Wine Enthusiast, Inc. v. Vinotemp International Corporation
Filing
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OPINION AND ORDER....The disputed terms, as set forth in the parties claim construction submissions, are construed as set forth above. (Signed by Judge Denise L. Cote on 1/7/2019) (gr)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------WINE ENTHUSIAST, INC.,
Plaintiff,
-vVINOTEMP INTERNATIONAL CORPORATION,
Defendant.
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17cv6782(DLC)
OPINION AND ORDER
APPEARANCES:
For Wine Enthusiast:
Michael Hurey
Kleinberg & Lerner, LLP
1875 Century Park, Ste 1150
Los Angeles, CA 90067
For Vinotemp:
Eric J. Shimanoff
Mark Montague
Joelle A. Milov
Cowan, Liebowitz & Latman, P.C.
114 West 47th Street
New York, New York 10036
DENISE COTE, District Judge:
Defendant and counterclaim-plaintiff Vinotemp International
Corporation (“Vinotemp”) alleges that plaintiff and
counterclaim-defendant Wine Enthusiast, Inc. (“Wine Enthusiast”)
infringed United States Patent No. 7,882,967 (“the ‘967
Patent”), entitled “Modular Wine Rack System.”
The ‘967 Patent
describes a “modular wine rack system” that stores wine “with
the label facing the user.”
The figures in the patent
illustrate racks consisting of curved rods and flat plates.
The
parties have presented their proposed constructions of the ‘967
Patent’s claims pursuant to Markman v. Westview Instruments,
Inc., 517 U.S. 370 (1996).
The following sets forth the Court’s
construction of disputed terms.
The Court adopts Vinotemp’s
construction of the first disputed term and Wine Enthusiast’s
construction of the second and third disputed terms.
The
remaining terms do not require any construction.
Background
The parties dispute the construction of four terms that
appear in Claim 1, and one term that appears in Claim 5.
Vinotemp asserts that it is unnecessary to construe all but one
of the disputed terms.
The relevant claims, with the disputed
terms highlighted, are set forth below.
Claim 1 of the ‘967 Patent describes:
A modular wine rack system comprising:
A pair of substantially identical support arms for
supporting wine bottles having a body and a neck, each
of said arms having a proximal end and a distal end,
each of said support arms having at least one
indentation capable of supporting a wine bottle, and
each of said indentations having substantially
identical dimensions;
Wherein each of said support arms has mounting means
at said proximal end mounting said support arms in a
cantilevered position and wherein each of said distal
ends is free; and
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A support means receiving said pair of support arms
substantially horizontally aligned in a cantilevered
position and spaced apart to receive a wine bottle in
said indentations; and wherein
said support arms can be disposed in two different
positions by adjusting the distance therebetween such
that in a first one of the positions, said support
arms are spaced relatively close together so that the
body of a wine bottle is supported by an indentation
in each of the support arms thereby supporting said
wine bottle in a substantially horizontal position
and, alternatively, in a second one of said positions,
said support arms are spaced relatively further apart
so that the body of the wine bottle is supported by an
indentation in one support arm and the neck of the
bottle is supported by an indentation in the other
support arm thereby supporting said wine bottle with
its neck angled downwardly.
Claims 2-4 of the ‘967 Patent describe the same wine rack
system in Claim 1, but with different numbers of “indentations.”
Claim 5 describes “[t]he wine rack system of claim 1 wherein
said mounting means are a vertical plate.”
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.”
Aventis Pharm. Inc. v. Amino Chems.
Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013) (citation omitted).
In construing a patent claim, which is a question of law, courts
“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.”
Am. Calcar, Inc. v.
Am. Honda Motor Co., Inc., 651 F.3d 1318, 1336 (Fed. Cir. 2011)
3
(citation omitted).
Courts, however, should not read meaning
into claim language that is clear on its face.
See Tate Access
Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d
1357, 1371 (Fed. Cir. 2002).
Claim construction is not a
backdoor process by which the scope of a claim is narrowed or
expanded.
See Terlep v. Brinkmann Corp., 418 F.3d 1379, 1382
(Fed. Cir. 2005).
Claim terms are generally given their “ordinary and
customary meaning” as understood by a person of “ordinary skill
in the art at the time of invention.”
Aylus Networks, Inc. v.
Apple Inc., 856 F.3d 1353, 1358 (Fed. Cir. 2017) (citation
omitted).
The ordinary meaning of a claim term is its meaning
“to the ordinary artisan after reading the entire patent.”
Id.
(citation omitted).
If a claim term does not have an ordinary meaning, and its
meaning is not clear from a plain reading of the claim, courts
turn in particular to the specification to assist in claim
construction.
Power Integrations, Inc. v. Fairchild
Semiconductor Int’l, Inc., 711 F.3d 1348, 1361 (Fed. Cir. 2013).
Through 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)
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(citation omitted).
“Usually, [the specification] is
dispositive; it is the single best guide to the meaning of a
disputed term.”
omitted).
Power Integrations, 711 F.3d at 1361 (citation
While 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 v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005).
Although the specification often describes specific embodiments
of the invention, the Federal Circuit has repeatedly warned
against confining the claims to those embodiments.
Id.
A court may consider extrinsic evidence, such as
dictionaries and treatises, but such extrinsic evidence is
“generally of less significance than the intrinsic record.”
Takeda Pharma. Co. Ltd. v. Zydus Pharma. USA, Inc., 743 F.3d
1359, 1363 (Fed. Cir. 2014).
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).
35 U.S.C. § 112(f) applies a special rule of construction
to so-called “means-plus-function” elements of a patent claim.
Section 112(f) provides:
an element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
material, or acts in support thereof, and such claim
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shall be construed to cover the corresponding
structure, material, or acts described in the
specification and equivalents thereof.
35 U.S.C. § 112(f).
“Section 112(f) allows patentees to put
structural details into the specification and build into the
literal coverage of the claim a certain scope for equivalents in
performing a defined function.
The price of using this form of
claim, however, is that the claim be tied to a structure defined
with sufficient particularity in the specification.”
Ibormeith
IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1379 (Fed.
Cir. 2013) (citation omitted).
“Construing a means-plus-
function claim term is a two-step process.
identify the claimed function.
The court must first
Then, the court must determine
what structure, if any, disclosed in the specification
corresponds to the claimed function.”
Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015) (citation
omitted).
When determining whether a given element of a claim is a
means-plus-function element under Section 112(f) “the essential
inquiry [is] whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure.”
Zeroclick, LLC v.
Apple, Inc., 891 F.3d 1003, 1007 (Fed. Cir. 2018) (citation
omitted).
That determination is made “on an element-by-element
basis, and in light of evidence intrinsic and extrinsic to the
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asserted patents.”
Id.
Use of the word “means” in a patent
claim creates a rebuttable presumption that Section 112(f)
applies.
Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d
1291, 1298 (Fed. Cir. 2018).
Patents are presumed valid, and the burden of establishing
invalidity of a patent or any claim thereof is on the party
asserting invalidity.
35 U.S.C. § 282(a).
“At trial, the party
challenging validity must prove that the claims are invalid by
clear and convincing evidence.”
Polara Eng’g, Inc. v. Campbell
Co., 894 F.3d 1339, 1348 (Fed. Cir. 2018).
35 U.S.C. § 112(b) requires that a patent specification
“conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the inventor . . .
regards as the invention.”
A patent that does not meet this
requirement is said to be “indefinite” and is therefore invalid.
See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2124 (2014).
A patent is invalid for indefiniteness “if its
claims, read in light of the specification delineating the
patent, and the prosecution history, fail to inform, with
reasonable certainty, those skilled in the art about the scope
of the invention.”
Id.
Under Nautilus, the key question is
whether the claims -- as opposed to particular claim terms -inform a skilled reader with reasonable certainty about the
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scope of the invention.
Cox Commc’ns, Inc. v. Sprint Commc’n
Co. LP, 838 F.3d 1224, 1231 (Fed. Cir. 2016) (citation omitted).
Nevertheless, an indefiniteness analysis is “inextricably
intertwined with claim construction” and training indefiniteness
analysis on individual claim terms is a “helpful tool.”
1232 (citation omitted).
Id. at
“Indeed, if a person of ordinary skill
in the art cannot discern the scope of a claim with reasonable
certainty, it may be because one or several claim terms cannot
be reliably construed.”
Id.
The Federal Circuit has held that,
as a matter of law, a patent which “recites both a system and
the method for using that system . . . does not apprise a person
of ordinary skill in the art of its scope, and it is invalid
under section 112, paragraph 2.”
IPXL Holdings, LLC v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (citing
35 U.S.C. § 112).
I. Disputed Terms
The parties have each proposed constructions of the term
“indentation.”
While Wine Enthusiast proposes constructions for
four additional terms, Vinotemp asserts that their plain and
ordinary meaning should be used and that no further construction
is necessary.1
In the parties’ Joint Disputed Claims Chart, which was
submitted to the Court on August 24, 2018, Vinotemp also
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a. “indentation”
Wine Enthusiast argues that the term “indentation” in
claims 1-4 should be construed as “a bend, an arc, or a curve in
a continuous solid wire or rod.”
Vinotemp contends that the
term should be construed in accordance with its ordinary and
customary meaning, which includes “a recess in a surface” and “a
part of a surface that curves inward.”
Wine Enthusiast improperly imports a limitation into the
claim from some of the embodiments included in the
specification.
Wine Enthusiast’s proposed construction is at
odds with the plain and ordinary meaning of the term
“indentation” and would even exclude certain embodiments that
are depicted in the specification.
Accordingly, “indentation”
is construed to mean “a recess in a surface” or “a part of a
surface that curves inward.”
b. “mounting means”
Wine Enthusiast contends that the term “mounting means” is
a “means-plus-function” limitation, and thus must be construed
to cover those structures disclosed in the ‘967 Patent
proposed constructions for the terms “mounting means”
“support means.” In their opening claim construction
however, Vinotemp withdrew its proposed constructions
contends that the terms are unambiguous and should be
in accordance with their ordinary meaning.
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and
brief,
and now
construed
specification that perform the function of mounting the support
arm in a cantilevered position and their equivalents.
Wine
Enthusiast proposes that the term “mounting means” in Claims 1
and 5 be construed to mean “a plate as shown as element 30 in
Figs. 1, 7, 9, 13, 16, 17, and 18, a hook as shown in element 40
in Fig. 10, a mounting frame as shown as element 52 in Figs. 11
and 14, a small ball and keyhole slot as shown respectively in
Figs. 3 and 12, and a screw as shown in Figs. 4 and 5; and
equivalents of the foregoing under Section 112(f).”
Vinotemp does not directly address Wine Enthusiast’s
invocation of Section 112(f), but rather contends that the term
“mounting means” should be given its plain and ordinary meaning
because it is clear and unambiguous to a person of ordinary
skill in the art.
Because the use of the word “means” creates a
presumption that the claim falls within the ambit of Section
112(f), and Vinotemp has not rebutted that presumption, the term
“mounting means” is considered a means-plus-function element.
Wine Enthusiast’s proposed construction limits the meaning of
the term to several examples in the specification that perform
the function of “mounting,” and their equivalents.
Accordingly,
the term “mounting means” is construed to mean “a plate as shown
as element 30 in Figs. 1, 7, 9, 13, 16, 17, and 18, a hook as
shown in element 40 in Fig. 10, a mounting frame as shown as
element 52 in Figs. 11 and 14, a small ball and keyhole slot as
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shown respectively in Figs. 3 and 12, and a screw as shown in
Figs. 4 and 5; and equivalents of the foregoing under Section
112(f).”
c. “support means”
Wine Enthusiast similarly contends that the term “support
means” in Claim 1 is a means-plus-function element and should
thus be construed to mean “a pegboard, a wall, a frame, or a
freestanding base pedestal; and equivalents of the foregoing
under Section 112(f).”
Vinotemp contends that no construction
is necessary for the phrase “support means” because it is clear
and unambiguous to a person of ordinary skill in the art.
For
substantially the same reasons discussed above with respect to
“mounting means,” the term “support means” is a means-plusfunction term under Section 112(f).
Thus, the term “support
means” is construed to mean “a pegboard, a wall, a frame, or a
freestanding base pedestal; and equivalents of the foregoing
under Section 112(f).”
d. “support arms can be disposed in two different
positions”
The parties dispute whether the phrase “support arms can be
disposed in two different positions” is indefinite, thereby
effectively invalidating the Claim.
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Wine Enthusiast contends
that the phrase is indefinite because it recites both an
apparatus and a method of using the apparatus.
The ‘967 Patent is not indefinite as a matter of law
because it does not include method steps.
Unlike the patent at
issue in IPXL Holdings, Claim 1 does not require a user to take
certain steps in order to operate the device.
Rather, the
phrase “can be disposed in two different positions,” simply
describes a feature of the structure -- i.e., it contains parts
that are capable of being disposed in one of two different
positions.
Because the ‘967 Patent is entitled to a presumption
of validity, and Wine Enthusiast has not overcome that
presumption, the phrase “support arms can be disposed in two
different positions” is construed to have its ordinary meaning.
e. “vertical plate”
Wine Enthusiast contends that the term “vertical plate” in
Claim 5 should be construed to mean “a vertically-oriented flat,
thin, rigid sheet of material.”
Vinotemp argues that no
construction is necessary, and the term should be construed in
accordance with its plain and ordinary meaning.
correct.
Vinotemp is
The term “vertical plate” has a clear ordinary meaning
to a person of ordinary skill in the art.
construe such a term.
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There is no need to
Conclusion
The disputed terms, as set forth in the parties’ claim
construction submissions, are construed as set forth above.
Dated:
New York, New York
January 7, 2019
____________________________
DENISE COTE
United States District Judge
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