any party should seek to contend that a
singular article, i.e., a, an, or the, means something other
than one, the Court will give a corrective instruction.

3

The RTI decision was not included in Lifeworks' briefing
but was relied upon at the hearing.
4
While the '910 Patent does refer to prior art disclosure of
covers having multiple parts, it does so in a context in which
there is emphasis, among other things, of such multiple parts as
protruding from a back cover, making the design thick and bulky,
subject to breakage, etc.

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Further, Defendant proposes the addition of the word
"flexible," but there is no basis for adding such a limitation
to Claim 1.

b.

Claim 6

Claim 6 includes the limitation "an elastic flat holding
mat that forms a plane. . . ."

'910 Patent 7:27.

Lifeworks seeks to have the Court state:
The flat holding mat includes a single piece
of flexible and elastic material and forms a
single plane.
Joint Cl. Constr. Stmt. 2, ECF No. 28.
As discussed above, the Court does not find it appropriate
to limit the claim to a single piece of material, the attempt to
insert the word "flexible" is baseless, and singular articles
have their ordinary meaning.

c.

All claims

As discussed at the hearing, it is possible that a juror
might think that the terms "sheet" and "mat" might have
different meanings in the context of the '910 Patent.
parties agree that the words are used interchangeably.
Court shall include this in its claim construction.

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The
The

2.

Openings at the corners
a.

Claim 1 states:

Claim 1
"openings formed in the plane

and located at the corners of the holding sheet to form
bands. . . ."

'910 Patent 6:62-63.

Lifeworks seeks to have the Court state:
Openings formed in the plane and located at
corners of the holding sheet to form bands
in that plane and the openings are coplanar
with the holding sheet.
Joint Cl. Constr. Stmt. 2, ECF No. 28.
It is, of course, true that the claim requires that the
openings are coplanar with the holding sheet.
what the claim, as drafted, clearly states.

However, that is

"Openings formed in

the plane" are, by definition, coplanar with the holding sheet
out of which the openings are formed.

Hence, no construction

is needed.

b.
Claim 6 states:

Claim 6
"the holding mat having openings formed in

the plane and located at corners of the holding mat. . . ." '910
Patent 7:30-32.

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Lifeworks seeks to have the Court state:
Openings formed in the plane and located at
corners of the holding mat and the openings
are coplanar with the holding mat.
Joint Cl. Constr. Stmt. 2, ECF No. 28.
As discussed above, openings formed in the plane from the
holding mat are, by definition, coplanar with the mat. Hence, no
construction is needed.

3.

Attached to an Inner Surface
a.

Claim 1

Claim 1 states: "a holding sheet . . . attached
to an inner surface of the exterior rear cover. . . ."

'910

Patent 6:59-60.
Lifeworks seeks to have the Court state:
The holding sheet and/or elastic flat
holding mat is directly attached to the
inner surface of the exterior rear cover by
an attachment means (such as by stitching,
adhesive glue, staples, rivets, plastic
welding, Velcro).
Joint Cl. Constr. Stmt. 2, ECF No. 28.
Lifeworks seeks to add the limitation that the holding
sheet is directly attached to the surface.

Lifeworks presents

no sound basis for adding this limitation to the claim.
Lifeworks' proposal to add the superfluous limitation of an
attachment means is rejected.

By definition, if the sheet is

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attached to the surface, it must be attached by some attachment
means.

Lifeworks proposal to add in examples of attachment

means is, at best, superfluous and, at worst misleading if
considered to state that the claim includes a limitation as to
on the type of attachment means.

4.

Anti-slip Pad
a.

Claims 15 and 6

Each of claims 1 and 6 include the limitation of "an antislip pad attached to an inner surface of the front cover. . . ."
'910 Patent 6:66-67, 7:36-37.
Lifeworks seeks to have the Court state:
The pad is attached
the front cover and
properties having a
to prevent slipping
device.

to the upper surface of
the pad has anti-slip
coefficient of friction
of the electronic

Joint Cl. Constr. Stmt. 2, ECF No. 28.
It is difficult to understand Lifeworks' proposal to limit
the surface to which the anti-slip pad is attached to "the upper
surface" rather than "an inner surface."

In the context of the

invention, relating to a "book cover" type device, reference
here to an "upper surface" of a cover might be viewed as

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Each of claims 2 and 3 depend from claim 1 and refer to
"the anti-slip pad" of Claim 1. '910 Patent 7:1, 8, 9.

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ambiguous as between an inside or outside cover.

The term

"inner surface" is clear and unambiguous.
Stating that at anti-slip pad has "anti-slip properties" is
superfluous.
Adding to independent claims 1 and 6 that the anti-slip
properties have "a coefficient of friction to prevent slipping
of the electronic device" is an unwarranted effort to have the
claims construed to create an argument (in regard to these
claims) based upon the type of anti-slip pad in an accused
device.
First, the proposed added limitation is not present in
either claim.

Second, the absence of the limitation from claim

1 is made manifest by the doctrine of claim differentiation,
which "creates a presumption that each claim in a patent has a
different scope. The difference in meaning and scope between
claims is presumed to be significant to the extent that the
absence of such difference in meaning and scope would make a
claim superfluous."

Versa Corp. v. Ag-Bag Int'l Ltd., 392 F.3d

1325, 1330 (Fed. Cir. 2004).
Ordinarily, a dependent claim has a narrower scope than the
claim from which it depends. See, e.g., Phillips, 415 F.3d at
1315. Correspondingly, an independent claim ordinarily has a
broader scope than a claim that depends from it. See, e.g., Free

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Motion Fitness. Inc. v. Cybex Int'l Inc., 423 F.3d 1343, 1351
(Fed. Cir. 2005).
Claim 1 simply states that there is an anti-slip pad.
Dependent claim 2 states:
The protective cover of claim 1,
wherein the anti-slip pad has an upper
surface having a friction coefficient, the
friction coefficient maintaining a position
of the electronic device secured by the
holding sheet. . . .
'910 Patent 7:1-4.
Thus, in the context of the instant patent, the Court finds
that the dependent claim 2 requirement of an anti-slip pad
operating by means of a friction coefficient is a persuasive
indicator that the anti-slip pad limitation of Claim 1 may
include a different type of anti-slip pad, such as one that
operates by means of cavities or ridges.

III. CONCLUSION
For the foregoing reasons, the Court concludes the
following with regard to the construction of the claim terms at
issue:
1.

All terms used in the patent claims are given
their plain and ordinary meaning.

2.

In all claims, the singular articles a, an, and
the, have a singular meaning. For example, "a
tree" would mean exactly one tree, not any other
number of trees.

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3.

In all claims, the words "sheet" and "mat" have
the same meaning.

SO ORDERED, on Tuesday, February 16, 2016.

/ s /
Marvin J. Garbis
United States District Judge

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