ARTEMI LTD. v. SAFE-STRAP CO, INC.
OPINION. Signed by Judge Joseph E. Irenas on 7/14/2015. (dmr)
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
ARTEMI, LTD., and PAUL ARTEMI,:
SAFE-STRAP CO., INC.,
Civil No. 03-3382 (JEI/AMD)
MCELROY, DEUTSCH, MULVANEY & CARPENTER, LLP
By: Joseph P. Lasala, Esq.
1300 Mount Kemble Avenue
P.O. Box 2075
Morristown, New Jersey 07962
PAZUNIAK LAW OFFICE
By: George Pazuniak, Esq.
1201 North Orange Street
7th Floor, Suite 7114
Wilmington, Delaware 19801
Counsel for Plaintiff
MULLEN & REYNOLDS, LLC
By: Eugene G. Reynolds, Esq.
101 Gibraltar Drive, Suite 1E1
Morris Plains, New Jersey 07950
OSTRELENK FABER LLP
By: Louis C. Dujmich, Esq.
1180 Avenue of the Americas
New York, New York 10036
Counsel for Defendant
IRENAS, Senior United States District Judge:
This is the fourth opinion in this patent infringement
Presently before the Court is Defendant Safe-Strap’s
Motion for Summary Judgment on its invalidity affirmative
The Court holds that the reissued patent does not
“enlarge[e] the scope of the claims of the original patent,” 35
U.S.C. § 251(d).
Thus, Safe-Strap’s motion will be denied.
The prior opinions in this case, Artemi Ltd. v. Safe-Strap
Co., 947 F. Supp. 2d 473 (D.N.J. 2013); Artemi Ltd. v. SafeStrap Co., 2013 U.S. Dist. LEXIS 181273 (D.N.J. Dec. 27, 2013);
and Artemi Ltd. v. Safe-Strap Co., 2014 U.S. Dist. LEXIS 91468
(D.N.J. July 7, 2014) provide the factual and procedural
background for the instant motion.
Most relevant to the issue presented here-- whether the
reissued patent (the RE‘568 patent) is broader than the original
patent (the ‘455 patent)-- is the Court’s most recent opinion,
which construed the disputed terms of the RE‘568 patent.
In particular, the Court discussed the parties’ dispute as
to the RE‘568 patent:
In construing the disputed terms, it is helpful to
begin with a basic understanding of the patented
device as a whole. The Summary of the Invention
discloses two ‘parts’ of the device: a ‘first part’
which is ‘made of rigid plastics material;’ and a
‘second part’ ‘comprising a loop’ formed by a ‘strap’
made of ‘flexible webbing.’
The parties do not
dispute that the second part is ‘attached to the first
part through the ring.’ (RE'568 patent claim 2)
The parties, however, do dispute whether the ‘ring’
means the ‘hole’ in the device, or whether the ‘ring’
means the plastic material surrounding and defining
the hole. At the Markman hearing, the Court used a
doughnut analogy: Artemi argues that ‘the ring’ is
the doughnut, while Safe-Strap argues that ‘the ring’
is the hole in the doughnut.
Artemi, 2014 U.S. Dist. LEXIS at *6-7.
For the reasons stated in the opinion, the Court held that
“the ring” was “the bottom half of the first part of the
device,” i.e., the doughnut, not the hole. Id. at *10.
The Court also rejected Safe-Strap’s argument that “curved
upper internal surface” meant the upper internal surface of the
hole, as opposed to upper internal surface with respect to the
hook, i.e., the curved surface on the outside of the doughnut.
Id. at *10-13.
“[A] moving party seeking to invalidate a patent at summary
judgment must submit . . . clear and convincing evidence of
invalidity” because “[u]nder the patent statutes, a patent
enjoys a presumption of validity.”
Eli Lilly and Co. v. Barr
Labs, Inc., 251 F.3d 955, 962 (Fed. Cir. 2001) (citing Andersen
v. Liberty Lobby, Inc., 477 U.S. 242, 252-53 (1986) and 35
U.S.C. § 282).
Whether a reissued patent is invalid for violating 35
U.S.C. § 251 is a question of law.
AIA Engineering Ltd v.
Magotteaux Int’l S/A, 657 F.3d 1264, 1271 (Fed. Cir. 2011).
“Whether a claim amendment during reissue examination enlarged
the scope of the claim is a matter of claim construction.”
Claim construction is also a question of law.
The Court incorporates by reference the claim construction
standard set forth in this Court’s previous opinion, see Artemi,
2014 U.S. Dist. LEXIS at *2-5.1
35 U.S.C. § 251(d) provides, “[n]o reissued patent shall be
granted enlarging the scope of the claims of the original patent
unless applied for within two years from the grant of the
It is undisputed that the patent holder,
Plaintiff Artemi, applied for reissue after the statutory twoyear period.
Thus, if the claims of the reissued patent are
The Motion presently pending before the Court is a summary
judgment motion pursuant to Fed. R. Civ. P. 56. However, the
specific invalidity issue before the Court involves only
questions of law. The “no genuine dispute as to any material
fact” inquiry, Fed. R. Civ. P. 56(a), does not apply. It
follows, then, that in addition to denying Safe-Strap’s Motion
for Summary Judgment on Invalidity, the Court should grant
summary judgment on this issue to Artemi.
broader than the original patent, the reissued patent is
“‘A claim of a reissue application is broader in scope than
the original claims if it contains within its scope any
conceivable apparatus or process which would not have infringed
the original patent.
A reissue claim that is broader in any
respect is considered to be broader than the original claims
even though it may be narrower in other respects.’”
Constr. Innovations, Inc. v. Perfect Wall, Inc., 290 F. App’x
358, 363 (Fed. Cir. 2008) (quoting Tillotson, Ltd. V. Walbro
Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987)).
The Court construes the relevant claims of the original
patent and then compares them with the construed terms of the
reissued patent to determine whether impermissible broadening
AIA Engineering Ltd, 657 F.3d at 1271.
In the context of this case, the issue is this: is the
relevant language of the ‘455 patent, claim 1-- “ . . . the
first part having a ring spaced from the hook, the ring having a
curved upper internal surface to facilitate carrying a plurality
of garments by hand. . . ” broader than the Court’s previous
construction of the ‘568 patent, claim 8-- “ . . . the first
part further having a ring spaced from the hook, the ring having
a curved upper internal surface located on an exterior of the
ring and facing internally with respect to the hook to
facilitate carrying a plurality of garments by hand . . .”?
The Court previously held that the relevant language of
RE‘568 claim 8 referred to the “doughnut,” and not the “hole” in
the doughnut, as Safe-Strap asserted.
The same question is now
presented with respect to the ‘455 patent: does the relevant
language identify the doughnut or the hole?
Artemi argues the
former; Safe-Strap argues the latter.
The Court rejects Safe-Strap’s construction.
As with any
claim construction, the Court begins with the claim itself2,
which clearly states that the curved upper internal surface of
the ring facilitates carrying many garment hangers at once.
Safe-Strap argues that the ‘455 patent contemplates the
user inserting his or her index finger through the hole; thus,
“curved upper internal surface” refers to the inside of the
But the Court disagrees-- just as it did with regard to
the RE‘568 patent’s construction, see Artemi, 2014 U.S. Dist.
LEXIS at *9-- that using the patented device in such a manner
The parties agree that the Court’s inquiry is necessarily
limited to the claims, specification and prosecution history of
the ‘455 patent only, and not any of the documentation created
during reexamination or reissue.
facilitates carrying by hand a plurality of garments that are
Instead, locating the “curved upper internal surface,” not
on the inside of the hole, but rather on the outside,
facilitates carrying the device with a gripped fist, which is
more comfortable and gives the user more control when “carrying
a plurality of garments by hand.”
Safe-Strap relies on snippets of the ‘455 patent
prosecution history for its assertion that the history “clearly
shows that Artemi was referring to the surface of the ring
facing the hole, and not a surface external to the hole.”
(Moving Brief p. 19)
But the prosecution history is not as
clear as Safe-Strap makes it out to be.
The argument is based on Reference Number 4 of Figure 1, of
the ‘455 patent, which is an arrow pointing to the center, empty
space portion of the ring (i.e., the place through which SafeStrap asserts a user could insert his index finger).
PTO, Artemi stated that the “curved upper internal surface”
In apparent recognition of the weakness in its argument,
Strap argues “[t]o facilitate is to ‘make easier;’ it does
require that the upper surface of the ring make it easiest
carry a plurality of garments by hand.” (Moving Brief, p.
The Court finds this argument unpersuasive.
referred to “the upper internal surface of the ring 4 of Figure
(Def’s Ex. 6, PArtemi0000146)
The problem with Safe-Strap’s argument is that it does not
exclude the Court’s construction that the “curved upper internal
surface” is located on the outside of the ring, i.e., internal
with respect to the hooked portion of the device.
There is no
reference number specifically identifying the outside portion of
the ring; if any number identifies that portion, it is reference
Thus, this portion of the prosecution history could
support either proposed construction, and therefore does not
sustain Safe-Strap’s weighty burden, particularly in light of
the claim language itself, which does not support Safe-Strap’s
The Court holds that the relevant language of the ‘455
patent refers to the outside surface of the ring, i.e., the
doughnut, not the hole.
Thus, the RE‘568 and ‘455 patent are
coextensive in this respect; the RE‘568 patent is not
impermissibly broader than the ‘455 patent.
Safe-Strap’s Motion for Summary Judgment will be denied;
judgment on the issue of § 251(d) invalidity will be granted to
For the foregoing reasons, Safe-Strap’s Motion for Summary
Judgment as to Invalidity will be denied, and summary judgment
as to this issue will be granted to Artemi.
Order accompanies this Opinion.
July 14, 2015
__s/ Joseph E. Irenas______
Joseph E. Irenas, S.U.S.D.J.
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