KKG LLC v. The Rank Group PLC et al
Filing
178
MEMORANDUM OPINION AND ORDER, denying 144 MOTION for Reconsideration re 131 Order Provisional Opinion and Order filed by KKG LLC. Signed by Judge Rodney Gilstrap on 4/16/13. (mrm, )
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
KKG, LLC,
Plaintiff,
v.
THE RANK GROUP, PLC, d/b/a
REYNOLDS KITCHEND and/or
REYNOLDS GROUP,
REYNOLDS FOIL, INC.,
WALMART, INC.,
AMAZON.COM, INC. and
M&Q PACKAGING
CORPORATION, et al.
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CASE NO. 2:11-cv-00012-JRG
Defendants.
DRAFT MEMORANDUM OPINION AND ORDER
Before the Court are Plaintiff KKG, LLC’s Opening Markman Brief (Dkt. No. 86),
Defendants’ Responsive Claim Construction Brief (Dkt. No. 94), and Plaintiff’s Amended Reply
Brief (Dkt. No. 109).
The Court held a hearing on November 26, 2012, and issued a Provisional Opinion and
Order on November 30, 2012 (Dkt. No. 131).
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Table of Contents
BACKGROUND ............................................................................................................................3
LEGAL PRINCIPLES ..................................................................................................................3
CONSTRUCTION OF AGREED TERMS .................................................................................4
CONSTRUCTION OF DISPUTED TERMS ..............................................................................7
“liner for slow cooking cookware/crock pot liner/liner for a slow cook device/slow cook unit
liner/liner for a slow cooker” .......................................................................................................7
“formable/formed” .......................................................................................................................8
“substantially registers with” .......................................................................................................8
“durable” ......................................................................................................................................9
“flange” ......................................................................................................................................10
“at least one gap”........................................................................................................................10
MOTION FOR RECONSIDERATION ....................................................................................11
CONCLUSION ............................................................................................................................13
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I.
BACKGROUND
Plaintiff asserts United States Patent No. 7,112,764 (“the ’764 Patent”) titled “Disposable
Liner for Cookware,” issued on September 26, 2006, and bears a priority date of February 27,
2003. The ’764 Patent relates generally to the culinary arts, and more specifically, to a cooking
liner for use with a crock pot having a single interior cooking chamber, or like cooking devices.
KKG filed a request for ex parte reexamination of the ’764 Patent on December 6, 2008,
which was granted by the United States Patent and Trademark Office. The reexamination
certificate issued on December 15, 2009 with claims 1, 4, 13, 16-22, 24 and 26 amended, claims
2, 3, 5-12, 14, 15, 23, 25, 30 and 31 intact, and new claims 32-39 added. The constructions of six
groups of terms are in dispute before the Court.
II.
LEGAL PRINCIPLES
It is understood that “[a] claim in a patent provides the metes and bounds of the right
which the patent confers on the patentee to exclude others from making, using or selling the
protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.
Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
(1996).
To ascertain the meaning of claims, courts look to three primary sources: the claims, the
specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent’s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. “One
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purpose for examining the specification is to determine if the patentee has limited the scope of
the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims when the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the court set forth several guideposts that courts should follow when construing claims. In
particular, the court reiterated that “the claims of a patent define the invention to which the
patentee is entitled the right to exclude.” 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words
used in a claim are generally given their ordinary and customary meaning. Id. 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 invention, i.e., as of the effective filing date
of the patent application.” Id. at 1313. This principle of patent law flows naturally from the
recognition that inventors are usually persons who are skilled in the field of the invention and
that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.
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Despite the importance of claim terms, Phillips made clear that “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.” Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as
being the best guide for construing the claims. Id. at 1314-17. As the Supreme Court stated long
ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the doubt or in ascertaining the true intent and
meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
addressing the role of the specification, the Phillips court quoted with approval its earlier
observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998):
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim. The 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.
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the
specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because the file
history, however, “represents an ongoing negotiation between the PTO and the applicant,” it may
lack the clarity of the specification and thus be less useful in claim construction proceedings. Id.
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Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination of
how the inventor understood the invention and whether the inventor limited the invention during
prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys.,
Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee’s statements during
prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”).
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
dictionaries or otherwise) before resorting to the specification for certain limited purposes.
Phillips, 415 F.3d at 1319-24. According to Phillips, reliance on dictionary definitions at the
expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
Phillips emphasized that the patent system is based on the proposition that the claims cover only
the invented subject matter. Id.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
court emphasized that claim construction issues are not resolved by any magic formula. The
court did not impose any particular sequence of steps for a court to follow when it considers
disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the
appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
bearing in mind the general rule that the claims measure the scope of the patent grant.
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III.
CONSTRUCTION OF AGREED TERMS
The Court hereby adopts the following agreed construction:
Term
“ top rim”
IV.
Agreed Definition
“top portion of the liner that can have an
optional, integrally formed flange”.
CONSTRUCTION OF DISPUTED TERMS
The Abstract of the ’764 Patent states:
“A disposable insert or liner conformable to a slow cook cookware (such as, for
example, a conventional crock pot or like slow cooking device) having a single
interior cooking chamber. The liner is adapted to fit within the interior chamber of
a crockpot so as to substantially be in adjacent contact with the crockpot interior
chamber walls without interfering with the operation of the cooking device. The
liner provides a single compartment which may be made of any material allowing
heat conduction between the cookware and the liner. A suitable material may be a
tear resistant aluminum foil to withstand typical food preparation in a crockpot. In
one embodiment, the present invention includes a flange, notches, indentations or
other formations which assist in the insertion and removal of the present invention
in the cookware. The present invention advantageoiusly (sic) provides for a
desirable cooking environment, allows easy removal of food from the crock pot
and provides simplified cleaning of the crock pot.”
A. “liner for slow cooking cookware/crock pot liner/liner for a slow cook device/slow
cook unit liner/liner for a slow cooker” (claims 4, 16, 17, 24, 29, 32, 37)
Plaintiff’s Proposed Construction
No construction needed, or alternatively,
Defendants’ Proposed Construction
“a pre-formed metal foil insert with a defined
structure for use in a slow cook device”
“a material which lines primarily the interior
single chamber or cavity of a utensil, the
utensil being specifically designed to cook
food over a long period of time”
(Dkt. No. 82, 5/18/12 Joint Claim Construction and Pre-Hearing Statement, p. 4.)
Defendants submit the patent specification makes clear that the inventor only
contemplated a defined, pre-formed metal foil insert. (Dkt. No. 94, at 7.) In support, Defendant
argues that every single embodiment discussed in the ’764 patent is pre-formed with a pre-
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defined structure, and the inventor herself agreed that the claimed liner must have a “defined
structure.” (Id. at 11.) However, there is nothing specific to this term that requires the liner to be
a pre-formed metal foil. Indeed, the ’764 Patent’s Abstract expressly states that the liner can be
made of “any material allowing heat conduction between the cookware and the liner.”
The Court therefore hereby construes “liner” to mean “a material which lines
primarily the interior single chamber or cavity”. The following corresponding terms are to be
given their plain and ordinary meaning; “slow cooking cookware,” “crock pot,” “slow cook
device,” “slow cook unit,” and “slow cooker.”
B.
“formable/formed” (all asserted independent claims)
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
[a liner] capable of being shaped into, or fit for, a capable of maintaining its shape / shaped
single chamber or cavity of a utensil, the utensil
being specifically designed to cook food over a
long period of time
(Dkt. No. 82, 5/18/12 Joint Claim Construction and Pre-Hearing Statement, p. 5.)
While both proposals bear in common the notion of taking a shape, Defendants argue the
specification makes clear that the liner is formed into a predefined shape. (Dkt. No. 94, at 14.)
The Court does not find any such limitation appropriate. Rather, the prosecution history
demonstrates that the applicant argued against prior art liners with structure that was “made to
match,” “fitted to the pans,” and was otherwise “preformed.” (Dkt. No. 109, at 7.) Therefore, the
applicant did not intend for the liner to have a predefined structure.
The Court therefore hereby construes “formable/formed” to mean “[a liner] capable of
being shaped into, or fit for, a single chamber or cavity.”
C.
“substantially registers with” (claims 4, 16, 19, 24, 29, 32)
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
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[the liner’s] characteristic of having largely, but merges smoothly with
not wholly correct, relative positioning or
alignment between the liner and the interior single
chamber or cavity surface of a utensil, the utensil
being specifically designed to cook food over a
long period of time
(Dkt. No. 82, 5/18/12 Joint Claim Construction and Pre-Hearing Statement, p. 5.)
Defendants contend the terms “substantially registered with” and “merges smoothly
with” are used interchangeably in the patent, so the interchangeable use of the two terms is akin
to a definition equating the two.” (Dkt. No. 94, at 18, citing Edwards Lifesciences LLC v. Cook
Inc., 582 F.3d 1322, 1329 (Fed. Cir. 2009).) However, the specification in this case does not
consistently use the two terms interchangeably. In fact, the term “merges smoothly with” only
appears once in the specification, in the section for Detailed Description of Exemplary
Embodiments. 3:37. Accordingly, the Court does not find the patentee acted as his own
lexicographer to clearly set forth a definition of the disputed claim term in this instance.
The Court therefore hereby construes “substantially registers with” to mean
“substantially in contact with the interior chamber or cavity.”
D.
“durable” (claims 13, 25, 32)
Plaintiff’s Proposed Construction
[a liner] having the quality of no deterioration
(such as not tearing or melting) over a long
period of time
Defendants’ Proposed Construction
Capable of operation over a long period of
time without any deterioration
(Dkt. No. 82, 5/18/12 Joint Claim Construction and Pre-Hearing Statement, p. 5.)
Defendants contend that during reexamination of the ’764 Patent, the patentee defined
“durable” as “capable of operation over a long period of time without any deterioration,” and that
should be binding in litigation. (Dkt. No. 94, at 20.) Plaintiff responds that during the same
reexamination proceeding, the applicant expressly argued against prior art liners that were not
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“durable” for a variety of reasons, including melting. (Dkt. No. 109, at 6.) On balance, the Court
does not find this term to be ambiguous or clearly defined in either the specification or
prosecution history.
The Court therefore hereby construes the term “durable” to be given its plain and
ordinary meaning.
E.
“Flange” (claims 4, 17, 24, 29)
Plaintiff’s Proposed Construction
[the liner’s edge] having a strengthening rib
Defendants’ Proposed Construction
protrusion
(Dkt. No. 82, 5/18/12 Joint Claim Construction and Pre-Hearing Statement, p. 5.)
Plaintiff argues its proposed construction by pointing to an embodiment in the
specification that a flange “may contain a plurality of ribs such as those found on a traditional pie
plate.” (Dkt. No. 109, at 8.) However, particular embodiments appearing in the specification will
not be read into the claims when the claim language is broader than the embodiments. Electro
Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994). Defendants’
proposed construction is more consistent with the specification’s description of the flange.
The Court therefore hereby construes the term “flange” to mean “protrusion.” As a
matter of claim construction, rolled-up excess liner is not a flange.
F.
“at least one gap” (claims 4, 17, 24, 29, 32, 37)
Plaintiff’s Proposed Construction
[the liner’s edge] having the characteristic of
forming, at a minimum, at least one opening
Defendants’ Proposed Construction
at least one hole
(Dkt. No. 82, 5/18/12 Joint Claim Construction and Pre-Hearing Statement, p. 5.)
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Defendants urge a construction is necessary to make clear that there must be a defined
hole in order to meet the “gap” limitation in the claims. (Dkt. No. 94, at 24.) Defendants also
contend that the patent specification uses the terms “gap” and “hole” interchangeably, which is
equivalent to a definition equating the two. (Id.) Again, the specification in this case does not
consistently use the two terms interchangeably. In fact, the term “hole” appears only once in the
specification, in the Detailed Description of Exemplary Embodiments section. 3:61.
Accordingly, the Court does not find the patentee acted as his own lexicographer to clearly set
forth a definition of the disputed claim term in this instance.
The Court therefore hereby construes “at least one gap” to mean “at least one opening
in the flange.”
V.
MOTION FOR RECONSIDERATION
Before the Court is also Plaintiff’s Motion for Reconsideration of Provisional Opinion
and Order (Dkt. No. 144) regarding the terms “flange” and “at least one gap.” The grounds for
considering a motion for reconsideration under Rule 59(e) include: “(1) an intervening change in
controlling law; (2) the availability of new evidence not previously available; or (3) the need to
correct a clear error of law or prevent manifest injustice.” In re Benjamin Moore & Co., 318 F.3d
626, 629 (5th Cir. 2002). Plaintiff relies on the second and third prongs of Rule 59(e) in its
Motion. (Dkt. No. 144, at 2-3.)
The Court finds that Plaintiff’s Motion does not satisfy the requirements of Rule 59(e) to
justify alteration of the Court’s constructions as finalized herein in this Opinion and Order. “A
Rule 56(e) motion is not a ‘vehicle for rehashing evidence, legal theories, or arguments that
could have been offered or raised before the entry of judgment’ but instead has a ‘narrow
purpose of allowing a party to correct manifest errors of law or fact or to present newly
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discovered evidence.’” Brown v. Baylor Healthcare Sys., 2009 WL 1342933 at *2 (S.D. Tex.
May 11, 2009). KKG has not presented any newly discovered evidence in its Motion. Its
arguments merely point to sections of the ’764 Patent which was clearly before the Court
throughout the Markman process. In addition, KKG’s arguments on reconsideration could have
been offered or raised in its claim construction briefing, during the Markman hearing, or before
entry of the Court’s Provisional Opinion and Order. Reconsideration of claim construction
arguments premised solely on the intrinsic record, which was available at the time of the
Markman hearing, and actually relied on by Plaintiff in asserting its claim construction positions,
is not warranted.
Moreover, Plaintiff has not identified a manifest error of law that warrants
reconsideration of the Court’s Provisional Constructions. Even if reconsideration is granted in
this instance, the Court’s constructions are not affected by KKG’s arguments. Regarding the
term “flange,” the Court found in its Provisional Opinion and Order, and reaffirms here, that as a
matter of claim construction, rolled-up excess liner is not a flange. Plaintiff argues this
construction is incorrect as a matter of law, citing to a sentence in the ’764 Patent specification
that states a flange “may be simply formed into a roll.” 3:51-52. The Court disagrees. The
Court’s finding that rolled-up excess liner is not a flange does not preclude a flange from being
simply formed into a roll. Thus, the Court is not persuaded to change its construction.
Plaintiff also argues a new construction of the term “at least one gap.” (Dkt. No. 144, at
4-5.) However, Plaintiff’s claim differentiation argument as to Claim 39 is of limited weight
because Claim 39 recites other limitations, such as the gap being not adapted to form fit the slow
cooker’s upper perimeter lip. Rembrandt Techs., LP v. Cablevision Sys. Corp., No. 2012-1022,
2012 WL 4017470, at *9 (Fed. Cir. Sept. 13, 2012) (“There is no reason to apply the doctrine of
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claim differentiation, however, where, as here, the district court’s construction does not render
any claim redundant or superfluous.”); Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d
1225, 1233 (Fed. Cir. 2001) (“Claim differentiation, while often argued to be controlling when it
does not apply, is clearly applicable when there is a dispute over whether a limitation found in a
dependent claim should be read into an independent claim, and that limitation is the only
meaningful difference between the two claims.”) (emphasis added). The Court is likewise not
persuaded to deviate from its construction of “at least one gap.” Accordingly, Plaintiff’s Motion
for Reconsideration is hereby DENIED.
VI.
CONCLUSION
.
The Court adopts the constructions set forth in this opinion for the disputed terms of the
’764 Patent. The parties are ordered that they may not refer, directly or indirectly, to each
other’s claim construction positions in the presence of the jury. Likewise, the parties are ordered
to refrain from mentioning any portion of this opinion, other than the actual definitions adopted
by the Court, in the presence of the jury. Any reference to claim construction proceedings is
limited to informing the jury of the definitions adopted by the Court.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 16th day of April, 2013.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
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