ARTEMI LTD. v. SAFE-STRAP CO, INC.

Filing 92

OPINION. Signed by Judge Joseph E. Irenas on 7/3/2014. (drw)

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY

ARTEMI, LTD., and PAUL ARTEMI,:
:
Plaintiffs,
:
:
v.
:
:
SAFE-STRAP CO., INC.,
:
:
Defendant.
:

Civil No. 03-3382 (JEI/AMD)
OPINION

APPEARANCES:

MCELROY, DEUTSCH, MULVANEY & CARPENTER, LLP
By: Joseph P. Lasala, Esq.
1300 Mount Kemble Avenue
P.O. Box 2075
Morristown, New Jersey 07962
and
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
and
OSTRELENK FABER LLP
By: Louis C. Dujmich, Esq.
1180 Avenue of the Americas
New York, New York 10036
Counsel for Defendant
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IRENAS, Senior United States District Judge:
This is a patent infringement suit.
Markman hearing on June 25, 2014.

The Court conducted a

This opinion construes the

four disputed terms of Reissued Patent 42,568 (the RE‘568
patent) which discloses a “device for holding garment hangers,”
commercially known as the Spacemaker.

I.
The two prior opinions in this case, Artemi Ltd. v. SafeStrap Co., 947 F. Supp. 2d 473 (D.N.J. 2013), and Artemi Ltd. v.
Safe-Strap Co., 2013 U.S. Dist. LEXIS 181273 (D.N.J. Dec. 27,
2013), provide the factual and procedural background for this
claim construction opinion.
The terms to be construed are:
Term 1: “a ring”
Term 2: “the first part further having a ring spaced
from the hook, the ring having a curved upper internal
surface to facilitate carrying a plurality of garments
by hand” (emphasis added)
Term 3: “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” (emphasis
added)
Term 4: “adjustable means for altering the distance
between the second part and the first part”

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II.
Claim construction is a matter of law for the Court to
decide.

Markman v. Westview Instruments, Inc., 517 U.S. 370,

391 (1996).

“It is a ‘bedrock principle’ of patent law that

‘the claims of a patent define the invention to which the
patentee is entitled the right to exclude.’”

Phillips v. AWH

Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005) (en banc) (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1115 (Fed. Cir. 2004)).
The Court begins a claim construction analysis by examining
the intrinsic evidence, which includes the claims, the
specification, and the prosecution history.

Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).

“A

claim construction analysis must begin and remain centered on
the claim language itself.”

Innova, 381 F.3d at 1116.

There is

a heavy presumption that a claim term conveys its ordinary and
customary meaning, which “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.”

Phillips, 415 F.3d at 1313.

But a

patentee may overcome this presumption and choose “to be his or
her own lexicographer by clearly setting forth an explicit
definition for a claim term.”

Johnson Worldwide Assocs., Inc.

v. Zebco Corp., 175 F.3d 985, 990 (Fed. Cir. 1999); see also
Schering Corp. v. Amgen Inc., 222 F.3d 1347, 1353 (Fed. Cir.
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2000); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979–
80 (Fed. Cir. 1995), aff’d 517 U.S. 370 (1996).
The claims themselves and the context in which a term is
used within the claims can “provide substantial guidance as to
the meaning of particular claim terms.”
1314.

Phillips, 415 F.3d at

In addition, other claims of the patent may be useful in

construing a claim term, as “claim terms are normally used
consistently throughout the patent.”

Id.

Similarly, claims

that differ from each other may provide insight into how a term
should be read.

Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533,

1538 (Fed. Cir. 1991).
After examining the claims, “it is always necessary to
review the specification to determine whether the inventor has
used any terms in a manner inconsistent with their ordinary
meaning.”

Vitronics, 90 F.3d at 1582.

“For claim construction

purposes, the description may act as a sort of dictionary, which
explains the invention and may define terms used in the claims.”
Markman, 52 F.3d at 979.

For this reason, “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.”

Vitronics, 90 F.3d at 1582.

Finally, the Court should also examine the prosecution
history, if it is in evidence.

Phillips, 415 F.3d at 1317.

“The prosecution history can often inform the meaning of the
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claim language by demonstrating how the inventor understood the
invention and whether the inventor limited the invention in the
course of prosecution, making the claim scope narrower than it
would otherwise be.”

Id.

“[I]deally there should be no ‘ambiguity’ in claim language
to one of ordinary skill in the art that would require resort to
evidence outside the specification and prosecution history.”
Markman, 52 F.3d at 986.

But if the term remains unclear or

unambiguous after examining the intrinsic evidence, the Court
may turn to extrinsic evidence.

Pall Corp. v. Micron

Separations, Inc., 66 F.3d 1211, 1216 (Fed. Cir. 1995).
“Extrinsic evidence consists of all evidence external to the
patent and prosecution history, including expert and inventor
testimony, dictionaries, and learned treatises.”
F.3d at 980.

Markman, 52

Although extrinsic evidence is useful in

determining how a person of ordinary skill in the art would
understand the term, it is less reliable for the purposes of
claim construction than the patent and its prosecution history.
Phillips, 415 F.3d at 1318-19.

Therefore, extrinsic evidence

must be viewed within the context of intrinsic evidence.
1319.

5

Id. at

III.
The Court addresses one initial issue before turning to the
disputed terms.

A.
Safe-Strap asks this Court to “construe” the original ‘455
patent, arguing that the “proper construction” of the ‘455
patent informs the Court’s construction of the reissued patent.
Artemi disagrees, arguing that the Court may not construe the
original patent.
Artemi is correct that there is only one patent at
issue in this patent infringement suit-- the reissued
patent, not the original patent. 1

Thus, in this sense the

Court may only construe the reissued patent; the Court
cannot construe the original patent.

However, as Artemi’s

counsel acknowledged at the Markman hearing, the language of
the original patent is not completely irrelevant to the
construction of the reissued patent.
Indeed, particularly with respect to RE‘568 claim 2,
which Artemi asserts is substantially identical to claim 2
of the original patent, the language of the original patent
could be highly relevant.

More generally, to the extent

1

Pursuant to 35 U.S.C. §§ 251 and 252 the original patent is
surrendered upon reissue.
6

that the language of the original patent forms part of the
prosecution history of the reissued patent, it logically
follows that the Court may consider it in construing the
reissued patent.

B.
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 SafeStrap argues that “the ring” is the hole in the doughnut.
Stated in terms of Amended Figure 1a of the specification,
the issue is whether reference number 12 alone is the ring
or whether reference number 11 is also part of the ring.

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Safe-Strap proposes that reference number 12 alone is
the “ring,” but this interpretation cannot be reconciled
with the language of the specification which states that
reference number 11 is the “curved upper surface” of the
ring: “The ring has a curved, upper surface 11 on the
exterior that faces internally with respect to the hooked
portion.”
Moreover, this interpretation is consistent with the
portions of the prosecution history which Safe-Strap itself
relies upon.

In his reexamination request, Artemi stated

that, “[t]he ‘first part’ also includes a ‘ring spaced from
the hook.” This ‘ring’ is indicated at B [later B became 12]
in Figure 1 above and defines hole 4.”

(PH-129)

Safe-Strap stops with that sentence and then concludes
that B alone must be the ring.

But the very next two

sentences of the reexamination request demonstrate that B is
only part of the ring:

“Claim 1 defines the ‘ring’ as

having ‘a curved upper internal surface to facilitate
carrying a plurality of garments by hand.’

This claim

limitation corresponds to the upper surface of the ring
indicated at C [later C became 11] in figure 1 above, which
is internal to the ‘hook’.” (PH-129)

The request then

continues, “as can be plainly appreciated from Figure 1, the
surface C enables [a] worker to comfortably grasp his hand
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around the ‘ring’ so as to provide a secure grip for lifting
the device up to disengage the ‘hooked portion’ from the
rail.”

(PH-130) (emphasis added)

Thus, the prosecution history makes clear that B [12]
and C [11] together make up the “ring.”

B alone cannot be

the ring because there is no way for a worker to comfortably
grasp his hand around B only.
Safe-Strap, however, argues that a worker can grasp the
device through the hole by inserting an index finger through
the hole and holding it like a teacup.

The Court is not

persuaded by Safe-Strap’s argument.
First, it conflicts with the prosecution history, which
clearly demonstrates a person skilled in the art grasping
his or her hand around the outside of the device, not
inserting a finger through the hole of the device.

(PH-191,

459)
Second, Safe-Strap’s argument conflicts with the manner
in which the device is intended to be used.

When the loop

contains many hangers holding a “plurality of garments,” the
device and garments together will be heavy.

Holding and

carrying a heavy object with a “grip[ped]” (PH-130) fist is
easier and more comfortable than holding and carrying a
heavy object with a single index finger, as Safe-Strap’s

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counsel proposes.

Therefore, the Court rejects Safe-Strap’s

proposed construction.
However, the Court also does not adopt Artemi’s
proposed construction of “ring.”
“ring” should mean “closed loop.”

Artemi proposes that
It appears that Artemi

has chosen the word “loop” because it generally denotes a
curved, closed figure that could encompass reference numbers
12 and 11 together.
patent.

But “loop” is a defined term within the

“Loop” is the second part of the device,

corresponding to reference number 3.

Using “loop” to also

define a portion of the first part of the device would be
internally inconsistent with the language of the patent and
confusing.
Defining “ring” as “the bottom half of the ‘first part’
of the device,” however, simultaneously encompasses
reference numbers 11 and 12 while avoiding the confusion
caused by ascribing two different meanings to the term
“loop.”

Therefore, the Court holds that “ring” is construed

as “the bottom half of the ‘first part’ of the device.”

C.
Safe-Strap argues that “curved upper internal surface”
means “the upper internal surface facing the hole identified
by reference #4,” i.e., the top half of the hole.
10

With the

proper understanding of “ring” (reference numbers 11 and 12)
and hole (reference number 4)-- i.e., that hole and ring are
not synonymous-- “curved upper internal surface” cannot mean
what Safe-Strap proposes for two reasons.
First, had Artemi intended “curved upper internal
surface” to identify the upper internal surface of the hole
as Safe-Strap argues, consistent with the language of the
patent and the reference number scheme, that area would be
assigned a reference number.
reference number.

Yet that area has no specific

The absence of a reference number

suggests that “curved upper internal surface” must identify
a portion of the device different from the portion SafeStrap proposes.
Second, Safe-Strap cannot reconcile its proposed
construction with the rest of the term: “to facilitate carrying
a plurality of garments by hand.”

Making the upper internal

surface of the hole curved cannot facilitate carrying a
plurality of garments by hand for the reasons explained above.
On the other hand, under Artemi’s construction-- that
“curved upper internal surface” corresponds to reference
number 11-- both issues are resolved.

Reference number 4

identifies the entire hole in the “ring”; it encompasses the
top internal half of the hole as well as the bottom internal

11

half, and therefore a separate reference number is
unnecessary.
Moreover, curving the surface identified by reference
number 11 does make it easier for a person skilled in the
art to grab and carry a plurality of garments by hand, as
demonstrated in the picture found at PH-191 and PH-459.

As

Artemi explained to the Examiner during reissue, “[t]he
claimed purpose of [#11] is to ‘facilitate carrying a
plurality of garments by hand.’

It enables the worker to

grasp around the ‘first part’ for disengaging the hooked
portion from the rail and then carrying the garments
supported by the device by hand.”

(PH-459)

This conclusion logically leads to the question, if
“curved upper internal surface” already meant internal with
respect to the hook, why did Artemi add the language
“located on an exterior of the ring and facing internally
with respect to the hook”?

The answer is clearly

demonstrated in the prosecution history: Artemi added the
language to distinguish his device from prior art. 2

Procedural limitations governing reissued patents only
allowed Artemi to add the more explicit language to the new
claims he pursued through reissue. (See PH-847) If he added the
language to the claims of the original patent, he would have
risked losing rights. This explains why some of the RE‘568
patent claims include the additional language while others do
not.
2

12

As Artemi discusses in his brief, the Examiner had
originally rejected Artemi’s claim as anticipated by
Robertson.

(PH-175-76)

Artemi then explained why the

Examiner “misapplied” the claim to Robertson, stating that
“one of ordinary skill in the art . . . would readily
understand that the ‘curved upper internal surface’ clearly
refers to the upper surface ‘internal’ to the ‘hook.’. . .
One of ordinary skill in the art would understand that the
upper surface of the ‘ring’ that is internal to the ‘hook’
is the only surface that facilitates carrying garments by
allowing for the type of grasping depicted above.”

(PH-174)

The Court holds that disputed terms 2 and 3 mean the
same thing; they both refer to reference number 11 in Figure
1 Amended.

D.
As to the last term-- “adjustable means for altering the
distance between the second part and the first part”-- the
parties agree that this is a means-plus-function element and
that the function is to alter the distance between the first
part and the second part.

The parties only dispute the means to

perform the function.

13

The issue is whether a “stitched loop” is an
“adjustable” structure disclosed by the patent.

Artemi

argues that it is; Safe-Strap argues that it is not.
According to Artemi, a stitched loop is adjustable
insofar as the length of the loop can be adjusted by the
manufacturer when the device is made at the factory.
Artemi, in essence, argues that because a customer who buys
the Spacemaker can place an order for a loop of a specific
size, the stitched loop is “adjustable.”
Safe-Strap on the other hand, argues that “adjustable”
must mean adjustable only by a user.

It reasons that a user

cannot adjust a stitched strap without investing a
relatively large amount of time and effort to tear out the
existing stitching and re-stitch the strap, therefore a
stitched loop is not adjustable.
The Court rejects Artemi’s proposed construction and
agrees with Safe-Strap that “adjustable” must mean
adjustable by the user of the patented device.
First, the entire patent speaks of how the device is
employed by the user.

For example, as previously discussed,

the device has a curved upper internal surface to facilitate
carrying of a plurality of garments by a user, not by a
manufacturer.

Similarly, patent claims 14 through 16

disclose methods by which a user, not a manufacturer, can
14

use one or more of the patented device.

To conclude that

“adjustable” means adjustable not by the user, but rather by
the manufacturer, would be inconsistent with the rest of the
patent.
Second, the patent speaks of “stitching” as a means of
“form[ing]” “the loop;” it does not disclose stitching as a
means of adjusting the distance between the loop and the
rigid plastic part.

The patent discloses only a “latched

fastening fastener” as a means of adjusting the position of
the loop relative to the hooked portion.
Third, if “adjustable” meant adjustable by the
manufacturer, then any device that could be ordered to
certain specifications would be “adjustable.”

But such a

broad definition cannot be reconciled with what “adjustable”
is commonly understood to mean, and Artemi cites no support
in the specification or the prosecution history for such an
understanding with regard to the patented device at issue.
Accordingly, the Court holds that “adjustable” means
adjustable by only the user of the device; “adjustable” does
not encompass a stitched loop.

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IV.
For the foregoing reasons, the disputed terms are construed
as set forth above.

An appropriate Order accompanies this

Opinion.

Dated:

July 3, 2014

___s/ Joseph E. Irenas_______
Joseph E. Irenas, S.U.S.D.J.

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