Checkpoint Systems, Inc. v. Hangzhou Century Co. Ltd, et al

Filing 105

Memorandum Opinion ruling on the claim construction issue. (See Opinion for details). Judge Sara Lioi on 10/1/2014. (P,J)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION

CHECKPOINT SYSTEMS, INC.,
PLAINTIFF,
vs.

HANGZHOU CENTURY CO., LTD
d/b/a CENTURY PLASTIC &
ELECTRONIC CO., LTD., et al.,
DEFENDANTS.

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CASE NO. 5:11CV1199
JUDGE SARA LIOI

MEMORANDUM OPINION

Plaintiff Checkpoint Systems, Inc. (“Checkpoint”) filed the abovecaptioned case on June 10, 2011, alleging infringement of two of its patents by
defendants, Hangzhou Century Co., Ltd. d/b/a Century Plastic & Electronic Co., Ltd., and
Universal Surveillance Corporation d/b/a Universal Surveillance Systems (for ease of
discussion, defendants shall be collectively referred to as “USS”). Defendant USS, in
turn, filed a counter-claim alleging infringement of two of its patents. The patents-in-suit
all relate to security devices used to detect and deter retail merchandise theft, referred to
in the industry as electronic article surveillance (“EAS”) systems.
A court’s first task in determining whether an accused device or process
infringes a patent is to construe the claims to ascertain their proper scope. Lockheed
Martin Corp. v. Space Systems/Loral, Inc., 324 F.3d 130, 1318 (Fed. Cir. 2003).
Accordingly, the parties came before the Court for a hearing on the proper construction to
be accorded the claims in the subject patents, commonly referred to as a Markman

hearing. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S. Ct. 1384, 134
L. Ed. 2d 577 (1996). Prior to the Markman hearing, the parties conducted a tutorial for
the benefit of the Court, wherein the technology behind the patents-in-suit was explained.
At the Court’s request, the parties submitted pre-hearing and post-hearing briefs on a
variety of issues relating to claim construction.1 Upon consideration of the parties’ briefs,
argument and the presentation of exhibits, the Court construes the disputed terms as set
forth herein.
I. BACKGROUND
For purposes of this litigation, Checkpoint is the holder of two patents:
United States Patent No. 7,251,966 Cable Wrap Security Device (the ‘966 patent), and
United States Patent No. 7,481,086 Cable Wrap Security Device (the ‘086 patent). USS is
also the holder of two subject patents: United States Patent No. 7,342,495 Integrated
Theft Deterrent Device (the ‘495 patent), and United States Patent No. 7,969,310
Integrated Theft Deterrent Device (the ‘310 patent). The ‘310 patent is a continuation of
the ‘495 patent, and the two share a common specification.
The Technology
Though all designed to address the growing problem of retail merchandise
theft, each set of patents reveals vastly different devices. The ‘966 and ‘086 patents
disclose a security device which typically includes a plurality of wires or cables which
encircle and lock all six sides of a box, package, book or other similar structure. In
1

Following the initial Markman hearing, the Court conducted a second hearing by telephone, for the
purpose of addressing two issues first raised in the Markman hearing, and for which the Court desired
clarification.

2

contrast, the ‘495 patent and its continuation patent (the ‘310 patent), contain claims that
are directed to a tag body containing two halves, and a pin at the end of a lanyard that can
be inserted into the tag body through an opening to lock the device around or through a
piece of merchandise. The ‘495 patent also discloses a method of manufacturing the EAS
system.
The devices at issue afford the retailer two layers of protection from
shoplifting. First, because the devices lock into place either around or through the
merchandise, they can only be removed without damaging the merchandise by a store
employee through the use of a separate, magnetized instrument. Second, each patented
device emits an electronic signal that can be read by sensors contained in towers
positioned at the store’s exits. If the signal is not properly disabled by authorized store
personnel upon purchase, it will set off an alarm should a customer attempt to covertly
remove the merchandise from the store.
II. LEGAL STANDARD
Claim construction is a matter of law to be decided exclusively by the
Court. Markman v. Westview Instruments, 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en
banc), aff’d, 517 U.S. 370 (1996). “[T]he claims of a patent define the invention to which
the patentee is entitled the right to exclude.” Innova/Pure Water, Inc. v. Safari Water
Filtration Sys., 381 F.3d 1111, 1115 (Fed. Cir. 2004). Claim terms are “generally given
their ordinary and customary meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996)). “The 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
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invention, i.e., as of the effective date of the patent application.” Id. at 1313. Absent an
express intent to the contrary, a patentee is presumed to have intended the ordinary
meaning of a claim term. York Prods. v. Central Tractor Farm & Family Ctr., 99 F.3d
1568, 1572 (Fed. Cir. 1996).
In determining the proper construction of a claim, a court begins with the
intrinsic evidence of record, consisting of the claim language, the patent specification,
and the prosecution history (if in evidence). Phillips, 415 F.3d at 1313. “Such intrinsic
evidence is the most significant source of the legally operative meaning of disputed claim
language.” Vitronics, 90 F.3d at 1582. “The appropriate starting point . . . is always [] the
language of the asserted claim itself.” Comark Commc’n v. Harris Corp., 156 F.3d 1182,
1186 (Fed. Cir. 1998).
The claims also “must be read in view of the specification, of which they
are a part.” Phillips, 445 F.3d at 1315. 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. By expressly defining terms in
the specification, an inventor may “choose . . . to be his or her own lexicographer,”
thereby limiting the meaning of the disputed term to the definition provided in the
specification. Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed.
Cir. 1999). Although claims are interpreted in light of the specification, this “does not
mean that everything expressed in the specification must be read into all the claims.”
Raytheon Co. v. Roper Corp., 724 F.2d 951, 957 (Fed. Cir. 1983). For instance,
limitations from a preferred embodiment described in the specification generally should
not be read into the claim language. See Comark, 156 F.3d at 1187. However, it is a
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fundamental rule that “claims must be construed so as to be consistent with the
specification.” Phillips, 415 F.3d at 1316. Therefore, if the specification reveals an
intentional disclaimer or disavowal of claim scope, the claims must be read consistent
with that limitation. Id.
Courts also may consider the patent’s prosecution history, if in evidence.
The prosecution history limits the interpretation of claim terms so as to exclude any
interpretation that was disclaimed during prosecution. See Southwall Techs., Inc. v.
Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995). The prosecution history
“constitutes a public record of the patentee’s representations concerning the scope of and
meaning of the claims, and competitors are entitled to rely on those representations when
ascertaining the degree of lawful conduct.” Seachange Int’l, Inc. v. C-COR, Inc., 413
F.3d 1361, 1369 (Fed. Cir. 2005) (quoting Hockerson-Halberstadt, Inc. v. Avia Group
Int’l, Inc., 222 F.3d 951, 957 (Fed. Cir. 2000)). The prosecution history may reveal
“whether the patentee disclaimed or disavowed subject matter, narrowing the scope of the
claim terms.” Id. (internal citation omitted). “Where an applicant argues that a claim
possesses a feature that the prior art does not possess in order to overcome a prior art
rejection, the argument may serve to narrow the scope of otherwise broad claim
language.” Id. (citations omitted). Any such disclaimer must be clear and unambiguous.
Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323-25 (Fed. Cir. 2003). Courts
must remain mindful, however, that “because the prosecution history represents an
ongoing negotiation between the PTO and the applicant, rather than the final product of
that negotiation, it often lacks the clarity of the specification and thus is less useful for
claim construction purposes.” Phillips, 415 F.3d at 1317 (citations omitted).
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In most circumstances, analysis of the intrinsic evidence alone will resolve
claim construction disputes. See Vitronics, 90 F.3d at 1583. Extrinsic evidence may be
considered, as it “‘can shed light on the relevant art,’ but is less significant than the
intrinsic record in determining the ‘legally operative meaning of disputed claim
language.’” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)
(quoting Vanderlande Indus. Nederland BV v. ITC, 366 F.3d 1311, 1318 (Fed. Cir.
2004)). Courts should not rely on extrinsic evidence in claim construction to contradict
the meaning of claims discernable from examination of the claims, the written
description, and the prosecution history. See Pitney Bowes, Inc. v. Hewlett-Packard Co.,
182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d at 1583). However, the
court may appropriately consult “trustworthy extrinsic evidence to ensure that the claim
construction it is tending to from the patent file is not inconsistent with clearly expressed,
plainly apposite, and widely held understandings in the pertinent technical field.” Id.
Extrinsic evidence “consists of all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and learned treatises.” Phillips, 415
F.3d at 1317. All extrinsic evidence should be evaluated in light of the intrinsic evidence.
Id. at 1319.
In construing claims, the Court determines whether or not a term requires
construction. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997).
The Court is not required to accept a construction of a term, even if the parties have
stipulated to it, but instead may arrive at its own construction of claim terms, which may
differ from the constructions proposed by the parties. Pfizer, Inc. v. Teva Pharms., USA,
Inc., 429 F.3d 1364, 1376 (Fed. Cir. 2005).
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III. THE UNDISPUTED CLAIM
Axially
The parties agree that the term “axially” in the ‘966 patent should be
construed as “in the direction of or along the claimed axis.” (Doc. No. 76 at 1878.)2 The
Court adopts the parties’ agreed construction.
IV. THE DISPUTED CLAIMS AND THE COURT’S CLAIM CONSTRUCTION
The parties disagree as to the meaning of twenty (20) terms and phrases
and, therefore, seek construction from the Court.
A.

‘966 Patent Claim Terms
First Structure

The phrase “first structure” appears in claims 1, 38, and 42 of the ‘966
patent. USS contends that “first structure” is indefinite because the phrase has no clear
and definite meaning on its own and is not mentioned in the specification such that a
person of ordinary skill in the art would be apprised of its scope.
Reading the claim language in light of the specification and the figures,
and deriving additional support from the prosecution history and use of the phrase in
prior art, Checkpoint argues that the scope of the phrase “first structure” can be
understood by a person of ordinary skill in the art. Checkpoint’s proposed construction of
“first structure” is “a structure in which the internal spool is disposed.”

2

References to specific pages in the record are made to the continuous pagination applied to the document
headers by the electronic docketing system.

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Each claim in a patent is presumed to be valid. 35 U.S.C. § 282(a). A party
seeking to overcome the statutory presumption of validity by proving indefiniteness must
do so by clear and convincing evidence. Budde v. Harley-Davidson, Inc., 250 F.3d 1369,
1376-77 (Fed. Cir. 2001). A claim is not indefinite “merely because it proposes a difficult
issue of claim construction.” Exxon Research and Eng’g Co. v. United States, 265 F.3d
1371, 1375 (Fed. Cir. 2001). Rather, “if the meaning of the claim is discernible, ‘even
though the task may be formidable and the conclusion may be one over which reasonable
persons disagree, [the Federal Circuit] has held the claim sufficiently clear to avoid
invalidity on indefiniteness grounds.’” Bancorp Servs., L.L.C. v. Hartford Life Ins. Co.,
359 F.3d 1367, 1371 (Fed. Cir. 2004) (quoting Exxon, 265 F.3d at 1375). “Only claims
‘not amenable to construction’ or ‘insolubly ambiguous’ are indefinite.” Datamize, LLC
v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citation omitted). An
express definition of a claim term is not necessary “if the meaning of the term is fairly
inferable from the patent . . . .” Bancorp, 359 F.3d at 1373. “[C]lose questions of
indefiniteness . . . are properly resolved in favor of the patentee.” Id. at 1371 (quoting
Exxon Research, 265 F.3d at 1380).
“First structure” does not appear in the specification and is not defined
anywhere in the intrinsic record. The claim language, however, provides some
information as to what constitutes the “first structure.” Independent claims 1 and 38
disclose, in part, “an internal spool which is rotatable relative to the first structure about
an axially extending axis” and “first and second engaging members mounted respectively
on the first structure and the spool.” Independent claim 42 recites, in part, “a first
engaging member mounted on the first structure[.]” Dependent claim 4 discloses, in part,
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“the first structure includes the first retaining element and a housing which defines an
interior chamber in which the spool is disposed[,]” and dependent claim 18 recites, in
part, “the first structure includes a housing . . . defin[ing] a housing cavity in which the
spool is disposed[.]”
Language in the specification provides further guidance for understanding
some of the components described as part of the “first structure” in the claims. In the
description of the preferred embodiment, the “housing” is described as including, among
other things, “a substantially flat and circular bottom wall and a cylindrical sidewall
which extends upwardly from bottom wall and is concentric about axis C” and an
“[a]nnular top wall and “top ring.” (‘966 patent Col. 10:7–10:45.)
Other aspects of the description of the “housing” make interpretation more
difficult by ascribing additional elements to the “housing” that cannot be reconciled with
the claim language. The “first engaging member” is described as part of the “housing,”
(Id. Col. 12:35–39), which is described in certain dependent claims as part of the “first
structure,” but the independent claims also make clear that the first engaging member is a
separate element mounted on the first structure, not part of it. Similarly, the “retaining
mechanism” is described as part of the housing, (Id. Col. 12: 43), but dependent claim 4
indicates that the “first retaining element,” part of the “retaining mechanism,” is separate
from the “housing.”
Construing “first structure” is further complicated by the doctrine of claim
differentiation. Stemming from “the common sense notion that different words or phrases
used in separate claims are presumed to indicate that claims have different meanings and
scope[,]” Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir.
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1999), “the doctrine is at its strongest ‘where the limitation sought to be ‘read into’ an
independent claim already appears in a dependent claim . . . .” Seachange Int’1, Inc. v. CCOR, Inc., 413 F.3d 1361, 1368–69 (Fed. Cir. 2005) (quoting Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)). However, the doctrine “only creates a
presumption that each claim in a patent has a different scope; it is not a hard and fast rule
of construction.” Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d 1362, 1368 (Fed. Cir.
2000) (quotation marks and citation omitted). Nevertheless, as applied to dependent
claim 4, claim differentiation creates a presumption that the “first structure” contains
more than simply the first retaining element and the housing. Paradoxically, then, the
only areas in the entire ‘966 patent where specific elements are mentioned as being part
of the “first structure”—dependent claims 4 and 18—are also the only areas that are
legally presumed not to delineate all of its elements.
In support of “first structure” having a definite construction, Checkpoint
identifies two examples in the prosecution history of the examiner recognizing a first
structure in prior art. First, in the June 5, 2006 Office Action (Doc. No. 68 at A-46),
where “a first structure (50)” is denoted in the ‘266 patent, and, second, in the January 25,
2007 Office Action (Id. at A-68), where “a first structure (10)” is recognized in the ‘028
patent. Emphasizing that the figures in those examples of prior art show the internal spool
to be disposed within the “first structure,” Checkpoint claims, bolsters its proposed
construction.
Closer examination of the cited prior art, however, shows a lack of support
for Checkpoint’s stance. Part 50 in the ‘266 patent and part 10 in the ‘028 patent are
actually defined in their respective specifications as a “housing” (Id. at A-63 Col. 5:9–10)
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and a “base” (Id. at A-82 Col. 2:27), not a “first structure.”3 Indeed, the term “first
structure” does not appear in either of the prior art patents cited by Checkpoint. As for the
claim terms of the prior art, the “housing” appears in a dependent claim in the ‘266
patent, along with several other structures, all of which are required by the claim
language. In the ‘028 patent, the “base” described as a “first structure” by the examiner in
the January 25, 2007 Office Action does not appear in the claim terms at all.
In the final analysis, “first structure” is simply not amenable to
construction. Because the specification does not mention the “first structure” by name, a
person of ordinary skill in the art would have no way to know which elements constitute
the “first structure.” Individual elements of the “first structure” only appear in dependent
claims, which are presumed not to include all of the elements, and no argument has been
made to rebut that presumption.4 Even where dependent claims mention individual
elements of the “first structure,” the specification contradicts their components.
Accordingly, the Court holds that “first structure” is indefinite. Because
“first structure” appears in every independent claim of the ‘966 patent, every claim,
independent and dependent, is invalid as indefinite.

3

Use of “first structure” to refer to two different aspects of the respective inventions in the prior art also
belies Checkpoint’s assertion that one of ordinary skill in the art would understand the term.
4
Checkpoint’s proposed construction does not resolve the indefiniteness issue. One skilled in the art would
not be able to understand the elements that constitute “a structure in which the internal spool is disposed.”

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B.

‘086 Patent Claim Terms
First and Second Plurality of Ratchet Teeth Extending About a
Common Axis; Said First Member and the Spool Extending About
a Common Axis

Claim 1 of the ‘086 Patent discloses a security device comprising in part “.
. . a ratchet mechanism connected to the spool including a movable member operatively
connected to the spool and having a second plurality of ratchet teeth for releasable
engagement with the first plurality of ratchet teeth to prevent the spool from rotating in
the cable-loosening direction, said first and second plurality of ratchet teeth extending
about a common axis . . . .”
Claim 9 of the ‘086 Patent discloses a security device comprising in part “.
. . a ratchet mechanism connected to the spool, said ratchet mechanism having a handle
mounted on the top wall portion of the housing for manual rotation of the top wall portion
and spool without the need of a separate tool for tightening the cable around the object,
said ratchet mechanism further including a movable first member having a first plurality
of ratchet teeth for latching the spool in a fixed position relative to the housing to
maintain the cable tightened around the object, with said first member and the spool
extending about a common axis.”
Throughout the majority of the briefing and at the Markman hearing, the
parties discussed these two terms together, disagreeing only as to the construction of the
word “extending” in each phrase. USS seeks to impose a construction deriving from the
single disclosed embodiment, along with the prosecution history of the ‘086 patent; its
parent patent, ‘899; and the related ‘966 patent. Those sources, according to USS, dictate
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the construction “first and second plurality of ratchet teeth extends radially inward or
outward, respectively, about a common axis” for the first term, and “said first member
and the spool extending radially outward about a common axis” for the second.
(Emphasis added.)
Checkpoint asserts that the claim language yields no indication that
Checkpoint intended to limit the scope of the term to that included in the sole
embodiment, and that USS’s reference to the prosecution history of the parent patent is
irrelevant to the construction of the claim. According to the claim language and
prosecution history of the ‘086 patent, Checkpoint submits, the first disputed term should
be constructed “first and second plurality of ratchet teeth rotatable about a common
axis,” and the second term “said first member and the spool rotatable about a common
axis.” (Emphasis added.)
As with the ‘966 patent, USS argues that the description of the ‘086 patent
is a description of the invention that limits the claims, not a description of the preferred
embodiment. Because the detailed description of the ‘086 patent is exactly the same as a
portion of the detailed description of the ‘966 patent, however, the Court similarly
concludes that, in general, the ‘086 patent specification describes the sole preferred
embodiment of the invention, not the invention itself.
Likewise, USS asserts that the ‘086 patent’s claims are limited by
descriptions of the applicant’s invention in its prosecution history. Here, USS draws from
the prosecution history of the related ‘966 patent and the ‘899 patent, which is the parent
patent of both the ‘086 patent and the ‘966 patent.

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The law is clear that statements made during prosecution of a parent patent
can affect the interpretation of claim terms in applications stemming therefrom. See Allot,
Inc. v. Int'l Trade Common, 342 F.3d 1361, 1371–72 (Fed. Cir. 2003) (statements made
during prosecution of parent patent surrendering subject matter binding on later
interpretation of the claims); Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d 1291,
1300 (Fed. Cir. 1999) (“the prosecution history of a parent application may limit the
scope of a later application using the same claim term”). Similarly, the prosecution
history of a related patent is relevant to the claim construction of subsequent patents. See
Elkay Mfg. Co. v. Eco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999).
Here, again, USS fails to identify a reference in the specification that
demonstrates “a clear intention to limit the claim scope using words or expressions of
manifest exclusion or restriction.” Liebel-Flarsheim, 358 F.3d at 906 (quotation marks
and citation omitted).
Yet, the prosecution history of the parent ‘899 patent bolsters this
interpretation. In its lengthy description of the “invention,” written in response to the
examiner’s rejection of proposed claims as patentable over prior art, the applicant
explained that “[a]pplicant’s invention includes . . . a gear disk having a plurality of
outwardly extending locking pawls . . .” and “a plurality of inwardly extending one-way
ratchet teeth . . . .” (Doc. No. 70–8 at 1681.) Moreover, the description from the
Amendment to the ‘966 patent, discussed at length above, describes the invention as
including “[a] plurality of locking teeth 352 arranged in an annular fashion [that] extend
radially inwardly from annular wall 350 relative to axis C . . . .” (Doc. No. 70–6 at 1650.)

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Because the prosecution history of the ‘899 patent and ‘966 patent are
relevant to construction of the ‘086 patent, and because that relevant prosecution history
includes clear and unmistakable descriptions of the applicant’s invention, the Court finds
that the relevant claim terms are limited thereby. Consequently, for the claim term “first
and second plurality of ratchet teeth rotatable about a common axis,” the Court adopts
USS’s construction of “first and second plurality of ratchet teeth extending radially
inward or outward, respectively, about a common axis.” Likewise, for “said first member
and the spool extending about a common axis,” the Court adopts USS’s construction of
“said first member and the spool extending radially outward about a common axis.
Camming Mechanism
The ‘086 patent discloses a “camming mechanism” in claim 1 and its
dependent claims. USS derives its proposed construction from the specification and
dictionary definitions, concluding that “camming mechanism” should be construed as “a
mechanism which transforms rotary motion into linear motion.”
Identifying prior art, dictionary definitions, and a graphical representation
from a website, Checkpoint contends that “camming mechanism” encompasses more
than USS’s proposed construction. Accordingly, Checkpoint offers the construction “a
mechanical mechanism having a cam and a cam follower such that the cam slidably
engages the cam follower during movement of the cam in a first direction to cause
movement of the cam follower in a second different direction”
“Camming mechanism” is not defined in the specification, but the
camming mechanism described transforms rotary motion into linear motion. (‘086 patent
Col. 5:50–67, 7:40–49, Figs. 14–15.) That description does not limit the construction of
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the claim term, though, because it relates to a preferred embodiment, not the entire
invention.
Both parties cite dictionary definitions in support of their proposed
constructions. Checkpoint references The Handbook of Mechanical Engineering Terms
(2d Ed. 2009), which defines a cam as a “reciprocating, oscillating or rotating body
which imparts reciprocating or oscillating motion to a second body, called the follower
with which it is in contact.” (Doc. No. 68 at 1365.) USS notes Merriam-Webster’s
Collegiate Dictionary (10th Ed. 2001) entry for “cam: a rotating or sliding piece in a
mechanical linkage used esp. in transforming rotary motion into linear motion or vice
versa,” (Doc. No. 70–10 at 1696.), and that of Webster’s New Compact Desk Dictionary
and Style Guide (2002), defining “cam” as “a wheel, projection on a wheel, etc. that gives
irregular motion, as to a wheel or shaft, or receives such motion from it” (Doc No. 70–11
at 1701).
The Court is convinced that USS’s proposed construction is too narrow.
All of the definitions cited by both sides allow for a broader concept of “camming
mechanism” than simply one that transforms rotary motion into linear motion. Moreover,
Checkpoint identifies several patents that are prior art to the ‘086 patent that disclose a
camming mechanism that transforms linear motion in one direction into linear motion in
another direction. Clearly, a person of ordinary skill in the art would recognize a
camming mechanism to include linear cams and would understand the words “cam” and
“cam follower” as used in Checkpoint’s proposed construction. For these reasons, the
Court construes “camming mechanism” as “a mechanical mechanism having a cam and a
cam follower such that the cam slidably engages the cam follower during movement of
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the cam in a first direction to cause movement of the cam follower in a second, different
direction.”
Ratchet Mechanism
All asserted claims of the ‘086 patent contain the phrase “ratchet
mechanism.” This is the first of two ‘086 claim terms that USS argues are indefinite
because they are used inconsistently in the specification.
Checkpoint argues that there is not a direct contradiction between the
claim language and the specification, and that the term “ratchet mechanism” has an
ordinary meaning that can be understood by a person of ordinary skill in the art.
When the same word appears multiple times in the same claim, that word
should be interpreted consistently. Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335,
1345 (Fed. Cir. 1998). A patent’s written description, however, can set forth more than
one definition of a claim term. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1310 (Fed. Cir. 1999). Nonetheless, one skilled in the art, reading the description,
“must immediately discern the limitation at issue in the claims.” Purdue Pharma L.P. v.
Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000).
In asserting that “ratchet mechanism” is indefinite, USS relies extensively
upon Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336 (Fed. Cir. 2002). In Allen,
the claim language indicated that a gear box could be pivoted “only in a plane
perpendicular to said biaxial plane,” but the specification stated specifically that the gear
box “cannot pivot in a plane perpendicular to the biaxial plane.” Id. at 1349 (emphasis in
original). Refusing to read the term “perpendicular” in the claim to mean “parallel,” the
court found the claims to be invalid, because the claims did not “‘particularly point[] out
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and distinctly claim[]’ what the inventor regards as his invention.” Id. (citing 35 U.S.C. §
112(2)).5
Additionally, USS cites to Application of Cohn, 438 F.2d 989, 1000–01
(C.C.P.A. 1971), where the specification defined an “opaque finish” as a finish “not
obtained when an alkali metal silicate is used as a sealant,” but the claims called for
sealing a surface with an alkali silicate to obtain an “opaque appearance.” Id. at 1000–01
(emphasis added). Because of this “inexplicable inconsistency” within the claims, the
court rejected them as indefinite. Id. at 1001.
Claim 1 of the ‘086 patent describes “a ratchet mechanism connected to
the spool including a moveable member operatively connected to the spool and having a
second plurality of ratchet teeth for releasable engagement with the first plurality of
ratchet teeth to prevent the spool from rotating in the cable-loosening direction . . . .”
The structure referred to as the “housing” is defined distinctly from the “ratchet
mechanism” in Claim 1. Several times in the specification, however, “ratchet
mechanism” is described more broadly, to include the housing and the spool. (‘086 patent
Col. 4:50–5:16, Figs. 6–8, 14–15.)
Despite the fact that the ‘086 specification uses “ratchet mechanism”
differently than in the claims, a person of ordinary skill in the art would have no trouble
understanding the limitation described in the claim language. The claim language defines
“ratchet mechanism” clearly and distinctly. There is no indication that the broader usage
5

Since recodified as 35 U.S.C. § 112(b), the section provides that “[t]he specification shall conclude with
one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor
[…] regards as the invention.”]

18

of “ratchet mechanism” in the specification was an attempt to broaden the scope of the
claim term. While it certainly would have been better practice to have used a different
term in the specification, the language of the claims and the description are sufficient to
put a reader on notice of the different uses of the term.
Because the meaning of the claim term is discernible, this Court finds that
the claim language is not indefinite and does not require construction. See Bancorp
Servs., 359 F.3d at 1371 (quoting Exxon, 265 F.3d at 1375).
Locking Member
Claims 2 and 3 of the ‘086 patent, both dependent on claim 1, disclose a
“locking member.” As with “ratchet mechanism,” USS submits that “locking member” is
used in the claims in a manner “entirely inconsistent” with the specification, and is
therefore indefinite.
Also akin to its argument with respect to “ratchet mechanism,”
Checkpoint proposes that the ordinary meaning of the term should govern.
Claim 2 discloses, “[t]he security device defined in claim 1 including a
locking member preventing the camming mechanism from moving the first and second
plurality of ratchet teeth out of engagement when in a locked position.” Claim 3 states,
“[t]he security device defined in claim 1 including a key operatively engageable with the
locking member enabling the camming mechanism to disengage the first and second
plurality of ratchet teeth placing the spool in the cable-loosening direction.” Thus, the
“locking member” disclosed in the claims is part of the same element as the “ratchet
mechanism.” In a different fashion, the term “locking member” is used in the description

19

to refer to the element found on the opposite side of the box to be secured as the ratchet
mechanism. (See, e.g., ‘086 patent Col. 4:14–22.)
As with “ratchet mechanism,” the claim language describing “locking
member” provides sufficient detail for the meaning of the claim term to be discernible.
The “locking member” referenced in the claim language and that mentioned in the
description are clearly different structures in different parts of the invention, and a person
of ordinary skill in the art would not confuse the two.6 Thus, “locking member” does not
require construction.
Key
The term “key” is part of claim 3 of the ‘086 patent. Because “key” is used
in the specification to refer to two separate elements of the claimed device, USS believes
that “key” must be constructed as “a component integrated into the security device which
is configured to fit in a recess in the base of the device and rotate therein.”
Checkpoint accuses USS of attempting to read limitations from the single
embodiment onto the entire invention and submits that the ordinary meaning of “key” is
the proper construction.
Claim 3 recites, “[t]he security device defined in claim 1 including a key
operatively engageable with the locking member enabling the camming mechanism to
disengage the first and second plurality of ratchet teeth placing the spool in the cableloosening direction.”
6

Additionally, although USS did not raise the issue, the Court notes that “locking member” is not a meansplus-function limitation for reasons essentially similar to those discussed in the construction of “unlocking
mechanism” in the ‘966 patent above.

20

The claim language is clear that the key disclosed therein is the “unlocking
key” that disengages the locking teeth and the ratchet teeth, “plac[ing] the spool in a free
wheeling position,” (‘086 patent Col. 6:61–63), not the “magnetic key” that enables the
fastener on the opposite side of the secured box to be disengaged from the base, (Id. Col.
32–40). It follows that the ordinary meaning of the claim term is sufficient.
Top Wall Portion Rotatably Mounted on a Cylindrical Sidewall
A “top wall portion rotatably mounted on a cylindrical sidewall” is
described in claim 6 of the ‘086 patent. Pointing to the specification’s use of “mounted
on,” and contrasting alternative uses of “mounting” language such as “mounted within,”
USS argues that the phrase should be constructed thusly: “top wall portion rotatably
attached to, and on top of, a cylindrical sidewall.”
Disagreeing with USS’s interpretation of language from the specification,
Checkpoint submits that the ordinary meaning of the disputed term is the proper
construction.
Checkpoint is correct that “mounted on” is not always used in the
specification to mean “mounted on top of.” (See ‘086 patent Col. 5:60–64; Fig. 12 (gear
disc described as “mounted on” the flange is on the bottom of the flange)). For its part,
USS has not offered evidence to suggest that a person of ordinary skill in the art would
not understand this term. Consequently, the Court finds that the term does not require
construction.

21

The Spool Includes the First Plurality of Ratchet Teeth Operatively
Connected Thereto
Claim 10 of the ‘086 patent indicates that “the spool includes the first
plurality of ratchet teeth operatively connected thereto[.]” Construing only the phrase
“operatively connected” from the disputed term, USS examines surrounding claim
language and what it believes to be the plain meaning of the term, concluding that
“operatively connected” should be given the construction “directly physically connected
to achieve a mechanical effect.”
Construing the entire disputed term, Checkpoint counters that the claim
language and the specification should be construed as “the spool having the first plurality
of ratchet teeth mounted thereto.”
Checkpoint’s proposed construction fails to give effect to the term
“operatively.” Construing “operatively connected” as “mounted” further strains credulity
in light of Checkpoint’s ample use of “mounted” throughout the claims of the ‘086
patent. (See, e.g., id. Col. 8:49, 8:63, 10:2.) In fact, both “operatively connected” and
“mounted” are used in the same claim to describe relationships between structures. (Id.
Col. 8:46–53).
On the other hand, USS’s proposed construction is also not without
problems. During a telephone hearing, USS’s counsel explained that the genesis of
“directly physically connected” in its recommended construction is the fact that the
specification shows a direct physical connection among the subject structures in
describing the preferred embodiment. (Doc. No. 88 at 2049–50.) As the Court has
22

explained in the context of constructing other claim terms above, the language of the
specification does not support the limiting of claim terms based on the description of the
preferred embodiment.
Recognizing that “operatively” must be given effect and that a direct
physical connection is an unwarranted limitation, the Court construes the subject claim
term as “the spool includes the first plurality of ratchet teeth connected thereto to achieve
a mechanical effect.”
C.

‘495 and ‘310 Patent Claim Terms
Integrated Theft Deterrent Device

Claims 1, 14, 15, 16, and 18 of the ‘495 patent, and claims 1 and 17 of the
‘310 patent disclose an “integrated theft deterrent device.” Relying on claim language
that it believes underscores a permanent connection between the lanyard, the pin, and the
tag body, Checkpoint proposes the following construction: “a theft deterrent assembly in
which the tag body, pin, and lanyard are incorporated permanently into a single unit.”
Noting that this term appears in the preamble of the claims, USS argues
that this language cannot serve to limit the invention. According to USS, this phrase is
“simply a ‘laudatory term’ that only sets forth the purpose of the claimed invention and
does not present a structural limitation as Checkpoint proposes.” USS insists that the
plain and ordinary meaning should be afforded this term.
“Generally, the preamble does not limit the claims.” Allen Eng’g Corp., .,
299 F.3d at 1346 (citing DeGeorge v. Bernier, 768 F.2d 1318, 1322 n.3 (Fed. Cir. 1985)).
However, “a preamble limits the invention if it recites essential structure or steps, or if it
is necessary to give life, meaning, and vitality to the claim. Conversely, a preamble is not
23

limiting where a patentee defines a structurally complete invention in the claim body and
uses the preamble only to state a purpose or intended use for the invention.” Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quotation
marks and citations omitted). However, “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.” Id. (citation omitted) (emphasis added); see also
Bell Commc’n Research, Inc. v. Vitalink Commc’n Corp., 55 F.3d 615, 620 (Fed. Cir.
1995) (a preamble may be limiting “when the claim drafter chooses to use both the
preamble and the body to define the subject matter of the claimed invention”) (citation
omitted) (emphasis in original).
“Whether a preamble stating the purpose and context of the invention
constitutes a limitation of the claimed process is determined on the facts of each case in
light of the overall form of the claim, and the invention as described in the specification
and illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced
Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572-73 (Fed. Cir. 1996) (citations
omitted); see Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257
(Fed. Cir. 1989) (“review of the entire[] . . . patent to gain an understanding of what the
inventors actually invented and intended to encompass by the claim” is necessary to
determine whether the patentees intended the preamble to limit the claims); see also Bell
Commc’n Research, 55 F.3d at 620 (“a claim preamble has the import that the claim as a
whole suggests for it”).

24

The Court begins its analysis with a review of the claims. Claim 1 of the
‘495 patent provides for a “lanyard having a first end and a second end, with the first end
inaccessibly coupled within an aperture of the tag body” and “a pin being permanently
connected to the second end of said lanyard . . . .” Claim 14 recites a method for
manufacturing a device, wherein “a first end of the lanyard is maintained by the tag
body,” and “said pin attached to the second end of the lanyard.” Claim 15 refers to a
“lanyard extending from within said tag body” and “a pin being permanently connected
to the second end of said lanyard . . . .” Turning to the ‘310 patent, claim 1 recites “a
lanyard extending from within said tag body” and “a pin being permanently connected to
said lanyard . . . .” Claim 17 of the continuation patent recites “the lanyard having a first
end and a second end, with the first end maintained within an aperture of the tag body”
and “a pin being permanently connected to the second end of said lanyard . . . .”7
Checkpoint maintains that this claim language demonstrates that the
invention is limited to a device wherein a permanent connection exists between the pin
and the lanyard, and the lanyard and tag body. USS does not take issue with Checkpoint’s
suggestion that the claims language, such as “permanently connected to,” teaches a
permanent connection between the lanyard and the pin. In fact, USS argues that the fact
that this language was used to describe the connection between the lanyard and the pin,
and different language was used to describe the connection between the lanyard and the
tag body, militates against a finding that the two connections should be treated the same.
7

The independent claims found in both patents also require a first end of the lanyard which is either
“inaccessibly coupled within,” “maintained by” “within,” or “extending from within” the tag body.
Additionally, the dependent claims speak to a pin that is “attached” or “permanently connected” to the
second end of the lanyard.
25

According to USS, if the patentee “intended the claims to require a permanent connection
between the lanyard and the tag body . . . it would certainly have used the same
‘permanently’ language at that point in the claims as well.” (Doc. No. 74 at 1800.) The
Court agrees. Having opted for different language, it is reasonable to assume that the
patentee intended a different meaning. See Chicago Bd. Options Exch. v. Int’l Sec. Exch.,
LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012) (recognizing “the general presumption that
different terms have different meanings”) (citation omitted).
Nonetheless, the claim language emphasizes the importance of the
connection between the lanyard and the tag body. While the connection may be
something short of permanent, the language selected by the patentee—including
“inaccessibly coupled within” and “maintained by”—suggests an immovable or secure
quality to the connection.8 Such a conclusion is consistent with, and reinforced by, each
patent’s specification. In distinguishing the prior art, the specification explains that “[t]he
prior art does not address the need for an integrated EAS tag that is difficult to defeat and
easy to use. In addition, the prior art fails to provide a theft deterrent tag assembly that
incorporates the pin, a lanyard and the tag body into one unit.” (‘495 patent Col. 2:29-33;
‘310 patent Col. 2:34-37.) “Therefore, it is a primary objective of the invention to provide

8

USS conceded as much at the Markman hearing. While resisting Checkpoint’s position that the
connection between the lanyard and the tag body is permanent, counsel for USS likened the connection to
the relationship between a car and its tires. “[T]he tires on your car are integrated into your car, but they’re
not permanently attached to your car, thankfully. If you get a flat, you could take them off. They are not
easy to get off. They are maintained by your wheel well. They’re integrated into your car, but they’re not
permanently attached.” (Doc. No. 90, Hearing Transcript, at 2180); (see also id. at 2202 [“My car has
wheels. They are integrated into my car, but they’re not permanent. There’s a difference between
‘integrated’ and ‘permanent.’”].)
26

an EAS tag wherein the tag body and pin are an integrated unit.” 9 (‘495 patent Col. 2:4446; ‘310 patent Col. 2:48-50.)
Emphasizing the time and labor savings realized by the new invention, the
specification also provides:
In keeping with the principles of the present invention, a unique EAS theft
deterrent tag is disclosed wherein the pin element is integrated into the tag
body via an elongated element. In integrating the pin component with the
tag body, labor time and costs are reduced when removing the tag from an
article being protected thereby because separate bins are not required for
storing the tag body and the pin component until they are reused. In
addition, labor time and costs during attachment of the tag body to an
article are also reduced because the pin component is integrated therewith
and a separate search for a corresponding pin is eliminated. (‘495 patent
Col. 2:65-67, Col. 3:1-7; ‘310 patent Col. 3:1-11).
The unmistakable message of the specification is that, unlike the prior art, the three
pieces of USS’s device are connected in such a way that they are unlikely to come apart
inadvertently, and may be stored together.
However, the fully integrated nature of the anti-theft device is most clearly
seen in the prosecution history of the ‘495 patent. In responses to the examiner’s rejection
of the claims as unpatentable, the applicant participated in a telephonic interview with the
examiner, during which the applicant emphasized the security of the connection between
the lanyard and the tag body. The applicant stated that, “Fujiuchi fails to at the very least .
. . teach the limitation of Applicant’s claim 1 wherein the lanyard has one end
permanently fixed within the tag body.” (Doc. No. 68, Ex. 20, Applicant Interview

9

Checkpoint also cites the portion of the specification that teaches that “[i]t is a further objective of the
invention to provide an EAS tag that provides an integrated pin to reduce the chances of injury to persons
stepping on the pin, as is commonly a problem with the pins utilized in the prior art.” (‘495 patent Col.
2:54-57; ‘310 patent Col. 2:58-61.) While this language supports Checkpoint’s position that the pin is
permanently attached to the lanyard—a fact which USS does not appear to contest—it does not speak to the
connection between the lanyard and the tag body.
27

Summary, at 1393.) The examiner’s recollection of the interview was similar: “The
Applicant has contended that the lanyard of the present invention is made permanently
attached to the tag body while the lanyard of the reference is removable. The Applicant
believes that this feature should be considered inventiv (sic).” (Doc. No. 68, Ex. 19,
Examiner Interview Summary, September 9, 2006, at 1391.)
Even earlier in the prosecution history, the applicant emphasized the
importance of the connection between the lanyard and the tag body. In the August 8,
2006 Amendment of the ‘495 patent, the applicant argued:
Regarding Claim 1, Fujiuchi fails to teach Applicant’s limitation of “a
lanyard 38 extending from within said tag body 20.” Fujiuchi teaches
away from Applicant’s claimed invention in that the lanyard does not
extend from within the tag body, but is instead fully detachable from the
tag body as illustrated in Figure 3, reference numerals 30 and 30a.
Fujiuchi’s lanyard is susceptible to being lost, whereas one end of
Applicant’s lanyard is maintained within the tab body and cannot fully
detach from the body.
(Doc. No. 68, Ex. 22, August 8, 2006 Amendment, at 1419.) In addition, the applicant
argued: “Furthermore, one end of Applicant’s device is always maintained within the tag
body.” (Id. at 1420.) The applicant went on to note that, “Fujiuchi fails to teach or render
obvious Applicant’s anchor which maintains one end of the lanyard within the tag body
in an irremovable manner.” (Id. at 1421-22.)
It is clear from the specification and the prosecution history that USS
relied substantially on the benefit of a fully integrated unit as “patentably significant.” Cf.
Catalina Marketing Int’l, 289 F.3d at 809 (collecting cases where preamble language
merely extolled the virtues of the claimed invention). The specification and the
prosecution history also demonstrate that USS “clearly and unmistakenly” relied on this
28

benefit to distinguish the prior art. See id. at 808-09. It is equally apparent that the claim
drafter chose to use “both the preamble and the body” of the claims to define the
connection between the lanyard and the tag body. See Bell Commc’n Research, 55 F.3d at
620 (emphasis in original).
USS also argues, however, that to ascribe any type of permanence to this
connection would be in contravention of the embodiment shown in Figure 7 of the
common specification. According to USS,
That embodiment clearly discloses a pin which is separate from the
lanyard, extending through a hole in the lanyard to lock in the tag body.
While USS does not contend that this embodiment is incorporated into any
of the asserted claims, which all require a permanent connection between
the lanyard and pin, it does demonstrate that USS did not consider its
invention to be limited to a device in which the tag body, lanyard, and pin
are all permanently connected to each other. Checkpoint’s proposed
construction is, thus, directly at odds with the specification, and such an
interpretation that excludes a preferred embodiment “is rarely, if ever,
correct.”
(Doc. No. 74 at 1800-01, emphasis in original, citation omitted.)
It is well settled that an interpretation of a claim term that would exclude a
preferred embodiment of the invention “‘is rarely, if ever correct and would require
highly persuasive evidentiary support.’” Nat’l Steel Car, Ltd. v. Canadian Pac. R.R., Ltd.,
357 F.3d 1319, 1337 n.19 (Fed. Cir. 2004) (quoting Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996)); see Rheox, Inc. v. Entact, Inc., 276 F.3d 1319,
1327 (Fed. Cir. 2002) (same). “But where the patentee has unequivocally disavowed a
certain meaning to obtain his patent, the doctrine of prosecutorial disclaimer attaches and
narrows the ordinary meaning of the claim congruent with the scope of the surrender.”
Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003); see N. Am.
29

Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1346 (Fed. Cir. 2005)
(“[W]e have previously explained that limitations may be construed to exclude a
preferred embodiment if the prosecution history compels such a result.”) (citation
omitted). “For prosecution disclaimer to arise, ‘the alleged disavowing actions or
statements made during prosecution [must] be both clear and unmistakable.’” Revolution
Eyewear v. Aspex Eyewear, Inc., 175 F. App’x 350, 355 (Fed. Cir. 2006) (quoting Omega
Eng’g, Inc., 334 F.3d at 1326).
In N. Am. Container, the Federal Circuit applied the doctrine of
prosecution disclaimer to the patenee’s blow-molded plastic bottles. Notwithstanding the
fact that two of the figures incorporated within the specification showed concave inner
walls—a preferred embodiment, the court found that “the applicant, through argument
during the prosecution, disclaimed inner walls of the base portion having any concavity.”
415 F.3d at 1345. Similarly, in Revolution Eyewear, the court found that the patentee had
surrendered a preferred embodiment where it had repeatedly distinguished the prior art in
such a way that some of the preferred embodiments were read out of the claim. 175 F.
App’x at 356.
As set forth above, the applicant here, like the patentees in N. Am.
Container and Revolution Eyewear, has clearly and unmistakably surrendered a preferred
embodiment to overcome an obviousness rejection. Throughout the prosecution, USS
repeatedly distinguished the prior art on the ground that the innovation of its invention
was that the lanyard was always maintained within the tag body. Having disavowed the

30

embodiment to obtain the patent, USS may not use claim construction to recapture it.10
See L & P Prop. v. JTM, LLC, 578 F. Supp. 2d 318, 325 (D. Mass. 2008) (“The doctrine
of prosecution disclaimer is intended to preclude patentees from seeking to recapture
through claim construction meanings disclaimed during prosecution to overcome prior art
rejections.”) (citations omitted).
Thus, viewing the totality of the claims, including the preamble, the claim
language, the specification, and the prosecution history, the Court concludes that the
preamble term “integrated” was meant to serve as a limitation on the claims. The Court
further finds that USS disclaimed the embodiment identified in Figure 7 during the
prosecution of the patent, and limited the scope of the claims accordingly. Thus, the
Court construes the phrase “integrated theft deterrent device” to mean “a theft deterrent
assembly wherein the pin is permanently connected to the lanyard, and the lanyard is
securely anchored to the tag body to avoid detachment.”
Extending from within Said Tag Body; Maintained by the Tag Body;
Anchor is Securely Maintained within Tag Body; and Maintained within
an Aperture of the Tag Body
Checkpoint’s position that the integrated theft deterrent device contains a
permanent connection between the lanyard and tag body flows into its proposed
definition of the terms “extending within said tag body,” “maintained by the tag body,”
“anchor is securely maintained within tag body,” and “maintained within an aperture of

10

Moreover, though specifically raised by the Court at the Markman hearing, USS did not reference Figure
7 in support of its construction of the term “integrated theft deterrent device,” or at any time during the
hearing. (Hearing Transcript at 2198.)

31

the tag body.” Relying on the same arguments advanced for its proposed definition of
“integrated theft deterrent device,” Checkpoint proposes the following definitions:
“extending from within said tag body” means “permanently connected to the tag body;”
“maintained by the tag body” means “permanently connected to the tag body;” “anchor is
securely maintained within tag body” means “anchor is permanently held in the interior
cavity of the tag body;” and “maintained within an aperture of the tag body” means
“permanently held in an aperture of the tag body.” USS insists that no construction is
necessary for any of these disputed terms.
The Court observes that its analysis rejecting Checkpoint’s position that
the integrated theft deterrent device contains a permanent connection between the lanyard
and the tag body applies equally to its consideration of these terms, all of which address
(either directly or tangentially) this same connection. As stated above, terms “maintained
by,” maintained within,” and “securely maintained within”—while they do suggest an
immovable connection—do not equate with “permanence.” The Court, therefore, rejects
Checkpoint’s suggestion that these terms teach a permanent connection between the
lanyard and the tag body.11 Moreover, given the Court’s determination that the term
“integrated theft deterrent device” includes the limitation that the connection between the

11

In addition, the language chosen for a dependent claim in the ‘495 patent also counsels against equating
all of these terms with “permanent.” Claim 16 provides for an integrated theft deterrent device wherein the
lanyard has a first end and a second end, with the first end permanently and irremovably coupled within
aperture of the tag body by an anchor attached to the first end.” (‘495 patent Col. 7:1-6, emphasis added.)
If the different language selected in these four disputed terms all mean “permanent,” then the clear use of
that term in dependent Claim 16 is rendered meaningless. See Acumed LLC v. Stryker Corp., 483 F.3d 800,
806 (Fed. Cir. 2007) (Under the doctrine of claim differentiation, “‘[t]he presence of a dependent claim that
adds a particular limitation raises a presumption that the limitation in question is not found in the
independent claim.’”) (quoting Libel-Florsheim Co. v. Medran, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)).
32

lanyard and the tag body is secured in such a way to avoid detachment, the Court finds
that no further construction of these four disputed claims is necessary.
Extending Inwardly
The term “extending inwardly” appears in claims 1, 14, and 15 of the ‘495
patent, and claims 1 and 17 of the ‘310 patent. Checkpoint argues that the intrinsic
evidence, taken as a whole, provides that the extension refers to the side walls as they
extend inward. Checkpoint, therefore, suggests that “extending inwardly” should be
interpreted to mean “extending into the interior cavity of the tag body.” USS posits that
the term refers to the extension of each half of the tag body toward the other half, and
proposes that the term be understood to mean “extending toward the perimeter junction
of the first and second halves.”
Claims 1 and 15 of the ‘495 patent disclose a device comprising in part “a
first half and a second half that are joined around a perimeter of said tag body by a first
side wall and a second side wall extending inwardly from said first and second halves
respectively . . . .” Claim 14 discloses a method of manufacturing a device “providing a
first half and a second half that are joined around a perimeter of said tag body by a first
side wall and second side wall extending inwardly from said first and second halves
respectively . . . .” Claims 1 and 17 of the ‘310 patent disclose a “first half and a second
half that are joined around a perimeter of said tag body by a first side wall and second
side wall extending inwardly from said first and second halves respectively . . . .”
In support of its position that the side walls extend inwardly into the tag
body, Checkpoint argues that it is clear from the specification and prosecution history
that any reference to “in” (therein, within, inwardly) in the claims, refers to the interior
33

cavity of the tag body. For example, Checkpoint cites to the language relating to the
anchor, which is described as “securely maintained within tag 20.” 12 (‘495/‘310 patents
Col. 4:36-37.) However, none of these terms are used in connection with the side walls
extending from the first and second half and, therefore, provide little insight into the
extension of the side walls.
Checkpoint also points to the prosecution history, highlighting the addition
of claim 9 as indicating that the inwardly extending side walls were known in the prior
art, and citing its own patent No. D427,929. Checkpoint notes that the ‘929 patent, which
issued four years before the ‘495 patent application was filed, “demonstrates a security
device with two halves ‘extending toward the perimeter junction of the first and second
halves’ as shown below . . . .” (Doc. No. 69 at 1500-01). However, the language
Checkpoint quoted does not appear in the exhibit cited by Checkpoint and further, the
‘929 patent actually discloses a very different design in which a pin is inserted into a tag
body without the use of a lanyard. As such, Checkpoint’s misleading reference to its
earlier patent fails to support its argument that the only possible distinction between the
reference and the cited claim is the difference in the side walls. Further, there is no
evidence that the ‘929 patent was referenced in the prosecution history of USS’s patents.
In contrast, USS argues that the disputed term refers to the extension of
each half of the tag body toward the other half. The claim language and the specification
support USS’s construction. It is clear from the claim language that it is the side walls
12

Checkpoint also notes that the term “extends inwardly” is used to describe the reinforcement wall 46: “a
reinforcement wall 46 . . . extends inwardly from top half 22 and further defines aperture 36.” (‘495/‘310
patents Col. 4:37-39.)]

34

that extend inwardly, from their respective halves, toward where they are “joined by a
perimeter” of the tag body. The figures included in the specification of the ‘495 patent
reinforce this conclusion. For example, in Figure 3, it is apparent that the side walls (26
and 28) extend inwardly from the first and second halves to where they are joined around
a perimeter of the tag body. Neither the language of the claims or specification, nor the
figures incorporated into the specification, support a finding that the side walls extend
inward toward the interior of the tag body cavity.13 Accordingly, the Court adopts USS’s
construction, and finds that the term “extending inwardly” means “extending toward the
perimeter junction of the first and second halves.”
Apex
As is the case with many of the disputed terms and phrases, the parties
disagree in the first instance as to whether construction is necessary. USS maintains that
no construction is necessary, as the term “apex” is easily understood in the context of the
claims. Moreover, because the claims require an “apex region,” USS suggests that
Checkpoint’s construction of only the term “apex” is confusing and is inconsistent with
the claims. Checkpoint responds that defining the term “apex” is crucial to an
understanding of the larger term “apex region,” as that term is used in the claims.

13

USS correctly observes that Checkpoint’s interpretation of “extend inwardly” would render the patent’s
use of the term “side wall” nonsensical, as they would neither form the side of the tag body nor serve as
walls. See generally Phillips, 415 F.3d at 1312-17 (absent evidence that the inventor chose to act as his own
lexicographer, words of a claim are to be given their ordinary and customary meaning); see TIP Sys., LLC
v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1372 (Fed. Cir. 2008) (rejecting proffered alternative
definition of a commonly understood term as leading to a “nonsensical result”).

35

Checkpoint urges the Court to construe the term “apex” to mean “the singular point
positioned furthest away from the tag body.”
The claims clearly disclose the existence of an “apex region.” Claims 1
and 15 of the ‘495 patent disclose “an apex region extending from said tag body such that
the apex region causes the tag body to a side . . . .” Claim 14 of the ‘495 patent teaches a
method of manufacturing a device containing “an apex region on tag body such that said
pin is maintained in horizontal alignment with a flat surface . . . .” Claim 17 of the ‘310
patent provides for “an apex region extending from said tag body such that the apex
region causes the tag body to a side . . . .”
USS argues that the requirement of an apex region is at odds with
Checkpoint’s construction, which limits the “apex” to a singular point. USS insists that a
“singular point” cannot cover a region. The Court finds this argument persuasive, and
concludes that no construction is necessary. In so ruling, the Court observes that
Checkpoint’s reliance on the prosecution history, which also discusses the existence of an
“apex region,” does not alter the fact that only a region can extend from an area, as is
contemplated by the claims.
Horizontal Alignment
The phrase “horizontal alignment” appears in claims 1, 14, and 15 of the
‘495 patent, and claim 17 of the ‘310 patent. Claims 1 and 15 of the ‘495 patent, and
Claim 17 of the ‘310 patent, provide that, “the apex region causes the tag body to a side
such that the pin is maintained in horizontal alignment with a flat surface to prevent
injury from stepping thereon.” Similarly, claim 14 teaches a method of manufacturing a
theft deterrent device wherein “said pin is maintained in horizontal alignment with a flat
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surface on which the tag body rests . . . .” Checkpoint proposes the usage of the ordinary
and customary meaning of “horizontal” and “alignment,” which it suggests would mean
“parallel with the surface upon which the tag body is resting.”
Interestingly, USS also suggests that no construction is necessary, as it,
too, believes that these terms are readily understood by someone of skill in the industry.
It argues that Checkpoint’s proposed “parallel” definition of horizontal alignment would
go beyond the scope of the claims, and would require “essentially perfection in spatial
orientation.” While it does not offer an alternative plain and ordinary meaning for the
term “horizontal,” it argues that—in the context of the claims—the larger “horizontal
alignment” term should be understood to cover a pin “which prevents injury by placing
the pin in a horizontal alignment, so that it cannot penetrate a foot if stepped on.”
The ordinary and customary meaning of a disputed claim is presumed to
be correct unless a different meaning is clearly set forth in the intrinsic materials. K-2
Corp v. Salomon S.A., 191 F.3d 1356, 1362-63 (Fed. Cir. 1999). Dictionary definitions
can provide evidence of a claim term’s ordinary meaning. Abbot Labs. v. Syntron
Bioresearch, Inc., 334 F.3d 1343, 1350 (Fed. Cir. 2003).
In Whirlpool Corp. v. LG Elec., Inc., 423 F. Supp. 2d 730 (W.D. Mich.
2004), the court was called upon to interpret the phrase “horizontal axis,” which related
to the position of the wash chamber in washing machines. While both parties agreed that
the plain and ordinary meaning of the term should apply, they disagreed as to what that
meaning was. As the patent holder, Whirlpool advocated for a definition that allowed for
a predominately or substantially horizontal axis, and offered dictionary definitions in
support. Id. at 738 (plaintiff relying on Webster’s Third New International Dictionary
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[horizontal can mean “of, relating to, or situated near the horizon”, or “placed or
operating chiefly along a plane parallel to the horizon”]). In contrast, LG relied on more
restrictive definitions that would require strict or absolute horizontal alignment. Id.
(defendant relying on The American Heritage Dictionary of the English Language
[horizontal means “in the plane of the horizon” or “at right angles to a vertical line”]); see
also Tritex Tech., Inc. v. United States, No. 02-255 C, 2004 WL 1299571 (Ct. Fl. Claims
June 4, 2004) (acknowledging restrictive definitions for horizontal [“parallel to the plane
of the horizon”] as well as more general definitions [“placed operating chiefly along a
plane parallel to the horizon.”]). Turning to the claim language, the court adopted
Whirlpool’s more expansive definition, finding that the disputed term related to the
tumbling of the clothes in the chamber, which could be accomplished whether the axis
was perfectly horizontal or somewhat inclined. Whirlpool, 423 F. Supp. 2d at 738-40.
A similar conclusion is warranted here. It is clear from the claim language
in USS’s patents that the key feature of the pin’s alignment relative to the floor is that, if
the device is dropped, it will fall in such a way that the pin will roll to the side so that the
sharp end of the pin does not lie face up. Claim 1 of the ‘495 patent and Claim 17 of the
‘310 patent specifically teach that the pin will roll to one side “such that the pin is
maintained in horizontal alignment with a flat surface to prevent injury from stepping
thereon[.]” (‘495 patent Col. 5:41-44; ‘310 patent Col. 6:43-46.) Thus, the claim
language specifically emphases that the master stroke of this improvement over the prior

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art is that it will prevent the pin from causing injury, which will happen whether the pin
lies perfectly parallel or is predominately parallel to the horizon.14
The specification of the ‘495 and ‘310 patents also describe how “the risk
of work place injury is reduced because when the tag body falls on the floor, the pin also
lays flat on the floor and should not penetrate the foot of an employee stepping thereon.”
(‘495 patent Col. 3:9-12; ‘310 patent Col. 3:12-15.) Not only do the specifications
emphasize the purpose of the pin’s alignment, the fact that USS chose to use the
descriptive term “flat,” instead of the more exacting term “parallel,” further reinforces the
understanding that the disputed term was not to meant to be limited to a pin that rests at
an absolutely parallel orientation to the surface upon which it may fall. The Court,
therefore, applies the plain and ordinary meaning to the term “horizontal alignment,” and
concludes that the term refers to a pin which “prevents injury by placing the pin in a
horizontal alignment, so it cannot penetrate a foot if stepped on.”
IT IS SO ORDERED.
Dated: October 1, 2014
HONORABLE SARA LIOI
UNITED STATES DISTRICT JUDGE

14

In Whirlpool, the claim language also used terms as “predominately” and “generally,” in connection with
horizontal axis of the washing chamber. While USS’s patents do not make use of such adjectives, the
specific language in the claims underscoring the benefits of the improvement makes clear that the
avoidance of injury, and not perfect spatial alignment, is the cornerstone of the patents.
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