Magna-Mug LLC v. Novelty, Inc.

Filing 38

ORDER CONSTRUING CLAIMS. Signed by Chief Judge Susan J. Dlott. (wam1)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION
MAGNA-MUG, LLC,
Plaintiff/Counter Defendant,
v.
NOVELTY, INC., (d/b/a NOVELTY
DISTRIBUTORS COMPANY)
Defendant/Counter Claimant.

Case No. 1:13-cv-304

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Chief Judge Susan J. Dlott
ORDER CONSTRUING CLAIMS

This is a patent infringement case involving Magna-Mug LLC. (“Magna-Mug”) and
Novelty, Inc. (“Novelty”). As part of the litigation, the parties requested that the Court construe
various claim terms in the patent pursuant to Markman v. Westview Instruments, Inc., 517 U.S.
370 (1996). The parties set forth the disputed claim terms in a joint prehearing statement (Doc.
22), and both parties filed opening and responsive claim construction briefs. (Docs. 23, 24, 30,
and 31). The parties had the opportunity to further bolster their claim construction arguments
during a Markman hearing conducted by the Court on July 24, 2014. Relying on the parties’
briefs, evidence and oral arguments, the Court now shall construe each of the disputed terms.
I.

BACKGROUND
Given the procedural posture of this litigation, the Court need not describe the facts in

great detail here. Relevant to the claim construction issue is the fact that Magna-Mug is the
assignee of U.S. Patent No. 7,021,594 (“the ‘594 patent”), entitled “Folding Magnetic Holding

1

Wrap for Cups or Mugs.”1 The ‘594 patent was issued by the United States Patent and
Trademark Office on April 4, 2006. (Doc. 1-1, Page ID 9). The Abstract of the ‘594 patent
describes the claimed invention as follows: “An improved holder for receiving a liquidcontaining device and mounting it onto a magnetic accepting support or surface is provided
having a foldable single unit wrap element with a magnetic means secured to the outer surface of
the wrap element.” (Id.)
The ‘594 patent was designed to improve a conventional cup holder by giving it the
capability to be supported by a vertical magnetic surface. In essence, the invention is an
insulated beverage container holder with integrated magnets so that the beverage can be stuck to
any magnetic surface, such as the side of a car or patio rails. By using the invention, “[t]he user
avoids the hassle and strain of balancing a cup in situations where a metal support is nearby.”
(Id. at Page ID 30.) By way of example, a beverage can placed in the cup holder described by
patent ‘594 could be magnetically attached to the side or rear panel of a vehicle during a
tailgating party, where horizontal surfaces are at a premium.2
On May 7, 2013, Magna-Mug filed suit against Novelty, seeking a judgment that Novelty
is infringing the ‘594 patent and a related design patent, Patent No. D547,618. (Doc. 1).
Novelty denies that it infringes any patent asserted in this action and further asserts in a
counterclaim that Magna-Mug is equitably estopped from asserting the ‘594 patent against

1

Novelty argues that Magna-Mug’s owner, Thomas Hundley, personally owns the ‘594
patent and therefore Magna-Mug has no standing to sue. That argument is the basis of a pending
motion to dismiss, Doc. 25, which the Court shall resolve in a separate order.
2

Tailgating is the term used for eating an informal meal served from the back of a
parked vehicle, typically in the parking lot of a sports stadium.
2

Novelty. (Doc. 13.) At this juncture of the lawsuit, the parties’ dispute focuses on the
construction of seven terms contained in the ‘594 patent.
II.

MARKMAN HEARING STANDARDS
The Federal Circuit has explained that “[i]t is a ‘bedrock principle’ of patent law that ‘the

claims of a patent define the invention to which the patentee is entitled to the right to exclude.’”
Phillips v. AWH Corp., 415 F. 3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1115 (Fed. Cir. 2004)).
Consequently, the meaning and scope of a patent’s claims lie at the heart of any patent dispute.
The purpose of a Markman hearing is to ascertain the meaning of the patent’s claims so
that it is clear precisely what has been patented and, by consequence, the protections the patent
affords the patent holder. Phillips, 415 F.3d at 1312; see also Markman v. Westview
Instruments, Inc., 52 F.3d 967, 978 (Fed. Cir. 1995) (“When a court construes the claims of the
patent . . . the court is defining the federal legal rights created by the patent document.”), aff’d,
517 U.S. 370 (1996). There is no “rigid algorithm for claim construction.” Phillips, 415 F.3d at
1324. Rather, in construing the meaning of a patent’s claims, the Court is guided by a set of
principles that the Federal Circuit has described as follows:
The claim terms are generally given their ordinary and customary meaning. 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.
Importantly, the person of ordinary skill in the art is deemed to read the claim
term not only in the context of the particular claim in which the disputed term
appears, but in the context of the entire patent, including the specification. In
examining the specification for proper context, however, this court will not at any
time import limitations from the specification into the claims.
Varco, L.P. v. Pason Sys., USA Corp., 436 F.3d 1368, 1372–73 (Fed. Cir. 2006) (internal
quotations and citations omitted). The starting point in claim construction therefore lies with the
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language of the claims themselves. Purdue Pharma L.P. v. Endo Pharm., Inc., 438 F.3d 1123,
1135–36 (Fed. Cir. 2006). In considering a patent’s language, a court should apply the plain
meaning rule, presumptively giving claim terms their ordinary, plain meaning. Innova, 381 F.3d
at 1115. A court may, however, depart from a term’s plain meaning if the patentee has acted as a
lexicographer or otherwise limited the scope of the invention through a disclaimer or disavowal
in the specification or prosecution history. Phillips, 415 F.3d at 1316.
Of considerable import to claim construction, then, is the intrinsic evidence—the claim
language, the specification, and the prosecution history as applicable. Vitrionics Corp. v.
Conceptronic, 90 F.3d 1576, 1582–83 (Fed. Cir. 1996). When this intrinsic evidence provides
an unambiguous description of the scope of the invention, reliance on extrinsic evidence is
generally improper. Id. Although less significant than intrinsic evidence, extrinsic evidence is
still of value to claim construction when necessary. Phillips, 415 F.3d at 1317 (citing Markman,
52 F.3d at 980). This latter category encompasses such things as expert and inventor testimony,
as well as texts such as treatises and dictionaries. Id.
Plaintiff Magna-Mug’s position is that none of the disputed claims require construction
but should be given their ordinary meaning. Defendant Novelty proposes specific constructions
of each of the disputed claim terms. Cognizant of the principles governing claim construction
and having entertained argument, as well as having reviewed the scope of the prior art, the Court
shall now address each claim construction issue in turn.

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III.

FIRST DISPUTED TERM

Claim

Disputed
Claim Term

Magna-Mug’s
Proposed
Construction

Novelty’s
Proposed
Construction

Court’s Ruling

“[Claim 1.] An improved
beverage container holder . . .
comprising: a) a foldable single
unit wrap element . . . and b) at
least one magnetic means
affixed to and secured to the
integrated cylindrical portion of
the wrap element. . . .”

Wrap
element

No construction
necessary; ordinary
meaning.
Alternatively,
encircling piece.

A strip of material
having two ends
with a mating
connector at each
end of the strip
that detachably
engage with each
other.

Encircling piece.

“[Claim 7.] An improved
beverage container holder . . .
comprising: a) a foldable,
flexible single unit wrap
element comprising an
integrated cylindrical portion
having a lower side length, and
configured for encircling a lower
portion of a beverage container,
thereby exposing the upper
exposed portion of the beverage
container, the wrap element
having a first surface and a
second surface adapted to be in
contact with the beverage
container . . . .”
“[Claim 8.] The improved
beverage container holder of
claim 7 further comprising a first
attachable means on the first
surface of the wrap element,
and a second attachable means
formed as a tab portion that can
engage the first attachable
means.”

The parties dispute whether the term “wrap element” describes any type of beverage
container holder that wraps around the container or whether the claim term more narrowly
describes “a strip of material having two ends with a mating connector at each end of the strip
that detachably engage with each other.” Claim 1 describes a beverage container holder

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comprising “a foldable single unit wrap element comprising an integrated cylindrical portion . . .
and a bottom attached along the lower side length of the integrated cylindrical portion.” (Doc. 11, Page ID 32.) Similarly, claim 7 describes a beverage container holder comprising “a foldable,
flexible single unit wrap element comprising an integrated cylindrical portion [and] a bottom
portion attached along the lower side length of the cylindrical portion.” (Id.) Figures 9 through
10A of the ‘594 patent illustrate embodiments of the invention that are comprised of a wrap
element with an integrated cylindrical portion and a bottom portion as described in claims 1 and
7. (Id. at Page ID 24–26). Nothing in claims 1 or 7 suggests that the wrap element must have
ends that detachably engage each other (as in two ends of a belt) as opposed to being one
continuous piece of material, and such an interpretation of the claim term would be inconsistent
both with the claim language and intrinsic evidence in the nature of the preferred embodiments
shown in figures 9 through 10A.
In contrast, claim 8, which is dependent upon claim 7, describes “[t]he improved
beverage container holder of claim 7 further comprising a first attachable means on the first
surface of the wrap element, and a second attachable means formed as a tab portion that can
engage the first attachable means.” (Id. (emphasis added).) In other words, claim 8 describes a
wrap element having the construction proposed by Novelty: “[a] strip of material having two
ends with a mating connector at each end of the strip that detachably engage with each other.”
Figures 1 through 8 and 12 of the patent portray embodiments of beverage container holders that
are comprised of a strip of material with ends that attach. (Id. at Page ID 11–23, 28).
Ordinarily, a dependent claim has a narrower scope than the claim from which it
depends. Phillips, 415 F.3d at 1325 (“[T]he presence of a dependent claim that adds a particular

6

limitation gives rise to a presumption that the limitation in question is not present in the
independent claim.”); see also Liebel-Flarsheim v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir.
2004) (same). This generalization is referred to as the doctrine of claim differentiation. Innova,
381 F.3d at 1123 (“The doctrine of claim differentiation ‘normally means that limitations stated
in dependent claims are not to be read into the independent claim from which they depend.’”
(quoting Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999))).
The limitation in claim 8 that narrowly describes a wrap element using “attachable
means” gives rise to a presumption that the limitation is not present in claims 1 and 7. For this
reason, limiting “wrap element” to mean only “a strip of material having two ends with a mating
connector at each end of the strip that detachably engage with each other” would violate the
doctrine of claim differentiation.
However, contrary to Magna-Mug’s assertion, the term “wrap element” does not have
inherent plain meaning. Magna-Mug’s alternative proposed construction gives specific meaning
to the claim term. In light of the foregoing, the term “wrap element” is construed to mean
“encircling piece.”
IV.
Claim

SECOND DISPUTED TERM
Disputed
Claim Term

Magna-Mug’s
Proposed
Construction

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Novelty’s
Proposed
Construction

Court’s Ruling

“[Claim 1.] An improved beverage
container holder . . . comprising: a)
a foldable single unit wrap element
comprising an integrated
cylindrical portion made from a
flexible material and having a
lower side length, configured to
encircle the bottom portion of a
beverage container, and a bottom
attached along the lower side
length of the integrated cylindrical
portion . . . .”

Attached

No construction
necessary;
ordinary
meaning.

Two separate
pieces are
joined together.

Attached.

“[Claim 7.] An improved beverage
container holder . . . comprising: . .
. b) a bottom portion attached
along the lower side length of the
integrated cylindrical portion;”
“[Claim 15.] The beverage
container holder according to
claim 10 further comprising a
neodymium magnet attached to
the foldable bottom.”

Novelty proposes that the term “attach” means “two separate pieces are joined together,”
whereas Magna-Mug contends that no construction is necessary. A comprehensive reading of
the patent demonstrates that Novelty’s proposed construction unduly limits the meaning of the
term “attached.” Novelty’s construction is supported to the extent that “attach” is used in claim
15 in a way that describes joining two obviously separate pieces, specifically, attaching a magnet
to the foldable bottom of the invention. However, that is but one possible construction of
“attach.” The word “attachable” is used in claim 83 and in the “summary of the invention” to
describe opposite ends of the same piece, as in a belt. (Doc.1-1, Page ID 29, col. 2 lines 44–54.)

3

“[Claim 8.] The improved beverage container holder of claim 7 further comprising a
first attachable means on the first surface of the wrap element, and a second attachable means
formed as a tab portion that can engage the first attachable means.”
8

The ordinary meaning of “attached” encompasses both these concepts: the joining together of
separate pieces and the joining together of two ends of the same piece.
Furthermore, intrinsic evidence demonstrates that the word “attached” in claims 1 and 8,
which describes the bottom portion vis-à-vis the cylindrical portion of the wrap element, is not
intended to limit the invention to one in which the bottom portion is a separate piece from the
wrap element. In particular, the “detailed description of the invention” explains that “[i]n a
preferred embodiment, bottom portion 17 is comprised of the same piece of material as wrap
element 11 to resemble a single unit and, may be cast from the same piece of material to form an
integrated single unit.” (Id. at Page ID 31, col. 5 lines 64–67 to col. 6 line 1 (emphasis added).)
In this embodiment, the bottom is “attached” to the wrap element because they are both part of
the same piece of material. Novelty’s proposed construction of “attached” as meaning “two
separate pieces are joined together” ignores this preferred embodiment. In short, neither the
words of the claim nor its context limits “attached” to the joining of two separate pieces.
“[A] claim term should be construed consistently with its appearance in other places in
the same claim or in other claims of the same patent.” Rexnord v. Lautram, 274 F.3d 1336, 1342
(Fed. Cir. 2001). Because the term “attach” is used in the claims and in the specification to
mean something other than joining two separate pieces, “attach” cannot not be narrowly
construed to mean joining two separate pieces.
The question, then, is whether “attach” requires any construction whatsoever or should be
given its plain and ordinary meaning as Magna-Mug proposes. Reliance on the word’s ordinary
meaning is sufficient to resolve this dispute: the meaning of the term simply is not as narrow as

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what Novelty proposes. In light of the foregoing analysis, the term “attached” does not require
any construction but shall be given its ordinary meaning.
V.

THIRD DISPUTED TERM

Claim

Disputed
Claim Term

Magna-Mug’s
Proposed
Construction

Novelty’s
Proposed
Construction

Court’s Ruling

“[Claim 1.] An improved beverage
container holder . . . comprising: . .
. b) at least one magnetic means
affixed to and secured to the
integrated cylindrical portion of
the wrap element. . . .”

Affixed

No construction
necessary;
ordinary
meaning.

Attached to a
material with a
substance that
is interposed
between the
object and the
material.

Two separate
pieces joined
together.

“[Claim 10.] A beverage container
holder that can be magnetically
mounted to a vertical magneticaccepting surface to hold a
beverage container received
therein on the vertical surface,
comprising: . . . b. a foldable
bottom affixed to the cylindrical
body along the lower edge. . . .”

The term “affixed” appears only twice in the claims: once in reference to attaching a
magnetic means to the wrap element (claim 1) and once in reference to attaching the bottom
piece to the wrap element (claim 10). The specification makes greater use of the term “affixed,”
employing it to describe various means of connecting or attaching two pieces together. For
example, “[t]he magnetic means may consist of one or more magnets affixed to the first surface
with adhesive” (Doc. 1-1, Page ID 29, col. 2 lines 25–26); “a patch such as a piece of cloth is
affixed to the outside or second surface of the wrap element” (id. at Page ID 29–30, col. 2 line
67–col. 3 line 1); “[g]enerally the cloth and fastener items can be affixed to the neoprene using
any convenient means, such as glue, paste, staples, pins, or stitches” (id. at Page ID 30, col. 3
lines 12–15); and “if separate, bottom portion 17 can be removably attached or partially or

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entirely affixed to the length 14 or 15, by any mechanism that ensures its fit, including fasteners,
stitches, snaps, zippers, etc.” (id. at Page ID 31, col. 6 lines 3–6). Thus, “affix” refers variously
to attaching a magnet to the wrap element, a piece of cloth to the wrap element, and a bottom to
the wrap element by means such as adhesive, staples, pins, stitches, snaps, and zippers.
Generally speaking, the terms “attached” and “affixed” both refer to joined or integrated
components. However, different words in a patent ordinarily have different meanings. See
Innova, 381 F.3d at 1119 (“[W]hen an applicant uses different terms in a claim it is permissible
to infer that he intended his choice of different terms to reflect a differentiation in the meaning of
those terms.”) Further, it is the job of the Court to adopt a construction that makes the claim
term more certain. Liquid Dynamics v. Vaughn, 355 F.3d 1361, 1367 (Fed. Cir. 2004) (“Courts
construe claims by considering evidence necessary to resolve disputes about claim terms and to
assign a fixed, unambiguous, legally operative meaning to the claim.”).
Read as a whole, it is apparent that the patentee intended to distinguish “attached,” which
can mean the joining of two separate pieces, joining of two parts of the same piece, or joined by
virtue of being a single continuous piece; from “affixed,” which he intended to mean “two
separate pieces joined together.” In other words, “affixed” in the claims means what Novelty
advocated as the proper construction of “attached.”
Novelty’s proposed construction of “affixed” correctly proposes that the term means to
attach two pieces together, but its additional requirement that the attachment occurs by way of a
substance interposed between the two pieces is not supported by intrinsic evidence. In
particular, the term “affixed” is used to describe one object being secured to another object by
various attachment means including fasteners, snaps, stitches, and zippers. (Doc. 1-1, Page ID

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31, col. 6 lines 3–7.) Defendant refers to these attachment means as “mechanisms” in its
opposition brief (Doc. 30, Page ID 373), yet it proposes a construction of the term that limits the
attachment means to a “substance.” While an adhesive is a “substance,” a zipper is not, and thus
Defendant’s proposal is too narrow.
Because the attachment means described in the claims and in the specification to affix
one piece to another are not limited to “a substance interposed between” two objects,
Defendant’s proposed construction is too narrow to give proper effect to the claim term.
However, some construction of “affixed” is necessary in order to distinguish it from “attached.”
A construction of “affixed” as joining two separate pieces together makes both claim terms more
certain. Accordingly, “affixed ” is construed as “two separate pieces joined together.”
VI.

FOURTH DISPUTED TERM

Claim

Disputed
Claim Term

Magna-Mug’s
Proposed
Construction

Novelty’s
Proposed
Construction

Court’s Ruling

“[Claim 1.] An improved beverage
container holder . . . comprising: . .
. b) at least one magnetic means
affixed to and secured to the
integrated cylindrical portion of
the wrap element. . . .”

Secured

No construction
necessary;
ordinary
meaning.

Covered with a
first piece of
material that is
attached to a
second piece of
material to hold
the object
between the
first piece of
material and the
second piece of
material.

Attached by means
of layering.

“[Claim 3.] The improved
beverage container holder of claim
2 wherein the plurality of
neodymium magnets are secured
between an outer surface of the
integrated cylindrical portion and
the protective coating.”
“[Claim 5.] The improved
beverage container holder of claim
1 wherein the at least one magnetic
means is secured with a protective
coating.”
“[Claim 6.] The improved

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beverage container holder of claim
5 [w]herein the at least one
magnetic means is secured
between an outer surface of the
cylindrical body and the protective
coating.”
“[Claim 17.] The improved
beverage container holder of claim
10 wherein the at least one magnet
is secured to the cylindrical body
with a protective coating.”
“[Claim 18.] The improved
beverage container holder of claim
17 wherein the at least one magnet
is secured between an outer
surface of the cylindrical body and
the protective coating.”

Novelty proposes that “secured” be construed as “an object is covered with a first piece of
material that is attached to a second piece of material to hold the object between the first piece of
material and the second piece of material.” In other words, Novelty’s proposed construction
would define “secured” as meaning an object that is embedded in or sandwiched between two
layers.
Except for one instance, the word “secured” is used consistently throughout the
specification and the claims to describe the manner in which a magnet is incorporated into the
invention by sandwiching it between two layers. The one exception is in the “detailed description
of the invention” (Doc. 1-1, Page ID 31, col. 5 line 61), which does not refer to the invention itself
but rather the invention’s “grip” on a beverage container. Because the use of “secured” in that
context is not referring to the invention itself, a contrary definition in that one instance does not
disrupt a construction that would otherwise align with the purpose of the invention.
Additionally, with respect to the inclusion of magnets in the invention, the claims use the
term “secured” to distinguish the application of a magnet by sandwiching it between two layers
13

versus merely “attaching” the magnet to the invention. See claim 15 (“magnet attached to the
foldable bottom”) versus claim 16 (“The improved beverage container holder of claim 15 further
comprising a protective coating that covers and secures the bottom magnet to the foldable
bottom”).)
The intrinsic evidence demonstrates that the inventor intended the term “secured” to mean
to attach the magnet by a specific means—that of layering the magnet between two surfaces.
While Novelty’s proposed construction captures this concept, its use of the word “material” adds a
new concept that is not clearly intended by the patentee nor is necessary to clarify the meaning of
the term “secured.” The term “secured” is used in the claims in combination with words that
describe the composition of the layering means. For example, claim 18 specifies that a magnet “is
secured between an outer surface of the cylindrical body and the protective coating.” To construe
the term “secured” as proposed by Novelty would result in redundancies, as underscored here in
the context of claim 18: “The improved beverage container holder of claim 17 wherein the at least
one magnet is covered with a first piece of material that is attached to a second piece of material to
hold the object between the first piece of material and the second piece of material between an
outer surface of the cylindrical body and the protective coating.” As this demonstrates,“material”
becomes redundant with “outer surface of the cylindrical body” and “the protective coating.”
This redundancy is cured by construing the term “secured” as “attached by means of
layering.” Such a construction specifies a particular means of attachment without unduly injecting
additional terms into the claim language. For these reasons, “secured” is construed as “attached
by means of layering.”

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VII.

FIFTH DISPUTED TERM

Claim

Disputed
Claim Term

Magna-Mug’s
Proposed
Construction

Novelty’s
Proposed
Construction

Court’s Ruling

“[Claim 1.] An improved beverage
container holder . . . comprising: . .
. b) at least one magnetic means
affixed to and secured to the
integrated cylindrical portion of
the wrap element. . . .”

Affixed to and
secured to

No construction
necessary;
ordinary
meaning.

Both affixed to
a first material
by a substance
interposed
between the
object and the
first material
and the object
is secured to
the first
material by a
second material
that covers the
object and is
attached to the
first material.

Two separate
pieces joined
together and
attached by means
of layering.

This term is used only once in the entire patent and is used to describe the manner in which
the magnet is included in the cylindrical portion of the invention. Magna-Mug says it requires no
construction. Novelty states that the phrase is a combination of its proposed constructions of
“affixed” and “secured.”
As discussed, “a claim term should be construed consistently with its appearance in other
places in the same claim or in other claims of the same patent.” Rexnord, 274 F.3d at 1342. The
Court has construed “affixed” and “secured.” Both “affixed” and “secured” have been construed
above. There is no reason to construe these two terms together as meaning anything different than
what they mean when used apart.
In light of the foregoing analysis, the term “affixed to and secured to” means “two separate
pieces joined together and attached by means of layering.”

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VIII. SIXTH DISPUTED TERM
Claim

Disputed
Claim Term

Magna-Mug’s
Proposed
Construction

Novelty’s
Proposed
Construction

Court’s Ruling

“[Claim 1.] An improved beverage
container holder . . . comprising: a)
a foldable single unit wrap element
comprising an integrated
cylindrical portion made from a
flexible material and having a
lower side length, configured to
encircle the bottom portion of a
beverage container, and a bottom
attached along the lower side
length of the integrated cylindrical
portion, and b) at least one
magnetic means affixed to and
secured to the integrated
cylindrical portion of the wrap
element. . . .”

Cylindrical
portion

No construction
necessary;
ordinary
meaning.

A piece of
material having
a cylindrical
wall and a
height that
forms a
cylinder, which
is integrated
with a wrap
element.

Cylindrical
portion.

“[Claim 3.] The improved
beverage container holder of claim
2 wherein the plurality of
neodymium magnets are secured
between an outer surface of the
integrated cylindrical portion and
the protective coating.”
“[Claim 7.] An improved beverage
container holder . . . comprising: a)
a foldable, flexible single unit
wrap element comprising an
integrated cylindrical portion
having a lower side length . . .
[and] b) a bottom portion attached
along the lower side length of the
integrated cylindrical portion. . .
.”

The term “cylindrical portion” is used six times in claims 1 through 7 of the patent.
Novelty proposes that the term be construed as “a piece of material having a circular wall and a
height that forms a cylinder, which is integrated with a wrap element.” As with the other claim
terms, Magna-Mug states that no construction is needed.

16

Neither party disputes that a portion is, by definition, a part of a whole.4 In claim 1, the
“cylindrical portion” together with the “bottom” comprise the wrap element of the beverage
container holder. In other words, the wrap element of claim 1 is comprised of two portions: the
cylindrical portion and the bottom portion. There is nothing particularly complex or ambiguous
about that notion. Regardless, Novelty proposes that “cylindrical portion” is a cylinder “which is
integrated with a wrap element.” Such a construction, which uses the term “wrap element” to
describe one of two portions of the wrap element, obfuscates rather than elucidates the meaning of
the claim. This is evidenced by the following paragraph, in which the term “cylindrical portion”
has been replaced with Novelty’s proposed construction:
[Claim 1.] An improved beverage container holder . . . comprising:
a) a foldable single unit wrap element comprising an integrated
[piece of material having a cylindrical wall and a height that forms
a cylinder, which is integrated with a wrap element] made from a
flexible material and having a lower side length, configured to
encircle the bottom portion of a beverage container, and a bottom
attached along the lower side length of the integrated [piece of
material having a cylindrical wall and a height that forms a
cylinder, which is integrated with a wrap element], and b) at least
one magnetic means affixed to and secured to the integrated [piece
of material having a cylindrical wall and a height that forms a
cylinder, which is integrated with a wrap element] of the wrap
element. . . .
It is thus apparent that construing “cylindrical portion” as a cylinder “integrated with a wrap
element” would result in repeatedly describing “wrap element” with the term “wrap element,” a
circular reading that makes the construction meaningless. There is nothing to overcome the

4

“Portion . . . 3a: a part of a whole.” Webster’s New International Dictionary (3d ed.

1993).
17

presumption that claim terms should be given their ordinary, plain meaning in this instance.
Accordingly, the term “cylindrical portion” shall be given its ordinary meaning.
IX.

SEVENTH DISPUTED TERM

Claim

Disputed
Claim Term

Magna-Mug’s
Proposed
Construction

Novelty’s
Proposed
Construction

Court’s Ruling

“[Claim 1.] An improved beverage
container holder . . . comprising: a)
a foldable single unit wrap element
comprising an integrated
cylindrical portion made from a
flexible material and having a
lower side length, configured to
encircle the bottom portion of a
beverage container, and a bottom
attached along the lower side
length of the integrated cylindrical
portion . . . .”

Along the
lower side

No construction
necessary;
ordinary
meaning.

The entire
circumference
of a cylindrical
portion attached
to or
incorporated in
a wrap element.

Along the lower
side.

“[Claim 7.] An improved beverage
container holder . . . comprising: a)
a foldable, flexible single unit
wrap element comprising an
integrated cylindrical portion
having a lower side length . . .
[and] b) a bottom portion attached
along the lower side length of the
integrated cylindrical portion. . . .”

The term “along the lower side” occurs in claims 1 and 7 to describe the attachment of the
“bottom” or “bottom portion” “along the lower side length of the integrated cylindrical portion.”
Contrary to Novelty’s argument, there is nothing in the specification or the claims to suggest that
the bottom must be attached along the entire circumference of the cylindrical portion. Rather, one
could imagine a design where there is at least some cut-out between the cylindrical portion and the
bottom and which still would fall within the parameters of the claim language. In light of the
foregoing analysis, the term “along the lower side” does not require construction but shall be given
its ordinary meaning.
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X.

CONCLUSION
The Court concludes that the foregoing claim constructions control. The parties shall

therefore proceed in a manner consistent with the conclusions of this Order.
IT IS SO ORDERED.

___s/Susan J. Dlott____________
Chief Judge Susan J. Dlott
United States District Court

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