Inline Plastics Corp. v. Lacerta Group, Inc.
Filing
53
District Judge Timothy S. Hillman: ORDER AND MEMORANDUM entered on claim construction. (Castles, Martin)
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
_______________________________________
)
INLINE PLASTICS CORP.,
)
Plaintiff,
)
)
LACERTA GROUP, INC.,
)
Defendant.
)
______________________________________ )
CIVIL ACTION
NO. 4:18-11631-TSH
ORDER AND MEMORANDUM ON CLAIM CONSTRUCTION (Docket Nos. 39 & 40)
December 4, 2019
HILLMAN, D.J.
This is a patent infringement suit involving tamper-resistant/tamper-evident containers.
Inline Plastics Corp. (“Inline”) seeks a judgment that Lacerta Group, Inc. (“Lacerta”), a
competing manufacturer, infringes upon one or more claims of its patents: U.S. Patent No.
7,118,003 (the “’003 Patent”), U.S. Patent No. 7,073,680 (the “’680 Patent”), U.S. Patent No.
9,630,756 (the “’756 Patent”), U.S. Patent No. 8,795,580 (the “’580 Patent”), and U.S. Patent
No. 9,527,640 (the “’640 Patent”) (collectively, the “Inline Patents”). Lacerta seeks declaratory
judgment that its product does not infringe the Inline Patents and/or that the Inline Patents are
invalid under 35 U.S.C. §§ 102–03, 112. 1 On November 6, 2019, the Court held a Markman
hearing and listened to the parties’ proposed constructions for the following disputed terms: (1)
1
Section 102 pertains to the requirement of novelty, i.e., whether an invention is new.
Section 103 pertains to the requirement of non-obviousness, i.e., whether an invention would
have been obvious to a person of ordinary skill in the art. Section 112 pertains to the
requirement that a patent specification “contain a written description of the invention, . . . , [in]
clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, . . .,
to make and use the same, and shall set forth the best mode contemplated by the inventor . . . of
carrying out the invention.”
“[upwardly projecting] bead;” (2) “at least in part;” (3) “relatively inaccessible;” (4) “hinder
access;” (5) “tamper evident bridge;” (6) “projection” or “arm;” (7) “configured to substantially
surround the outwardly extending peripheral flange of the cover portion;” (8) “configured to
substantially surround an edge of the outwardly extending peripheral flange of the cover
portion;” and (9) “the outwardly extending peripheral flange abuts the upper peripheral rim of
the base portion.”
Background
The Inline Patents are variously entitled “Tamper Resistant Container with TamperEvident Feature and Method of Forming the Same,” “Methods of Manufacturing TamperResistant and Tamper Evident Containers,” and “Tamper-Resistant and Tamper Evident
Containers.” They share similar specifications and figures and are all directed to “containers and
packaging that incorporate tamper-resistant and tamper-evident features.” ’003 Patent col.1 l.16–
19; ’680 Patent col.1 l.18–21; ’756 Patent col.1 l.25–28; ’580 Patent col.1 l.21–23; ’640 Patent
col.1 l.23–26. Specifically, they describe a container incorporating a non-replaceable strip that a
consumer must sever before they can remove the cover portion from the base portion. ’003
Patent col.6 l.55–67; ’680 Patent col.7 l.18–30; ’756 Patent col.6 l.23–35; ’580 Patent col.6 l.12–
23; ’640 Patent col.6 l.23–35.
Indefiniteness
1. Legal Standard
Indefiniteness is a question of law which implicates underlying factual findings. See
Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1299 (Fed. Cir. 2010).
“[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating
the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in
2
the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898,
901 (2014). Terms of degree are not inherently indefinite. Interval Licensing LLC v. AOL, Inc.,
766 F.3d 1364, 1370 (Fed. Cir. 2014). A claim may employ terms of degree if it “provide[s]
enough certainty to one of skill in the art when read in the context of the invention” for a skilled
artisan to identify the metes and bounds of the claim. Id.
2. Discussion
Lacerta contends that the terms “at least in part,” “relatively inaccessible,” and “tamper
evident bridge” are indefinite. 2 First, as to “at least in part,” Lacerta argues that a skilled artisan
would not understand the metes and bounds of this term because the patent fails to explain what
else may form the relevant structures aside from the specified components (i.e., what else may
form the upper peripheral edge aside from the upwardly projecting bead, the cover portion aside
from a sheet of plastic material, or the circumferential engagement sealing interface aside from a
plurality of arcurate segments and rounded corner portions). (Docket No. 39 at 10–11). The
Court disagrees that the lack of information as to what else may form these structures renders the
terms indefinite. A skilled artisan would recognize that the claims cover any structure
incorporating the specified components. 3
2
The Court declines Lacerta’s invitation to postpone ruling on indefiniteness until
summary judgment. The parties have fully briefed the issue, and although Lacerta contends that
Inline has failed to produce documents relevant to the indefiniteness inquiry, the Court disagrees.
Inline provided evidence that it has produced every record of a foreign patent prosecution in its
control, and in any event, as explained in more detail below, the Court would not find the
decision of foreign patent offices sufficiently persuasive to overcome the clear guidance of the
claim language and specification as to the scope of the challenged terms.
3
Lacerta cites to Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200 (Fed. Cir. 1991). In
Amgen, the Federal Circuit considered the term “at least about” and found it indefinite because
“nothing in the specification, prosecution history, or prior art provides any indication as to what
range of specific activity is covered by the term ‘about.’” Id. at 1218. Here, in contrast, “at least
in part” covers any upper peripheral edge containing an upwardly projecting bead, any cover
3
Second, as to “relatively inaccessible,” Lacerta argues that this Court should find the term
indefinite because the Canadian Patent Office found the same language indefinite in the
prosecution of a related Canadian patent application. (Docket No. 39 at 17–18). The decision of
the Canadian Patent Office does not bind this Court, see, e.g., Aia Eng’g Ltd. v. Magotteaux Int’l
S/A, 657 F.3d 1264, 1279 (Fed. Cir. 2011), and this Court disagrees with the result reached. 4
The patents provide sufficient guidance for a skilled artisan to understand the scope of the term.
They only use “relatively inaccessible” in the context of the upwardly projecting bead, and the
specification explains that the upwardly projecting bead makes the outwardly extending
peripheral flange of the cover portion relatively inaccessible by surrounding it and physically
blocking 5 access to it. See, e.g., ’003 Patent col.5 l.67; ’680 Patent col.6 l.32; ’756 Patent col.5
l.37. A skilled artisan would understand the metes and bounds of “relatively inaccessible” based
on this description.
Finally, as to “tamper evident bridge,” Lacerta argues that the term is indefinite because it
has no antecedent basis in the ’003 Patent and was only added during prosecution to differentiate
prior art references. The Court disagrees. The claim language sufficiently delineates the scope
of the term. Claim 1 describes the tamper evident bridge as connecting the cover portion to the
base portion. ’003 Patent col.8 ll.64–65. Claim 2 adds the limitation that the tamper evident
bridge includes a hinge with a frangible section that joins the outwardly extending flange of the
cover portion to the base portion and forms a projection when severed. ’003 Patent col.8 l.66–
portion containing a sheet of plastic material, and any circumferential engagement sealing
interface containing a plurality of arcurate segments and rounded corner portions.
4
The Court also notes that the Examiner for the ’756 Patent allowed claims using the term
“relatively inaccessible” despite having been informed of the Canadian rejection.
5
The Court rejects the suggestion that physically blocking access to something makes it
100% inaccessible. (Docket No. 39 at 19). That the upwardly projecting bead physically blocks
access to the outwardly extending peripheral flange does not mean that access is impossible.
4
col.9 l.7. And Claim 24 focuses on making the container leak-proof after the tamper evident
bridge is removed. ’003 Patent col.10 ll.56–59. As Inline’s expert testified, a skilled artisan
would understand what a “tamper evident bridge” is based on this language. (Docket No. 40-6 at
10–16). The claim language, moreover, is consistent with the figures and description in the
specification of the ’003 Patent, which, despite not explicitly defining a “tamper evident bridge,”
does describe how it operates, e.g., how the cover and base are connected and how that relates to
frangible section of the hinge. Thus, the Court declines to find “tamper evident bridge” invalid
for indefiniteness.
Claim Construction
1. Legal Standard
Claim construction is a question of law decided by the court. See Markman v. Westview
Instruments, Inc., 517 U.S. 370, 372 (1996). It “requires a determination as to how a person of
ordinary skill in the art would understand a claim term ‘in the context of the entire patent,
including the specification.’” Trustees of Columbia Univ. in City of New York v. Symantec
Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016) (quoting Phillips v. AWH Corp., 415 F.3d 1303,
1313 (Fed. Cir. 2005) (en banc)). Courts begin the analysis by looking to the language of the
claims themselves. Id. In many instances, how a term is expressly used “within the claim
provides a firm basis for construing the term.” Phillips, 415 F.3d at 1314.
After assessing the language of the claims, courts turn to the specification, “of which [the
claims] are a part.” Markman, 52 F.3d at 979. The specification describes the invention to
which the claims are directed. Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir.
2001) (“The claims are directed to the invention that is described in the specification; they do not
have meaning removed from the context from which they arose.”). It “is the ‘single best guide to
5
the meaning of a disputed term’ and ‘is, thus, the primary basis for construing the claims.’”
Symantec, 811 F.3d at 1362 (quoting first Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996), then Phillips, 415 F.3d at 1315)).
Courts also consider the patent’s prosecution history. Symantec, 811 F.3d at 1362–63.
“The prosecution history . . . consists of the complete record of the proceedings before the PTO
and includes the prior art cited during the examination of the patent.” Philips, 415 F.3d at 1317.
It “inform[s] the meaning of the claim language by demonstrating how the inventor understood
the invention.” Id.
Finally, a court may consult extrinsic evidence, which is “all evidence external to the
patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
treatises.” Id. Extrinsic evidence guides the analysis of how “a person of ordinary skill in the art
would understand claim terms.” Id. at 1319. But because extrinsic evidence is subject to bias
and may not reflect the knowledge of a person of ordinary skill in the art at the time of the
invention, courts “view[] extrinsic evidence in general as less reliable than the patent and its
prosecution history in determining how to read claim terms.” Id. at 1318.
2. Discussion
A. “[Upwardly projecting] bead”
Inline argues that the term “upwardly projecting” is self-explanatory and that the Court
need only construe “bead.” (Docket No. 40 at 11). Lacerta argues that the Court should construe
the term “upwardly projecting bead” in its entirety. The parties agree that the Court can consider
these terms together. (Docket No. 38 at 3). The proposed constructions of the disputed claims
are as follows:
6
CLAIMS
’003 Patent, Claims 1, 2,
17, 19-21
’680 Patent, Claims 1, 2,
17
INLINE’S
CONSTRUCTION
An [upwardly projecting]
raised molding formed on the
upper peripheral edge of the
base portion.
LACERTA’S
CONSTRUCTION
Raised portion of the upper
peripheral edge that surrounds
the outer edge of the outwardly
extending peripheral flange.
’640 Patent, Claim 5
There is no support for Inline’s construction in the language of the claims. 6 The claims
do not describe the bead as a molding; they only describe the bead as part of the upper peripheral
edge of the base.
There is some support in the claim language for Lacerta’s construction. The claims of the
’640 Patent describe the upwardly projecting bead as “extending substantially about the
perimeter of the base portion and configured to substantially surround an edge of the outwardly
extending peripheral flange of the cover portion to hinder access to the container when the
container is closed.” ’640 Patent col.12 l.24–29. The claims of the ’003 and ’680 Patents,
however, do not mention surrounding the outer edge of the outwardly extending peripheral
6
There is also no support for Inline’s construction in the specifications. They only
mention “molding” in reference to manufacturing containers. See, e.g., ’003 Patent col.7 ll.38–
40, ll. 45–46.
7
flange. They describe the upwardly projecting bead as “extending substantially about the
perimeter of the base portion and configured to render the outwardly extending flange of the
cover portion relatively inaccessible when the container is closed.” ’003 Patent col.8 ll.59–63,
col.10 l.5–9; ’680 Patent col.10 ll.17–18, col.11 ll.54–55. Thus, some discrepancies exist within
the claim language defining the “upwardly projecting bead.”
The specifications provide guidance on how to resolve any ambiguity. All three refer to
the upwardly projecting bead as “extend[ing] substantially about the perimeter of peripheral rim
22 and . . . positioned to surround the outer edge of flange 24 of cover portion 12 when container
10 is closed.” ’003 Patent col.6 ll.1–5; ’680 Patent col.6 ll.33–37; ’640 Patent col.5 ll.38–42.
Each specification also explains that this position “hinders,” “physically impedes,” or
“physically blocks” “access . . . from fingers or any other object that might normally be used for
leverage to pry cover portion 12 from base portion 14.” ’003 Patent col.6 ll.5–13; ’680 Patent
col.6 ll.37–44; see also ’003 Patent col.6 ll.55–57 (“The presence of bead 34 prevents
unauthorized access to the contents of container 10 by making it difficult to pull cover portion 12
from base portion 14.”); ’680 Patent col.7 ll.18–20 (same); ’640 Patent col.5 ll.42–49 (same). In
other words, consistent with Lacerta’s proposed construction, only by surrounding the outwardly
extending peripheral edge of the cover with the raised portion of the upper peripheral edge of the
base does the container achieve what both parties agree is the functional purpose of the upwardly
projecting bead. (Docket Nos. 39 at 14, 40 at 12).
Inline contends that, under the doctrine of claim differentiation, Claim 5 of the ’640
Patent would be superfluous if the relevant limitation (wherein the upwardly projecting bead is
“configured to substantially surround an edge of the outwardly extending peripheral flange of the
cover portion to hinder access to the container when the container is closed”) inherently applied
8
to the upwardly projecting bead. But no other claim in the ’640 Patent mentions the upwardly
projecting bead, and Inline cites no law suggesting that the claims of a different patent can render
Claim 5 of the ’640 Patent superfluous, so it is not clear the doctrine of claim differentiation is
relevant. And in any event, the doctrine of claim construction is not a “hard and fast rule of
construction,” Kraft Foods v. Int’l Trading Co., 203 F.3d 1362, 1368 (Fed. Cir. 2000), and it
“can not broaden claims beyond their correct scope, determined in light of the specification and
the prosecution history and any relevant extrinsic evidence.” Multiform Desiccants Inc. v.
Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998).
Inline more persuasively argues that Lacerta’s construction improperly limits the
upwardly projecting bead to a single configuration. (Docket No. 40 at 12). Courts are generally
reluctant to narrow a term to the preferred embodiment. See, e.g., Curtiss-Wright Flow Control
Corp. v. Velan, Inc., 438 F.3d 1374, 1379 (Fed. Cir. 2006); see also Teleflex, Inc. v. Ficosa N.
Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002). But “[t]he specification provides . . . context
and substantial guidance on the meaning of” disputed terms. Id. Here, the specification
indicates that the upwardly projecting bead hinders access to or renders inaccessible the contents
of the container because the bead surrounds the edge of the cover portion. Moreover, every
drawing in the specification—including Figure 10, which “illustrat[es] in particular the manner
in which the upwardly projecting bead on the base portion physically prevents access to the outer
edge of the cover portion”—shows the upwardly projecting bead surrounding the edge of the
outwardly extending peripheral flange of the cover portion.
9
In sum, the Court finds Lacerta’s construction more persuasive. Accordingly, the Court
construes “upwardly projecting bead” to mean “raised portion of the upper peripheral edge that
substantially 7 surrounds the outer edge of the outwardly extending peripheral flange.”
B. “At least in part”
The proposed constructions of the disputed claims are as follows:
CLAIMS
’003 Patent, Claims 1, 17
’680 Patent, Claims 1, 17
INLINE’S
CONSTRUCTION
Plain and ordinary meaning.
LACERTA’S
CONSTRUCTION
Indefinite.
In the alternative: Partially or
entirely.
’580 Patent, Claim 15
The language of the claims and their specifications refer to an “upper peripheral edge
forming at least in part an upwardly projecting bead.” Inline proposes that the ordinary meaning
of “at least in part” applies. Lacerta provides no alternative definition. Accordingly, the Court
construes “at least in part” to have its plain and ordinary meaning.
C. “Relatively inaccessible”
The proposed constructions of the disputed claims are as follows:
CLAIMS
’003 Patent, Claims 1, 17
’680 Patent, Claims 1, 17
’756 Patent, Claim 1
INLINE’S
CONSTRUCTION
Plain and ordinary meaning.
LACERTA’S
CONSTRUCTION
Indefinite.
In the alternative: More
difficult to access than in
conventional containers.
In the alternative: Physically
impedes access from fingers or
any other object to separate the
cover portion from the base
portion.
7
Lacerta’s proposed construction does not include the word “substantially,” but the claims
and specification speak of “substantially surround[ing]” the outwardly extending peripheral
flange.
10
The claims of the ’003 Patent, the ’680 Patent, and ’756 Patent only use “relatively
inaccessible” in connection with the upwardly projecting bead. And the specifications note that
the upwardly projecting bead is designed to “hinder the relatively easy method of removing a
cover from conventional containers that may resemble or have characteristics in common with
container 10” and “physically blocks access to the edge of peripheral flange 24 on cover portion
12 from fingers or any other object that might normally be used for leverage to pry cover portion
12 from base portion 14.” ’003 Patent col.6 ll.5–13; ’680 Patent col.6 ll.37–44; ’756 Patent col.5
ll.42–49.
Inline offers evidence of the ordinary meaning of “relatively inaccessible.” “[C]laim
terms take on their ordinary and accustomed meanings unless the patentee demonstrated an
intent to deviate from the ordinary and accustomed meaning of a claim term by redefining the
term or by characterizing the invention in the intrinsic record using words or expressions of
manifest exclusion or restriction, representing a clear disavowal of claim scope.” Teleflex, 299
F.3d at 1327 (Fed. Cir. 2002). “Relatively” means “to a relative degree or extent.” Docket No.
39-10 at 2; Relatively Definition, Merriam-Webster.com, http://www.merriamwebster.com/dictionary/relatively (last visited December 4, 2019). Inaccessible means not
accessible. Inline argues that it did not disavow this ordinary meaning and that Lacerta’s
construction improperly limits the term to one example in the specification. The Court disagrees.
The claims only use “relatively inaccessible” in the context of the upwardly projecting bead, and
the specification explains that the upwardly projecting bead makes the outwardly extending
peripheral flange of the cover portion relatively inaccessible by surrounding it and physically
blocking access to it. ’003 Patent col.5 l.67; ’680 Patent col.6 l.32; ’756 Patent col.5 l.37.
11
Accordingly, the Court construes “relatively inaccessible” to mean “physically impedes access
from fingers or any other object to separate the cover portion from the base portion.”
D. “Hinder access”
The proposed constructions of the disputed claims are as follows:
CLAIMS
’580 Patent, Claims 1, 15
’640 Patent, Claim 5
INLINE’S
CONSTRUCTION
Plain and ordinary meaning.
In the alternative: Makes
more difficult to access than
in conventional containers.
LACERTA’S
CONSTRUCTION
Physically impedes access from
fingers or any other object to
separate the cover portion from
the base portion.
The claims of the ’580 and ’640 Patents only use “hinder access” in connection with the
upwardly projecting bead. And the specifications note that the upwardly projecting bead is
designed to “hinder the relatively easy method of removing a cover from conventional containers
that may resemble or have characteristics in common with container 10.” ’580 Patent col.5
ll.32–35; ’640 Patent col.5 ll.42–45. The specifications further describe that, as is best seen in
Figure 10, the bead “physically blocks access to the edge of peripheral flange 24 on cover
portion 12 from fingers or any other object that might normally be used for leverage to pry cover
portion 12 from base portion 14.” ’580 Patent col.5 ll.35–39; ’640 Patent col.5 ll.45–49.
Inline offers evidence of the ordinary meaning of “hinder.” As noted above, “claim terms
take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to
deviate from the ordinary and accustomed meaning of a claim term by redefining the term or by
characterizing the invention in the intrinsic record using words or expressions of manifest
exclusion or restriction, representing a clear disavowal of claim scope.” Teleflex, 299 F.3d at
1327. To “hinder” means to “make slow or difficult the progress of,” “to hold back,” or “to
delay, impede, or prevent action.” Docket No.44-3 at 2; Hinder Definition, Merriam-
12
Webster.com, http://www.merriam-webster.com/dictionary/hinder (last visited December 4,
2019). Inline argues that did not disavow this ordinary meaning and that Lacerta’s construction
improperly limits the term to one example in the specification. The Court disagrees. The claims
only use “hinder access” in the context of the upwardly projecting bead, and the specification
explains that the upwardly projecting bead hinders access to the outwardly extending peripheral
flange of the cover portion by surrounding it and physically blocking access to it. Accordingly,
the Court construes “hinder access” to mean “physically impedes access from fingers or any
other object to separate the cover portion from the base portion.”
E. “Tamper evident bridge”
The proposed constructions of the disputed claims are as follows:
CLAIMS
’003 Patent, Claims 1, 2,
24
INLINE’S
CONSTRUCTION
Structure that includes at least
one severable score line or
perforation line, which once
severed provides evidence
that tampering has occurred.
LACERTA’S
CONSTRUCTION
Indefinite.
The Federal Circuit has already construed the term “tamper evident bridge” to mean “a
structure that connects the lid and base portions of the container and also contains a removable
tear strip, delimited by at least one severable score line, which once removed provides evidence
that tampering has occurred.” Under the principles of stare decisis, this Court is bound by that
construction and thus adopts it here. See Amgen, Inc. v. F. Hoffmann-La Roche Ltd., 494 F.
Supp. 2d 54, 60–61 (D. Mass. 2007); see also Exergen Corp. v. Kids-Med, Inc., 189 F. Supp. 3d
237, 244 (D. Mass. 2016).
F. “Projection” or “arm”
The proposed constructions of the disputed claims are as follows:
13
CLAIMS
’003 Patent, Claims 2, 17,
19–21
’680 Patent, Claims 2, 17
INLINE’S
CONSTRUCTION
Plain and ordinary meaning.
In the alternative: Outwardly
extending material or
structure.
’756 Patent, Claim 1, 7, 8
LACERTA’S
CONSTRUCTION
Structure that extends out from
the [cover / base] portion that
has substantially the same length
as the portion of the outwardly
extending flange not surrounded
by the [upwardly projecting bead
/ upper peripheral rim].
’580 Patent, Claims 1, 15
’640 Patent, Claim 6
Inline contends that this Court should construe the terms according to their plain and
ordinary meanings. See Teleflex, 299 F.3d at 1327. To “project” means “to jut out.” Docket No.
44-2 at 2; Project Definition, Merriam-Webster.com, http://www.merriamwebster.com/dictionary/project (last visited December 4, 2019). A “projection” or an “arm” is
thus something that juts out.
There is no indication that Inline disclaimed the ordinary meaning of “projection” or
“arm” in the claim language or specifications of its patents. The claims describe the arm or
projection as “extend[ing] out beyond the upwardly projecting bead of the upper peripheral edge
of the base portion, for facilitating removal of the cover portion from the base portion to open the
container.” ’003 Patent col.9 ll.3–7, col.10 ll.13–15, col.10 ll.22–48; ’680 col.10 ll.35–40, col.12
ll.1–6; ’756 Patent col.12 ll.1–6, col.12 ll.25–30; ’580 col.11 ll.18–27, col.12 ll.42–49; ’640
col.12 ll.30–36. And the specifications reference “an upper outwardly projecting arm 36
connected to base portion 14, and a similar lower outwardly projecting arm 38, which is
connected to cover portion 12.” ’003 Patent col.6 ll.14–16; ’680 Patent col.6 ll.45–47; ’756
Patent col.5 ll.50–52; ’580 Patent col.5 ll.40–42; ’640 Patent col.5 ll.50–52. The “[u]pper and
lower arms 36 and 38 are joined together by a common attachment to frangible strip 18 to form
hinge 16.” ’003 Patent col.6 ll.20–22; ’680 Patent col.6 ll.51–53; ’756 Patent col.6 ll.56–58;
14
’580 Patent col.5 ll.46–48; ’640 Patent col.5 ll.56–58. When a consumer removes the frangible
strip, the arms “can be used to facilitate removal of the cover portion 12 from base portion 14
. . . .” ’003 Patent col.6 ll.49–54; ’680 Patent col.7 ll.12–17; ’756 Patent col.6 ll.17–22; ’580
Patent col.6 ll.6–11; ’640 Patent col.6 ll.17–22.
Lacerta asserts that the prosecution history of the ’580 Patent supports its more limited
construction. Inline added the limitation that the frangible strip is formed along at least one edge
of the area proximate to where the cover and base portions meet and severing the frangible strip
creates “a projection forming one of two opposed and spaced apart arms . . . extending from the
base portion and cover portion for facilitation removal of the cover portion from the base portion
to open the container.” (Docket No. 39-12 at 2). But even assuming that this amendment, which
was deleted in the final version, could help define the term “projection” or “arm,” it in no way
suggests that the projection must be the same length as the portion of the outwardly extending
flange not surrounded by the upwardly projecting bead or upper peripheral rim. It thus cannot
constitute clear disavowal of the ordinary meaning of the terms.
Accordingly, the Court construes “projection” or “arm” in line with the plain and
ordinary meaning of the terms.
G. “Configured to substantially surround the outwardly extending peripheral flange of
the cover portion”
The proposed constructions of the disputed claims are as follows:
CLAIMS
’756 Patent, Claim 1
’580 Patent, Claims 1, 15
INLINE’S
CONSTRUCTION
Arranged to extend beyond
the perimeter of the outwardly
extending peripheral flange of
the cover portion when the
container is closed and hinder
access thereto.
15
LACERTA’S
CONSTRUCTION
For inner edge of the upper
peripheral rim to physically
block access to the edge of the
outwardly extending flange by
being in close proximity to and
extending at least the height of
the outwardly extending flange.
The claims describe an “upper peripheral rim extending substantially about the perimeter
of the container and configured to substantially surround the outwardly extending peripheral
flange of the cover portion” to either “render the outwardly extending peripheral flange of the
cover portion relatively inaccessible when the container is closed” or “hinder access to the
container when the container is closed.” ’756 Patent col.11l.24–30; ’580 Patent col.11 ll.6–11;
see also ’580 Patent col.12 ll.31–34. The specifications mention substantially surrounding the
outwardly extending peripheral flange of the cover portion in the context of the upwardly
projecting bead, which is part of the upper peripheral rim. See, e.g., ’756 Patent col.9 ll.29–34;
’580 Patent col.5 ll.28–31. They explain that surrounding the outwardly extending peripheral
flange “hinders,” “physically impedes,” or “physically blocks” “access . . . from fingers or any
other object that might normally be used for leverage to pry cover portion 12 from base portion
14.” ’756 Patent col.5 ll.42–49; ’580 Patent col.5 ll.32–30; see also ’756 Patent col.9 ll.45–51;
’580 Patent col.9 ll.29–34.
The Court finds that neither party’s proposed construction is entirely accurate. While the
Court agrees with Lacerta that it should interpret “configured to substantially surround the
outwardly extending peripheral flange of the cover portion” consistently with the upwardly
projecting bead, 8 Lacerta offers no support in the intrinsic or extrinsic evidence for including
height and proximity limitations to any construction of this term. And besides pointing to two
figures in the patents consistent with its definition, Inline does not explain the basis for inclusion
8
The specification, after all, provides for the bead to surround the outwardly extending
peripheral flange. But the Court notes that, although the specification only refers to the
upwardly projecting bead as surrounding the outwardly extending peripheral flange, Lacerta has
submitted no evidence that Inline disclaimed a configuration in which other portions of the upper
peripheral rim also surround the outwardly extending flange.
16
of the limitation of “extending beyond the perimeter.” The patents only describe the upper
peripheral rim as extending “substantially about the perimeter,” not beyond it. ’756 Patent col.5
ll.37–42; ’580 Patent col.5 ll.27–31.
Accordingly, the Court construes the term to mean “configured to physically impede
access to the outwardly extending flange of the cover portion when the container is closed.”
H. “Configured to substantially surround an edge of the outwardly extending
peripheral flange of the cover portion”
The proposed constructions of the disputed claims are as follows:
CLAIMS
’640 Patent, Claim 5
INLINE’S
CONSTRUCTION
Arranged to extend beyond an
edge of the outwardly
extending peripheral flange of
the cover portion when the
container is closed and hinder
access thereto.
LACERTA’S
CONSTRUCTION
For inner edge of the upwardly
projecting bead to physically
block access to the edge of the
outwardly extending flange by
being in close proximity to and
extending at least the height of
the outwardly extending flange.
The only relevant difference between this term and the previously construed term is in the
addition of “an edge of.” 9 For the same reasons explained above, the Court construes
“configured to substantially surround an edge of the outwardly extending peripheral flange of the
cover portion” to mean “configured to physically impede access to an edge of the outwardly
extending flange of the cover portion when the container is closed.”
I. “The outwardly extending peripheral flange abuts the upper peripheral rim of the
base portion”
The proposed constructions of the disputed claims are as follows:
9
The Court notes, however, that Claim 5 specifically refers to the upwardly projecting
bead surrounding an edge of the outwardly extending peripheral flange rather than the upper
peripheral rim generally.
17
CLAIMS
’640 Patent, Claim 1
INLINE’S
CONSTRUCTION
Plain and ordinary meaning.
In the alternative: The
outwardly extending
peripheral flange is adjacent
to the upper peripheral rim of
the base portion.
LACERTA’S
CONSTRUCTION
Access to the external edge of
the outwardly extending flange
is physically blocked by being in
close proximity to and extending
vertically in height at least a
portion of the height of the inner
edge of the upper peripheral rim.
Inline contends that this Court should construe the terms according to their plain and
ordinary meanings. See Teleflex, 299 F.3d at 1327. Inline alleges, without support, that the plain
and ordinary meaning of the term is “adjacent” to. The Court disagrees. To “abut” means to
“border on” or “touch along an edge.” Docket No. 39-13 at 2; Abut Definition, MerriamWebster.com, http://www.merriam-webster.com/dictionary/abut (last visited December 4, 2019).
There is no indication that Inline disclaimed this ordinary meaning in the claim language
or specification of the ’640 Patent. Claim 1 describes that, “when the container is closed, the
outwardly extending peripheral flange of the cover portion abuts the upper peripheral rim of the
base portion and the upper peripheral rim of the base portion extends beyond an outer edge of the
outwardly extending peripheral flange of the cover portion substantially about the perimeter of
the container.” ’640 Patent col.11 ll.29–35. And the specification notes that, “[w]hen cover
portion 12 is closed on base portion 14,” the “outwardly extending peripheral flange 24 on cover
portion 12 abuts upper peripheral rim 28 on base portion 14.” ’640 Patent col.5 ll.29–34.
Neither reference is inconsistent with “to border on” or “to touch along an edge.”
Accordingly, the Court construes “the outwardly extending peripheral flange abuts the
upper peripheral rim of the base portion” to have its plain and ordinary meaning. In other words,
the outwardly extending peripheral flange borders upon or touches the upper peripheral rim of
the base portion.
18
Conclusion
For the reasons set forth above, this Court construes the disputed claims as follows:
DISPUTED CLAIMS
“[Upwardly projecting]
bead”
“At least in part”
THE COURT’S CONSTRUCTION
Raised portion of the upper peripheral edge that substantially
surrounds the outer edge of the outwardly extending peripheral
flange
Plain and ordinary meaning
“Relatively inaccessible” Physically impedes access from fingers or any other object to
separate the cover portion from the base portion
“Hinder access”
Physically impedes access from fingers or any other object to
separate the cover portion from the base portion
“Tamper evident bridge”
A structure that connects the lid and base portions of the container
and also contains a removable tear strip, delimited by at least one
severable score line, which once removed provides evidence that
tampering has occurred
Plain and ordinary meaning
“Projection” or “arm”
“Configured to
substantially surround
the outwardly extending
peripheral flange of the
cover portion”
“Configured to
substantially surround an
edge of the outwardly
extending peripheral
flange of the cover
portion”
“The outwardly
extending peripheral
flange abuts the upper
peripheral rim of the
base portion”
Configured to physically impede access to the outwardly extending
flange of the cover portion when the container is closed
Configured to physically impede access to an edge of the outwardly
extending flange of the cover portion when the container is closed
Plain and ordinary meaning
19
SO ORDERED
/s/ Timothy S. Hillman
TIMOTHY S. HILLMAN
DISTRICT JUDGE
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