Choon's Design, LLC v. Zenacon, LLC et al

Filing 161

OPINION and ORDER Construing Patent Claim Terms: Granting in Part and Denying in Part #155 , #156 , and #157 MOTIONS by Choon's Design, LLC and Idea Village. Signed by District Judge Laurie J. Michelson. (JJoh)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
CHOON’S DESIGN, LLC,
Plaintiff and Counter-Defendant,
v.

Case No. 2:13-cv-13568
Honorable Laurie J. Michelson
Magistrate Judge R. Steven Whalen

IDEA VILLAGE PRODUCTS CORP.,
Defendant and Counter-Claimant.
OPINION AND ORDER CONSTRUING PATENT CLAIM TERMS
For the past few years, looms that help link a number of small, colorful elastic bands to
create bracelets, necklaces, and the like have been extremely popular, especially among schoolaged children. Choon’s Design Inc. (“Choon”) introduced its highly-successful version of this
product, the Rainbow Loom, in late 2011. It has since sold over five million of them. Choon says
the Rainbow Loom’s success spawned a number of unlawful imitations. In this case (the first of
twelve Choon filed in this District), Choon accuses IdeaVillage Products Corporation, which
sells a competing product called the Fun Loom, of infringing two of its utility patents: United
States Patent No. 8,485,565 (“the ’565 patent”) and United States Patent No. 8,684,420 (“the
’420 patent”).
The parties dispute the meaning of the claims of these two patents. As with all patents, it
is the claims that define the patent holder’s exclusive territory: a competing product infringes a
patent only if the device has every feature, or every “limitation,” set out in one of the patent’s
claims. SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988).
Choon seeks an interpretation, or “a construction,” of the claims such that they cover the Fun

Loom, while IdeaVillage seeks constructions that narrow Choon’s exclusive territory such that
the claims do not cover the Fun Loom.
The parties ask the Court to resolve their dispute about the scope of two claims of the
’565 patent and one claim of the ’420 patent by declaring the meaning of ten claim terms.
Having been advised by extensive briefing, the case law, and a Markman hearing, the Court
issues this opinion explaining its construction of certain claim terms in dispute. See generally
Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). In brief, the Court finds that
claims 9 and 14 of the ’565 patent do not cover one-piece looms with “pin bars” that are
integrated with the “base” while claim 3 of the ’420 patent does cover looms with “pins” that are
integrated with the “base.” A list of the Court’s constructions appears at the end of this opinion.
I.
A.
There are two patents in suit: United States Patent No. 8,485,565 and United States
Patent No. 8,684,420. The parties ask the Court to construe terms in claims 9 and 14 of the ’565
patent and terms in claim 3 of the ’420 patent. What follows is an overview of the two patents
and these three claims.
1.
The United States Patent and Trademark Office issued the ’565 patent on July 16, 2013.
(Dkt. 150, Jt. Claim Constr. App’x Ex. 1, ’565 patent.) The patent “relates to a method and
device for creating a linked wearable item from elastic bands.” (’565 patent col. 1, ll. 14–16.) At
slightly greater specificity, the patent is directed toward creating wearable items from Brunnian
links, which the patent defines as “a link formed from a closed loop doubled over itself to

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capture another closed loop to form a chain.” (’565 patent col. 1, ll. 31–33.) A Brunnian link (20)
is depicted below:

(’565 patent Fig. 3.) With enough such links, one can create a wearable item like this bracelet:

(’565 patent Fig. 2.)
Claim 9 of the ’565 patent describes a kit for creating items like the bracelet shown
above. With limitations inherited from claim 1,1 claim 9 gives Choon the exclusive rights to
anything fitting this description:

1

Claim 9 is a “child” or “dependent” of claim 1. This means that it “inherits” all the
limitations of its “parent” or “independent” claim 1. When a patentee wants to make a new,
narrower claim by adding a limitation to an existing claim, instead of rewriting all the limitations
in the earlier claim again, the patentee incorporates those limitations by reference. Thus, when
properly drafted, child claims necessarily have narrower scope than their parents.
Although claim 1 of the ’565 patent has broader scope than claim 9 then, Choon asserts
infringement of claim 9 because it disclaimed (withdrew) claim 1 after the ’565 patent issued.
The effect of Choon’s disclaimers has been analyzed at length. See generally Choon’s Design,
LLC v. Zenacon, LLC, No. 2:13-CV-13568, 2015 WL 539441 (E.D. Mich. Feb. 9, 2015).
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A kit for creating an item consisting of a series of links, the device comprising:
a base; []
at least one pin bar supported on the base, the pin bar including a plurality of pins
each including a top flared portion for holding a link in a desired orientation and
an opening on a front side of each of the plurality of pins[; and]
a clip for securing ends of the series of links together.
(’565 patent col. 5, ll. 10–16; ’565 patent col. 6, ll. 1–2 (disputed claim terms emphasized).) The
following is picture of four example bases (12), three example pin bars (14) mounted on three of
the bases, pins (26), and one clip (18):

(’565 patent Fig. 1.) In an embodiment of Choon’s invention, openings (30) in the bottom of the
pin bar (14) fit snugly over cylinders (28) of a base (12) so that the pin bar ends up mounted on
the base:

4

(’565 patent Figs. 5A, 5B.)

2.
Choon also asserts infringement of claim 14 of the ’565 patent, a method claim setting
out steps for linking elastic bands. With limitations inherited from claims 12 and 13, it claims
this territory:
A method of creating a linked item comprising the steps of:
supporting at least one pin bar including a plurality of pins to a base to define a
desired relative [spatial] relationship between at least two adjacent pins;
assembling at least two elastic bands across adjacent pins wherein a second of the
at least two elastic bands is placed atop one end of the first of the at least two
elastic bands on a common pin;
capturing one end of an elastic band and pulling the end over and onto an adjacent
pin while engaged with another elastic band wherein capturing one end of the
elastic band includes using a hook tool reaching into an access groove of the pin
to extend below the top most elastic band and grasp a bottom elastic band with
the hook tool; and
capturing and pulling subsequent ends over until a desired link length and
configuration is obtained.
(’565 patent col. 6, ll. 7–26 (disputed claim terms emphasized).)
In an embodiment, the method of claim 14 is carried out this way:
5

(’565 patent Figs. 14A–14C.)
3.
On April 1, 2014, the United States Patent and Trademark Office issued Choon a second
utility patent, United States Patent No. 8,684,420. (Dkt. 150, Jt. Claim Constr. App’x Ex. 3, ’420
patent; 4th Am. Compl. ¶ 39.) With the exception of removing discussion of a “pin bar” from the
last two sentences of the Abstract, the ’420 patent, as a continuation, shares the same written
description as the ’565 patent. As the modification to the Abstract suggests, the claims of the
’420 patent do not mention a pin bar. (See ’420 patent cols. 5–6.)
The parties ask the Court to construe terms in claim 3 of the ’420 patent. (See Dkt. 160,
Jt. Claim Constr. Chart.) Claim 3 is a child of claim 1 and with its parent’s limitations it reads:
A device for creating an item consisting of a series of links, the device
comprising:
a base; and
a plurality of pins supported on the base, wherein each of the plurality of pins
includes a top portion for holding a link in a desired orientation wherein the top
portion comprises a flared portion for holding a link in place on at least one of
the plurality of pins and an opening on at least one side of each of the plurality of
pins, wherein the plurality of pins comprises rows of offset pins spaced apart and
extending upward from the base.
(’420 patent col. 5, ll. 18–26, 30–33 (disputed claim terms emphasized).)

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B.
Choon filed this lawsuit in August 2013 (Dkt. 1) and a Fourth Amended Complaint in
July 2014 (Dkt. 81). Choon alleges that “[a]fter taking note of Choon’s great success”
IdeaVillage (along with three other defendants that have since settled their dispute with Choon)
“decided to take action, producing their own loom kit, the Fun Loom.” (Dkt. 81, 4th Am. Compl.
¶ 16.) The following are images of a Fun Loom:

(Dkt. 114, Choon’s Mot. for Prelim. Inj. Ex. 8; Dkt. 156, Choon’s Sealed Mot. for Claim Constr.
at 6.)
Choon has acknowledged what is suggested by these pictures: the Fun Loom “is a one
piece item.” (Choon’s Sealed Mot. for Claim Constr. at 6; see also Dkt. 115, Choon’s Sealed
Mot. Prelim. Inj. at 7.) Choon maintains, however, that “the one-piece construction of the Fun
Loom does not avoid the patent claims.” (Choon’s Sealed Mot. Prelim. Inj. at 8.)
IdeaVillage disagrees. Not only does IdeaVillage say that its Fun Loom does not fall
within the scope of the claims of the ’565 patent or the ’420 patent, it asserts that those two
patents are, for various reasons, invalid. (See Dkt. 88, IdeaVillage’s Counterclaims ¶¶ 26, 31.)
The parties now ask the Court to narrow their dispute by construing ten claim terms
found in the ’565 patent and the ’420 patent. (Dkt. 156, Choon’s Sealed Mot. for Claim Constr.
(“Choon’s Mot.”); Dkt. 157, IdeaVillage’s Mot. for Claim Constr. (“IdeaVillage’s Mot.”); see
also Dkts. 149, 150, 155, 158, 159, 160.)
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II.
“‘The words of a claim are generally given their ordinary and customary meaning as
understood by a person of ordinary skill in the art when read in the context of the specification
and prosecution history.’” Starhome GmbH v. AT & T Mobility LLC, 743 F.3d 849, 856 (Fed.
Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012)). “‘There are only two exceptions to this general rule: 1) when a patentee sets out a
definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a
claim term either in the specification or during prosecution.’” Id. (quoting Thorner, 669 F.3d at
1365). “To act as its own lexicographer, a patentee must clearly set forth a definition of the
disputed claim term other than its plain and ordinary meaning,” and “[t]he standard for
disavowal of claim scope is similarly exacting.” Thorner, 669 F.3d 1365–66.
As these rules for claim construction suggest, the intrinsic record—the patent’s claims,
written description, and prosecution history (including the prior art cited during prosecution)—is
of primary import. Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc).2
Everything else—dictionary definitions, expert testimony, and the like—is considered extrinsic
evidence and often has a lesser role to play in claim construction. See id. Still, there is no rigid
process for construing claims and this Court, in its sound discretion, may consult any evidence at

2

A patent “consist[s] principally of a specification that concludes with the claims.”
Phillips, 415 F.3d at 1316. The purpose of the “written description” portion of the specification
(as opposed to the claim portion) is to teach the public how to make and use the claimed
invention. See 35 U.S.C. § 112(a) (“The specification shall contain a written description of the
invention, and of the manner and process of making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art to which it pertains, or with which it is most
nearly connected, to make and use the same . . . .”). Courts sometimes use the terms written
description and specification synonymously although they are technically distinct. See 35 U.S.C.
§ 112(b) (“The specification shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the inventor or a joint inventor regards as the
invention.”).
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any point in the analytical process: “[W]e [have] recognized that there is no magic formula or
catechism for conducting claim construction. Nor is the court barred from considering any
particular sources or required to analyze sources in any specific sequence, as long as those
sources are not used to contradict claim meaning that is unambiguous in light of the intrinsic
evidence.” Id. at 132.
“Ultimately, the interpretation to be given a term can only be determined and confirmed
with a full understanding of what the inventors actually invented and intended to envelop with
the claim. 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.” Phillips,
415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250
(Fed. Cir. 1998)).
A.
The Court first resolves the parties’ dispute over this claim term: “supported on.”
The parties’ constructions of this term, and the related terms “kit,” “a base,” and “pin
bar,” reflect their infringement positions in this case. Choon’s constructions of these four terms
revolve around its belief that neither the claim language nor the intrinsic record excludes a pin
bar from being integrated with the bottom of the claimed device, i.e., the pin bar and base may be
one piece. It takes this position, quite apparently, because of the Fun Loom’s one-piece design.
IdeaVillage’s constructions of these terms revolve around its belief that the written description
only discloses pin bars and bases as separate pieces that can be detached from one another. This
position is also taken, quite obviously, because of the Fun Loom’s one-piece design. So the
parties’ conflict as to the meaning of four claim terms (“supported on,” “a base,” “kit,” and “pin
bar”) can be largely resolved by answering this question: do the asserted patent claims cover

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only devices with pin bars and bases that can be detached from one another (IdeaVillage’s
position) or do they also cover devices where the pin bar and base are integrated into a single
unit (Choon’s position)?
The term “supported on” appears in claim 9 of the ’565 patent, claim 14 of the ’565
patent (in the form “supporting”), and claim 3 of the ’420 patent.
1.
The Court begins with claim 9 of the ’565 patent. This phrase from that claim is the
critical language: “at least one pin bar supported on the base.” Choon says that the term
“supported on” means “integral with or attached to the base.” (See Dkt. 160, Jt. Claim Constr.
Chart.) Substituting in Choon’s definition leads to this proposed construction of the phrase under
scrutiny: “at least one pin bar [integral with or attached to] the base.” Making a likewise
substitution using IdeaVillage’s definition for “supported on” yields this proposed construction:
“at least one pin bar [maintained in one desired alignment on] the base.” (See Jt. Claim Constr.
Chart.) As evidenced by IdeaVillage’s other proposed constructions, “desired” in its definition
means that the user of the loom can attach pin bars to, and detach pin bars from bases as he or
she desires. (See id.)
Choon’s proposed construction is not the most natural interpretation of the phrase. A
more natural way to have claimed what Choon now says claim 9 means would have been to use
the word “portion” (and perhaps the word “by” rather than “on”): “the device comprising: a base
portion; and at least one pin bar portion supported by the base portion.” Indeed, in the case
Choon

primarily

relies

upon,

the

Federal

Circuit

said

that

the

word

“portion”

“unambiguous[ly] . . . encompass[ed] meanings of both ‘integral’ and ‘separate.’” Rexnord Corp.
v. Laitram Corp., 274 F.3d 1336, 1348 (Fed. Cir. 2001).

10

Still, the claim language as written does not plainly exclude Choon’s construction. Choon
is correct that neither “supported” nor “on”—while both suggesting an object supported by a
different object—plainly excludes integration. See Merriam-Webster, support (transitive verb),
http://www.merriam-webster.com/dictionary/supported (last visited Aug. 13, 2015) (“to hold up
or serve as a foundation or prop for”); Merriam-Webster, on (preposition), http://www.merriamwebster.com/dictionary/on (last visited Aug. 13, 2015) (“used as a function word to indicate
position in contact with and supported by the top surface of”).3
And it is not too difficult to imagine an object with an integrated base the remainder of
which is “supported on” that base. Consider, for example, this statue carved from marble:

The British Museum, Discus-thrower (discobolus), http://www.britishmuseum.org/explore/
highlights/highlight_objects/gr/d/discus-thrower_discobolus.aspx (last visited Aug. 13, 2015)
(Creative Commons Code CC BY-NC-SA 4.0). Certainly one could (and perhaps even would)
refer to the portion of the statue upon which the discus thrower is standing as the statue’s “base.”

3

As both parties rely on definitions from the Merriam-Webster dictionary found at
http://www.merriam-webster.com/, where possible, the Court also takes its definitions from that
dictionary.
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So the above object could be claimed this way: “a statue comprising: a base; and a discus
thrower supported on the base.” And Choon would be correct to point out that this is analogous
to the language at issue in claim 9 and that the discus thrower is “integrated with” the base (the
statue appears to have been carved from a single piece of rock).
While the plain language of the phrase “at least one pin bar supported on the base” thus
permits Choon’s constructions of “supported on,” the written description of the ’565 patent all
but explicitly precludes it. The written description, which, again, was drafted by Ng through
counsel, repeatedly extolls the benefits of a loom having separate pin bars and bases that can be
attached to and detached from one another:
As is appreciated, the extent to which additional bases and pin bars 14 can be
added and the configurations possible are limited only b[y] the desire of the user
of the disclosed kit. The addition of pin bars 14 provides for more unique and
intricate designs limited only by the imagination of the user of the kit. . . .
The example base template 12 can be arranged to support many pin bars 14 and
therefore links can be formed longitudinally and laterally across adjacent pin bar
14 to form a wide variety of link configurations and combinations. . . .
As appreciated, any number of base templates 66 can be secured to each other to
form many different desired configurations. The different configurations provide
for many options for creating different shapes and configurations of wearable
items.
(’565 patent col. 3, ll. 56–61; ’565 patent col. 4, ll. 24–28; ’565 patent col. 4, ll. 57–61
(emphases added); see also ’565 patent col. 1, ll. 48–50; ’565 patent col. 3, ll. 39–42.) That these
passages constitute important disclosure is underscored by the fact that the detachable-pin-bars
feature takes up two sentences of the patent’s five-sentence Abstract: “The base and pin bars
may be assembled in various combination and orientations to provide endless variation of
completed link orientations. Additional bases and pin bars can be [added] to further expand
possible completed article creation.” (’565 patent, Abstract.) Thus, a person having ordinary skill

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in the art, reading the claims in view of the written description at the time of the invention, would
have surely thought that an important aspect of the invention of the ’565 patent was the ability to
detach and reconfigure the pin bars on bases.
And any doubt in the mind of this person with ordinary skill in the art would have been
quelled by the fact that every single embodiment disclosed in the written description, and every
single drawing of the pin bars and bases, shows the pin bars and bases as separate pieces that can
be attached and detached. In fact, when the Court asked Choon at oral argument to identify any
specification language that does not teach separate pin bars and bases, Choon could only point to
the following: “. . . the example kit 10 includes a base 12 that supports pin bars 14 that each
includes a plurality of pins 26.” (See also Choon’s Mot. at 21.) True, this quoted language is
entirely silent on how the base “supports” pin bars and so it can be read as encompassing an
integrated, one-piece design. The problem for Choon is that it has stripped this quote of its
context. The sentence that Choon cites starts this way: “Referring to FIG. 1, . . . .” (’565 patent
col. 2, ll. 43–44.) And Figure 1 of the ’565 patent, reproduced in Part I.A.1 of this opinion,
plainly shows pin bars mounted on and detachable from bases. This is to say nothing of the
remainder of the paragraph from which Choon cites, which discusses detachable pin bars. (’565
patent col. 2, ll. 49–53 (“In this example, a center pin bar 14 is incremented one up from the two
outermost pin bars 14. In this example three bases 12 are utilized to support the pin bars 14 in a
desired relative orientation.”).)
Choon makes several attempts to escape what the written description unmistakably
reveals about the scope of claim 9 of the ’565 patent. None are availing.
For one, Choon relies heavily on the Federal Circuit’s warning to district courts that
embodiments disclosed in the specification are just that—examples of the invention but not the

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invention. See (Choon’s Mot. at 17); (Dkt. 158, Choon’s Resp. at 9); Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“Even when the specification describes only a
single embodiment, the claims of the patent will not be read restrictively unless the patentee has
demonstrated a clear intention to limit the claim scope using words or expressions of manifest
exclusion or restriction.” (internal quotation marks omitted)); Rexnord Corp. v. Laitram Corp.,
274 F.3d 1336, 1344 (Fed. Cir. 2001) (“Our case law is clear that an applicant is not required to
describe in the specification every conceivable and possible future embodiment of his
invention. . . . Specifications teach. Claims claim.” (internal quotation marks omitted)).
The Court has heeded this warning. But it has done so in light of the fact that the ordinary
meaning of “at least one pin bar supported on the base” is not so plain: it does not dictate an
answer to the question of whether the base and pin bar may be integrated or must be separate. Cf.
Kaneka Corp. v. Xiamen Kingdomway Grp. Co., — F.3d —, No. 2014-1373, 2015 WL 3613644,
at *4 (Fed. Cir. June 10, 2015) (“An adjective such as ‘sealed’ may have more than one plain and
ordinary meaning.”). As such, this is not a case of limiting claim language that plainly
encompasses an integrated design because the specification discloses only two-piece assemblies.
Rather, this is a case of determining what one skilled in the art would understand less-thanentirely-plain claim language to mean after he or she reads the written description. See Kaneka
Corp., 2015 WL 3613644, at *4 (“The specification is the single best guide to the meaning of a
disputed term.” (internal quotation marks omitted)); Phillips, 415 F.3d at 1316 (“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.”); Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[T]he specification is always highly

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relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.”).
Moreover, to the extent that it is improper to restrict a claim’s scope to the specification’s
embodiments, it is also improper to interpret a claim in such a way that it does not encompass an
important feature of the invention. Toro Co. v. White Consolidated Industries, Inc., 199 F.3d
1295 (Fed. Cir. 1999), illustrates this principle.
There, The Toro Company had invented an improved combination leaf blower and leaf
vacuum. Prior art had taught a combined vacuum-blower where the user “place[d] a protective
cover over the air inlet” when the tool was in blower mode. Toro, 199 F.3d at 1297. In Toro’s
improvement, the protective cover was “fitted with a ring that restricted the size of the air inlet in
blower mode.” Id. The ring, by restricting the air inlet, allowed the blower to blow harder. See id.
Toro obtained a patent for this improvement with a claim that read in part, “‘[the] cover
including means for increasing the pressure developed by [the] vacuum-blower during operation
as a blower.’” Id. at 1298 (quoting U.S. Patent No. 4,694,528) (emphasis added). White
Consolidated introduced a competing vacuum-blower that, unlike Toro’s, had a restriction ring
that was “not attached as part of the air inlet cover but was a separate part.” Id. White
Consolidated claimed that its vacuum-blower was a “successful attempt to design around” the
claims of Toro’s patent. Id. The district court disagreed: it construed the claim term “including”
to “comprehend[] a separate restriction ring that is not part of the cover but is separately inserted
and removed.” Id. at 1300.
The Federal Circuit reversed. Over a dissent that argued that undoubtedly “the ordinary
meaning of ‘include’ does not require physical attachment,” Toro, 199 F.3d at 1303 (Rader, J.,
dissenting), the majority held that the patent claims were limited to a restriction ring that was

15

“permanently affixed to and included as part of the cover,” id. at 1302. In justifying this
construction, the majority stressed that the patent’s specification touted the advantages of the
restriction ring being affixed to the cover: “‘it automatically restricts the size of air inlet
depending upon which operation is being conducted without having the operator manually insert
or remove a replaceable ring.’” Id. at 1301 (quoting U.S. Patent No. 4,694,528, col. 7, ll. 6–12).
The majority also relied on the fact that the sole embodiment disclosed in the specification
“show[ed] the restriction ring as ‘part of’ and permanently attached to the cover” and none of the
patent’s twenty-one drawings showed anything different. Id. at 1301. The Federal Circuit further
explained that this was “not a case of limiting the claims to a ‘preferred embodiment’ of an
invention that has been more broadly disclosed” or “a case of limiting claims to immaterial
details of a broader invention as set forth in the specification.” Id. at 1301–02. Instead, it was a
situation where the specification had failed to disclose an invention fitting the claim construction
urged by the patentee. Id. at 1302.
So too here. Each and every discussion of the pin bars and bases in the specification of
the ’565 patent treats the two parts as separate with the ability to engage and disengage each
other. (See e.g., ’565 patent col. 3, ll. 45–47 (“The base 12 can engage and be [sic] receive three
pin bars 14 longitudinally, and/or may be added to a side of a group of pin bars to add additional
pin bars beyond the three provided for by one base 12.”).) Of all the ’565 patent’s twenty
drawings, not one shows a pin bar permanently integrated with a base. Further, similar to the
patent in Toro touting the cover-ring assembly, the ’565 patent discusses the virtues of
configurable pin bars and bases, and the Court cannot say that, given the repeated emphasis on
the feature, it is merely an “immaterial detail[] of a broader invention.” Toro, 199 F.3d at 1302.
Instead, one skilled in the art would understand it to be an “important” part of what Ng invented.

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See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 908 (Fed. Cir. 2004) (distinguishing
Toro on the basis that the specification in Toro described a particular structure as “important to
the invention”).
Choon also argues that the Court must adopt its construction because, in Rexnord Corp.
v. Laitram Corp., 274 F.3d 1336 (Fed. Cir. 2001), the Federal Circuit decided an
indistinguishable issue. (Choon’s Resp. at 1.) The Court disagrees with Choon that Rexnord
requires that the phrase “at least one pin bar supported on the base” be construed as
encompassing an integrated-pin-bar-and-base device.
In Rexnord, the patented invention was a “specially-shaped ‘transfer conveyor’” (for, say,
conveying bottles in a manufacturing facility). 274 F.3d at 1339. The transfer conveyor was
made with a series of “chain links.” The “chain links,” in the language of one of the claims at
issue, “‘includ[ed] a link module portion . . . and a cantilevered portion extending laterally from
said link module portion.’” Id. at 1340 (quoting U.S. Patent No. 5,634,550).) This picture
illustrates the chain link and its two portions:

Id. at 1340. In the allegedly infringing conveyor, the link module portion and the cantilevered
portion were a single, integrated piece. So the question was whether the claim language above
captured the accused device’s one-piece chain link.
The Federal Circuit answered this question in the affirmative. The Court explained that
the plain and ordinary meaning of the term “portion” included both “separable from the whole”
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and “not separated from the whole.” Rexnord, 274 F.3d at 1343. It then reasoned that this plain
and ordinary meaning controlled unless the patent specification (or patent prosecution history)
limited the scope of the claims. See 1342–44. The Court found that the specification did not
restrict the plain language of the claim because, while one embodiment taught a separate
cantilevered portion, two other embodiments did “not describe two-piece, or separate,
constructions.” Id. at 1345. In fact, one of these two embodiments was “described completely
without the use of any words that connote a quality of being ‘separate’—such as ‘attachment,’
‘mountable,’ ‘second piece,’ or ‘securable.’” Id. The Federal Circuit summarized the basis for its
construction this way:
In the end, we have a term, “portion,” that is unambiguous in encompassing
meanings of both “integral” and “separate.” When the invention is being
described in the specification (as opposed to when the preferred embodiment is
being described), we have two distinct embodiments distinguished from one other
embodiment. With the score two to one (i.e., two embodiments broadly defined as
opposed to one narrowly described), the embodiments not restricted to “separate”
structures must be understood to refer to a single structure that includes both the
“link module” and “cantilevered” portions.
Rexnord, 274 F.3d at 1348.
This case is not like Rexnord. For one, Rexnord involved the claim term “portion” and, as
stated at the outset of the Court’s analysis, that word would have been a much more natural way
to claim what Choon now says claim 9 means. Indeed, the Federal Circuit held in Rexnord that
the word “portion” “is unambiguous in encompassing meanings of both ‘integral’ and
‘separate,’” 274 F.3d at 1348 (emphasis added). Again, the comparable “supported on” of claim
9 does not so plainly include both integral and separate. Second, every single embodiment
disclosed in the ’565 patent’s specification teaches a separate bin par and base. As noted, when
asked, Choon could not identify any exception. In contrast, the Rexnord patent disclosed two
embodiments without using language indicating separate structures: “The chain links also
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include cantilevered portions that extend laterally from the link module portions to provide an
extension of the article supporting surface of the second conveyor.” U.S. Patent No. 5,634,550
col. 2, ll. 51–54; see also Rexnord, 274 F.3d at 1348. These distinctions make a difference. So
the Court does not agree with Choon that Rexnord dictates that the claim language “at least one
pin bar supported on the base” be construed as encompassing a loom with an integrated pin bar
and base.
Choon also relies on the doctrine of claim differentiation in support of its construction.
That claim-construction cannon basically says that where a child claim adds a limitation, the
Court should presume that its parent did not already have the limitation. See Seachange Int’l, Inc.
v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005). Choon relies on claim 2 (a child of
claim 1), which reads, “The kit as recited in claim 1, wherein the pin bar and the base including
corresponding mating features for securing the pin bar to the base.” Choon says that because
claim 2 adds “securing the pin bar to the base,” that claim, not claim 1, introduces the limitation
that the pin bar and the base are separate pieces that can be detached from one another. (See
Choon’s Mot. at 21–22.) This, says Choon, means that claim 1 (and therefore claim 9 which adds
only a clip to the invention of claim 1) necessarily encompasses a device with an integrated pin
bar and base. (See id.)
Not necessarily. As IdeaVillage points out (Dkt. 159, IdeaVillage’s Resp. at 13 & n.14),
the doctrine of claim differentiation can be applied equally well with a contrary result. One could
read claim 2 as specifying a particular manner in which the pin bar is supported on the base, i.e.,
via “mating features” (as opposed to any number of other fastening means). So read, claim 2
does not add the limitation of separate pin bar and base components and does not preclude claim
1 from including that limitation.

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Choon further argues that the International Trade Commission, during its 2014
investigation of infringement of the ’565 patent, adopted Choon’s construction of “integral with
or attached to.” (Choon’s Mot. at 18–19.) Choon stresses that the investigation involved an
administrative law judge and a staff attorney learned in patent law and that staff attorneys “will
take an active role in challenging the patent-in-suit.” (Id.) But Choon cites not a single case in
which a federal district court gave an ITC finding significant weight. (See Choon’s Mot. at 19
(citing cases).) And in this particular case, as IdeaVillage points out (IdeaVillage’s Resp. at 19–
20), the ITC proceeding was uncontested by any of the nine accused infringers (most defaulted)
and the staff attorney simply argued that if the ALJ elected to construe the claims, the terms
should be given their plain and ordinary meaning. (Choon’s Mot. Ex. 7, In the Matter of Certain
Loom Kits for Creating Linked Articles, Inv. No. 337-TA-923, slip op. at 1–3, 25 (USITC Feb. 3,
2015).) Moreover, Choon informed the Court at oral argument that not one of the accused
devices involved in the ITC investigation were one-piece looms—each had separate pin bars and
bases like Choon’s Rainbow Loom. As such, the ITC had no reason to question whether the
language “at least one pin bar supported on the base” encompassed an integrated design. Under
these circumstances, the Court is not persuaded by the ITC’s constructions.
* * *
The parties’ arguments thus having been fully considered, the Court will construe the
phrase “at least one pin bar supported on the base” in claim 9 of the ’565 patent as meaning “at
least one pin bar attached to but detachable from the base.” The word “detachable” means
capable of being separated without damage. See Merriam-Webster Unabridged, detachable
(adjective), http://unabridged.merriam-webster.com/unabridged/detachable (last visited Aug. 13,
2015).

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2.
The parties agree that claim 14 of the ’565 patent should be interpreted consistently with
claim 9 of that patent. (See Jt. Claim Constr. Chart.) The Court agrees. See Omega Eng’g, Inc, v.
Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (“[W]e presume, unless otherwise
compelled, that the same claim term in the same patent . . . carries the same construed
meaning”). So the Court construes the phrase “supporting at least one pin bar including a
plurality of pins to a base” in claim 14 as “attaching at least one pin bar including a plurality of
pins to a base such that the at least one pin bar is detachable from the base.” As before, the word
“detachable” means capable of being separated without damage.
3.
As for claim 3 of the ’420 patent, it, like claim 9 of the ’565 patent, uses the term
“supported on.” (See Jt. Claim Constr. Chart.) “[O]rdinarily” claims are interpreted “consistently
across patents having the same specification.” In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1325 (Fed. Cir. 2011). As noted, save for the last two sentences of the two
patents’ abstracts, the ’565 and ’420 patents have an identical written description. Thus, the
parties quite reasonably urge the Court to assign the term “supported on” the same meaning in
both patents. (See Jt. Claim Constr. Chart; Choon’s Mot. at 10–11; IdeaVillage’s Mot. at n.9,
n.15.)
But “ordinarily” means that there are exceptions; this case is one of them. As explained,
although not the most natural construction of the phrase “at least one pin bar supported on the
base,” that language of claim 9 of the ’565 patent is amenable to Choon’s position that the claim
covers one-piece looms. The Court ultimately rejected Choon’s construction given the ’565

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patent’s written description: that critical piece of intrinsic evidence describes only detachable pin
bars and bases and repeatedly stresses the benefits of that feature.
Now consider the ’420 patent and, in particular, the language of claim 3 which the parties
ask the Court to construe. It reads, “a base; and a plurality of pins supported on the base.” (’420
patent col. 5, ll. 20–21 (emphasis added).) There is no mention of a pin bar. This means that the
Court’s central reasoning, and the essence of IdeaVillage’s arguments, regarding the ’565
patent—the specification’s exclusive discussion of pin bars that detach from bases and its
repeated stressing of that feature—applies with much less force to the ’420 patent: the claim
language simply does not involve pin bars. Indeed, the ’420 patent specification provides not
even one example of “pins supported on the base” apart from the use of a pin bar. True, the
Abstract says, “The pins may be assembled in various combination and orientations to provide
endless variation of completed link orientations,” but this sentence is preceded by two about the
base and pin bar: “The example kit provides for the successful creation of unique wearable
articles using Brunnian link assembly techniques and includes several pin bars that are supported
in a desired [spatial] orientation by at least one base. The desired [spatial] orientation is
dependent on the desired linked configuration of the completed article.” (’420 patent, Abstract.)
As such, one skilled in the art reading the Abstract could understand that “[t]he pins may be
assembled in various combination and orientations to provide endless variation of completed link
orientations” only because one can rearrange the pin bars. In any event, this one sentence is not
sufficient to preclude Choon’s reading of the claim language “a plurality of pins supported on the
base.”
Additionally, the written description of the ’420 patent does not teach pins as individual
pieces that can be attached to or detached from another part of the device. Instead, it discloses

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pins as an integrated part of a larger structure: “The pin bar 14 is an integral structure having the
plurality of pins 28 defined in a single row.” (’420 patent col. 4, ll. 4–5.) And consider the
following drawing found in the specification showing a pin (26) integrated with a “bar portion”
(42):

(’420 patent Fig. 6.) This drawing, along with the description of a pin bar as an “integral
structure having . . . pins,” especially when contrasted against the disclosure regarding
detachable pin bars and bases, would lead a person having ordinary skill in the art to conclude
that the phrase, “a base; and a plurality of pins supported on the base” to encompass an
integrated pin-base design.
Such a construction is also supported by the history of Choon’s dispute with IdeaVillage
(and others who have manufactured a one-piece loom). After the Fun Loom and other similar
one-piece looms hit the market, Choon filed an application for what later became the ’420 patent,
i.e., Choon drafted the claims of the ’420 patent in an attempt to capture a one-piece design. (See
IdeaVillage’s Mot. at 3–4.) Given how the claims of the ’420 patent were a reaction to the sale of
one-piece looms, it would be odd to think that the “supported on” language of claim 9 of the
’565 patent referring to “pin bars” means the same thing as the “supported on” language of
claim 3 of the ’420 patent referring to “pins.”

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So the Court construes the phrase “a plurality of pins supported on the base” of claim 3 of
the ’420 patent as follows: “a plurality of pins integral with or attached to the base.”
B.
In addition to “supported on,” the parties ask the Court to construe seven other terms in
claim 9 of the ’565 patent: (1) “a kit” or “a kit for creating an item consisting of a series of
links”; (2) “a base”; (3) “pin bar”; (4) “a top flared portion” or “a top flared portion for holding a
link in a desired orientation”; (5) “a link”; (6) “an opening on a front side” or “an opening on a
front side of each of the plurality of pins”; and (7) “a clip” or “a clip for securing ends of the
series of links together.” (See Jt. Claim Constr. Chart.)
But the Court believes that the construction it has provided for the phrase “at least one
pin bar supported on the base” in claim 9 of the ’565 patent resolves the parties’ central dispute
about that claim. Further, the construction allows this case to take several steps forward either by
way of settlement discussions, dispositive-motion practice, or a stipulated judgment on certain
counts of the Fourth Amended Complaint. Without a more complete understanding of how the
parties will proceed following this Court’s construction of the phrase “at least one pin bar
supported on the base,” the Court declines—at this time—to construe these seven additional
disputed terms of claim 9 of the ’565 patent. See AstraZeneca LP v. Breath Ltd., 542 F. App’x
971, 981 (Fed. Cir. 2013) (“[T]his court has indicated that a district court can dismiss an
invalidity counterclaim when it finds noninfringement or dismisses an infringement claim with
prejudice.”); Aqua Marine Supply v. AIM Machining, Inc., 247 F.3d 1216, 1220 (Fed. Cir. 2001)
(“[W]here, as here, the alleged infringer has settled the infringement issue, and no longer
professes any interest in defending its declaratory judgment of invalidity, the case has become
moot as a result of the voluntary act of the patentee.”); but see Telcordia Technologies, Inc. v.

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Cisco Sys., Inc., 612 F.3d 1365, 1375 (Fed. Cir. 2010) (“[T]his court’s affirmance of the district
court’s non-infringement findings as to the ′306 patent does not moot Cisco’s invalidity
counterclaim on cross-appeal.”).
C.
As the constructions provided are sufficient for the parties to narrow or completely
resolve their dispute over the ’565 patent, remaining for consideration are the disputed claim
terms of the ’420 patent. But aside from “supported on” and “a base”—terms for which the
constructions provided are sufficient to resolve the parties’ dispute—there is only one other
claim term of the ’420 patent that the parties ask the Court to construe: “wherein the top portion
comprises a flared portion for holding a link in place on at least one of the plurality of pins.” (See
generally Jt. Claim Constr. Chart.)
IdeaVillage initially argued that this entire phrase did not need construction. (See
IdeaVillage’s Mot. at 19.) It asserted in its briefing that only the shorter phrase, “a flared
portion,” of claim 3 of the ’420 patent should be construed because the language that follows
(“for holding a link in place on at least one of the plurality of pins”) is merely functional and,
thus, was entitled to no patentable weight under Federal Circuit precedent. (Id.)
But at oral argument, IdeaVillage indicated that it took this position primarily because it
had taken the same position regarding functional language in other disputed claim terms.
IdeaVillage indicated that if this Court were to separately analyze the functional language of the
claims in dispute, it would be amenable to a construction of the entire phrase (“wherein the top
portion comprises a flared portion for holding a link in place on at least one of the plurality of
pins”).

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As such, the Court agrees with Choon that the entire phrase should be construed. See
Textron Innovations Inc. v. Am. Eurocopter Corp., 498 F. App’x 23, 28 (Fed. Cir. 2012) (“In
certain circumstances functional language may be used to add limitations to an apparatus
claim.”).
At oral argument, both Choon and IdeaVillage provided that if the Court were to construe
the entire phrase, they would agree to the following construction: “an upper portion that projects
outward in shape for maintaining a link in place on at least one of the plurality of pins.”
Accordingly, this is the construction that the Court provides for the phrase “the top portion
comprises a flared portion for holding a link in place on at least one of the plurality of pins” in
claim 3 of the ’420 patent.
III.
For the foregoing reasons, the Court finds that
(1) in claim 9 of the ’565 patent, the phrase “at least one pin bar supported on the base”
means “at least one pin bar attached to but detachable from the base” where “detachable”
means “capable of being separated without damage”;
(2) in claim 14 of the ’565 patent, the phrase “supporting at least one pin bar including a
plurality of pins to a base” means “attaching at least one pin bar including a plurality of
pins to a base such that the at least one pin bar is detachable from the base” where
“detachable” means “capable of being separated without damage”;
(3) in claim 3 of the ’420 patent, the phrase “a plurality of pins supported on the base” means
“a plurality of pins integral with or attached to the base”; and
(4) in claim 3 of the ’420 patent, the phrase “the top portion comprises a flared portion for
holding a link in place on at least one of the plurality of pins” means “an upper portion

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that projects outward in shape for maintaining a link in place on at least one of the
plurality of pins.”
For reasons explained, the Court declines to construe any other terms in dispute at this
time. Choon’s Sealed Motion for Claim Construction (Dkts. 155, 156) is GRANTED IN PART
AND DENIED IN PART and IdeaVillage’s Motion for Claim Construction (Dkt. 157) is
GRANTED IN PART AND DENIED IN PART.
SO ORDERED.
s/Laurie J. Michelson
LAURIE J. MICHELSON
UNITED STATES DISTRICT JUDGE
Dated: August 18, 2015
CERTIFICATE OF SERVICE
The undersigned certifies that a copy of the foregoing document was served on the attorneys
and/or parties of record by electronic means or U.S. Mail on August 18, 2015.
s/Jane Johnson
Case Manager to
Honorable Laurie J. Michelson

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