Team Worldwide Corporation v. Wal-Mart Stores, Inc. et al
Filing
153
CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER. Signed by District Judge Rodney Gilstrap on 3/15/2018. (ch, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TEAM WORLDWIDE CORPORATION,
Plaintiff,
CIVIL ACTION NO. 2:17-cv-00235-JRG
v.
WAL-MART STORES, INC., et al.,
Defendants.
CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
Before the Court is the opening claim construction brief of Team Worldwide Corporation
(“Plaintiff”) (Dkt. No. 119, filed on January 16, 2018), the response of Defendants Wal-Mart
Stores, Inc., Wal-Mart Stores Texas, LLC, Wal-Mart.com USA LLC, and Sam’s West, Inc., and
Defendant-Intervenors Bestway (USA), Inc., Intex Recreation Corp., Intex Trading Ltd., and The
Coleman Company, Inc. (collectively, “Defendants”) (Dkt. No. 133, filed on January 30, 2018),
and the reply of Plaintiff (Dkt. No. 134, filed on February 6, 2018). The Court held a hearing on
the issues of claim construction and claim definiteness on February 27, 2018. Having considered
the arguments and evidence presented by the parties at the hearing and in their briefing, the Court
issues this Order.
Table of Contents
I.
BACKGROUND ............................................................................................................... 3
II.
LEGAL PRINCIPLES ..................................................................................................... 4
A.
Claim Construction ................................................................................................. 4
B.
Departing from the Ordinary Meaning of a Claim Term ........................................ 6
C.
Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ................... 8
III.
AGREED CONSTRUCTIONS........................................................................................ 8
IV.
CONSTRUCTION OF DISPUTED TERMS ................................................................. 9
A.
B.
“pipe” .................................................................................................................... 14
C.
“pack” ................................................................................................................... 16
D.
“built in,” “built into,” and “permanently held” ................................................... 19
E.
V.
“inflatable body” ..................................................................................................... 9
The dependent claims purportedly indefinite under 35 U.S.C. § 112, ¶ 4. ........... 25
CONCLUSION ............................................................................................................... 28
2
I.
BACKGROUND
Plaintiff alleges infringement of three U.S. Patents: No. 7,246,394 (the “’394 Patent”), No.
7,346,950 (the “’950 Patent”), and No. 9,211,018 (the “’018 Patent”) (collectively, the “Asserted
Patents”). The ’394 Patent and the ’950 Patent are related through priority claims as divisions of
an application filed on June 22, 2001. The ’018 Patent claims priority to an application filed on
April 4, 2000.
In general, the Asserted Patents are directed to technology for inflatable products (e.g., air
mattresses) with built-in air pumps.
The abstract of the ’394 Patent provides:
An inflatable product includes an inflatable body, a fan and motor assembly for
pumping air, a housing built into the inflatable body, and an air conduit disposed at
least in part in the housing. The housing has an interior region. The air conduit is
movable between a first position and a second position, the fan and motor inflating
the inflatable body when the air conduit is in the first position, and deflating the
inflatable body when the air conduit is in the second position. Air flows between
the interior region of the housing and the inflatable body during inflation and
deflation.
The abstract of the ’950 Patent provides:
An inflatable product includes a first chamber, a pack, and a fan and motor received
in the pack. The pack has an air intake connected to the outside of the first chamber
and a first air outlet connected to the inside of the first chamber. A first valve for
opening and closing the first air outlet is received in the pack. Air is pumped by the
fan and motor from the outside of the first chamber through the air intake and the
first valve and then into the first chamber from the first air outlet.
The abstract of the ’018 Patent provides:
An inflatable product includes an inflatable body and an electric pump for pumping
the inflatable body. The electric pump includes a pump body and an air outlet,
wherein the pump body is wholly or partially recessed into the inflatable body and
permanently held by the inflatable body. Preferably, the electric pump includes a
fan and a motor connected to the fan, and the fan is rotated by the motor in a first
direction to pump the inflatable body or in a second direction opposite the first
direction to deflate the inflatable body.
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II.
LEGAL PRINCIPLES
A.
Claim Construction
“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.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d
1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
term is construed according to its ordinary and accustomed meaning as understood by one of
ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption
that claim terms carry their accustomed meaning in the relevant community at the relevant time.”)
(vacated on other grounds).
“The claim construction inquiry … begins and ends in all cases with the actual words of the
claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n
all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at
1314. Other asserted or unasserted claims can also aid in determining the claim’s meaning, because
claim terms are typically used consistently throughout the patent. Id. Differences among the claim
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terms can also assist in understanding a term’s meaning. Id. For example, when a dependent claim
adds a limitation to an independent claim, it is presumed that the independent claim does not
include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive;
it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the court in
interpreting the meaning of disputed claim language, particular embodiments and examples
appearing in the specification will not generally be read into the claims.’” Comark Commc’ns, Inc.
v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced MicroDevices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
improper to read limitations from a preferred embodiment described in the specification—even if
it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim construction
because, like the specification, the prosecution history provides evidence of how the U.S. Patent
and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
However, “because the prosecution history represents an ongoing negotiation between the PTO
and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
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Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
history may be “unhelpful as an interpretive resource”).
Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic record
in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
understand the underlying technology and the manner in which one skilled in the art might use
claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony
may aid a court in understanding the underlying technology and determining the particular
meaning of a term in the pertinent field, but an expert’s conclusory, unsupported assertions as to a
term’s definition are not helpful to a court. Id. Extrinsic evidence is “less reliable than the patent
and its prosecution history in determining how to read claim terms.” Id. The Supreme Court
recently explained the role of extrinsic evidence in claim construction:
In some cases, however, the district court will need to look beyond the patent’s
intrinsic evidence and to consult extrinsic evidence in order to understand, for
example, the background science or the meaning of a term in the relevant art during
the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
(a patent may be “so interspersed with technical terms and terms of art that the
testimony of scientific witnesses is indispensable to a correct understanding of its
meaning”). In cases where those subsidiary facts are in dispute, courts will need to
make subsidiary factual findings about that extrinsic evidence. These are the
“evidentiary underpinnings” of claim construction that we discussed in Markman,
and this subsidiary factfinding must be reviewed for clear error on appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
B.
Departing from the Ordinary Meaning of a Claim Term
There are “only two exceptions to [the] general rule” that claim terms are construed according
to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own
lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the
6
specification or during prosecution.”1 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365
(Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.
Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir.
2014) (“[T]he specification and prosecution history only compel departure from the plain meaning
in two instances: lexicography and disavowal.”). The standards for finding lexicography or
disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
To act as his own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning
of a claim term by including in the specification expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
Some cases have characterized other principles of claim construction as “exceptions” to the general rule, such as the
statutory requirement that a means-plus-function term is construed to cover the corresponding structure disclosed in
the specification. See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
1
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C.
Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)2
Patent claims must particularly point out and distinctly claim the subject matter regarded as
the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence, must
“inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus
Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). If it does not, the claim fails § 112,
¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is determined
from the perspective of one of ordinary skill in the art as of the time the application for the patent
was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of any claim in suit
to comply with § 112 must be shown by clear and convincing evidence. Id. at 2130 n.10.
“[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc. v.
Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
When a term of degree is used in a claim, “the court must determine whether the patent
provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783
F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is
used in a claim, “the court must determine whether the patent’s specification supplies some
standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc., 417
F.3d 1342, 1351 (Fed. Cir. 2005). The standard “must provide objective boundaries for those of
skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
III.
AGREED CONSTRUCTIONS
The parties have agreed to the following constructions set forth in their Patent Rule 4-5(d)
Joint Claim Construction Chart (Dkt. No. 140).
2
The Court refers to the pre-AIA version of § 112 but understands that there is no substantial difference between
definiteness under the pre-AIA version and under the AIA version of the statute.
8
Term3
Agreed Construction
the main part of the pump
“pump body”
’018 Patent Claims 1, 14
“ambient”
outside the inflatable body
’394 Patent Claims 9, 16
Having reviewed the intrinsic and extrinsic evidence of record, the Court agrees with and
hereby adopts the parties’ agreed constructions.
IV.
CONSTRUCTION OF DISPUTED TERMS
A.
“inflatable body”
Plaintiff’s Proposed
Construction
“inflatable body”
a substantially airtight
structure that expands when
’394 Patent Claims 1, 13, 16 filled with air or other gases
’018 Patent Claims 1, 14
Disputed Term
Defendants’ Proposed
Construction
a structure that expands
when filled with air or other
gases
The Parties’ Positions
Plaintiff submits: Its proposed construction comports with the patent-applicant’s definition
and use of the term, the plain meaning of the term as evinced by various dictionaries, and by a
sister court’s construction of the term in a related patent. Dkt. No. 119 at 19–22. During
prosecution of the ’018 Patent, the applicant defined “inflatable body” as “a body that is
substantially airtight and expands when filled with air or other gas.” Id. at 20 (quoting ’018 File
Wrapper November 20, 2006 Reply at 2–3, Dkt. No. 119-7 at 2–3). “Inflatable body” is used in
the Asserted Patents consistent with this definition to refer to airbeds or air mattresses that remain
inflated during use and are purposefully deflated after use. Id. at 20–21. As recognized by a sister
3
For all term charts in this order, the claims in which the term is found are listed with the term but: (1) only the
highest-level claim in each dependency chain is listed, and (2) only claims identified in the parties’ Patent Rule 4-5(d)
Joint Claim Construction Chart (Dkt. No. 140) are listed.
9
court, this definition comports with the term’s plain meaning. Id. at 19–20 (citing MerriamWebster.com, “inflatable”, Dkt. No. 119-8; Intex Reccreation Corp. v. Team Worldwide Corp.,
541 F. Supp. 2d 113, 121 (D.D.C. 2008)). Defendants’ proposed construction would encompass
bodies that expand when filled with air but do not retain the air, which is improper given the airmattress context of the Asserted Patents. Id. at 21.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’394 Patent, at [57] Abstract, figs.1A, 4A,
4C, 4F–5A, 7A, col.3 l.15 – col.8 l.22; ’018 Patent, at [54] Title, [57] Abstract, figs.1A, 6C, 13A,
13B, col.1 ll.23–31, col.1 ll.35–53, col.2 l.60 – col.7 l.25; ’018 Patent File Wrapper November 20,
2006 Reply (Plaintiff’s Ex. 6, Dkt. No.119-7). Extrinsic evidence: Merriam-Webster.com,
“inflatable”4 (Plaintiff’s Ex. 7, Dkt. No. 119-8).
Defendants respond: An “inflatable body,” as the term is used in the Asserted Patents and
under its plain meaning, is not necessarily “substantially airtight.” Dkt. No. 133 at 6–13. For
example, the ’018 Patent describes an airbed that deflates when the air pump is removed, so that
airbed is not substantially airtight. Id. at 7 (citing ’018 Patent col.3 ll.16–18). Indeed, the inflatable
bodies recited in the ’394 and ’018 Patents necessarily have a hole through which the pump
provides air to inflate the body, so the body is not substantially airtight. Id. at 8–9. As evinced by
references in analogous art, “inflatable body” may refer to bodies, including airbeds, that are
designed to leak. Id. at 10–13 (citing, inter alia, U.S. Patent No. 5,794,289). Finally, the meaning
of “a substantially airtight structure” is not clear and therefore the phrase should not be used to
construe a claim. Id. 13–15. It is either an unbounded term of degree, id. at 13–14, or it means
4
https://www.merriam-webster.com/dictionary/inflatable
10
nothing more than “a structure that expands when filled with air,” id. at 14–15 (citing ’018 Patent
File Wrapper November 20, 2006 at 5, Dkt. No. 133-12 at 7).
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’394 Patent, at [57] Abstract, figs.1A, 4A,
col.3 l.17; ’018 Patent, at [57] Abstract, figs.2, 14, 15, col.1 ll.35–52, col.3 ll.15–21, col.3 ll.58–
60, col.5 ll.46–48, col.5 ll.53–58, col.6 l.55 – col.7 l.2; ’018 Patent File Wrapper August 22, 2006
Office Action at 2–3 (Defendants’ Ex. K, Dkt. No. 133-11 at 4–5), November 20, 2006 Reply at 5
(Defendants’ Ex. L, Dkt. No. 133-12 at 7), September 4, 2015 Amendment (Defendants’ Ex. A,
Dkt. No. 133-1 at 2–8), November 20, 2015 Notice of Allowability (Defendants Ex. A, Dkt. No.
133-1 at 10); U.S. Patent No. 5,794,289 (Defendants’ Ex. B, Dkt. No. 133-2); U.S. Patent No.
5,068,933 (Defendants’ Ex. J, Dkt. No. 133-10). Extrinsic evidence: McGraw-Hill Dictionary of
Scientific and Technical Terms 959 (4th ed. 1989), “inflated” (Defendants’ Ex. D, Dkt. No. 133-4
at 5); The New Shorter Oxford English Dictionary 1363 (1993), “inflate” (Defendants’ Ex. E, Dkt.
No. 133-5 at 4); Merriam-Webster.com, “inflatable”5 (Plaintiff’s Ex. 7, Dkt. No. 119–8); U.S.
Patent No. 6,698,046 (Defendants’ Ex. C, Dkt. No. 133-3); U.S. Patent No. 3,653,083
(Defendants’ Ex. F, Dkt. No. 133-6); U.S. Patent No. 4,197,837 (Defendants’ Ex. G, Dkt. No.
133-7); U.S. Patent No. 5,564,963 (Defendants Ex. H, DKT. NO. 133-8); U.S. Patent No.
4,225,989 (Defendants’ Ex. I, Dkt. No. 133-9).
Plaintiff replies: The applicant’s prosecution-history definition of “inflatable body”
governs. Dkt. No. 134 at 4–5. This definition is not ambiguous despite its inclusion of
“substantially airtight.” Rather, “substantially airtight” properly conveys that although designed to
5
https://www.merriam-webster.com/dictionary/inflatable
11
be airtight, the inflatable body of the Asserted Patents will, like all inflated plastic bodies,
experience some leakage. Id. at 5–6.
Analysis
There are two issues in dispute. First, whether the patentee defined “inflatable body” in part
by requiring the body be substantially airtight. Second, whether inclusion of “substantially
airtight” in the construction of the term renders the term ambiguous. The Court holds that
“inflatable body” was defined during prosecution, that definition governs, and Defendants have
failed to establish that any claim is rendered indefinite by that definition despite the definition’s
inclusion of “substantially airtight.”
During prosecution of the ’018 Patent, the applicant explicitly explained the meaning of
“inflatable body” as the term is used in the patent:
Although the term “inflatable body” is not expressly defined in the specification, it
is clearly used in its ordinary and customary sense, i.e., a body that is substantially
airtight and expands when filled with air or other gas. … The embodiments in the
specification are airbeds, and these are without question the characteristics of
airbeds. This definition is also wholly consistent with and supported by the way in
which the term “inflatable” is defined in the American Heritage Dictionary of the
English Language, 4th Edition, namely, “[d]esigned to be filled with air or gas
before use: an inflatable mattress.” The term “inflate” is defined as “[t]o fill
(something) with air or gas so as to make it swell.”1 The term “body” is defined as
“[a] mass of matter that is distinct from other masses: a body of water; a celestial
body.” It is also defined as “[t]he main or central part.” A characteristic of an
inflatable mattress that swells when filled with air or other gas is that it must be
substantially airtight. This definition comports with the use of the term “airbed”
throughout the specification. Thus, when given its plain meaning, the claim term
“inflatable body” refers to a substantially airtight structure that expands (or
swells) when filled with air or other gas. Stated differently, the structure of an
“inflatable body” must be substantially airtight and expand when filled with
air or other gas.…
Also see Random House Webster’s Unabridged Dictionary, Second Edition,
inflatable: “capable of being inflated; designed or built to be inflated before use”;
inflate: "to cause to expand or distend with air or gas."
1
12
’018 File Wrapper November 20, 2006 Reply at 2–3 (bold emphasis added), Dkt. No. 133-12 at
4–5. The applicant’s explanation is definitional: an “inflatable body” is “a substantially airtight
structure that expands (or swells) when filled with air or other gas.” The applicant’s definition
governs.
The inclusion of “substantially airtight” in the construction does not render the meaning of the
term less than reasonably certain. First, the patentee explains the operational steps and features to
prevent the airbed from leaking after filling it with air. See, e.g., ’018 Patent col.3 ll.15–16 (“The
O-ring 242 in the socket 24 prevents the airbed from leaking.”), col.4 ll.46–47 (“After the airbed
80 is filled with air, the user closes the nozzle with the cover 85 to prevent the airbed from
leaking.”). The disclosed technological purpose (use as an airbed) constrains “substantially
airtight.” See Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326–27
(Fed. Cir. 2007) (noting that a term of degree may be understood with reference to the technology).
Second, the applicant did not equate “substantially airtight” with a structure that expands when
being filled with air. Rather, the applicant explained that a body that is not substantially airtight
will not expand when filled, it would “communicate[] with the ambient”—it would leak. ’018 File
Wrapper November 20, 2006 Reply at 5, Dkt. No. 133-12 at 7. As explained by the applicant, a
body is “inflatable” when it is “designed to be filled with air or gas before use” or “designed or
built to be inflated before use,” like an air mattress. Id. at 2–3, Dkt. No. 133-12 at 4–5. This
suggests that the use of the body requires the body to first be inflated and that a body is substantially
airtight if it is designed to retain the air (or other gas) used to inflate it. Defendants have failed to
carry their burden to establish that “substantially airtight” in the applicant’s definition renders any
claim indefinite.
Accordingly, the Court construes “inflatable body” as follows:
13
“inflatable body” means “substantially airtight structure that expands when filled
with air or other gases.”
“pipe”
B.
Disputed Term
“pipe”
Plaintiff’s Proposed
Construction
plain and ordinary meaning
’394 Patent Claims 4, 13, 19
Defendants’ Proposed
Construction
a hollow body for
conveying air or other gases
The Parties’ Positions
Plaintiff submits: “Pipe” is used in the Asserted Patents according to its plain and readily
accessible meaning. Dkt. No. 119 at 24–25. There is nothing in the intrinsic record that suggests a
different meaning. Id.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’394 Patent, at [57] Abstract, figs.2A–2C,
3A–3D, 5A, col.3 l.46 – col.4 l.38, col.5 ll.48–64, col.8 ll.14–22. Extrinsic evidence: MerriamWebster.com, “pipe”6 (Plaintiff’s Ex. 8, Dkt. No. 119-9 at 1); McGraw-Hill Dictionary of
Mechanical and Design Engineering 251 (3d ed. 1984), “pipe” (Defendants’ Ex. M, Dkt. No.
133-13 at 4).7
Defendants respond: In the Asserted Patents, a “pipe” is a hollow body that conveys air but is
not limited to a specific structure or shape. Dkt. No. 133 at 16–19. Specifically, the “pipe” of the
patents is not necessarily a “long tube or hollow body.” Id.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’394 Patent figs.2A–2C, 3A, col.3 ll.46–
6
https://www.merriam-webster.com/dictionary/pipe
Plaintiff cites the dictionary definitions provided in the parties’ Patent Rule 4-3 Joint Claim Construction and PreHearing Statement, Dkt. No. 83-1 at 4.
7
14
57, col.3 ll.61–67, col.4 ll.13–16, col.4 ll.35–38. Extrinsic evidence: Merriam-Webster.com,
“pipe”8 (Plaintiff’s Ex. 8, Dkt. No. 119-9 at 1); McGraw-Hill Dictionary of Mechanical and
Design Engineering 251 (3d ed. 1984), “pipe” (Defendants’ Ex. M, Dkt. No. 133-13 at 4).
Plaintiff replies: Defendants’ proposed construction is improperly broad. Dkt. No. 134 at
6–7. Not every hollow body is a pipe. Id.
Analysis
The issue in dispute is whether “pipe” in the ’394 Patent carries a broader meaning than its
ordinary and customary meaning. It does not. A pipe is not simply any hollow body.
“Pipe” is used in the ’394 Patent according to the term’s ordinary and customary meaning.
Specifically, the term refers to tubular bodies. See, e.g., ’394 Patent figs.2A–2D, col.3 l.46 – col.4
l.12 (describing a pipe system comprising an assembly of straight tubes used to convey air);
figs.3A–3D, col.4 ll.13–38 (describing a pipe comprising a bent tube used to convey air). This
usage comports with the dictionary definitions of record. McGraw-Hill Dictionary of Mechanical
and Design Engineering 251 (3d ed. 1984) (“A tube made of metal, clay, plastic, wood, or concrete
and used to conduct a fluid, gas, or finely divided solid.”), Dkt. No. 133-13 at 4; MerriamWebster.com, “pipe”9 (“a long tube or hollow body for conducting a liquid, gas, or finely divided
solid or for structural purposes” and “a tubular or cylindrical object, part, or passage”), Dkt. No.
119-9 at 1. Defendants have simply not identified any special usage of “pipe” that warrants straying
from its ordinary and customary meaning.
While the plain meaning of “pipe” is apparent in the context of the patent, the Court notes that
the dictionaries of record provide diverse definitions of the term. To reduce any residual ambiguity
in the meaning of “pipe,” the Court adopts the most applicable definition. Given that the claims
8
9
https://www.merriam-webster.com/dictionary/pipe
https://www.merriam-webster.com/dictionary/pipe
15
specifically recite the pipe may be used to convey or conduct air, see, e.g., ’394 Patent col.8 l.58
(“the air conduit is a pipe”), it would be redundant to include an air-conveyance requirement in
the definition of “pipe.” Thus, of the dictionary definitions of record, the Court finds that “a tubular
or cylindrical object, part, or passage” most accurately captures the use of “pipe” in the patent.
Merriam-Webster.com, “pipe,” Dkt. No. 119-1 at 1.
Accordingly, the Court construes “pipe” as follows:
C.
“pipe” means “a tubular or cylindrical object, part, or passage.”
“pack”
Disputed Term
“pack”
’950 Patent Claim 1
Plaintiff’s Proposed
Construction
a self-contained unit that
contains the pump
components
Defendants’ Proposed
Construction
plain and ordinary meaning
The Parties’ Positions
Plaintiff submits: The term “pack” has multiple plain meanings, thus a “plain and ordinary
meaning” construction does not suffice. Dkt. No. 119 at 25–27. For example, the plain meaning
of “pack,” divorced from the context of the Asserted Patents, may connote something that is carried
or simply a collection of things tied together. Id. In the context of the patents, however, the “pack”
refers to the self-contained collection of pump components that is built into the airbed. Id. It does
not include external components. Id. at 26–27.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’950 Patent, at [57] Abstract, figs.4A-4C, 4F,
7A–7D, 8A–8C, col.1 ll.33–46, col.3 ll.10–15, col.5 ll.1–17, col.6 ll.42–67, col.7 ll.8–25, col.8
ll.45–53. Extrinsic evidence: The New Shorter Oxford English Dictionary 2065–66 (1993),
16
“pack” (Defendants’ Ex. E, Dkt. No. 133-5 at 7–8); The American Heritage Dictionary of the
English Language 1261 (4th ed. 2000), “pack” (Defendants’ Ex. N, Dkt. No. 133-14 at 5).10
Defendants respond: The “pack” of the claims is in large part defined by express limitations
in the claims and therefore need not be construed beyond its plain and ordinary meaning. Dkt. No.
133 at 19–20. Plaintiff’s proposed construction is improperly narrow as “pack” is used in the ’950
Patent to refer to items other than the air pump assembly. Id. at 21 (noting the “control packs”
described at ’950 Patent fig.7A, col.6 ll.44–47). Further, Plaintiff’s proposed construction
threatens to read out the exemplary embodiments delineating features of the pack as internal and
external. Id. at 21–23 (noting, inter alia, the delineation between the air intake/outlet features of
the pack and various “internal” pack features described at ’950 Patent figs.4B-4C, col.5 ll.7–17).
That is, the exemplary packs have “external” features. Id.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’950 Patent figs.4A-4F, 7A–7C, 8A–8C,
col.1 ll.34–46, col.5 ll.1–26, col.6 ll.42–67, col.7 ll.8–33. Extrinsic evidence: The New Shorter
Oxford English Dictionary 2065–66 (1993), “pack” (Defendants’ Ex. E, Dkt. No. 133-5 at 7–8);
The American Heritage Dictionary of the English Language 1261 (4th ed. 2000), “pack”
(Defendants’ Ex. N, Dkt. No. 133-14 at 5); Dictionary.com, “pack”11 (Plaintiff’s Ex. 9, Dkt. No.
119-10).
Plaintiff replies: The air intake and outlet features of the pack are expressly recited as part of
the pack in Claim 1 of the ’950 Patent. Dkt. No. 134 at 7–8. Further, instances of “control pack”
used to describe features of the exemplary embodiments other than the air pump assembly is
Plaintiff cites the dictionary definitions provided in the parties’ Patent Rule 4-3 Joint Claim Construction and PreHearing Statement, Dkt. No. 83-1 at 5.
11
http://www.dictionary.com/browse/pack
10
17
irrelevant to the construction of the “pack” of the claims that is proposed for construction. Id. at 8.
The claims explicitly require that a fan and motor are disposed inside the pack. Id.
Analysis
The issue in dispute is whether “pack” is used in the ’950 Patent to specially denote “a selfcontained unit that contains the pump components.” It is not.
The Court agrees with Defendants that “pack” is predominantly defined by the claim language
itself. Indeed, Claim 1 of the ’950 Patent provides significant detail on the “pack”:
1. An inflatable product, including:
a first chamber comprising a chamber wall;
a pack having an interior region, an air intake communicating the interior
region to the outside of the first chamber and a first air outlet communicating
the interior region to the inside of the first chamber, wherein the pack is built
in the chamber wall and extends into an interior of the first chamber;
a first valve for opening and closing the first air outlet, wherein the first valve
is connected to the pack; and
a fan and motor disposed in the interior region of the pack, wherein, on
activation of the fan and motor to inflate the first chamber, air is pumped from
outside of the first chamber through the air intake into the interior region of
the pack, then through the first valve and first air outlet into the first chamber.
’950 Patent col.8 l.55 – col.9 l.3 (emphasis added). Claim 2 provides more detail: “the pack further
having a second air outlet.” Id. at col.9 ll.5–6. Claim 13 provides “the pack comprises a pack wall
exposed to the outside of the first chamber, and the air intake communicates the outside of the first
chamber to the interior region of the pack through the pack wall.” Id. at col.10 ll.21–24. See also,
’950 Patent col.5 ll.1–26 (describing a “pack” as having a “wall” and an “interior region” and with
“a fan and motor … received in the pack”). There is nothing to suggest that the pack is specially
defined as “a self-contained unit.” A “self-contained unit” suggests that the pack inherently
includes all the necessary components. If this were true, however, there would be no need to recite
components such as the air intake and air outlet. Nor would there be a need to separately recite the
“fan and motor disposed in the … pack” if “pack” necessarily includes the pump components.
18
Rather, “pack” refers to a container with features and contents as recited in the claims: it has an
interior region, an air intake, an air outlet, and a fan and motor are disposed within the pack.
Simply, the pack is the container recited in the claims.
Accordingly, the Court construes “pack” as follows:
“pack” means “container.”
“built in,” “built into,” and “permanently held”
D.
Disputed Term
Plaintiff’s Proposed
Construction
Defendants’ Proposed
Construction
plain and ordinary meaning
integral and not removable
plain and ordinary meaning
not removable
not indefinite
indefinite
“built in”
’950 Patent Claim 1
“built into”
’394 Patent Claims 1, 13, 16
’018 Patent Claims 1, 14
“permanently held”
’018 Patent Claim 1
“wherein the pump body is built
into the exterior wall … and
wherein the pump body is
permanently held by the
inflatable body”
’018 Patent Claim 1
The Parties’ Positions
Plaintiff submits: These terms are used in the Asserted Patents, and in their prosecution
histories, according to their plain meanings and the meanings are readily accessible to the jury
without construction. Dkt. No. 119 at 22–24, 28. The terms “integral” and “not removable” do not
appear in the patent, are less accessible than the issued claim language, and threaten to improperly
alter claim scope. Id. Specifically, “not removable” suggests a permanence not supported by the
19
description of the preferred embodiments—which include airbeds with plastic walls which can be
readily cut to remove a feature “built into” or “permanently held” by the wall. Id. at 23–24, 28.
In addition to the claims themselves, Plaintiff cites the following intrinsic evidence to support
its position: ’394 Patent, at [57] Abstract, fig.4A, col.1 ll.25–28, col.4 ll.39–45, col.8 ll.14–22;
’950 Patent, at [57] Abstract, fig.4A, col.1 ll.24–27, col.5 ll.1–6, col.8 ll.45–53; ’018 Patent, at
[57] Abstract, figs.2, 4, 8A, 9A, 13A–13B, 15, col.1 ll.37–40, col.2 ll.62–64, col.3 ll.22–25, col.4
ll.14–16, col.5 ll.8–11, col.7 ll.3–7, col.7 ll.18–25; ’018 Patent File Wrapper July 1, 2008 Response
(Plaintiff’s Ex. 5, Dkt. No. 119-6 at 1–3), October 30, 2009 Appeal Brief (Plaintiff’s Ex. 5, Dkt.
No. 119-6 at 4–8); March 2, 2010 Reply (Plaintiff’s Ex. 5, Dkt. No. 119-6 at 9–16).
Defendants respond: The terms “built in” and “permanently” are used in the Asserted Patents
to denote connections between features that are not temporary; that is, a feature is “built in” or
“permanently” connected to another feature if it is not detachable. Dkt. No. 133 at 24–27 (citing
’018 Patent col.2 ll.62–64, col.3 ll.11–13. col.3 ll.16–18). This is how the applicant distinguished
prior art in prosecuting the ’018 Patent, explaining that a “removable,” “non-integral” pump that
is “temporarily connected” to the inflatable body is not “built into” the inflatable body. Id. at 25–
27 (citing ’018 Patent File Wrapper March 2, 2010 Reply at 18, 21–22, Dkt. No. 133-16 at 19, 22–
23). Further, Claim 1 of the ’018 Patent is indefinite because two recited limitations are not distinct,
and redundancy of claim limitations is fatal to the claim. Id. at 28–29 (citing Skyhook Wireless,
Inc. v. Google, Inc., No. 10-11571-RWZ, 2012 U.S. Dist. LEXIS 131403, at *38 (D. Mass. Sep.
14, 2012)). Specifically, “the pump body is built into the exterior wall” and “the pump body is
permanently held by the inflatable body” each identically require that the pump body is not
removable from the inflatable body, so one of the terms is improperly superfluous and it therefore
renders the meaning of the claim uncertain. Id.
20
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position:’018 Patent figs.8–15, col.2 ll.62–64, col.3 ll.11–13, col.3 ll.16–18, col.3
ll.24–25, col.4 l.16, col.5 l.10, col.7 ll.3–7; ’018 Patent File Wrapper October 30, 2009 Appeal
Brief at 20, 22 (Defendants’ Ex. Q, Dkt. No. 133-17 at 21, 23), March 2, 2010 Reply at 18, 21–22
(Defendants’ Ex. P, Dkt. No. 133-16 at 19, 22–23); U.S. Patent No. 6,237,653 (Defendants’ Ex. O,
Dkt. No. 133-15).
Plaintiff replies: During prosecution, the applicant distinguished something that is “built in”
from something that is readily removed, analogizing the detachable pump of the prior art with a
gas pump and noting that a gas pump is not “built in” a car when temporarily connected to the car
when refueling. Dkt. No. 134 at 9. Defendants’ proposed “not removable” suggests something
more. Id. at 9–10. In Claim 1 of the ’018 Patent, the “built into” limitation relates to the placement
of the pump in the exterior wall—the pump body is built into the wall—and the “permanently
held” limitation relates to the attachment of the pump to the inflatable body as a whole—the pump
body is permanently held by the inflatable body. Id. at 10–11. Thus, the terms are not redundant.
Further, even if the terms expressed similar concepts, that does not render the claim indefinite as
“it is not unknown for different words to be used to express similar concepts.” Id. at 11 (quoting
Bancorp Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1373–74 (Fed. Cir. 2004))
Plaintiff cites further intrinsic evidence to support its position:’018 Patent File Wrapper July
1, 2008 Response (Plaintiff’s Ex. A, Dkt. No. 134-2), October 30, 2009 Appeal Brief at 20, 22
(Defendants’ Ex. Q, Dkt. No. 133-17 at 21, 23), July 27, 2012 Examiner’s Answer (Plaintiff’s
Ex. B, Dkt. No. 134-3), May 8, 2015 Decision on Appeal (Plaintiff’s Ex. C, Dkt. No. 134-4).
21
Analysis
There are three main issues in dispute. First, whether a pump that is “built in” or “built into”
an inflatable body or the wall of the body is necessarily “not removable” from the body or wall.
Second, whether “permanently held” is strictly synonymous with “not removable.” Third, whether
“pump body built into the exterior wall [of the inflatable body]” and “pump body is permanently
held by the inflatable body” are redundant limitations and thereby render Claim 1 of the ’018
Patent indefinite. With respect to the first issue, the Court rejects Defendants’ “not removable”
limitation. With respect to the second issue, the terms are not strictly synonymous. With respect
to the third issue, Defendants have not established that Claim 1 of the ’018 Patent is invalid because
of redundant limitations.
The terms “built in” and “built into” are used in the Asserted Patents according to their plain
and ordinary meanings—to denote that a
feature “built into” an object is integrated
into the object as expressed in the ’018
Patent, there is a distinction between
something that is “built in” and
something that is
example,
the
detachable. For
patent
provides
the
following with reference to Figure 2
(reproduced here): “Referring to FIG. 2, an airbed 26 of a first embodiment of the present invention
is provided with a detachable electric pump 20, a built-in battery case 22 and a built-in socket 24.”
’018 Patent col.2 ll.62–63. Figure 2 depicts the case 22 and socket 24 as integrated into the airbed
26 and the pump 20 as separate and distinct from the airbed. Similarly, the applicant explained
22
during the course of prosecution that a “separate, distinct, non-integral” pump that is only
temporarily attached to the inflatable body is not “built into” the wall of the inflatable body. ’018
File Wrapper March 2, 2010 Reply at 18, 21, Dkt. No. 133-16 at 19, 22. This comports with the
plain meaning of “built in” and “built into”; namely, integrated into and not detachable from.
A feature is “built into” or “built in” an object if the feature is not readily removed without
changing its character. It is not clear whether Defendants use “not removable” synonymously with
“not detachable.” It is, however, clear from the prosecution history that the applicant’s use of
“remove” and its variants is synonymous with “detach.” See id. Based on the use of “detachable”
in the ’018 Patent, the Court understands “detachable” to mean readily detached. For example,
with reference to the operation of the detachable pump shown in Figure 2, the ’018 Patent provides:
In operation, batteries are loaded into the battery case 22. The electric pump 20 is
fitted into the socket 24 and then rotated so that the electrode 202 of the electric
pump 20 physically contacts the electrode 242 of the socket 24. Then, the electric
pump 20 is actuated to pump outside air into the airbed 26 as shown in FIG. 3A.
The O-ring 242 in the socket 24 prevents the airbed 26 from leaking. In deflating
operation, the user detaches the electric pump 20 from the socket 24 to deflate the
airbed 26, as shown in FIG. 3B.
’018 Patent col.2 l.62 – col.3 l.18. Attaching and detaching the pump is a straightforward operation
of the airbed that may be performed repeatedly in ordinary use of the airbed. The pump is
detachable because it can be removed without changing the characteristics of the pump or the
airbed. To the extent that Defendants contend “built in” and “built into” require something more
than integrated and not detachable, the Court rejects Defendants proposed construction.
The term “permanently held,” while necessarily including a non-detachable connotation, is
not strictly synonymous with non-detachable. For example, “held” suggests more than “attached”
(and therefore more than “not detachable”). It suggests a level of a support or fixation that
“attached” does not. See, e.g., Dictionary.com, “hold” (“keep fast,” “grasp,” and “to bear, sustain,
23
or support”).12 Likewise, “permanently” held suggests something more lasting than simply not
detachable, such as glued or welded versus screwed or bolted. Thus, while a pump “permanently
held by the inflatable body” is necessarily not detachable from the body, a pump that is not
detachable is not necessarily permanently held. The Court therefore rejects Defendants’ proposed
construction.
The Court agrees with Plaintiff that there is a distinction between “wherein the pump body is
built into the exterior wall” and “wherein the pump body is permanently held by the inflatable
body.” As just explained, “permanently held” connotes something other than integrated and not
detachable.13
Accordingly, the Court holds that Defendants have not proven Claim 1 of the ’018 Patent is
indefinite. The Court further rejects Defendants’ proposed constructions, and determines that
“built in,” “built into,” and “permanently held” each has its plain and ordinary meaning and need
not be further construed.
12
http://www.dictionary.com/browse/hold
The Court disagrees that redundancy of limitations in a claim necessarily renders the claim invalid. For example,
the Federal Circuit has held that “[a] ‘whereby’ clause that merely states the result of the limitations in the claim adds
nothing to the patentability or substance of the claim.” Tex. Instruments Inc. v. U.S. Int'l Trade Comm’n, 988 F.2d
1165, 1172 (Fed. Cir. 1993) (emphasis added). That is, such a limitation is redundant but instead of the redundancy
resulting in an invalid claim, the redundant limitation has no effect on patentability precisely because it is redundant.
Similarly, in the context of determining whether a limitation recited in a dependent claim is merely redundant of a
limitation found in an independent claim, the Federal Circuit has noted: “Claim differentiation is a guide, not a rigid
rule. If a claim will bear only one interpretation, similarity will have to be tolerated.” ICU Med., Inc. v. Alaris Med.
Sys., 558 F.3d 1368, 1376 (Fed. Cir. 2009) (quoting Autogiro Co. of Am. v. United States, 384 F.2d 391, 404 (Ct. Cl.
1967)) (emphasis added). Taken in this light, the Federal Circuit’s canon that claims should be construed “with an eye
toward giving effect to all of their terms,” Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 781 (Fed.
Cir. 2010), should not be taken as a hard and fast rule that will render claims indefinite if necessarily violated. Rather,
if there is only one reasonable interpretation of a claim then the meaning of the claim is reasonably certain, even with
redundant terms. See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014) (35 U.S.C. § 112, ¶ 2
requires that the claims “inform those skilled in the art about the scope of the invention with reasonable certainty”
(emphasis added)).
13
24
E.
The dependent claims purportedly indefinite under 35 U.S.C. § 112, ¶ 4.
Disputed Term
“The inflatable product as
claimed in claim 1, wherein
air flows from the interior
region of the housing into the
inflatable body when the air
conduit is in the first
position.”
indefinite
not indefinite
indefinite
not indefinite
indefinite
’394 Patent Claim 7
“The inflatable product as
claimed in claim 16, wherein
air flows from the interior
region of the housing into the
inflatable body when the air
conduit is in the first
position.”
not indefinite
’394 Patent Claim 3
“The inflatable product as
claimed in claim 1, wherein
the air conduit is arranged to
convey air pumped by the fan
55 and motor assembly.”
Defendants’ Proposed
Construction
indefinite
’394 Patent Claim 2
“The inflatable product as
claimed in claim 1, wherein
air flows from the inflatable
body into the interior region
of the housing when the air
conduit is moved to the
second position.”
Plaintiff’s Proposed
Construction
not indefinite
’394 Patent Claim 17
25
Disputed Term
“The inflatable product as
claimed in claim 16, wherein
air flows from the inflatable
body into the interior region
of the housing when the air
conduit is moved to the
second position.”
Defendants’ Proposed
Construction
indefinite
not indefinite
indefinite
’394 Patent Claim 18
“The inflatable product as
claimed in claim 1, wherein
the pump body is located in
the inflatable body.”
Plaintiff’s Proposed
Construction
not indefinite
’018 Patent Claim 12
Because the parties’ arguments and proposed constructions with respect to these terms are
related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits: Defendants’ indefiniteness position is not based on any purported lack of
meaning of the claims and Court should therefore find the claims are not indefinite or decline to
rule on Defendants’ indefiniteness contentions at the claim-construction stage. Dkt. No. 119 at 29–
34.
Defendants respond: These claims are invalid under 35 U.S.C. § 112, ¶ 4 because they depend
from other claims but do not “specify a further limitation of the subject matter claimed” in those
other claims. Dkt. No. 133 at 32 (quoting 35 U.S.C. § 112, ¶ 4 (Defendants’ emphasis) and citing
Pfizer Inc. v. Ranbaxy Labs., 457 F.3d 1284, 1291 (Fed. Cir. 2006)).
Plaintiff replies: The challenged claims provide further limitations to the claims from which
they depend and therefore comply with § 112, ¶ 4. Dkt. No. 134 at 12–13. Specifically Claims 2,
3, 7, 17, and 18 of the ’394 Patent include limitations regarding the direction and path of air flow
26
not found in Claims 1 and 16. Id. at 13. Claim 12 of the ’018 Patent requires that the pump body
be “located in” the inflatable body, which is a distinct concept from Claim 1’s requirements that
the pump body be “built into” an exterior wall of the body and that it be “permanently held” by
the inflatable body. Id. at 12 –13. These differences in claim scope, however slight, are sufficient
to satisfy § 112, ¶ 4. Id. (citing Traxxas LP v. Hobby Prods. Int'l, No. 2:14-CV-945-JRG-RSP,
2015 U.S. Dist. LEXIS 114148, at *49–58 (E.D. Tex. Aug. 27, 2015)).
Plaintiff cites further extrinsic evidence to support its position: Dictionary.com, “hold.”14
Analysis
The issue here is whether the challenged dependent claims are invalid for failing to specify
further limitations over the claims from which they depend. Defendants have failed to establish
that any claim is invalid under 35 U.S.C. § 112, ¶ 4.
Defendants have the burden of invalidating a presumptively valid patent under 35 U.S.C.
§ 112, ¶ 4. The Federal Circuit has instructed that challenges under § 112, ¶ 4 are to be treated like
challenges under any of the § 112 provisions. Pfizer Inc. v. Ranbaxy Labs., 457 F.3d 1284, 1291–
92 (Fed. Cir. 2006). Thus, Defendants have the burden of establishing that the dependent claims
fail to satisfy § 112, ¶ 4. See Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 n.10
(2014). Here, they have failed to do so.
On the record before the Court, it is not clear to the Court that independent Claims 1 and 16
of the ’394 Patent mandate the paths of air flows expressly recited in dependent Claims 2, 3, 7, 17,
and 18. Defendants’ contentions inherently involve constructions of Claims 1 and 16 with regard
to the paths of air flows. The parties did not, however, present such to the Court for claim
construction. See Patent Rule 4-5(d) Joint Claim Construction Chart Ex. A at 7–9, Dkt. No. 141-1
14
http://www.dictionary.com/browse/hold
27
at 8–9; Patent Rule 4-3 Joint Claim Construction and Pre-Hearing Statement Ex. A at 8–9, Dkt.
No. 83-1 at 8–9. On this record, Plaintiff’s contentions regarding differences in scope between
Claims 1 and 16 of the ’394 Patent and their dependent claims are reasonable.
Similarly, it is not clear to the Court that ’018 Patent Claim 1’s limitation of the pump body
be “built into” the exterior wall of a inflatable body, mandate that the pump body be “located in”
the inflatable body, as recited in dependent Claim 12. Again, Defendants’ contentions inherently
involve claim-construction issues not presented to the Court. See Patent Rule 4-5(d) Joint Claim
Construction Chart Ex. A at 7–9, Dkt. No. 141-1 at 8–9; Patent Rule 4-3 Joint Claim Construction
and Pre-Hearing Statement Ex. A at 8–9, Dkt. No. 83-1 at 8–9. On this record, Plaintiff’s
contentions regarding differences in scope between Claims 1 and 12 of the ’018 Patent are
reasonable.
Accordingly, the Court holds that Defendants have failed to establish that any claim is invalid
under 35 U.S.C. § 112, ¶ 4.
V.
CONCLUSION
The Court holds that Defendants have not established that any claim is indefinite and adopts
the constructions set forth above, as summarized in the following table. 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.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the parties
are hereby ORDERED, in good faith, to mediate this case with the mediator agreed upon by the
28
parties. As a part of such mediation, each party shall appear by counsel and by at least one
corporate officer possessing sufficient authority and control to unilaterally make binding decisions
for the corporation adequate to address any good faith offer or counteroffer of settlement that might
arise during such mediation. Failure to do so shall be deemed by the Court as a failure to mediate
in good faith and may subject that party to such sanctions as the Court deems appropriate.
“pump body”
Term
Construction
the main part of the pump
“ambient”
outside the inflatable body
“inflatable body”
substantially airtight structure that expands
when filled with air or other gases
“pipe”
a tubular or cylindrical object, part, or passage
“pack”
container
“built in” / “built in”
plain and ordinary meaning
“permanently held”
plain and ordinary meaning
So Ordered this
Mar 15, 2018
29
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