Leach et al v. Pharmedoc Inc

Filing 139

ORDER the Court finds the disputed terms of Claim 1 of the 164 Patent should be construed as set forth herein. The parties are reminded to abide by the scheduling deadlines set forth in the Revised Agreed Scheduling Order 135 . Signed by Honorable Scott L. Palk on 6/12/2019. (md)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF OKLAHOMA
JAMIE S. LEACH, and
LEACHCO, INC.
Plaintiffs,
v.
PHARMEDOC, INC.
Defendant.

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Case No. CIV-16-1034-SLP

ORDER
Before the Court are the parties’ claim construction briefing [Doc. Nos. 75-79] and
a Joint Claim Construction and Pre-Hearing Statement [Doc. No. 72] which includes a
claim construction chart. See Chart [Doc. No. 72-1].1 The parties identify eight terms for
claim construction which the Court addresses below.
I.

Background
Plaintiffs allege Defendant has infringed Plaintiffs’ U.S. Patent No. 6,499,164 for

the Snoogle®, a J-shaped, full-body, pregnancy pillow (the ‘164 Patent). The ‘164 Patent
is entitled BODY PILLOW WITH HORSESHOE-SHAPED TOP AND J-SHAPED
BOTTOM. Plaintiff Jamie S. Leach invented the ‘164 Patent.2 Plaintiff Leachco, Inc.
(Leachco) is the sole licensee of the ‘164 Patent.

1
2

Citations to the parties’ submissions reference the Court’s ECF pagination.

The Court recognizes that Plaintiff, Jamie S. Leach, is the owner of the ‘ 164 Patent. In Plaintiffs
submissions to the Court, when addressing the prosecution history, Plaintiffs reference actions
taken on behalf of Ms. Leach by her patent attorney and refer to her attorney as “Applicant’s
Attorney.” For ease of reference, however, the Court simply refers to “Plaintiffs” throughout this

The Court has conducted a claim construction hearing3 and heard argument of
counsel. The parties did not present any expert testimony and agree no such testimony is
needed for claim construction.
Each of the terms disputed by the parties appear in Claim 1 of the ‘164 Patent. Claim
1 provides:
1. A body pillow having a top which is essentially in the shape of a
horseshoe[1] for accommodating an upper end of a person and a bottom
which is essentially in the shape of a J[2] for accommodating a lower end
of the person, a substantially cylindrical straight portion[3] connecting the
horseshoe-shaped top[1] with the J-shaped bottom[2], the cross-sectional
diameter of the body pillow[7] being between 7 and 12 inches, the horseshoe
shaped top constituting[8] a semi-toroidal member[4] having a diameter of
about 25 to 26 inches[5] and terminating in a foot spaced from the straight
portion extending parallel to the straight portion and forming therewith
a curved opening[6].
See ‘164 Patent, 6:8-17. Each term of Claim 1 disputed by the parties is designated by [ _ ]
and numbered in the manner as designated by the parties.
II.

Legal Standards
A.

Claim Construction

The claims of a patent define, in technical terms, the scope of protection conferred
by the patent, i.e., the claims define the patentee’s invention to which the patentee is
entitled the right to exclude. See Markman, 517 U.S. at 373 (“[A] patent must describe
the exact scope of an invention and its manufacture to secure to the patentee all to which

Order without distinguishing actions taken by the patent attorney or Ms. Leach as the owner of the
‘164 Patent.
3

See Markman v. Westview Instrs., Inc. 517 U.S. 370, 373 (1996).

2

he is entitled, and to apprise the public of what is still open to them.” (internal quotations,
alterations and citation omitted)); Innova / Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004) (“It is a bedrock principle of patent law that the
claims of a patent define the invention to which the patentee is entitled the right to
exclude.”).
Claim construction is a question of law for the court. Markman, 517 U.S. at 384.
The court need only construe claims that are “in controversy” and only “to the extent
necessary to resolve the controversy.” Vivid Techs, Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999). “A determination that a claim term ‘needs no construction’ or
has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one
‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the
parties’ dispute” – for example, when the scope of what is covered by the term remains in
dispute notwithstanding the ordinary meaning of the term. O2 Micro Int’l, Ltd. v. Beyond
Innovation Tech. Co., Ltd., 521 F.3d 1351, 1361 (Fed. Cir. 2008). Ultimately, “[t]he
construction that stays true to the claim language and most naturally aligns with the patent’s
description of the invention will be, in the end, the correct construction.” Reinshaw PLC
v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).
B.

Sources for Construing Claims

A court considers three primary sources, referred to as “intrinsic evidence,” and
often this evidence alone resolves any ambiguity as to a disputed claim term: (1) the
language of the claims; (2) the specification (or written description); and (3) the
prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.
3

1996). When intrinsic evidence is insufficient to enable the court to determine the meaning
of disputed claims, a court may also consider extrinsic evidence. Id. at 1584. “Extrinsic
evidence is that evidence which is external to the patent and file history, such as expert
testimony, inventor testimony, dictionaries, and technical treatises and articles.” Id.
1.

Intrinsic Evidence
a.

Claim Language

Claim terms are usually given their ordinary and customary meaning – “the meaning
that the term would have to a person of ordinary skill in the art [POSITA] at the time of
the invention, i.e., as of the effective filing date of the patent.” Phillips v. AWH Corp., 415
F.3d 1303, 1312 (Fed. Cir. 2005). This “objective baseline” is the starting point for claim
construction. Id. at 1313. A POSITA reads the claim term in the context of the particular
claim in which the disputed term appears, but also in the context of the patent as a whole
including the patent specification and the prosecution history. Id.4
b.

The Specification

Next, the court looks at a patent’s specification as “[c]laims must be read in view of
the specification, of which they are a part. Markman v. Westview Instrs., Inc., 52 F.3d 967,
979 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370. “Usually, [the specification] is the
single best guide to the meaning of a disputed term.” Howmedica Osteonics Corp. v.
Zimmer, Inc., 822 F.3d 1312, 1321 (Fed. Cir. 2016) (quotation marks and citation omitted).

4

As Plaintiffs state, “neither party has yet put forth a definition of the POSITA to this Court . . .”
Pls.’ Resp. at 9.

4

But “there is a fine line between reading a claim in light of the written description and
reading a limitation into the claim from the written description.” Id. (citation omitted). If
a patentee selects a meaning distinct from that which the claim terms would otherwise have
to a POSITA, the different meaning must be set forth in the specification in a manner
sufficient to give one of ordinary skill notice of the change from the usual meaning. Innova
/ Pure Water, Inc., 381 F.3d at 1117.
c.

Prosecution History

Third, the court may consider the prosecution history, if, as here, it is in evidence.
Phillips, 415 F.3d at 1317. A patent’s prosecution history contains a complete record of
all the proceedings before the United States Patent and Trademark Office (PTO), including
any express representations made by the applicant regarding the scope of the claims.
Therefore, the prosecution history provides evidence of how the PTO and the inventor
understood the patent, and the record before the PTO can be of critical significance in
determining the meaning of the claims. Id. (“Like the specification, the prosecution history
provides evidence of how the PTO and the inventor understood the patent.”) (citations
omitted); see also Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The
purpose of consulting the prosecution history in construing a claim is to “exclude any
interpretation that was disclaimed during prosecution.” (internal quotation marks and
citation omitted)); see also Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576
(Fed. Cir. 1995) (citations omitted) (“The prosecution history limits the interpretation of
claim terms so as to exclude any interpretation that was disclaimed during prosecution.

5

Claims may not be construed one way in order to obtain their allowance and in a different
way against accused infringers.” (citations omitted)).
2.

Extrinsic Evidence

Generally, courts view extrinsic evidence as “less reliable” than intrinsic evidence.
Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 799 (Fed. Cir. 2019). “[E]xtrinsic
evidence in general, and expert testimony in particular, may be used only to help the court
come to the proper understanding of the claims; it may not be used to vary or contradict
the claim language.” Vitronics, 90 F.3d at 1584. As noted, the parties agree that no expert
testimony is needed for claim construction in this case. Defendant, however, relies upon
dictionary definitions to support certain of its proposed constructions. “Judges are free to
. . . rely on dictionary definitions when construing claims, so long as the dictionary
definition does not contradict any definition found in or ascertained by a reading of the
patent documents. Id., n. 6.
III.

Prosecution History
Both parties cite the prosecution history of the ‘164 Patent in support of their

respective claim constructions. Thus, the Court considers the prosecution history in
construing the disputed terms of Claim 1. See Prosecution History of the ‘164 Patent (PH)
[Doc. No. 76-4]. Claim 1 in the originally filed patent application read as follows:
A body pillow having an upper end which is essentially in the shape of a
horseshoe and a lower end which is essentially in the shape of a J, a straight
portion connecting the horseshoe-shaped top with the J-shaped bottom, the
cross-sectional diameter of the body pillow being between 7 and 12 inches.

6

PH at Leachco 436.5
A.

The PTO’s First Rejection

Upon review, the PTO rejected Claim 1 finding it was unpatentable over a
previously issued patent to Jacobson. PH at Leachco 453; see also Pls.’ Brf., Ex. 6
(Jacobson Patent). The PTO found that “Jacobson discloses a pillow having a horseshoeshaped upper end connected to a J-shaped lower end by a straight portion . . . .” Id. The
PTO further found that “Jacobson discloses the claimed invention except for the crosssectional diameter between 7-12 inches and the straight portions having lengths between
48-56 inches and 24-32 inches.” Id. The PTO deemed these dimensions represented
modifications involving “a mere change in size of a component” generally recognized “as
being within the level of ordinary skill in the art.” Id.

JACOBSON PATENT

5

Although the prosecution history shows other claims were rejected, the parties’ dispute centers
on the terms of Claim 1. Therefore, the Court limits recitation of the prosecution history to the
PTO’s actions and Plaintiffs’ responses in relation to Claim 1.

7

1.

Plaintiffs’ First Response

Plaintiffs then filed an amendment. The language Plaintiffs added to Amended
Claim 1 is denoted by underlining . . . . and the language Plaintiffs deleted is denoted by
bracketing [ . . .]. Amended Claim 1 provided as follows:
A body pillow having [an upper end] a top which is essentially in the shape
of a horseshoe for accommodating an upper end of a person and a [lower
end] bottom which is essentially in the shape of a J for accommodating a
lower end of the person, a substantially cylindrical straight portion
connecting the horseshoe-shaped top with the J-shaped bottom, the crosssectional diameter of the body pillow being between 7 and 12 inches, the
horseshoe shaped top constituting a semi-toroidal member having a diameter
of about 25 to 26 inches and terminating in a foot spaced from the straight
portion and forming therewith a curved opening.
PH, Leachco at 464.
B.

The PTO’s Second Rejection

The PTO rejected Amended Claim 1 for being unpatentable over the Shaffner
patent. See PH, Leachco at 468; see also Pls.’ Brf., Ex. 8 (Shaffner Patent).

SHAFFNER PATENT
8

The PTO did not, however, address the additional limitations that Plaintiffs added
in the first response. Accordingly, Plaintiffs filed a request for reconsideration of Amended
Claim 1. See id. at Leachco 474-475 (noting that “the Examiner has neglected to comment
on the last three lines of Claim 1, to wit ‘the horseshoe-shaped top constituting a semitoroidal member having a diameter of about 25 to 26 inches and terminating in a foot
spaced from the straight portion and forming therewith a curved opening.’”).
1.

Plaintiffs’ Second Response

In requesting a reconsideration, Plaintiffs argued that the term “semi-toroidal”
which would “connote a shape resembling roughly one half of a doughnut” is “not apparent
in the drawing of Shaffner” and “particularly regarding Figure 5.” Id. at Leachco 475. But
“more importantly,” Plaintiffs argued, amended Claim 1 describes the semi-toroidal
member “in terms of ‘terminating in a foot spaced from the straight portion and forming
therewith a curved opening’” and Shaffner “clearly” does not show “a foot spaced from
the straight portion and forming therewith a curved opening.” Id. Plaintiffs also argued
that the described “foot” “has a function and purpose” which “prevents [the lady shown in
Figure 7] from slipping off the pillow” thus further distinguishing Shaffner. Id.

9

‘164 PATENT
FIGURES 7 and 8
C.

The PTO’s Third Rejection

The PTO then examined Amended Claim 1 and considered the additional limitations
it had failed to previously consider. But the PTO found the Shaffner patent did, in fact,
have a semi-toroidal member. Id. at Leachco 481 (“[T]oroidal is defined as doughnutshaped and semi has a definition of partial or incomplete. Therefore, Shaffner clearly has
a top constituting a semi-toroidal member defined by a partial / incomplete doughnut
portion.”). The PTO also found the limitation of “a cross-sectional diameter between 2526 inches and terminating in a foot spaced from the straight portion” was an “obvious
matter of design choice” and, therefore, not patentable over Shaffner. Id.
10

1.

Plaintiffs’ Third Response

Plaintiffs then filed a second amendment and added another limitation to Claim 1,
the relevant portion of which provides as follows: “the horseshoe-shaped top constituting
a semi-toroidal member having a diameter of about 25 to 26 inches and terminating in a
foot spaced from the straight portion extending parallel to the straight portion and forming
therewith a curved opening.” Id. at Leachco 486. The specification was amended “to
further describe Figure 6 in terms of the foot extending parallel to the straight section 14
and forming therewith a curved opening 44.”

Id.; see also ‘164 Patent 5:28-30.

Defendants have provided an annotated version of the referenced Figure 6 as follows:

Def.’s Brf. at 16. Plaintiffs again reiterated that the purpose of the foot extending parallel
limitation was to prevent the lady shown in Figure 7 from slipping off the pillow. See PH
at Leachco 71.
D.

The PTO’s Notice of Allowance

In response to Plaintiffs’ second amendment, the PTO issued its notice of Allowable
Subject Matter. The PTO stated: “Claims 1-11 are allowed.” See PH at Leachco 491. The
PTO further stated:
11

The prior art of record does not teach nor does any combination
thereof fairly suggest a body pillow having a top in the shape of a horseshoe
defining a spaced semi-toroidal member extending parallel from a cylindrical
straight portion that connects the top of the pillow to a J-shaped bottom. It
would not have been obvious to a person or ordinary skill in the art given the
prior art of record to provide the above structure.
See id.
IV.

Discussion
Initially, Defendant argues for the addition of the phrase “a pillow form” as to the

construction of terms 1 through 6 of Claim 1. Conversely, Plaintiffs argue for the addition
of the phrase “a pillow element” as to the construction of terms 1 through 4 and 6 of Claim
1. The Court addresses those arguments first and then addresses each disputed term of
Claim 1 in turn.
A.

“Pillow Form” / “Pillow Element”

Defendant argues that inclusion of the phrase “pillow form” is needed to
“distinguish between a pillow’s intended shape, its manufactured shape or the ‘pillow
form,’ as opposed to all the various other shapes that a user might twist or contort the pillow
form into when using the pillow in accordance with its intended purpose.” Def.’s Brf. at
18. Defendant points to its annotated version of Figure 6, see supra, which it contends
depicts a “three dimensional ‘pillow form.’”

Id.

Defendant further contends that

construing the claim to require a pillow form “can resolve ambiguities by clearly defining
the constructions to mean the various intentional shapes of the manufactured pillow, not
the various shapes that can be achieved by using the manufactured pillow form in
accordance with the pillow’s intended use.” Id. at 21.
12

In further support of its proposed construction and as part of its tutorial at the
Markman hearing, Defendant argues the language of Claim 1 does not address
repositioning of the pillow and, therefore, Claim 1 is limited to “one fixed form.”
Defendant compares Claim 1 to another of Plaintiffs’ patents that recites “many forms” to
emphasize the ‘164 Patent covers only one form or shape. See Technology Tutorial at 30
(citing Leach Patent US 6, 751, 817).6
Defendant also points to the prosecution history as evidence that the PTO treated
Claim 1 as being limited to one form. Defendant relies upon the amendments – and
specifically the “extending parallel to the straight portion” language of those amendments.
See discussion, supra. Defendant contends the amendments demonstrate Plaintiffs
disclaimed the scope of Claim 1 and narrowed the claim to one form (or shape), i.e., a
“static shape” and not all forms into which the body pillow can be twisted or contorted.7

6

This patent includes the following claim:
1. A contoured body pillow having a substantially candy cane shape, which shape
is malleable and may be altered to form a plurality of different shapes conforming
to the desires of the user, comprising a first terminal end having a semi-bell shape
which tapers upward and convergingly inward at an opposite non-terminal end the
semi-bell shaped member having a substantially straight outer edge and a
substantially curved inner edge, the semi-bell shape member transitioning at the
non-terminal end into a U-shaped portion, a downwardly-extending leg connecting
to the U-shaped portion, the downwardly extending leg having an initially narrow
construction gradually widening and the leg expanding at its lowermost portion to
form a bell shape, the bell shape terminating at a second terminal end in a beveled
edge.

Id.
7

The specification uses the word “form” only twice and not in the manner or context advocated
by Defendant. See Pls.’ Resp. at 18-19 (citing ‘164 Patent at 1:8-13 and 5:5-12). The specification
describes “blowing batting material, such as polyester fiber” into the inner member or liner of the

13

In response, Plaintiffs argue that both parties have agreed the term “body pillow”
does not require construction and that Defendant’s proposed addition of the term “pillow
form” does nothing to clarify the meaning of the actual claim language. Thus, Plaintiffs
oppose Defendant’s attempt to “add the phrase ‘pillow form’ into the construction of nearly
every disputed claim element.” Pls.’ Resp. at 10. Plaintiffs contend Defendant fails to
identify any intrinsic or extrinsic evidence which would support adding “pillow form” to
the claim construction. Plaintiffs further argue Defendant’s proposed construction would
“invade the province of the jury on the issue of infringement by urging the Court to
determine whether certain ‘manufactured shapes’ are legally outside the scope of the
claim.” Pls.’ Resp. at 12.
Plaintiffs instead request the Court to construe Claim 1 to include the phrase “pillow
element.” Plaintiffs argue:
Unlike ‘pillow form,’ the phrase ‘pillow element’ is well supported by the
claim language and specification. ‘Element’ would readily be understood by
a POSITA to simply mean a ‘part.’ Claim 1 clearly requires ‘parts’ of a body
pillow (i.e., top, bottom, straight portion).
Pls.’ Resp. at 13, n. 2. Like Defendant, however, Plaintiffs fail to point to any intrinsic
evidence supporting the addition of the phrase “pillow element” to Claim 1. Instead,
Plaintiffs merely state in wholly conclusory fashion that a POSITA would understand
“element” to mean “part.” Pls.’ Resp. at 13, n. 2.

body pillow “until the desired degree of fullness and firmness is achieved.” 3:19-32; see also 3:4560.

14

The parties agree that Claim 1 describes a body pillow with three “parts”: (1) a
horseshoe-shaped top; (2) a J-shaped bottom; and (3) a substantially cylindrical straight
portion connecting the horseshoe-shaped top with the J-shaped bottom. The Court notes
that these parts are not created separately and then sewn together to make the body pillow.
And, as set forth, the parties have not requested construction of the term “body pillow.”
The Court rejects both parties’ requests to add additional language to Claim 1. See
K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) (“Courts do not rewrite
claims; instead we give effect to the terms chosen by the patentee); Autogior Co. of Am. v.
United States, 384 F.2d 391, 396 (Ct. Cl. 1967) (“Courts can neither broaden nor narrow
claims to give the patentee something different than what he has set forth.”). The additional
phrases “pillow form” or “pillow element” do not clarify the meaning of the disputed claim
terms. See Tex. Dig. Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1201 (Fed. Cir. 2002)
(addressing “heavy presumption” that the terms used in claims “mean what they say and
have the ordinary meaning that would be attributed to those words by persons skilled in
the relevant art”).
The Court further notes as to Defendant’s proposed addition to Claim 1, the phrase
“pillow form” suggests a structural rigidity not included in the claim language. The
embodiments clearly demonstrate the intended flexibility of the body pillow, i.e., that the
pillow can be adjusted into different positions to accommodate the user. See discussion,
supra, regarding the J-shaped bottom. Thus, the Court declines to adopt Defendant’s
proposed construction because it could limit Claim 1 in ways not supported by the claims
or the specification.
15

Because, as discussed next, the Court deems the additional elements of Claim 1
should be included in the definition of a “horseshoe-shaped top,” Defendant will be able to
demonstrate to the jury that there exists an “intended manufactured shape” for the ‘164
Patent. But the Court declines to find, as a matter of law, that either “pillow form” or
“pillow element” should be added to the language of Claim 1.
B.

Disputed Claim Terms
1.

“a top which is essentially in the shape of a horseshoe . . . the
horseshoe-shaped top”

No.

Claim Terms

1.

“a top which is
essentially in the
shape of a
horseshoe”

Plaintiffs’
Proposed
Construction
a U-shaped pillow
element similar to
the shape of a
horseshoe at one end
of a body pillow

-and-

Defendant’s
Proposed
Construction
A pillow form
requiring: a semitoroidal member
(term #4)
having a diameter of
about 25 to 26
inches (term #5)

“the horseshoeshaped top

terminating in a foot
spaced from the
straight portion
extending parallel to
the straight portion
and forming
therewith a curved
opening (term #6)

Court’s
Construction
A top which is
essentially in the
shape of a horseshoe
requiring: a semitoroidal member
(term #4)
having a diameter of
about 25 to 26
inches (term #5)
terminating in a foot
spaced from the
straight portion
extending parallel to
the straight portion
and forming
therewith a curved
opening (term #6)

Although the Court rejects Defendant’s inclusion of the phrase “pillow form” in the
construction of “a top which is essentially in the shape of a horseshoe” and the “horse-shoe

16

shaped top,” the Court otherwise substantially adopts Defendant’s proposed construction
of the horseshoe-shaped top limitation and rejects Plaintiffs’ proposed construction.
Plaintiffs argue the horseshoe-shaped top “is unmistakably shaped like the letter ‘u’
or ‘u-shaped.’” Pls.’ Brf. at 13. Plaintiffs point to prior art (the Mathews patent, Pls.’ Brf.,
Ex. 5) as intrinsic evidence in support of their proposed construction. Id. at 14. But
Plaintiffs ignore the prosecution history which demonstrates additional limitations further
defining the horseshoe-shaped top. In this respect, the following statement by Plaintiffs is
noteworthy: “[T]he prosecution history shows that Applicant did not change the meaning
of horseshoe-shaped top, but rather, added separate claim limitations that each
subsequently limit the type of horseshoe-shaped top claimed.” Id. Indeed, Plaintiffs appear
to concede their position is unsupported. See id. at 14-15 (“In the end, this separation will
not matter to the ultimate infringement analysis because a finding of infringement requires
that each and every element (or limitation) set forth in the claim as a whole must be found
in the accused product.”) (emphasis added).8
The Court agrees with Defendants that the “horseshoe-shaped top” must be
construed to include the additional claim limitations defining it. The Court bases its
decision on the prosecution history. “The purpose of consulting the prosecution history in
construing a claim is to ‘exclude any interpretation that was disclaimed during
prosecution.’” Chimie, 402 F.3d at 1384 (quoting ZMI Corp. v. Cardiac Resuscitator
Corp., 844 F.2d 1576, 1580 (Fed. Cir. 1988)).

8

Moreover, Plaintiff’s proposed “u-shaped” construction adds nothing to the meaning of the
horseshoe-shaped top.

17

As set forth above, Plaintiffs’ amendments to Claim 1 of the Patent were made based
on rejections of the body pillow in light of the Jacobson and Shaffner prior art. Plaintiffs
distinguished the body pillow by adding limitations. Thus, the Court adopts Defendant’s
proposed construction which stays true to the claim language.
2.

“a bottom which is essentially in the shape of a J” – and – “the Jshaped bottom”

No.

Claim Term

2.

“a bottom which is
essentially in the
shape of a J”

Plaintiffs’
Proposed
Construction
a J-shaped pillow
element at one end
of a body pillow

– and –
“the J-shaped
bottom”

Defendant’s
Proposed
Construction
a pillow form
requiring being
connected away
from the straight
portion defining a
larger curved
opening (or larger
curvature) than the
horseshoe-shaped
top’s curved
opening.

Court’s
Construction
a J-shaped bottom
having a larger
curvature than the
center portion of
the horseshoeshaped top

Plaintiffs argue the specification clearly shows that the lower end of the body pillow
is J-shaped and that “[p]ersons of ordinary skill in the art of the ‘164 patent commonly
refer to pillow shapes in terms of letters of the alphabet.” Pls.’ Brf. at 21. Plaintiffs further
argue that “[t]here is no language in the specification that clearly set[s] forth the definition
of a ‘J-shaped bottom’ to unambiguously express an intent by Mrs. Leach to define ‘Jshaped’ bottom as anything other than its plain and ordinary meaning.” Pls.’ Resp. at 29.
Defendant argues the letter J “conceivably encompasses a large degree of variation”
and, therefore, the Court must look to the function of the J-shaped end as recited in the
specification, i.e., to accommodate a lower end of the person. Def.’s Brf. at 32. In this
18

regard, Defendant argues the J-shaped bottom “is a term of degree functioning to
accommodate different portions of the user’s legs from her ankles to her thighs . . . .” Id.
at 33; see also Def.’s Resp. at 23 (“[T]he J-shaped bottom is repositionable to
accommodate different portions of the user’s lower end from her thighs (FIG. 7) to her
ankles (FIG. 8).”).
The specification provides that “the J-shaped portion is wider in the horizontal
direction than the height.” 5:19-21. Additionally, the specification states that the “center
portion of the horseshoe-shaped portion” has an opening that is “fairly small and tight as
contrasted with the larger opening or curvature where the straight section curves into the
J-shaped portion.” Id., 25-29 (emphasis added).
The Court finds the proper construction of this claim term is “a J-shaped bottom
having a larger curvature than the center portion of the horseshoe-shaped top.” Such a
construction stays true to the plain language of Claim 1 while addressing the repositioning
component of the body pillow. The specification makes clear that the J-shaped bottom has
a larger opening or curvature than the horseshoe-shaped top.
3.

“a substantially cylindrical straight portion”

No.

Claim Terms

3.

“a substantially
cylindrical straight
portion”

Plaintiffs’
Proposed
Construction
a pillow element
that is straight and
has nearly a circular
cross-section

19

Defendant’s
Proposed
Construction
a pillow form
requiring a straight
and nearly circular
cross-section

Court’s
Construction
a straight and
nearly circular
cross-section

The parties’ only dispute is whether “pillow element” or “pillow form” should be
used. For the reasons set forth above, the Court finds neither phrase is appropriate but
rather superfluous. The Court, therefore, adopts the undisputed portion of the parties’
proposed constructions and finds “a substantially cylindrical straight portion” means “a
straight and nearly circular cross-section.”
4.

“a semi-toroidal member”

No.

Claim Term

4.

“a semi-toroidal
member”

Plaintiffs’
Proposed
Construction
a pillow element
that is a portion of
[the horse-shoe
shaped top] roughly
resembling one-half
of a doughnut shape

Defendant’s
Proposed
Construction
a pillow form
requiring a halfdoughnut shape,
meaning half of a
ring-shape having
concentric inner
and outer semicircular arcs

Court’s
Construction
a portion of the
horseshoe-shaped
top resembling
one-half of a
doughnut shape

The parties do not dispute that the “semi-toroidal” limitation was defined during
prosecution to mean “half-doughnut shape.” Defendant argues its proposed construction
is necessary to “cur[e] the foreseeable deficiency that doughnuts come in different shapes
and sizes” and that “both the PTO and the Plaintiff[s] meant the ordinary, round, type of
doughnut with a hole in the middle.” Def.’s Brf. at 24.
To support its argument, Defendant compares Figure 6 which it argues “clearly
depicts the semi-toroidal member limitation of claim 1” with Figure 9 which Defendant
argues does not establish the semi-toroidal limitation “because it establishes the top of the
curved opening with a straight-line segment instead of a semi-circular arc.” Def.’s Resp.
at 12-13. Figures 6 and 9 are set forth below:
20

Plaintiffs contend Defendant’s addition of the phrase “meaning half of a ring-shape
having concentric inner and outer semi-circular arcs” would confuse, not clarify the
meaning of Claim 1 and that a POSITA would not interpret this language in Claim 1 as
requiring any “mathematical certainty.” Pls.’ Brf. at 31.
Having considered the parties’ arguments, the Court finds Plaintiffs’ construction is
proper and rejects Defendant’s construction as it would add a precision requirement not
present in the ‘164 Patent or its specification and contrary to the manner in which a
POSITA would interpret this claim language. Essentially Defendant asks the Court to read
a requirement into the ‘164 Patent based upon the preferred embodiments which the Court
will not do. See Phillips, 415 F.3d at 1322 (discussing danger of reading limitations from
the specification into the claim and explaining that “[i]t may become clear upon reading
the specification in light of [the purposes of the specification to teach how to make and use
the invention] whether the patentee is setting out specific examples of the invention . . . or
intends for the claims and embodiments in the specification to be strictly coextensive.”).

21

5.

“having a diameter of about 26 to 26 inches”

No.

Claim Term

5.

PLAINTIFFS: “[a
semi-toroidal
member] having a
diameter of about
25 to 26 inches”
DEFENDANT:
“[the horseshoeshaped top
constituting a semitoroidal member]
having a diameter
of about 25 to 26
inches”

Plaintiffs’
Proposed
Construction
[a semi toroidal
member] having a
diameter measured
between the outside
edges of the one
half doughnut
shape at its widest
point, which
diameter is in the
range of
approximately 25 to
approximately 26
inches

Defendant’s
Proposed
Construction
a pillow form
requiring a semitoroidal diameter in
the range of 25.0 to
26.0 inches.
Alternative:
a pillow form
requiring a semitoroidal diameter of
25 to 26 inches
within zero decimal
place rounding,
meaning within a
range of 24.51
inches to 26.49
inches

Court’s
Construction
[a semi-toroidal
member] having a
diameter measured
between the outside
edges of the onehalf doughnut
shape at its widest
point, which
diameter is in the
range of
approximately 25 to
26 inches

With respect to this term, Plaintiffs state, “the parties could not even agree as to the
claim term that needs to be defined, let alone what the resulting definition should be” but
that “at the end of the analysis both parties really only seek the construction in the context
of Claim 1 of ‘having a diameter of about 25 to 26 inches.’” Pls.’ Brf. at 32. The Court
agrees and admonishes the parties for the added confusion the manner of their presentation
of the issue presents.
Plaintiffs argue the diameter at issue is that of the semi-toroidal member of the
horseshoe-shaped top. Plaintiff proposes that the diameter should be measured “between
the outside edges of the one half doughnut shape at its widest point.” Pls.’ Brf. at 35.

22

Defendant argues because “[t]here is no justification for the function of [the]
diameter [of the semi-toroidal member of the horseshoe-shaped top], there is justification
to strictly construe this term to mean ’25.0 to 26.0 inches.’” Def.’s Brf. at 30. Defendant
cites no authority in support or explain why a strict construction is warranted. Instead,
Defendant then points to the prosecution history and the PTO’s interpretation of “about 25
to 26 inches” as meaning “between 25-26 inches.” Id. at 31; see also PH at 65. Defendant
argues that Plaintiffs did not traverse the rejection and challenge the PTO’s interpretation
and, therefore, disclaimed any interpretation other than the PTO’s. Id. But as Plaintiffs
demonstrate, in a telephone interview with the PTO reference was made to the “about 25
to 26 inches,” see PH at 71, and no other evidence exists to demonstrate a clear disavowal
of scope during the prosecution history.
Defendant impermissibly attempts to read out of Claim 1 the word “about” 25 to 26
inches and replace it with the word “between.” The Court finds neither the specification
nor the prosecution history supports Defendant’s proposed construction.

See, e.g.,

Cohesive Tech., Inc. v. Waters Corp., 543 F.3d 1351, 1370 (Fed. Cir. 2008) (“The claim
term ‘about’ cannot be eliminated by the prosecution history, unless [the patentee] made a
clear and unmistakable disavowal of scope during prosecution.” (internal quotation marks
and citation omitted)). Moreover, contrary to Defendant’s proposed construction, use of
the term “about” “avoids a strict numerical boundary to the specified parameter.” Central
Admixture Pharm. Servs., Inc. v. Advanced Cardiac Solutions, P.C., 482 F.3d 1347, 1355
(Fed. Cir. 2007) (internal quotation marks and citation omitted). Finally, Defendant does
not contest Plaintiffs’ argument that measurement of the diameter should be made
23

“between the outside edges of the one half doughnut shape at its widest point.” Thus the
Court adopts Plaintiffs’ proposed construction.
6.

No.
6.

terminating in a foot spaced from the straight portion extending
parallel to the straight portion and forming therewith a curved
opening

Claim Term

Plaintiffs’
Proposed
Construction
[the horseshoePLAINTIFFS:
shaped top
“[the horseshoeconstituting a semishaped top
constituting a semi- toroidal member] . .
toroidal member] . . . and terminating in
. and terminating in an end piece that
lies apart but
a foot spaced from
the straight portion parallel to the
substantially
extending parallel
cylindrical straight
to the straight
portion and forming portion of a body
pillow creating a
therewith a curved
curved opening
opening”
defined by the
substantially
DEFENDANT:
cylindrical straight
[the horseshoeportion, the pillow
shaped top
constituting a semi- element roughly
toroidal member] . . resembling one-half
of a doughnut
. terminating in a
shape, and the end
foot spaced from
the straight portion piece extending
from the pillow
extending parallel
element roughly
to the straight
portion and forming resembling one-half
of a doughnut shape
therewith a curved
opening

Defendant’s
Proposed
Construction
A pillow form
requiring:

Court’s
Construction

a). the semi-toroidal
member
terminating in a
foot spaced from
the straight portion
and extending from
the semi-toroidal
member parallel to,
meaning
equidistantly from,
the straight portion;
and

a). terminating in a
foot spaced from
the straight portion
and extending from
the semi-toroidal
member parallel to
the straight portion
and

b). the semitoroidal member
and the foot
defining a curved
opening with the
straight portion that
is fairly small and
tight as contrasted
with the J-shaped
end’s curved
opening (or
curvature).

The semi-toroidal
member:

b). the semitoroidal member
and the foot
defining a curved
opening with the
straight portion that
is fairly small and
tight as contrasted
with the J-shaped
bottom’s curved
opening (or
curvature).

The parties again fail to agree upon the claim term to be construed. The parties
address the limitations within disputed term 6 separately as follows.
24

a.

“terminating in a foot” limitation

The initial point of contention is whether the “terminating in a foot” limitation refers
to “the horseshoe-shaped top” or “a semi toroidal member.” Plaintiffs argue the limitation
modifies the “horseshoe-shaped top” limitation. Plaintiffs contend this construction is
required due to use of the word “and” as follows: “the horseshoe-shaped top constituting
a semi-toroidal member having a diameter of about 25 to 26 inches and terminating in a
foot spaced from the straight portion extending parallel to the straight portion and forming
therewith a curved opening.” Pls.’ Brf. at 36 (citing ‘164 Patent, 6:13-17).
Defendant, conversely, argues the limitation modifies a semi-toroidal member.
Defendant points to the prosecution history. According to Defendant, when explaining the
first amendment to the Examiner, Plaintiffs placed quotation marks “around everything
that the horseshoe-shaped top constitutes” as follows:
Claim 1 has been further amended to indicate . . . the horseshoe-shaped top
is further defined as constituting “a semi-toroidal member having a diameter
of about 25 to 26 inches and terminating in a foot spaced from the straight
portion and forming therewith a curved opening” . . . .
Def.’s Brf. at 26 (citing PH at Leachco 460). Defendant argues had Plaintiffs intended to
modify something other than a semi-toroidal member, “Plaintiffs would have placed the
ending quotation marks after the inches term instead of after the opening term in its
explanation of its first amendment.” Id.
Plaintiffs point to additional language in the prosecution history – a second
statement by Plaintiffs that follows the statement cited by Defendant and provides:
Claim 1 has now been amended to recite that the horseshoe-shaped top
constitutes “a semi-toroidal member having a diameter of about 25 to 26
25

inches and terminating in a foot spaced from the straight portion and forming
therewith a curved opening.” The foregoing definition of the horseshoeshaped portion clearly defines the present invention over any possible
interpretation of Jacobson.
Pls.’ Resp. at 25 (citing PH, Leachco at 461). Although the quotation marks remain in the
same position, Plaintiffs rely on the sentence which follows the quotations, as bolded and
underlined above.
The Court agrees with Defendant’s construction. The prosecution history reflects
that the “terminating in a foot limitation” modifies the “a semi-toroidal member” limitation.
The prosecution history clarifies the otherwise ambiguous claim language.
b.

extending parallel to the straight portion limitation

The parties further dispute the meaning of the limitation “extending parallel to the
straight portion.” As discussed above, this was a second-added limitation made during the
prosecution of the ‘164 Patent.
Plaintiffs would have the Court substitute the word “extending” as used in Claim 1
and replace it with the word “lies.” Also, Plaintiffs would have the Court substitute the
word “foot” for the phrase “end piece.” Thus, Plaintiffs argue the limitation should be
construed as follows:
[the horseshoe-shaped top constituting a semi-toroidal member] . . . and
terminating in an end piece that lies apart but parallel to the substantially
cylindrical straight portion of a body pillow
Pls.’ Brf. at 35.

26

Defendant argues this limitation should be construed as follows:
the semi-toroidal member terminating in a foot spaced from the straight
portion and extending from the semi-toroidal member parallel to, meaning
equidistantly from, the straight portion
Def.’s Brf. at 28.

Defendant relies upon extrinsic evidence, and points to a dictionary

definition of “parallel,” in support of its proposed construction. See id. at 28 and Ex. 12.
Defendant further relies upon intrinsic evidence and, specifically, Figure 6 of the ‘164
Patent to demonstrate that the foot “extends in a direction that remains equally distanced
from, equidistantly to, the straight portion.” Id.; see also id. at 27 (annotated version of
Figure 6).
Plaintiffs argue that Defendant impermissibly tries to narrow the claim through
reliance upon extrinsic evidence. Fundamentally, Plaintiffs contend the Defendant’s
proposed construction is “too mathematically rigorous for the context of the ‘164 Patent,
especially for a POSITA working with sewn soft goods.” Pls.’ Resp. at 22.
Plaintiffs point to the claim language which does not recite that the foot “is parallel”
nor does it recite that “the inner edge of the foot be parallel to the inner edge of the straight
portion” as Defendant’s construction would require. Pls.’ Resp. at 22. Instead, Plaintiffs
argue that the claim language requires only that the foot “extend[] parallel to the straight
portion.” Id.
Having reviewed the parties’ arguments, the Court finds the “extending parallel to
the straight portion” limitation should be construed as follows: “the semi-toroidal member
terminating in a foot spaced from the straight portion and extending from the semi-toroidal
27

member parallel to the straight portion.” Plaintiff’s construction is rejected because it
attempts to incorporate multiple additional undefined terms: “end piece,” “pillow element”
and “lies apart.” And, Defendant’s additional claim language, “parallel to, meaning
equidistantly from,” narrows the claim in a manner inconsistent with the specification.
c. “curved opening”
Finally, the parties dispute how the “curved opening” limitation should be
construed. Both parties point to the prosecution history which addresses the second
amendment over prior art and the intended purpose served by the curved opening.
In distinguishing the Shaffner prior art, Plaintiffs argued that Shaffner Figure 5 did
not disclose a foot, and in particular, a “foot spaced from the straight portion and forming
therewith a curved opening.” See PH, Leachco at 475. Plaintiffs further argued the second
amendment was not “a mere change in dimensions” but would prevent the lady depicted
in FIGS. 7 and 8 from “slipping off the pillow.” See PH at Leachco 487 (“It is again
respectfully submitted that if the lady in these figures, particularly Figure 7, were to attempt
to employ the pillow of Shaffner, Figure 5, she would slide off the pillow; however, the
foot which extends further downwardly from that shown in Figure 5 of Shaffner, and which
extends in spaced parallel relation with the straight portion 14 to form a curved opening
44, prevents the lady from slipping off the pillow.”).
Defendant argues this prosecution history shows Plaintiffs disclaimed any
interpretation of the curved opening other than what is formed when the foot extends
parallel to the straight portion. Thus, Defendant proposes the curved opening limitation be
construed as follows:
28

the semi-toroidal member and the foot defining a curved opening with the
straight portion that is fairly small and tight as contrasted with the Jshaped end’s curved opening (or curvature)
Def.’s Brf. at 29. Defendant seeks to insert the language from the specification that
describes the “center portion of the horseshoe-shaped portion” as having an opening that
is “fairly small and tight” as contrasted to the “larger opening or curvature where the
straight section 14 curves into the J-shaped portion 12.” See “164 Patent 5: 24-28.
Plaintiffs challenge Defendant’s construction pointing to settled law that claims
must be read in light of the specification, but limitations from the specification may not be
read into the claims. See Phillips, 415 F.3d at 1323; Comark Commc’ns. v. Harris Corp.,
156 F.3d 1182, 1186 (Fed. Cir. 1998). Defendant counters that this settled law is “in perfect
harmony” with another well-settled principle of claim construction, i.e., that the
specification is highly relevant in the claim construction analysis. Def.’s Resp. at 15 (citing
Howmedica, 822 F.3d at 1321 (additional citations omitted)).
In Howmedica, the court relied on the written description to construe “relative
location terms” where the plain and ordinary meaning of the terms were inadequate to
resolve the parties’ dispute and the meaning of the terms were not facially clear such that
a skilled artisan would naturally look to the written description for a full understanding of
the claims. Id. at 1321-22. The court reiterated the “fine line between reading claims in
light of the written description, and importing limitations from the written description” but
deemed it proper, under the circumstances of the case, to construe the unclear claim terms
in light of the written description. Id. at 1322 (emphasis in original).

29

Having considered the parties’ arguments, the Court finds the proper construction
of the curved opening language must consider the prosecution history and specification
with respect to the intended function of the horseshoe-shaped top, i.e., to accommodate an
upper end of a person and prevent the person from falling off the pillow. Resort to the
specification is necessary to determine how the horseshoe-shaped top does this. The
specification demonstrates the comparatively smaller opening of the horseshoe-shaped top
achieves this function. Thus, the Court concludes the claim construction proposed by
Defendant is the proper construction.
7.

“the cross-sectional diameter of the body pillow”

No.

Claim Term

7.

“the cross-sectional
diameter of the
body pillow”

Plaintiffs’
Proposed
Construction
diameter at any
point along the
length of a body
pillow when
bisected by a plane
perpendicular to the
axis of the nearly
cylindrical shape

Defendant’s
Proposed
Construction
indefinite

Court’s
Construction
the diameter at any
point along the
length of a body
pillow when
bisected by a plane
perpendicular to the
axis of the nearly
cylindrical shape

Defendant argues this claim term is indefinite because it lacks a proper antecedent
basis not cured by the specification because it describes several different cross-sectional
diameters. First, Defendant points to reference in the specification to the straight section
of the body pillow as “nearly cylindrical.” See 5:12-14 (“With respect to the straight
section 14, which as indicated heretofore, is nearly cylindrical; actually, the top of section
14 will be slightly closer to the bottom than the side to side dimension.”). Second,
Defendant points to the “ends of the pillow”, i.e., the top and the bottom portions as having
30

“even more different cross sectional diameters.” Def.’s Brf. at 75 (citing 5:17-23) (“With
the desired of [sic] degree of firmness for the pillow 8, the horseshoe-shaped portion 10
will be somewhat flatter, with the top portion thereof being separated from the bottom
portion thereof less than in the section 14 . . . . The same considerations hold true for the
J-shaped portion 12 . . . .”).
Plaintiffs conversely argue that the abstract, specification and prosecution history
support their proposed construction and that a POSITA would understand the meaning of
the term as proposed by Plaintiffs. The abstract provides as follows:
A body pillow having an upper end which is essentially in the shape of a
horseshoe and a lower end which is essentially in the shape of a J, a straight
portion connecting the horseshoe-shaped top with the J-shaped bottom, the
cross-sectional diameter of the body pillow being between 7 and 12 inches.
See ‘641 Patent, Abstract (emphasis added). Plaintiffs also point to the following language
in the Summary of the Invention:
A support pillow having a horseshoe-shaped top and a J-shaped bottom
connected together by a straight section. Preferably, the diameter of the
straight section (this diameter applies to the horseshoe portion and the Jshaped portion as well) is preferably about 8 inches but can be between 6
and 12 inches.
See ‘164 Patent, 2:5-11 (emphasis added). Plaintiffs further argue that with respect to the
remainder of their proposed construction, a POSITA “would know that cylinders have
circular cross-sections and that circles have diameters.” Pls.’ Brf. at 25.
Finally, Plaintiffs point to the prosecution history and argue, the Examiner rejected
aspects of Claim 1 as indefinite but did not reject “cross-sectional diameter” as indefinite.
Plaintiffs reference the PTO’s notes rejecting the claims as obvious over the Jacobson
31

design patent in view of the Kelly patent and stating that the cross-sectional diameter of 712 inches would have been “an obvious matter of design choice.” Id. at 26 (citing PH at
Leachco 453). Plaintiffs claim this statement demonstrates the PTO understood “crosssectional diameter” to be well within the common understanding of a POSITA. Id.
Both parties also point to the proposed constructions of the claim term “a
substantially cylindrical straight portion” as being contradictory to the positions taken with
respect to construction of the claim term “the cross sectional diameter.” Defendant argues
Plaintiffs advocate for a “nearly circular cross section” for the “substantially cylindrical
straight portion” limitation but then argue for that non-circular cross section to have “only
one diameter where the skilled artisan knows it has at least a major and a minor diameter.”
Def.’s Resp. at 24-25. And Plaintiffs argue that Defendant concedes a POSITA would
understand the meaning of “substantially cylindrical straight portion” but then
inconsistently argues that same POSITA would not understand the meaning of “crosssectional diameter of the body pillow.” Pls.’ Resp. at 30.
A claim term is indefinite if it fails, “viewed in light of the specification and
prosecution history, [to] inform those skilled in the art about the scope of the invention
with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910
(2014). “An accused infringer must [ ] demonstrate by clear and convincing evidence” that
a claim term is indefinite. Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776,
783 (Fed. Cir. 2010) (citing Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244,
1249-50 (Fed. Cir. 2008)). The key question is whether the intrinsic evidence provides “a
general guideline and examples sufficient to enable a person of ordinary skill in the art to
32

determine [the scope of the claims].” Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325,
1335 (Fed. Cir. 2010). “[T]he lack of an antecedent basis does not render a claim indefinite
as long as the claim apprises one of ordinary skill in the art of its scope, and therefore,
serves the notice function required by [35 U.S.C. § 112 ¶2].” In re Downing, 754 F. App’x
988, 996 (Fed. Cir. 2018) (internal quotation marks and citation omitted). “Thus, a claim
term that lacks an antecedent basis may, but does not necessarily, render a claim
indefinite.” Id.
The Court finds that Defendant has not presented clear and convincing evidence that
a POSITA would not understand the meaning of the term “the cross-sectional diameter of
the body pillow.” When read in context of the specification and prosecution history, the
term “cross-sectional diameter of the body pillow” would sufficiently inform a POSITA of
the scope of the invention. The Court, therefore, adopts Plaintiffs’ proposed construction.
8.

Constituting

No.

Claim Term

8.

“constituting”

Plaintiffs’
Proposed
Construction
including

Defendant’s
Proposed
Construction
establishing

Court’s
Construction
establishing

Where a patent uses a transitional phrase or word, like constituting, the court must
look to the specification to determine whether open or closed language is intended. Lampi
Corp. v. Am. Power Prods., Inc., 228 F.3d 1365, 1376 (Fed. Cir. 2000). Both parties point
to the same intrinsic evidence, use of the phrase “actually constitutes” in the specification.
See id., 5:22-25. In full context, the sentence in which this phrase appears reads: “[t]he
upper portion of the horseshoe-shaped portion actually constitutes a semi-toroidal member
33

having a diameter of about 25 to 26 inches. Id. (emphasis added). The specification
continues with the following description:
With respect to the center portion of the horseshoe-shaped portion between
the lower foot 15 thereof, the opening is fairly small and tight as contrasted
with the larger opening or curvature where the straight section curves into
the J-shaped portion. A [sic] best shown in Fig. 6, the foot 15 extends parallel
to the straight portion 14 and forms therewith the curved opening 44.
Id., 5:25-31.
Defendant argues the “upper portion” of the horse-shoe shaped top does not include
the foot 15. Thus, to construe “constituting” to mean “including” would be overly broad
and change the meaning of the specification.9
Plaintiffs argue, conversely, that the term “constituting” simply further defines the
horse-shoe shaped top.

Adopting Plaintiffs’ meaning of the word “constituting” as

“including,” the horse-shoe shaped top has at least “a semi-toroidal member, a foot, a
curved opening, and potentially more.” Pls.’ Brf. at 27.
The Court finds the language of the patent supports Defendant’s construction. The
patent states that the upper portion of the horseshoe-shaped portion actually constitutes a
semi-toroidal member. This language is not open-ended as Plaintiffs argue.

9

Defendant also cites to extrinsic evidence, i.e., the dictionary definition of “constituting”, as
meaning “establishing. See Def.’s Brf., Ex. 16. But that same dictionary definition also indicates
“constituting” means “composing”, a term synonymous with Plaintiffs’ advocated construction of
“including.” Id.

34

V.

Conclusion
For the reasons stated, the Court finds the disputed terms of Claim 1 of the ‘164

Patent should be construed as set forth herein. The parties are reminded to abide by the
scheduling deadlines set forth in the Revised Agreed Scheduling Order [Doc. No. 135].
IT IS SO ORDERED this 12th day of June, 2019.

35