Choon's Design LLC v. Tristar Products, Inc.

Filing 165

SECOND ORDER ON CLAIM CONSTRUCTION. Signed by District Judge Victoria A. Roberts. (LVer)

UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTICT OF MICHIGAN
SOUTHERN DIVISION
CHOON’S DESIGN INC.,
Plaintiff,

Case No. 14-10848
Honorable Victoria A. Roberts

v.
TRISTAR PRODUCTS, INC.,
Defendant.
____________________________/
SECOND ORDER ON CLAIM CONSTRUCTION
At issue are Choon’s Design Inc.’s (“Choon’s”) 8,485,565 (“‘565”) and 8,684,420
(“‘420”) patents for a “Brunnian Linkmaking Device and Kit” (“Rainbow Loom”), and its
8,622,441 (“‘441”) patent for a portable device to make similar products.
Choon’s says the Rainbow Loom has enjoyed success and other companies,
including Defendant Tristar Products Inc. (“Tristar”), copied its product.
Choon’s loom is a kit described as containing a base and a pin bar or pin bars.
Tristar’s “Bandaloom” loom is one piece. The parties dispute whether Choon’s patents
are broad enough to include a one-piece loom such that Tristar’s Bandaloom infringes
Choon’s patents.
This is the Court’s second order on claim construction. In the first Order on
Claim Construction, the Court construed eight terms, which the parties indicated could
aid settlement. See Choon’s Design, Inc. v. Tristar Prod., Inc., No. 14-10848, 2016 WL
1626574 (E.D. Mich. Apr. 21, 2016). Settlement attempts were futile.
Now, the parties present additional terms to be construed. This matter is fully
briefed, and the Court finds that a second Markman hearing is unnecessary to resolve

the parties’ disputes. See CIAS, Inc. v. All. Gaming Corp., 424 F. Supp. 2d 678, 682
(S.D.N.Y. 2006) (“A court may, but need not, conduct a Markman hearing to determine
the scope of the claims”), aff’d, 504 F.3d 1356 (Fed. Cir. 2007); see also Rogers v.
Desa Int’l, Inc., 166 F. Supp. 2d 1202, 1204 (E.D. Mich. 2001) (same) (collecting
cases), aff’d, 198 Fed. Appx. 918 (Fed. Cir. 2006).
The terms to be construed (along with the corresponding patent, each party’s
proposed construction, and the Court’s construction of those terms) are summarized in
the table1 below:

Patent

‘565

‘565

Claim
No.

1

1

Term

Choon’s
Construction

Tristar’s
Construction

Court’s
Construction

opening on a
front side

a space or
groove on a
common,
forward facing
side of each
pin

a space or
groove on a
forward facing
side of each pin

a space or
groove on a
forward facing
side of each pin

a closed loop

a continuous
looped structure
without forming
an actual knot

a closed loop

link

1

Choon’s opening brief sets forth additional terms to be construed; however, those
terms are not listed in the table because the parties (in Tristar’s response and Choon’s
reply brief) agreed that those terms need not be construed. Additionally, in some
instances, Choon’s proposed construction for a term narrowed and/or changed from its
opening brief to its reply brief. The table reflects Choon’s final proposed construction –
as indicated in its reply brief – without setting forth its initial proposed construction in its
opening brief.
2

Patent

Claim
No.

Term

Choon’s
Construction

Tristar’s
Construction

Court’s
Construction

Tristar proposes
that this term
not be
construed;

‘565

9

a clip for
securing ends
of the series
of links
together

supported on
‘565

‘565

1

12

(proposed for
construction by
Tristar only)

to define a
desired
relative
special
relationship
between at
least two
adjacent pins

a connector
that is capable
of securing
ends of a
series of links
together

Alternatively,
Tristar says that
if the term “clip”
requires
construction,
that it be
defined as “a
device for
gripping or
holding things
together”

a connector
that is capable
of securing
ends of a series
of links together

Choon’s says
the Court
already
decided the
construction of
“supported on”

attached to but
detachable from

the Court
resolved the
parties’ dispute
over this term in
the first Order
on Claim
Construction

Choon’s says
the Court
already
construed this

to set a chosen
distance
between at least
two adjacent
pins

to set a desired
alignment
between at
least two
adjacent pins

(proposed for
construction by
Tristar only)

3

Patent

‘420

‘420

‘420

‘441

Claim
No.

Term

Choon’s
Construction

Tristar’s
Construction

Court’s
Construction

“base”;
“supported
on”; “plurality
of pins”; “a
1
plurality of
pins
and/or
supported on
the base”;
3
“link”; and, “a
flared portion
for holding a
link in place”

the parties agree that these terms
should be construed in the same
manner as construed for the ‘565
patent

rows of offset
pins

Choon’s
agrees with
Tristar’s
construction

the phrase
“rows of offset
pins” should
require “the
alignment of
adjacent rows of
pins be
staggered
relative to each
other”

the phrase
“rows of offset
pins” requires
“the alignment
of adjacent
rows of pins be
staggered
relative to each
other”

pins . . .
extending
upward from
the base

Choon’s says
this should be
given its plain
and ordinary
meaning

“pins extending
from a pin bar
attached to but
detachable from
a base”

the dispute over
this term is
resolved by the
construction of
“base” and “pin
bar”

clip including
inward facing
ends

connector with
the terminal
portions
proximate at
opening

Tristar agrees
with Choon’s
construction

connector with
the terminal
portions
proximate at
opening

1

1

11

4

these terms are
construed in the
same manner
as they were
construed for
the ‘565 patent

II.

STANDARD OF REVIEW & GUIDING PRINCIPLES IN CLAIM CONSTRUCTION
The words of the patent claim define the invention to which a patentee may claim

the right to exclude other inventions. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005). Claim construction “is the process of giving proper meaning to the claim
language.” Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997). Claim
construction is a question of law for the Court to determine. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995).
“The actual words of the claim are the controlling focus” when defining the scope
of a patented invention. Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344
(Fed. Cir. 1998). In interpreting a claim, the Court should look first to intrinsic evidence
– i.e., “the patent itself, including the claims, the specification and, if in evidence, the
prosecution history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996). Intrinsic evidence is “the most significant source” in determining the “legally
operative meaning of disputed claim language.” Id. (because “[t]he specification
contains a written description of the invention which must be clear and complete enough
to enable those of ordinary skill in the art to make and use it[,] . . . the specification is
always highly relevant to the claim construction analysis. Usually, it is dispositive. . . .”).
“[A]s a general rule, all terms in a patent claim are to be given their plain,
ordinary and accustomed meaning to one of ordinary skill in the relevant art.” Rexnord
Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). “Determining the limits of
a patent claim requires understanding its terms in the context in which they were used
by the inventor, considered by the examiner, and understood in the field of the
invention.” Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299 (Fed. Cir.

5

1999). “[U]nless compelled to do otherwise, a court will give a claim term the full range
of its ordinary meaning as understood by an artisan of ordinary skill.” Rexnord, 274
F.3d at 1342. Moreover, the Court must construe each claim term “consistently with its
appearance in other places in the same claim or in other claims of the same patent.” Id.
The ordinary meaning of a term may be readily apparent, such that claim
construction involves little more than the application of the widely accepted meaning of
commonly understood words. Phillips, 415 F.3d at 1314. In these instances, general
purpose dictionaries may be helpful. Id.
If the meaning of the claim limitation is apparent from the intrinsic evidence
alone, it is improper to rely on extrinsic evidence other than that used to determine the
ordinary meaning of the claim limitation. Bell Atl. Network Servs., Inc. v. Covad
Commc’ns Grp., Inc., 262 F.3d 1258, 1268-69 (Fed. Cir. 2001). However, if the court
cannot determine the meaning of a term after assessing intrinsic evidence, it may look
to other evidence such as expert testimony, articles, and inventor testimony. Id. at
1269. “This extrinsic evidence may be used only to assist in the proper understanding
of the disputed limitation; it may not be used to vary, contradict, expand, or limit the
claim language from how it is defined, even by implication, in the specification or file
history.” Id. (citations omitted).
III.

ANALYSIS
Descriptions of the patents are set forth in the Court’s first Order on Claim

Construction. See Choon’s Design, 2016 WL 1626574, at *3-4. The Court incorporates
those descriptions by reference here.

6

A.

The ‘565 Patent
1. “opening on a front side”

The Court construes the term “opening on a front side” in claim 1 of the ‘565
patent to mean “a space or groove on a forward facing side of each pin.” This is
consistent with the plain meaning of the claim language and specification, as well as the
construction given by the Patent Trial and Appeal Board (“PTAB”).
Choon’s says this term requires the “space or groove” to be “on a common,
forward facing side of each pin.” In support of its construction, Choon’s points to claim 9
of the ‘565 patent – which requires “a clip for securing ends of the series of links
together” – and demonstrative figures in which the openings on each pin face a
common direction to argue that “[t]here is only one description of how to utilize a loom to
manufacture an item from elastic bands, and that requires the slots be on a common
side of each of the pins.”
Choon’s proposed construction is undermined in several respects.
First, the plain language of the claim only requires that the opening be on the
“front side” of each pin; it does not require that the opening be on a common side of all
pins. As Tristar states: “Had Choon’s wanted to require the openings to be on a
common side, it easily could have said so. It did just that in related U.S. Patent No.
8,936,283; [in that patent], unlike [the ‘565 patent], claims 4 and 11 recite an “opening
on a common front side.”
Construing the term “opening on a front side” in the ‘565 patent to mean the
same as “opening on a common front side” in the ‘283 patent would impermissibly
render the word “common” in the ‘283 patent superfluous. See Curtiss-Wright Flow

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Control Corp. v. Velan, Inc., 438 F.3d 1374, 1381 (Fed. Cir. 2006) (claims should be
construed to avoid a construction “that would render additional, or different, language in
another independent claim superfluous”); Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d
1314, 1334 (Fed. Cir. 2003) (“unless otherwise compelled, . . . the same claim term in
the same patent or related patents carries the same construed meaning”); see also
Curtiss-Wright Flow Control Corp. v. Z & J Techs. GmbH, 563 F. Supp. 2d 1109, 1119
(C.D. Cal. 2007) (“Claims should be constructed so that each word in the claim has
meaning.”).
Moreover, because the plain language of the claim term is clear, and does not
require that the openings on all the pins face a common direction, it would be improper
to import that limitation into the claim from the demonstrative figures. See Phillips, 415
F.3d at 1323; see also SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870,
875 (Fed. Cir. 2004) (“[I]t is important not to import into a claim limitations that are not a
part of the claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader than the
embodiment.”).
Tristar’s position is further supported by the fact that the PTAB considered and
rejected Choon’s proposed construction:
[Choon’s] contends that the front side recited in claims 1 and 5-11 requires
that the openings on all pins face the same direction. We see no such
requirement. The phrase “a front side” applies to the pins individually.
The pins may have openings facing in different directions relative to one
another, although each opening is still on the front side of the pin relative
to some common reference point. For example, a loom formed by two
parallel rows may include pins having front sides and openings facing a
direction outward from a central region of the loom (i.e., the region
between the parallel rows). The central region could be the common
reference point and the openings on one row would face a direction
8

opposite the openings on the other row, but all openings would still be
located on a front side of each pin facing away from the common
reference point.
In an alternate example, a loom may include pins having front sides and
openings facing a direction toward a central region of the loom. Again, the
central region could be the common reference point, and the openings on
one row would face a direction opposite the openings on the other row,
but all openings would still be located on a front side of each pin facing
toward the common reference point. The common reference point could
also be characterized as an exterior region of the loom, such as an end,
side, or outer perimeter of the loom. These examples are consistent with
the specification, which only requires that “[e]ach of the pins 28 includes a
flanged top 38 and a front access groove 40.”
[Doc. 158-6, PgID 7134-35, IPR2014-218, Paper 9 (P.T.A.B. May 20, 2014) (internal
citations omitted)].
Choon’s attempts to avoid this construction by pointing out that the PTAB uses
the “broadest reasonable interpretation consistent with the specification” (“BRI”)
standard, In re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1341 (Fed. Cir. 2016), which is
broader than the Phillips standard used here. While this is true, the BRI standard does
not allow the PTAB to give an “unreasonably broad” construction that does not reflect a
claim’s plain language. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
Cir. 2015) (citation omitted), overruled on other grounds by Aqua Prod., Inc. v. Matal,
872 F.3d 1290 (Fed. Cir. 2017). Rather, under the BRI standard, like under Phillips,
“claims should always be read in light of the specification and teachings in the
underlying patent,” and the PTAB’s construction “cannot be divorced from the
specification and the record evidence.” Id. (citations and quotation marks omitted).
Moreover, “[i]n many cases, the claim construction will be the same under the
Phillips and BRI standards.” In re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1341 (Fed. Cir.
2016). See also Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed. Appx. 864, 869 (Fed.
9

Cir. 2014) (“The broadest reasonable interpretation of a claim term may be the same as
or broader than the construction of a term under the Phillips standard. But it cannot be
narrower.”).
That is the case here: the PTAB’s construction under the BRI standard is the
same as this Court’s construction under Phillips.
2. “link”
Tristar says its construction is directly supported by the specification, which
states that “a Brunnian link is formed from a continuous looped structure without forming
an actual knot.” See ‘565 patent, 2:31-32. Choon’s says Tristar’s construction is
impermissibly broad in light of the PTAB’s construction of “link.” The Court agrees with
Choon’s.
The PTAB construed the term “link” in the related ‘420 patent as “one of a
plurality of continuous looped structures (i.e., closed loops) connected without forming a
knot.” [Doc. 153-8, PgID 6950]. By using “i.e.,” the PTAB limited the construction of the
term to “closed loops.” Therefore, because Tristar’s proposed interpretation (i.e., “a
continuous looped structure. . .”) is broader than the PTAB’s construction under the BRI
standard, it is impermissibly broad. See Facebook, 582 Fed. Appx. at 869 (the Court’s
construction of a term under the Phillips standard cannot be broader than the PTAB’s
construction under the BRI standard). Moreover, nothing in the claims requires that the
link be devoid of a knot.
Choon’s construction (“a closed loop”) is consistent with the claim language and
the PTAB’s construction of the term.
Accordingly, the Court construes “link” to mean “a closed loop.”

10

3. “a clip for securing ends of the series of links together”
In the first Order on Claim Construction, the Court construed the term “at least
one clip . . . for securing ends of the series of links together” in the ‘441 patent, as
follows:
The Court finds that “clip” means “connector,” and “at least one clip”
means “one or more connectors.” The plain and ordinary meaning
prevails. Further, “for securing” is a functional recitation and thus merely a
statement of purpose or intended use. However, to the extent the
language refers to the essence of the invention, the structure (“clip”) is
construed so that it is capable of performing the recited function (“for
securing. . .”).
Choon’s Design, 2016 WL 1626574, at *8.
There is no reason to depart from this construction. The plain and ordinary
meaning of “clip” – i.e., connector – prevails. And the specification provides intrinsic
support for Choon’s position that the functional recitation “for securing” is a limitation
that relates to the essence of the invention: “Referring to [figures] 15 and 16, once the
link is created, the clip [] is used to secure the ends such that the fabricated chain of
links does not come undone.” See ‘565 patent, 4:29-31.
Because the “securing” requirement does not “only add an intended use,” but
rather “states an essential limitation to the claims,” the “clip” must be capable of that
function – i.e., “for securing ends. . . .” See Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d
1330, 1340-41 (Fed. Cir. 2010) (citations omitted) (where a requirement “is the essence
or a fundamental characteristic of the claimed invention,” the language “is properly
construed as a claim limitation[] and not merely a statement of purpose or intended use
for the invention”).

11

Therefore, the Court construes “a clip for securing ends of the series of links
together” to mean “a connector that is capable of securing ends of a series of links
together.”
4. “supported on”
Tristar requests that this term be construed. However, in the first Order on Claim
Construction, the Court construed “supported on” together with the terms “base” and “at
least one pin bar,” holding that “the parties’ underlying dispute over th[e] term
[supported on] is resolved with the construction of the terms ‘base’ and ‘pin bar’ as
being distinct structures.” See Choon’s Design, 2016 WL 1626574, at 6.
Tristar fails to establish a legitimate basis for why the Court should reconsider the
conclusion in its previous order over a year and a half after it was entered. Tristar’s
request to re-construe the term “supported on” is denied.
5. “to define a desired relative special relationship between at least
two adjacent pins”
In relevant part, claim 12 of the ‘565 patent recites: “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 special relationship between at least two
adjacent pins. . . .” ‘565 patent, 6:7-11.
Tristar says the phrase “to define a desired relative special relationship between
at least two adjacent pins” requires that a user be able to set a chosen distance
between at least two adjacent pins.
Choon’s says the Court already construed this term. Choon’s also says, without
any analysis or support, that its proposed construction most naturally aligns with the
patent’s description.
12

Choon’s arguments fail. Although the Court considered this phrase (i.e., “to
define a desired relative special relationship. . .”) in the first Order on Claim
Construction, it did not construe it. See Choon’s Design, 2016 WL 1626574, at *6.
Moreover, Choon’s construction of the term is based on its rejected position that the pin
bar(s) and base need not be separate parts.
The phrase “to define a desired relative special relationship between at least two
adjacent pins” means “to set a desired alignment between at least two adjacent pins.”
“Alignment” is defined as “the act of aligning or state of being aligned; especially: the
proper positioning or state of adjustment of parts . . . in relation to each other” See
“alignment,” Merriam-Webster.com, (2018) https://www.merriamwebster.com/dictionary/alignment (25 January 2018). The Court previously held that
“‘adjacent pins’ includes pins in the same bar or pins opposite each other when their
respective bars are juxtaposed.” See Choon’s Design, 2016 WL 1626574, at *6.
This construction accurately represents the claim language and accounts for the
ability of a user to create different patterns and pin spacing by configuring the pin bars
and bases in various ways – which is supported by intrinsic evidence. The specification
contains multiple disclosures of this:
One or several pin bars 14 are mounted to several bases 12 as is shown to
support the pin bars 14 and the corresponding pins 26 in a desired
alignment. In this example, a center pin bar 14 is incremented one up from
the two outermost pin bars 14. This alignment provides for creation of a
desired linked item. In this example three bases 12 are utilized to support
the pin bars 14 in a desired relative orientation.
‘565 patent, 2:46-53 (emphasis added).
FIG. 13 illustrates a configuration where five pin bars 14 are aligned side
by side as provided by the additional bases 12 extending laterally as
shown in FIG. 12. As is appreciated, the extent to which additional bases
13

and pin bars 14 can be added and the configurations possible are limited
only by 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.
‘565 patent, 3:53-61 (emphasis added). The abstract further supports the ability of
configuring the pin bars and bases in unique ways to allow for differing pin placement
and the creation of different patterns:
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 special orientation by at least one
base. The desired special orientation is dependent on the desired linked
configuration of the completed article. The base and pin bars may be
assembled in various combination and orientations to provide endless
variation of completed link orientations.
‘565 patent, abstract (emphasis added).
B.

The ‘420 Patent
1. “base,” “supported on,” “plurality of pins, “a plurality of
pins supported on the base,” “link,” and “a flared portion for
holding a link in place”

Because the ‘565 patent and ‘420 patent are related patents that rely on the
same specification, the Court construes these terms in the same manner as construed
for the ‘565 patent. See In re Katz Interactive Call Processing Patent Lit., 639 F.3d
1303, 1325 (Fed. Cir. 2011) (“[W]e ordinarily interpret claims consistently across patents
having the same specification.”). Choon’s and Tristar agree with this approach.
Except for “link,” which is construed above, the Court construed these terms in
the first Order on Claim Construction. See Choon’s Design, 2016 WL 1626574, at *4-7,
*9. The relevant discussion and constructions of the above terms from the first Order
on Claim Construction are expressly incorporated here by reference.

14

2. “rows of offset pins”
Tristar says the phrase “rows of offset pins” should require “the alignment of
adjacent rows of pins be staggered relative to each other.” Choon’s agrees with this
construction.
Accordingly, the Court’s construction conforms with the parties’ construction: the
phrase “rows of offset pins” requires “the alignment of adjacent rows of pins be
staggered relative to each other.”
3. “rows of offset pins spaced apart and extending upward
from the base”
This phrase is in claim 1 of the ‘420 patent. In relevant part, claim 1 states: “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 the plurality of pins comprises
rows of offset pins spaced apart and extending upward from the base.” See ‘420
patent, 5:18-26.
Tristar says the Court should construe “pins . . . extending upward from the base”
to mean “pins extending from a pin bar attached to but detachable from a base.”
Choon’s says the Court should give this term its plain and ordinary meaning.
Choon’s says Tristar adds several limitations not supported by the plain meaning of the
claim term, and that Tristar is attempting to relitigate issues resolved by the Court’s
earlier constructions. The Court agrees with Choon’s.
The parties’ dispute over the meaning of “pins . . . extending upward from the
base” is resolved by viewing the phrase in light of the Court’s construction of the terms
“base” (i.e., “a structure separate from the pin bar(s): its purpose is to locate or support
the pin bar(s)”) and “pin bar” (i.e., an elongated member from which a plurality of pins
15

extend”), and by considering the phrase in the context of claim 1’s language as a whole.
In light of the construction of these other terms, the phrase “pins . . . extending upward
from the base” need not be further construed.
C.

The ‘441 Patent

The only term from the ‘441 patent to be construed is “clip including inward facing
ends.” Choon’s construes this term as “connector with the terminal portions proximate
an opening.” Tristar agrees with this construction.
The Court agrees with the parties’ construction. The Court construes “clip
including inward facing ends” to mean “connector with the terminal portions proximate
an opening.”
IV.

CONCLUSION
The claim constructions are set forth above and in the first Order on Claim

Construction.
IT IS ORDERED.
s/Victoria A. Roberts
Victoria A. Roberts
United States District Judge
Dated: January 30, 2018

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