Keyston Global LLC v. Auto Essentials Inc et al
Filing
90
OPINION AND ORDER. The disputed terms, as set forth in the parties' claim construction submissions of July 19, August 2, August 9, and August 16, 2013, are construed as set forth in the Opinion And Order. (Signed by Judge Denise L. Cote on 3/6/2014) (gr)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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:
KEYSTONE GLOBAL LLC,
:
Plaintiff,
:
:
-v:
:
DÉCOR ESSENTIALS LTD. d/b/a BUMPER
:
ADVERTISEMENT; and CHARIOT
:
INTERNATIONAL, INC. d/b/a BUMPER
:
BADGER,
:
Defendants.
:
:
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12 Civ. 9077 (DLC)
OPINION AND ORDER
APPEARANCES:
For plaintiff Keystone Global LLC:
Jeffrey Sonnabend
SonnabendLaw
600 Prospect Ave.
Brooklyn, NY 11215-6012
For defendant Chariot International, Inc.:
Kenneth F. Florek
Florek & Endres PLLC
1156 Avenue of the Americas
New York, NY 10036
DENISE COTE, District Judge:
Plaintiff Keystone Global LLC (“Keystone”) brings this
action against defendants Chariot International, Inc. d/b/a
Bumper Badger (“Chariot”); Auto Essentials Inc.; Décor
Essentials Ltd. d/b/a BumperAdvertisement; Bumper Buster, Inc.
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d/b/a Bumper Busters; Kesem LLC d/b/a Bumpersecurity; R.R.
Lalena Corp.; and Wheels to Lease.
continues to defend this action. 1
Of these, only Chariot
Keystone alleges that
defendants have infringed its United States Patents No.
7,866,715 (the “‘715 patent”) and 8,047,601 (the “‘601 patent”),
which cover devices designed to protect the rear bumper of a car
from minor bumps and scrapes.
Pursuant to Markman v. Westview Instruments, Inc., 517 U.S.
370 (1996), the parties have submitted briefing regarding their
proposed constructions of the ‘715 and ‘601 patents’ claims.
The following sets forth the Court’s construction of disputed
terms.
BACKGROUND
The parties dispute the construction of the following terms
used in the ‘715 patent: “detachably attaches to a rear bumper”
and “detachably attaching to . . . the rear bumper” 2;
1
Keystone settled with each defendant except Décor Essentials
Ltd., against which a default was entered on April 19; Auto
Essentials, which was dismissed without prejudice by Order of
April 19; and Chariot.
2
The parties dispute whether the term “detachably attaches to a
rear bumper” in the preamble limits the claim. It is not clear
why Chariot argues that the preamble must be read as a claim
2
“stabilizing blocks”; and “attached to the outside face and
protruding from the top portion of the base layer.” 3
The parties
dispute the same terms in the ‘601 patent, with two exceptions:
the ‘601 patent replaces the phrase “attached to the outside
face” with “on the outside face,” and it includes an additional
disputed term, “wherein the stabilizing blocks are integrally
formed with the base layer.”
Claim 1 of the ‘715 patent describes (emphasis supplied):
A rear bumper protective device that is fitted atop
and detachably attaches to a rear bumper of a vehicle,
the rear bumper protective device comprising:
a base layer of hanging flexible material having a top
portion, a top edge, side portions, an inside face, an
outside face, and a bottom portion, the base layer
having a construction and thickness capable of
reducing damage to the rear bumper of the vehicle, and
being of sufficient dimensions to at least partially
hang over the rear bumper of the vehicle when fitted
atop the rear bumper of the vehicle, wherein the
inside face faces the vehicle and the outside face
faces away from the vehicle;
limitation, since the claims themselves describe the device as
“detachably attaching . . . to the rear bumper.” The parties do
not dispute that these terms have the same meaning.
3
Chariot argues that two additional terms in the ‘715 patents
are “means-plus-function” limitations within the meaning of 35
U.S.C. § 112(f). In its briefing, Keystone makes no argument to
the contrary.
3
attachment means connected to said base layer for
detachably attaching said base layer to the rear
bumper of the vehicle; and
one or more stabilizing blocks, each having a top
edge, attached to the outside face and protruding from
the top portion of the base layer, the stabilizing
blocks positioned such that the top edge of each
stabilizing block lies on a common line with the top
edge of the base layer.
Claim 10 of the ‘715 patent is essentially identical, with a
slight alteration in the second feature.
Where Claim 1 claims
“attachment means connected to said base layer for detachably
attaching said base layer to the rear bumper of the vehicle,”
Claim 10 claims “one or more securing means connected to the
bumper protective device for detachably attaching to a rear
portion of the vehicle.”
Claim 1 of the ‘601 patent describes (emphasis supplied):
A rear bumper protective device that is fitted atop
and detachably attaches to a rear bumper of a vehicle,
the rear bumper protective device comprising:
a base layer of hanging flexible material that is
substantially planar when vertically hanging, wherein
the material has a top portion, a top edge, side
portions, an inside face, an outside face, and a
bottom portion, the base layer having a construction
and thickness capable of reducing damage to the rear
bumper of the vehicle, and being of sufficient
dimensions to at least partially hang over the rear
bumper of the vehicle when fitted atop the rear bumper
of the vehicle, wherein the inside face faces the
vehicle and the outside face faces away from the
vehicle, and wherein the inside face has a non-broken,
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substantially vertical planar surface at the
intersection of the inside face to the top portion;
attachment means connected to said base layer for
detachably attaching said base layer to the rear
bumper of the vehicle; and
one or more stabilizing blocks, each having a top
edge, on the outside face and protruding from the top
portion of the base layer, the stabilizing blocks
positioned such that the top edge of each stabilizing
block lies on a common line with the top edge of the
base layer, wherein the stabilizing blocks are
integrally formed with the base layer.
As with Claim 10 of the ‘715 patent, Claim 11 of the ‘601
patent replaces the term “attachment means connected to
said base layer for detachably attaching said base layer to
the rear bumper of the vehicle” used in Claim 1 with “one
or more securing means connected to the bumper protective
device for detachably attaching to a rear portion of the
vehicle.”
DISCUSSION
“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,
1312 (Fed. Cir. 2005) (en banc) (citation omitted).
Patent
construction is a question of law, the interpretation of which
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is entrusted to judges.
Markman, 517 U.S. at 391.
In
construing a patent claim a court “should look first to the
intrinsic evidence of record, i.e., the patent itself, including
the claims, the specification and, if in evidence, the
prosecution history.”
PC Connector Solutions LLC v. SmartDisk
Corp., 406 F.3d 1359, 1362 (Fed. Cir. 2005).
“The inquiry into
how a person of ordinary skill in the art understands a claim
term provides an objective baseline from which to begin claim
interpretation.”
Phillips, 415 F.3d at 1313.
Other than the language of the patent claim itself, “the
specification is the single best guide to the meaning of a claim
term.”
Curtiss–Wright Flow Control Corp. v. Velan, Inc., 438
F.3d 1374, 1378 (Fed. Cir. 2006).
In other words, “claims must
be read in view of the specification, of which they are a
part.”
Phillips, 415 F.3d at 1315.
Within the specification, a
patentee “can act as his own lexicographer to specifically
define terms of a claim contrary to their ordinary meaning.”
Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc., 467 F.3d
1370, 1376 (Fed. Cir. 2006).
Although courts use the
specification “to interpret the meaning of a claim,” they must
“avoid the danger of reading limitations from the specification
into the claim” itself.
Phillips, 415 F.3d at 1323.
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The prosecution history may also “inform the meaning of the
claim language by demonstrating how the inventor understood the
invention and whether the inventor limited the invention in the
course of prosecution.”
Id. at 1317.
Indeed, because the
prosecution history includes the applicant’s express
representations made to the PTO examiner, it may be “of critical
significance in determining the meaning of the claims.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996).
The prosecution history’s instructive value is
mitigated, however, by the fact that it “represents an ongoing
negotiation between the PTO and the applicant . . . [and] often
lacks the clarity of the specification.”
Phillips, 415 F.3d at
1317.
In its proposed claim constructions, Keystone relies
exclusively on an online dictionary.
Federal Circuit law treats
dictionaries as extrinsic evidence that, like expert testimony
and treatises, should be “less significant than the intrinsic
record in determining the legally operative meaning of claim
language.”
Id. (citation omitted).
Dictionaries can prove a
fitting source for claim construction, but only so long as they
remain subordinate to the language of the claim terms and
specification.
“[J]udges are free to consult dictionaries and
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technical treatises . . . when construing claim terms, so long
as the dictionary definition does not contradict any definition
found in or ascertained by a reading of the patent documents.”
Id. at 1322-23 (citation omitted).
If the meaning of the claim
is clear from the intrinsic evidence alone, resort to extrinsic
evidence is improper.
Boss Control, Inc. v. Bombardier
Inc., 410 F.3d 1372, 1377 (Fed. Cir. 2005).
I.
“Detachably Attaches to a Rear Bumper”
All four claims at issue describe a device that “detachably
attaches to a rear bumper” and includes either “attachment means
. . . for detachably attaching [the] base layer to the rear
bumper” or “securing means . . . for detachably attaching to a
rear portion of the vehicle.”
Keystone argues that “detachably
attaching” should be read to mean “connected to the rear bumper
in a disengageable (non-permanent) fashion.”
Chariot, on the
other hand, argues that “detachably attaches” must be read to
require the device to be attached directly to the rear bumper
itself, or, as Chariot would have it, “attached specifically to
a rear bumper.”
The embodiments disclosed in the specifications do not show
a device that is attached directly to the rear bumper.
Rather,
they describe “securing means” that “are preferably attached by
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any suitable means onto or into the trunk portion of the
vehicle.”
The accompanying figure shows two arms extending
above the device and above the rear bumper of a car.
“A claim
construction that excludes the preferred embodiment is rarely,
if ever, correct and would require highly persuasive evidentiary
support.”
SynQor, Inc. v. Artesyn Techs., Inc., 709 F.3d 1365,
1378-79 (Fed. Cir. 2013) (citation omitted).
Thus, using the specification as a guide, Keystone’s
construction of the term is correct.
To “detachably attach” to
the rear bumper it is not necessary that the device attach
directly or be affixed to the rear bumper.
See Douglas
Dynamics, LLC v. Buyers Prods. Co., 717 F.3d 1336, 1342 (Fed.
Cir. 2013) (reversing district court conclusion that the term
“connected to” required “a direct connection” because “[t]he
ordinary meaning of ‘connected to’ encompasses indirect
linkages”).
Chariot relies on the prosecution history to support its
reading.
But, Chariot’s analysis of the prosecution history is
not persuasive.
Chariot focuses on correspondence with the
Patent Examiner regarding a prior art reference called “Braun.” 4
4
U.S. Patent No. 4,231,600.
9
Braun taught a rear bumper that is bolted to the chassis of a
vehicle, and the applicant for the ‘715 patent added, in two
rounds of amendments, language to clarify that the device at
issue here was “fitted atop” the rear bumper and “detachably
attached” to it.
Chariot argues that these changes show that
the applicant was required to claim a device attached directly
to the rear bumper to avoid Braun, which claims a device bolted
to the chassis.
Keystone’s reading, however, is more plausible.
Keystone’s language, and its interpretation here, underscore
that the device is detachable and not bolted to the car.
II.
“Stabilizing Blocks”
All four claims at issue also refer to “one or more
stabilizing blocks.”
Keystone, again drawing from an online
dictionary, suggests that these terms should be construed as
claiming “a discrete, solid mass of material to make stable the
device.”
Chariot argues that “stabilizing blocks” should mean
simply “a protrusion or raised edge,” or, alternatively, “a
protrusion or raised edge to reduce curling.”
Once again, Keystone’s proposed construction hews much more
closely to the “ordinary and customary meaning,” Phillips, 415
F.3d at 1313, of the words used in the claim.
In particular,
Keystone gives effect to the word “stabilizing,” while Chariot
10
effectively reads it out of the claim entirely in its first
proposed construction (“a protrusion or raised edge”) and gives
it only a shadow of its ordinary meaning in the second proposed
construction (“. . . to reduce curling”).
Chariot relies on the specification, arguing that it
expressly defines the term “stabilizing block” to mean “a
protrusion or raised edge.”
this argument.
The cited passage does not support
It reads:
In a preferred embodiment, the stabilizing block is in
the form of a protrusion or raised edge . . . of
sufficient rigidity, thickness, width, and length to
reduce curling of the rear bumper protective cover.
The stabilizing block is particularly effective in
reducing lateral curling or rolling, i.e., curling,
rolling, or flapping roughly parallel with the sides
of the vehicle.
Through this text the inventor of the ‘715 patent did not
expressly limit the term “stabilizing block” to mean only “a
protrusion or raised edge.”
See Home Diagnostics, Inc. v.
LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a
clear disavowal or contrary definition in the specification or
the prosecution history, the patentee is entitled to the full
scope of its claim language.”).
Indeed, the specification
describes a block that serves a particular function: stabilizing
the bumper.
Omitting any mention of a stabilizing function
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makes no sense in light of the specification, and contravenes
the ordinary meaning of the claim terms themselves.
Nor does the specification support Chariot’s alternate
reading, which would construe “stabilizing block” as “a
protrusion or raised edge to reduce curling.”
The specification
explains that the stabilizing effect of the block can include
reducing curling and also “rolling, or flapping.”
There is no
indication in the specification that by using the term
“stabilizing,” the applicant meant to refer only to a reduction
in curling.
The Court will therefore construe the term
“stabilizing block” according to its ordinary meaning, which is
a block that helps stabilize the bumper.
III.
“Attached to the Outside Face”
Claims 1 and 10 of the ‘715 patent provide that the
“stabilizing blocks” be “attached to the outside face and
protruding from the top portion of the base layer.”
Keystone
argues that the term “attached to the outside face” means simply
that the blocks are “connected to the outside face.”
Chariot,
on the other hand, argues that this term should be construed to
mean that the stabilizing blocks are “a separate part attached
to, and not integrally formed, or of a continuous mold, with the
base layer.”
12
Chariot’s argument is based on a passage in the
specification of the ‘715 patent describing two alternative
embodiments and on Claims 1 and 11 of the ‘601 patent.
The
specification of the ‘715 patent describes two alternative
embodiments:
In a preferred embodiment, the stabilizing block is of
the same material as the base layer and is formed of a
continuous mold with the base layer. For example, the
protective device can include a rubber base layer and
rubber stabilizing block constructed from a single
mold. Alternatively, the stabilizing block can be of
the same or a different material than the base layer
and can be bonded, affixed, or attached by any
suitable means to the base layer.
Furthermore, while the ‘715 patent claims stabilizing blocks
that are “attached to the outside face and protruding from the
top portion of the base layer,” the ‘601 patent claims
stabilizing blocks that “are integrally formed with the base
layer.”
Chariot posits that the specification in the ‘715 patent
quoted above describes two alternative embodiments and that the
‘715 patent later claims only one, so that the claims must be
read to exclude the other embodiment.
Chariot reads the ‘601
patent as supporting this position, as it claims the other
embodiment.
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The plain and ordinary meaning of the term “attached” does
not necessarily require that the two objects attached together
were once separate, or that they were “not integrally formed, or
of a continuous mold” with each other, as Chariot would have it.
After all, one’s head is “attached” to one’s body, even though
they were “integrally formed” that way.
While the specification
does describe two alternative embodiments, the language used in
the claims of the ‘715 patent is not limited to one or the
other.
The Federal Circuit has observed that while
in certain pre-Phillips cases . . . use of two terms
as alternatives could amount to an implicit
redefinition of the terms, . . . the “implied”
redefinition must be so clear that it equates to an
explicit one. In other words, a person of ordinary
skill in the art would have to read the specification
and conclude that the applicant has clearly disavowed
claim scope or has acted as its own lexicographer.
Simply referring to two terms as alternatives or
disclosing embodiments that all use the term the same
way is not sufficient to redefine a claim term.
Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1368
(Fed. Cir. 2012) (emphasis supplied).
Moreover, the use of the word “attached” in the embodiments
does not rise to the level of a clear disavowal of claim scope
or sui generis lexicography.
Indeed, the embodiment uses
“attached” in context with other words to describe stabilizing
blocks that are not formed of a single mold with the base layer.
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As the specification describes, “the stabilizing block can be of
the same or a different material than the base layer and can be
bonded, affixed, or attached by any suitable means to the base
layer.”
If the applicant had adopted its own meaning of the
word “attached,” then the rest of the description would
presumably be unnecessary.
Accordingly, the Court will not
construe “attached” to exclude stabilizing blocks that are
“integrally formed, or of a continuous mold, with the base
layer.”
IV.
“Integrally Formed with the Base Layer”
As discussed above, Claims 1 and 11 of the ‘601 patent, in
contrast to the ‘715 patent, claim stabilizing blocks that “are
integrally formed with the base layer.”
In a continuation of
its argument regarding the ‘715 patent’s use of the term
“attached,” Chariot suggests that this language in the ‘601
patent must be construed to mean that the stabilizing block is
“of a continuous mold, with the base layer.”
For the reasons
discussed above, there is no justification for importing the
phrase “of a continuous mold” from the specification into the
claims themselves.
Chariot has not shown that the applicant
explicitly disavowed claim scope or acted as its own
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lexicographer in using the term “integrally formed.”
See
Thorner, 669 F.3d at 1368. 5
CONCLUSION
The disputed terms, as set forth in the parties’ claim
construction submissions of July 19, August 2, August 9, and
August 16, 2013, are construed as set forth above.
SO ORDERED:
Dated:
New York, New York
March 6, 2014
__________________________________
DENISE COTE
United States District Judge
5
Consideration of the sur-reply filed by Chariot without
permission would not alter the outcome in this Opinion.
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