Naturs Design, Inc. v. Silent Night, LLC et al
Filing
53
OPINION and ORDER on Claim Construction. Signed by District Judge Linda V. Parker. (RLou)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
NATURS DESIGN, INC.,
Plaintiff,
Civil Case No. 15-10700
Honorable Linda V. Parker
v.
SILENT NIGHT, LLC,
a Michigan limited liability company,
and BRUCE O. BAKER, an individual,
Defendants.
________________________________/
OPINION AND ORDER ON CLAIM CONSTRUCTION
On February 25, 2015, Naturs Design, Inc. (“Naturs” or “Plaintiff”) filed this
lawsuit against Defendants Bruce Baker (“Defendant Baker”) and Silent Night,
LLC (“Silent Night”) (collectively “Defendants”) alleging patent infringement of
the patent-in-suit, U.S. Patent No. 8,365,733 (“the ‘733 patent”).
Before the Court are the parties’ claim construction briefs relating to
interpretation of terms found in the preamble, body, and Claims 1, 2, and 4 of the
‘733 patent. The Court held a Markman hearing on April 13, 2016 to construe
certain terms in the claim.1 Defendants filed a supplemental brief on claim
construction on October 11, 2016. (ECF No. 46.) Plaintiffs responded on October
1
See Markman v. Westview Instr., Inc., 52 F.3d 067 (Fed. Cir. 1995) (en banc),
aff’d, 517 U.S. 370, 116 S. Ct. 1384 (1996).
20, 2016. (ECF No. 51.) The respective positions of the parties are displayed in
the claim chart attached as Exhibit A.
I.
Background
The patent-in-suit relates to a mask liner product, described and claimed in
the patent as “[a] liner for use with a respiratory mask having a face-engaging
portion.” (ECF No. 1-2 at Pg ID 23.) It was developed by Mr. Robert Rutan, the
CEO of Naturs to “address the needs of his wife” who suffered from sleep apnea.
(ECF No. 39 at Pg ID 781.) Mr. Rutan filed a provision patent application, No.
61/056,893 (“the ‘893 provisional”), on May 29, 2008. (ECF No. 1 ¶ 14.)
Approximately one year later, Mr. Rutan filed a non-provisional patent application,
Serial No. 12/469,998 (“the ‘998 application”), which claimed the benefit of the
‘893 provisional. (Id. ¶ 15.) The ‘998 application matured into the ‘733 patent on
February 5, 2013. (Id.)
Defendant Baker sent an e-mail to Mr. Rutan on September 17, 2013 stating
that he had “designed, developed and begun manufacturing a mask liner product”
and “proposed setting up a meeting to discuss” the product. (Id. ¶ 19.) Mr. Rutan
replied on September 19, 2013, stating he would not meet with Defendant Baker
and included in his response a reference to the ‘733 patent. (Id. ¶ 20.) After this
correspondence, Defendant Baker manufactured and sold a CPAP mask liner
product that Plaintiff alleges infringes on their patent. (ECF No. 39 at Pg ID 782.)
2
Plaintiff filed this suit on February 25, 2015, alleging infringement of the
‘733 patent. Defendants disagree, stating the ‘733 patent is limiting in nature and
focuses on a specific, narrow feature of the liner in combination with the mask.
ECF No. 40 at Pg ID 907.) Relying on the prosecution history of the patent,
Defendants argue that Plaintiff’s patent cannot cover all respiratory mask liners.
The terms in dispute for the purposes of claim construction are listed in the
chart titled “Parties’ Proposed Constructions for Claim Terms in U.S. Patent No.
8,365,733.” (ECF No. 34-1 at Pg ID 749-53.) The terms are found in the
preamble and body, along with Claims 1, 2, and 4.
Claim 1 of the ‘773 patent reads:
1. A liner for use with a respiratory mask having a face-engaging
portion, the liner comprising:
a body constructed from an absorbent material, the body having
an outer edge, an inner edge, wherein a perimeter of the outer edge is
larger than a perimeter of the face-engaging portion of the respiratory
mask for forming an extending portion of the body, the extending
portion configured to be in non-adhering communication with a user’s
face, and the liner is configured to be releasably held by the mask and
the user’s face such that the outer edge extends beyond the face
engaging portion.
Claim 2 of the ‘733 patent reads:
2. The liner according to claim 1, wherein the extending portion is a
baffle for regulating the flow of air away from the face-engaging
portion.
Claim 4 of the ‘733 patent reads:
3
4. The liner according to claim 1, wherein the outer edge has a shape
scaled to a general shape of the face-engaging portion.
The first dispute over construction for claim terms is over the phrase
“respiratory mask,” used in the preamble and body. The parties agree that
“respiratory mask” means “a respiratory device sized to fit over a user’s
mouth and/or nose.” (ECF No. 34-1 at Pg ID 749.) However, Plaintiff
argues that the phrase “respiratory mask” used in the preamble is not
limiting and the claims are drawn to a liner for use with a respiratory mask.
(Id.) Defendants argue that the preamble is limiting and the claims require a
respiratory mask in combination with a liner. (Id.) Defendants’ position is
the claims otherwise would be invalid as indefinite, in particular to the
perimeters of the body and face-engaging portion of the respiratory mask.
(Id.)
The second dispute arises from the use of the phrase “face-engaging portion”
in the preamble and body. The parties agree that this term means “a portion
formed to contact a user’s face adjacent to the user’s mouth and/or nose.” (Id. at
Pg ID 749-50.) Again, Plaintiff argues that the preamble is not limiting and the
liner is for use with a respiratory mask having a face-engaging portion. (Id.)
However, Defendants’ position is that the preamble is limiting and the claims
require a respiratory mask in combination with a liner, “otherwise the claims
4
would be invalid as indefinite, including with respect to the perimeters of the body
and face engaging portion of the respiratory mask.” (Id.)
The third dispute arises from the following terms, which both parties agree
should have the same construction: “extending portion”; “extending portion of the
body”; and “wherein a perimeter of the outer edge is larger than a perimeter of the
face-engaging portion of the respiratory mask for forming an extending portion of
the body.” (Id. at Pg ID 750-51.) These terms are found in Claims 1 and 2.
Plaintiff argues that the Court should rely on the plain meaning of the term and that
no construction is needed. Defendants, however, argue that these terms should be
construed to mean a “loosely protruding portion of the liner formed by the liner’s
outer perimeter extending outwardly beyond the perimeter of the face engaging
portion of the mask that is not secured or attached to the mask.” (Id.)
Similarly, the fourth dispute arises from the phrase “extending portion
configured to be in non-adhering communication with a user’s face” as found in
Claim 1. (Id. at 750) Plaintiff argues that the plain meaning of the phrase applies.
(Id.) Defendants, however, argue that this phrase is indefinite and interpret it as:
“the extending portion of the liner is not secured or attached to the respiratory
mask in order to loosely protrude outwardly to the liner’s outer edge to lay in
contact upon a user’s face without adhesive.” (Id.)
5
The next dispute arises from the phrase “the liner is configured to be
releasably held by the mask and the user’s face such that the outer edge extends
beyond the face engaging portion” used in Claim 1. (Id. at 752.) Plaintiff argues
that the plan meaning applies here. (Id.) Defendants propose the following
construction: “the liner is held by pressure between the respiratory mask and the
user’s face without being secured or attached to the respiratory mask.” (Id.)
The last dispute stems from the use of the phrase “the extending portion is a
baffle for regulating the flow of air away from the face-engaging portion.” (Id.)
Plaintiff relies on its prior construction of “extending portion”, relying again on
plain meaning. (Id. at 750, 752.) Defendants argue the term should be construed
to mean “the extending portion of the liner forms a plate-like protrusion that lays
upon the user’s face to regulate the flow of air along the user’s face away from the
face-engaging portion of the mask.” (Id. at 752-53.)
II.
Legal Standard
Claim construction is a matter of law for the Court. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370,
116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). “Claim construction is a matter of
resolution of disputed meanings and technical scope, to clarify and when necessary
to explain what the patentee covered by the claims, for use in the determination of
6
infringement.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.
Cir. 1997).
A patent is presumed to be valid. Young v. Lumenis, 492 F.3d 1336, 1345
(Fed. Cir. 2007) (quoting AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 123839). “[T]he evidentiary burden to show facts supporting a conclusion of invalidity
is one of clear and convincing evidence.” Id.
In determining claim construction, the Court “look[s] to the words of the
claims themselves, both asserted and nonasserted, to define the scope of the
patented invention.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996). According to the Court of Appeals for the Federal Circuit’s en
banc decision in Phillips v. AWH Corp., 415 F.3d 1303 (2005), “the words of a
claim ‘are generally given their ordinary and customary meaning.’” Id. at 1312-13
(quoting Vitronics Corp., 90 F.3d at 1582). “. . . [T]he ordinary and customary
meaning of a claim term is the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention, i.e., as of the
effective filing date of the patent application.” Id. There is a “heavy presumption”
that claim terms mean what they say and carry their ordinary meaning as viewed
by one of ordinary skill in the art. Lydall Thermal/Acoustical, Inc. v. Fed. Mogul
Corp., 566 F.Supp.2d 602, 609 (E.D. Mich. 2008).
7
The Phillips court emphasized the importance of looking at the entire patent
in construing claims because “the person of ordinary skill in the art is deemed to
read the claim term not only in the context of the particular claim in which the
disputed term appears, but in the context of the entire patent, including the
specification.” Id. at 1313. Thus, the ordinary meaning of a claim term cannot be
looked at in a vacuum. Id. (citing Medrad, Inc. v. MRI Devices Corp., 401 F.3d
1313, 1319 (Fed. Cir. 2005)). The ordinary meaning must be viewed in the context
of the patent specification and prosecution history. Id. (citing Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)). The
court may also consider “extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of the art” which “consists
of all evidence external to the patent history, including expert and inventor
testimony, dictionaries, and learned treatises.” Id. at 1314, 1316 (internal quotation
marks and citation omitted).
The Federal Circuit has emphasized the importance of the specification in
claim construction:
The claims, of course, do not stand alone. Rather, they are part of a
“fully integrated written instrument” Markman, 52 F.3d at 978,
consisting principally of a specification that concludes with the
claims. For that reason, claims “must be read in view of the
specification, of which they are part.” Id. at 979. As we stated in
Vitronics, the specification “is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.” 90 F.3d at 1582.
8
Phillips, 415 F.3d at 1315. “[C]laims must be construed so as to be consistent with
the specification, of which they are a part.” Merck & Co. v. Teva Pharms. U.S.A.,
Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003). The Phillips court restated the
Circuit’s prior summary of this general principle:
“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.”
415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
1243, 1250 (Fed. Cir. 1998)). The specification may reveal a special definition
that the inventor has given to a claim term that differs from the meaning it would
otherwise possess and, in that instance, the special definition must govern. Id.
(citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.
2002)).
“A claim has three parts: a preamble, transition, and body.” Roll-Rite, LLC
v. Shur-Co, LLC, No. 12-11150, 2013 WL 3798101 at *3 (E.D. Mich. July 22,
2013) (citing MagSil Corp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377,
1383 (Fed. Cir. 2012). The preamble describes the type of invention being
claimed. Id. The transition is the word or phrase that connects the preamble to the
body of the claim. Id. Last, the body “sets forth a series of phrases delineating the
9
structural limitations, elements, or steps in the invention.” Id. (citing John L.
Cooper, Claim Construction – The Markman Hearing, in Anatomy of a Patent
Case 71 (Federal Judicial Center 2009).
A preamble phrase is limiting when it is “necessary to give life, meaning,
and vitality to the claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999) (quotation marks omitted). Whether a preamble is
limiting requires a fact-intense inquiry in light of the particular claim being
challenged and the overall invention being described. Storage Tech. Corp. v.
Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003). “Clear reliance on the
preamble during prosecution to distinguish the claimed invention from the prior art
transforms the preamble into a claim limitation because such reliance indicates use
of the preamble to define, in part, the claimed invention.” Catalina Mktg. Int’l,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). However, if:
the body of the claim fully and intrinsically sets forth the complete
invention, including all of its limitations, and the preamble offers no
distinct definition of any of the claimed invention’s limitations, but
rather merely states, for example, the purpose or intended use of the
invention, then the preamble is of no significance to the claim
construction because it cannot be said to constitute or explain a claim
limitation.
Roll-Rite, LLC, at *6; see also Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349,
1357-58 (Fed. Cir. 2012) (“By contrast, if the body of the claim describes a
structurally complete invention, a preamble is not limiting where it merely gives a
10
name to the invention, extols its features or benefits, or describes a use for the
invention”) (internal quotation marks omitted).
As indicated earlier, the patent’s prosecution history also should be
considered, if it is in evidence. Id. at 1317 (citing Markman, 52 F.3d at 980;
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 33, 86 S. Ct. 684 (1966)).
“Like the specification, the prosecution history provides evidence of how the PTO
and the inventor understood the patent.” Id. (citation omitted).
Courts are authorized to rely on extrinsic evidence; however, the Federal
Circuit has warned that “it is ‘less significant than the intrinsic record in
determining the legally operative meaning of claim language.’” Phillips, 415 F.3d
at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed.
Cir. 2004)) (additional quotation marks and citations omitted). In Phillips, the
court clarified the role of extrinsic evidence in claim construction, explaining that
it should not be elevated above the meaning of the terms of the claim derived from
the patent, itself. Id. at 1320-23. Thus a court should not determine the ordinary
meaning or meanings of the claim term[s] in dispute based on extrinsic evidence,
such as a dictionary, and then consult the specification to determine whether it
excludes one of the meanings derived from the dictionary or limits the scope of
that meaning. Id. at 1320. Instead, the court must first start with the specification
as it “is ‘the single best guide to the meaning of a disputed term,’ and . . . ‘acts as a
11
dictionary when it expressly defines terms used in the claims or when it defines
terms by implication.’” Id. at 1321 (quoting Vitronics, 90 F.3d at 1582). “Properly
viewed, the ‘ordinary meaning’ of a claim term is its meaning to the ordinary
artisan after reading the entire patent.” Id.
In its final statement concerning the significant role of the specification in
claim construction, the Phillips court pointed out “that the purposes of the
specification are to teach and enable those of skill in the art to make and use the
invention and to provide a best mode for doing so.” Id. at 1323 (citing SpectraPhysics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1533 (Fed. Cir. 1987)). As such,
the court emphasized that the specification likely will have the following value to
the claim construction process:
One of the best ways to teach a person of ordinary skill in the art how
to make and use the invention is to provide an example of how to
practice the invention in a particular case. Much of the time, upon
reading the specification in that context, it will become clear whether
the patentee is setting out specific examples of the invention to
accomplish those goals, or whether the patentee instead intends for the
claims and the embodiments in the specification to be strictly
coextensive. . . . The manner in which the patentee uses a term within
the specification and claims usually will make the distinction
apparent.
Id. (citations omitted).
III.
Analysis
A. Claim Terms
1. “Respiratory Mask” and “Face-Engaging Portion”
12
The parties agree on the meaning of the terms “respiratory mask” and “faceengaging portion” when used in the preamble and body. (ECF No. 34-1 at Pg ID
749.)2 However, the parties disagree on whether the use of “respiratory mask” and
“face-engaging portion” in the preamble and body limit the scope of the patent.
Defendants argue that the use of “respiratory mask” and “face-engaging
portion” in the preamble of Claim 1 are affirmative claims that provide necessary
context for other claims. (ECF No. 40 at Pg ID 916-18.) If “respiratory mask” is
not an affirmatively claimed element, Defendants argue that the ‘733 patent claims
are indefinite in violation of 35 U.S.C. Section 112. Defendants claim “there is no
objective standard by which to measure the ‘extending portion’ from the liner,
standing by itself, whether it infringes.” (ECF No. 40 at Pg ID 920-21.)
Here, the phrase “respiratory mask having a face-engaging portion”
illustrates the intended use. (Id.) The “liner” is “for use with a respiratory mask
having a face-engaging portion.” (Id.); see also Deere & Co., 703 F.3d at 1357-58
(“[P]reamble not limiting if it describes a use for the invention.) The preamble
does not “offer[] [a] distinct definition of any of the claimed invention’s
limitations…rather [it] merely states [] the purpose or intended use of the
2
The parties agree to define “respiratory mask” as “a respiratory device sized to fit
over a user’s mouth and/or nose.” The parties agree to define “face-engaging
portion” as “a portion formed to contact a user’s face adjacent to the user’s mouth
and/or nose.”
13
invention.” Roll-Rite LLC at *6. As Plaintiff states in their Markman brief,
“respiratory mask” and “face-engaging portion” is consistently referred to
throughout their patent. (ECF No. 39 at Pg ID 793.) Deleting the preamble phrase
“respiratory mask” or “face-engaging portion” does not alter the structure of the
invention or the way in which it is used. The body of Claim 1 describes the
capabilities of the liner. (Id.)
The Court agrees with Plaintiff. The use of “respiratory mask” and “faceengaging portion” in the preamble and body are not limiting to the patent.
2. “extending portion”; “extending portion of the body”; “wherein a
perimeter of the outer edge is larger than the perimeter of the faceengaging portion of the respiratory mask for forming an extending
portion of the body”
The parties agree that these terms all should have the same construction.
(ECF No. 44-1 at Pg ID 977.) Plaintiff argues that no construction is necessary
and the plain meaning should apply. (Id.) Defendants, however, argue that these
terms should be construed to mean “a loosely protruding portion of the liner
formed by the liner’s outer perimeter extending outwardly beyond the perimeter of
the face engaging portion of the mask that is not secured or attached to the mask”
in order to avoid indefiniteness. (Id.; ECF No. 40 at Pg ID 923.) The defense
primarily relies on the prosecution history, including discussions of prior art, in
14
asserting that Plaintiff now is attempting to impermissibly broaden the scope of the
claims. ECF No. 40 at Pg ID 921.)
Here, the terms could be construed simply in accordance with their plain and
ordinary meanings as proposed by Naturs. The case law in this area has
established that “[t]o 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.”
See, e.g., Thorner, 669 F.3d at 1365 (quoting CCS Fitness, Inc., 288 F.3d at 1366)
Defendants are requesting that the Court impermissibly import limitations from the
specification. “[L]imitations appearing in the specification will not be read into
claims, and….interpreting what is meant by a word in a claim is not to be confused
with adding an extraneous limitation appearing in the specification, which is
improper.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1348 (Fed. Cir. 2002)
(internal quotation mark omitted). As previously stated, there is a heavy
presumption that these terms mean what they say and carry their ordinary meaning.
Lydall Thermal/Acoustical, Inc., 566 F.Supp.2d at 609.
3. “extending portion configured to be in non-adhering communication
with a user’s face”
The parties do not agree on the construction of this phrase. Plaintiff argues
the Court should again rely on the plain and ordinary meaning of each term. (ECF
No. 34-1 at Pg ID 750-51.) Defendants, however, argue that this term is indefinite.
15
(ECF No. 40 at Pg ID 926.) In an attempt to construe the term, Defendants attempt
to construe this phrase to mean “the extending portion of the liner is not secured or
attached to the respiratory mask in order to loosely protrude outwardly to the
liner’s outer edge to lay in contact upon a user’s face without adhesive.” (Id. at Pg
ID 926-27.)
In order to establish indefiniteness, Defendants must satisfy by clear and
convincing evidence sufficient facts to determine invalidity of the patent. Young,
492 F.3d at 1345 (internal quotation omitted). Defendants fail to do so here. As
Plaintiff argues, this phrase does not include wording that is typically subject to
indefiniteness. (ECF No. 39 at Pg ID 802.)
4. “the liner is configured to be releasably held by the mask and the user’s
face such that the outer edge extends beyond the face-engaging portion”
The parties do not agree on the construction of this phase. Again, Plaintiff
argues the Court should construe this term to adhere to the plain and ordinary
meaning of the phrase. (ECF No. 34-1 at Pg ID 750-51.) Defendants propose the
following construction: “the liner is held by pressure between the respiratory mask
and the user’s face without being secured or attached to the respiratory mask or the
user’s face.” (ECF No. 40 at Pg ID 932.)
Defendants fail to overcome the heavy presumption that terms mean what
they say and carry their ordinary meaning. Rather, Defendants’ brief calls to
16
propose a new narrowing construction, without satisfying their burden. Therefore,
the Court adheres to the plain and ordinary meaning of this phrase as expressed by
Plaintiff in its briefs.
5. “the extending portion is a baffle for regulating the flow of air away
from the face-engaging portion”
Plaintiff argues the Court again should construe this term to adhere to the
plain and ordinary meaning of the phrase. (ECF No. 34-1 at Pg ID 750-51.)
Defendants propose the following construction: “the extending portion of the liner
forms a plate-like protrusion that lays upon the user’s face to regulate the flow of
air along the user’s face away from the face-engaging portion of the mask.” (ECF
No. 40 at Pg ID 934.) Again, Defendants propose new language that adds
limitations without explaining why the Court should not rely on the plain and
ordinary meaning of the terms in the claim. Therefore, the Court adheres to the
plain and ordinary meaning of the terms.
IV.
Conclusion
The Court hereby construes the disputed claim terms as set forth above.
IT IS SO ORDERED.
s/ Linda V. Parker
LINDA V. PARKER
U.S. DISTRICT JUDGE
Dated: November 29, 2016
17
I hereby certify that a copy of the foregoing document was mailed to counsel of
record and/or pro se parties on this date, November 29, 2016, by electronic and/or
U.S. First Class mail.
s/ Richard Loury
Case Manager
18
EXHIBIT A
EXHIBIT A
Parties’ Proposed Constructions for Claim Terms in U.S. Patent No. 8,365,733
Claim(s)
1
Term/Phrase
“respiratory mask”
when used in the
preamble and body
Plaintiff’s
Proposed
Construction
The parties agree that
this term means “a
respiratory device
sized to fit over a
user’s mouth and/or
nose.”
However, other
disputes remain. The
plaintiff’s position is
that the preamble is
not limiting and the
claims are drawn to a
liner is for use with a
respiratory mask.
1, 2, 4
“face-engaging
portion” when used
in the preamble and
body
The parties agree that
this term means “a
portion formed to
contact a user’s face
Plaintiff’s
Support
• Title
• Abstract
• 1:14-15
• 2:21-27
• 3:46-54
• Claim 1
• Figs. 1-3
• Restriction 12/21/11
• Election 01/13/12
• OA 02/02/12
• Response 07/19/12
• NOA 10/02/12
• Abstract
• 2:25-37
• Claims 1, 2, 4
• Figs. 5, 6, 10
1
Defendants’
Proposed
Construction
The parties agree that
this term means “a
respiratory device
sized to fit over a
user’s mouth and/or
nose.”
Defendants’
Support
• Abstract
• 1:33-37
• 2:21-3:14
• 3:32-4:11
• 4:54-5:8
• 5:23-5:32
• 5:43-5:58
• 5-61-5:63
However, other
disputes remain. The
defendants’ position is
that the preamble is
limiting and the
claims require a
respiratory mask in
combination with a
liner, otherwise the
claims would be
invalid as indefinite,
including with respect
to the perimeters of
the body and face
engaging portion of
the respiratory mask.
• the prosecution file
history overall,
including without
limitation Office
Action (2/02/2012)
and Response with
Amendment
(7/19/2012); and in
cited art including
Schirm U.S. Pub. No.
2009/0139525,
Clowers 6,698,427)
The parties agree that
this term means “a
portion formed to
contact a user’s face
• Fig. 5
• 1:33-40
• the prosecution file
history overall,
Claim(s)
Term/Phrase
Plaintiff’s
Proposed
Construction
adjacent to the user’s
mouth and/or nose.”
Plaintiff’s
Support
• OA 02/02/12
• Response 07/19/12
• NOA 10/02/12
However, other
disputes remain. The
plaintiff’s position is
that the preamble is
not limiting and the
liner is for use with a
respiratory mask
having a faceengaging portion.
1, 2
“extending portion”
“extending portion
of the body”
“wherein a
perimeter of the
outer edge is larger
than a perimeter of
the face-engaging
portion of the
Plain meaning; no
construction
necessary.
Alternatively: a
portion of the body
formed by a perimeter
of the outer edge
extending beyond a
perimeter of the face-
• Abstract
• 2:52-58
• 2:58-67
• 3:1-14
• 3:45-52
• 3:56-65
• 4:54-59
• Claims 1, 2, 8, 9
• Fig. 1, 6-10
• OA 02/02/12
• Response 07/19/12
2
Defendants’
Proposed
Construction
adjacent to the user’s
mouth and/or nose.”
Defendants’
Support
including without
limitation Office
Action (2/02/2012)
However, other
and Response with
disputes remain. The Amendment
defendants’ position is (7/19/2012); and in
that the preamble is
cited art including
limiting and the
Schirm U.S. Pub. No.
2009/0139525 para.
claims require a
[0026])
respiratory mask in
combination with a
liner, otherwise the
claims would be
invalid as indefinite,
including with respect
to the perimeters of
the body and face
engaging portion of
the respiratory mask.
a loosely protruding
portion of the liner
formed by the liner’s
outer perimeter
extending outwardly
beyond the perimeter
of the face engaging
portion of the mask,
that is not secured or
attached to the mask.
• Fig. 1, 6-10
• 2:52-67
• 3:1-14
• 3:45-52
• 3:56-65
• 4:7-34
• 4:54-5:8
• the prosecution file
history overall,
including without
limitation Office
Claim(s)
Term/Phrase
respiratory mask for
forming an
extending portion of
the body”
Plaintiff’s
Proposed
Construction
engaging portion of
the respiratory mask.
Plaintiff’s
Support
Defendants’
Proposed
Construction
• NOA 10/02/12
Action (2/02/2012)
and Response with
Amendment
(7/19/2012); and in
cited art including
Schirm U.S. Pub. No.
2009/0139525,
Clowers 6,698,427)
(the parties agree that
these terms should
have the same
construction)
1
“extending portion
configured to be in
non-adhering
communication with
a user’s face”
“extending portion
...”
See Plaintiff’s
proposal above.
“. . . configured to
be in non-adhering
communication with
a user’s face”
Plain meaning; no
construction
necessary.
• Abstract
• 2:52-58
• 2:58-67
• 3:1-14
• 3:45-52
• 3:56-65
• 4:54-59
• 5:5-8
• Claims 1, 2, 8, 9
• Fig. 1, 6-10
• OA 02/02/12
• Response 07/19/12
• NOA 10/02/12
Alternatively:
configured to not
adhere to the user’s
face
3
Defendants’
Support
This term is indefinite.
To the extent it can be
interpreted, it is: the
extending portion of
the liner is not secured
or attached to the
respiratory mask in
order to loosely
protrude outwardly to
the liner’s outer edge
to lay in contact upon
a user’s face without
adhesive.
• Fig. 1, 6-10
• 2:52-67
• 3:1-14
• 3:45-52
• 3:56-65
• 4:7-34
• 4:54-5:8
• the prosecution file
history overall,
including without
limitation Office
Action (2/02/2012)
and Response with
Amendment
(7/19/2012); and in
cited art including
Schirm U.S. Pub. No.
2009/0139525,
Clowers 6,698,427;
Belfer 6,196,223)
Claim(s)
Term/Phrase
Plaintiff’s
Proposed
Construction
Plaintiff’s
Support
Defendants’
Proposed
Construction
Defendants’
Support
• Indefiniteness is
established by the
‘733 patent.
1
“the liner is
configured to be
releasably held by
the mask and the
user’s face such that
the outer edge
extends beyond the
face-engaging
portion”
Plain meaning; no
construction
necessary.
2
“the extending
portion is a baffle for
regulating the flow of
air away from the
face-engaging
portion”
• 2:25-33
• 2:52-58
• 2:62-67
• Claim 1
• Fig. 7-10
“extending portion
...”
• 3:1-14
• 3:20-22
• 3:45-52
See Plaintiff’s
• Claim 2
• http://www.merriamproposal above.
webster.com/
dictionary/baffle
“a baffle for
regulating the flow of (accessed 10/23/15)
4
the liner is held by
pressure between the
respiratory mask and
the user’s face without
being secured or
attached to the
respiratory mask or
the user’s face.
• 2:27-33
• 2:65-67
• 3:56-65
• 4:54-5:4
• the prosecution file
history overall,
including without
limitation Office
Action (2/02/2012)
and Response with
Amendment
(7/19/2012); and in
cited art including
Schirm U.S. Pub. No.
2009/0139525,
Clowers 6,698,427;
Belfer 6,196,223)
the extending portion
of the liner forms a
plate-like protrusion
that lays upon the
user’s face to regulate
the flow of air along
the user’s face away
from the face-
• Figs. 1, 6-10
• 2:50-67
• 3:1-14
• 3:45-52
• 5:1-4
• McGraw-Hill,
Dictionary of
Scientific and
Claim(s)
Term/Phrase
Plaintiff’s
Proposed
Construction
air away from the
face-engaging
portion”
Plaintiff’s
Support
Plain meaning; no
construction
necessary.
Alternatively: a plate,
wall, or screen to
regulate the flow of
air away from the
face-engaging portion.
5
Defendants’
Proposed
Construction
engaging portion of
the mask.
Defendants’
Support
Technical Terms,
(Fifth Edition)
“Baffle” p. 179)
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