Swimways Corporation et al v. Zuru, LLC

Filing 38

OPINION AND ORDER. If either party objects to the construed term as adjusted by the court, that party is ORDERED to submit its objection and supporting brief within 7 days of the issuance of this Opinion and Order. Signed by District Judge Mark S. Davis on 3/10/14. (afar)

UNITED

STATES

EASTERN

DISTRICT

DISTRICT

OF

COUR'

VIRGINI

''•' * 10 2014

Norfolk Division
SWIMWAYS

CORPORATION

VAP CREATIVE,

L'

and

=TRIC1 COURT
VA

LTD.,

Plaintiffs,
v.

Case

ZURU,

No.:

2:13cv334

LLC,

Defendant.

OPINION AND

This

hearing,

matter

before

the

Court

following

a

Markman

conducted for the purpose of construing five disputed

claim terms of

of

is

ORDER

the

the patent-in-suit.

briefs

submitted

by

the

advanced at the Markman hearing,
Opinion

and

Order

detailing

After careful consideration

parties

and

the

arguments

the Court issues the following

the

claim

constructions

in

this

case.

I.

At

issue

Propelled

FACTUAL AND PROCEDURAL HISTORY

in

this

Figure,"

case

U.S.

patent").

The

'785

Application

No.

is

Patent

patent

10/167,410

("Vap") on March 1, 2005.
Vap

(collectively

exclusive licensee,
ECF

No.

1.

a

was

and

single
No.
filed

issued

patent

titled

6,860,785
on

June

to Vap

"Self-

("the
13,

l785

2002

Creative,

as

Ltd.

SwimWays Corporation ("SwimWays") and

"Plaintiffs")

from Vap,

allege

that

SwimWays

of the '785 patent."

"is

an

Compl. SI 2,

A.

The

'785

patent's

The

x785 Patent

abstract

describes

the

"Self-Propelled

Figure" as a "figure that is configured to be propelled through
a liquid."
n,785

Compl.,

patent"].

Ex. A at Abstract,
"The

appendage coupled to
the

appendage

figure

includ[es]

the torso,

with

respect

ECF No.
a

1-1

[hereinafter

torso,

a

flexible

and a drive configured to move

to

the

torso."

Id.

The

patent's specification further describes the figure as

toy, such as, a fish or a sea turtle,
a

liquid,

such

acknowledges

as water."

that

developed,"

and

"water

that

. . . include moving
liquids."

that,

Id. at

unlike

Id.

toys

26;

that

w[s]ome

1:10-14.

the appendages

of

The

simulate

animals

the

Thus,

been

water

toys

toy

conventional water

'785 patent]

unlike the

have

through

the specification states

appendages

toys,

the

is configured to flex

[it] is moving with respect to the torso."

1:61-64.

specification

conventional

that propel

However,

"a water

that can traverse through
1:6-7.

[such]

appendages

"appendage [described in the
while

at

'785

of

the

Id.

at

1:23-

"conventional

water toys," which "do not have life-like motions," id. at 1:1417,

the

appendage

combination

of

effectively

liquid and provide[s]

"relative

propel[s]
the

id. at 1:26-29; 1:64-67.

motion

the

toy

and

the

figure

flex

of

the

through

the

appendage with life-like movements,"

Figures 3-7 of the specification "illustrate the toy figure
100 disposed in a

liquid at different

stages

of

the relative

movement between the torso 120 and the appendage 160."

id.

at

2:25-30.

as

"a

The

figures

reciprocating pivotal
about

Id.

an

at

axis

126

appendage 160

is

"Because

flexes and bends

lags

appendage,"

the

the

which

relative

at

the

flexible

as

rear

160 pivoting

of

the

torso."

164

portion

of

the

the appendage 160 moves with

the movement of the flexible portion

motion

of

the

rigid

portion

the

specification describes

Id.

whipping motion."

movement

the appendage

located

respect to the torso 120,
constantly

the

motion with

that

2:25-30.

depict

as

162

of

the

"a wave-like,

at 3:13-19.
B. Procedural History-

Plaintiffs filed the instant action against Defendant Zuru,
LLC ("Zuru" or "Defendant")

has

directly

and

manufacturing,

importing

name
2013,

distributing,

'Robo Fish.'"

consent

indirectly

"a variety of

after

two

motions

on June 14, 2013,

of

the

'785

offering

time

ECF No.

to

1.

granted by

parties,

Zuru

patent

sell,

by

and/or

sold under

the

On August 12,
the

filed

Court
its

upon

Answer,

including induced or contributory, and

asserting several affirmative defenses,
the patent-in-suit,

the

fish products,

331 12-13,

extensions

denying any infringement,

selling,

robotic

Compl.

filed by

infringed

alleging that Zuru

including invalidity of

prosecution history estoppel,

joinder of an

improper

party,

Additionally,

and

Zuru

other

alleges

seeking declaratory
patent-in-suit
unenforceable,

at

7.

a

that

doctrines.

counterclaim

judgments

and

that

the

also

requests

"from enforcing

not

where
The

February

it

heard

Court

18,

2014,

threatening

argument

will

now

the

Court

concerning

to

address

the

held

the

is

relief

a

the

"invalid,

to

Id.

prevent

enforce

the

'785

Id. at 9.

Markman

disputed

proper

12.

Plaintiffs,

§§ 102 and 103."

patent against [Zuru]" or any of its affiliates.

On

No.

infringed

patent-in-suit

injunctive

or

ECF

against

Zuru has

and/or void under 35 U.S.C.

Zuru

Plaintiffs

equitable

hearing,

claim

construction

terms.
of

the

U.S.

370

disputed claim terms argued at the Markman hearing.
II.

In

(1996),

Markman

v.

CLAIM CONSTRUCTION PROCEDURE

Westview

Instruments,

Inc.,

517

the United States Supreme Court succinctly explained the

basis for,

and importance of,

claim construction:

The Constitution empowers Congress "to promote
the Progress of Science and useful Arts, by securing
for

limited

Times

to

Authors

and

Inventors

the

exclusive Right
to
their respective Writings
and
Discoveries."
Art. I, § 8, cl. 8.
Congress first
exercised this authority in 1790, when it provided for
the issuance of "letters patent," Act of Apr. 10,
1790,
ch.
7,
§ 1, 1 Stat. 109,
which,
like their
modern counterparts, granted inventors "the right to
exclude others from making, using, offering for sale,
selling,
or importing the patented invention,"
in
exchange
for
full
disclosure of
an invention,
H.
Schwartz, Patent Law and Practice 1, 33 (2d ed. 1995).
It
has
long
been
understood
that
a
patent
must
describe the exact scope of an invention and its

manufacture to "secure to

[the patentee]

all

to which

he is entitled, [and] to apprise the public of what is
still open to them."
McClain v. Ortmayer, 141 U.S.
Under the modern American system,
419, 424 (1891) .
these objectives are served by two distinct elements
of
a
patent
document.
First,
it
contains
a
specification describing the invention "in such full,

clear,

concise,

and

person skilled in

exact

the

art

terms
...

as
to

to

make

enable

any

and use

the

same."
35 U.S.C. § 112; see also 3 E. Lipscomb,
Walker on Patents § 10:1, pp. 183-184 (3d ed. 1985)
(Lipscomb)
(listing
the
requirements
for
a
specification).
Second, a patent includes one or more
"claims,"
which
"particularly
poin[t]
out
and
distinctly
clai[m]
the
subject
matter
which
the
applicant regards as his invention."
35 U.S.C. § 112.
"A claim covers and secures a process, a machine, a
manufacture, a composition of matter, or a design, but
never the function or result of
either,
nor the
scientific
explanation
of
their
operation."
6
The claim "define[s]
Lipscomb § 21.17, at 315-316.
the scope of a patent grant," 3 id., § 11:1, at 280,
and functions to forbid not only exact copies of an
invention, but products that go to "the heart of an
invention but avoids the literal language of the claim
by making a noncritical change," Schwartz, supra, at
82.

.

.

.

Characteristically, patent lawsuits charge what
is known as infringement, Schwartz, supra, at 75, and
rest

on

allegations

that

the

defendant

"without

authority ma[de],
use[d]
or
[sold the]
patented
invention, within the United States during the term of
the

patent

therefor

...

."

35

U.S.C.

§

271(a).

Victory in an infringement suit requires a finding
that the patent claim "covers the alleged infringer's
product or process,"
which in turn necessitates a
determination of "what the words in the claim mean."

Schwartz,

supra,

at 80; see also 3 Lipscomb § 11:2,

at

288-290.

Id.

at 373-74.

It

is

requires a

scope

well-settled

that

two-step analysis:

and meaning

of

the

a

determination

"First,

patent

of

infringement

the court determines

claims

asserted"

and

the

second,

"the properly

construed

infringing device."
1448,

1454

Markman,

(Fed.

517 U.S.

claims

are

compared

to

Cybor Corp. v. FAS Techs.,
Cir.

1998)

(en

at 371-73).

banc)

the allegedly
Inc., 138 F.3d

{citing,

inter

alia,

In conducting this analysis,

it

must be remembered that "[i]t is a 'bedrock principle' of patent
law that

'the claims of

a patent define the invention to which

the

patentee is

entitled the

AWH

Corp.,

F.3d

(quoting

Sys.,

415

1303,

Innova/Pure

Inc.,

381 F.3d 1111,

we

look

1312

Water,

Corp. v. Conceptronic,

("First,

right

to

exclude.'"

(Fed.

Inc.

Safari

v.

2005)
Water

90 F.3d 1576,

words

asserted and nonasserted,

of

the

to define

Phillips v.

Cir.

1115 (Fed. Cir.

Inc.,

the

to

(en

banc)

Filtration

2004)); see Vitronics
1582

claims

(Fed. Cir.

1996)

themselves,

both

the scope of the patented

invention.").

A.

Claim Construction Principles

Focusing on the first step of the infringement analysis,
the Federal Circuit has

repeatedly stated that

claim

given

'are

meaning,'"

generally

and

that

their

"the ordinary and

"the words of a

ordinary

and

customary

customary meaning of

a

claim term is the meaning that the term would have to a person
of

ordinary

invention."
90

F.3d

which

to

at

skill

in

Phillips,
1582).

begin

the

415

This

claim

art

in

question

F.3d at 1312-13
"provides

an

interpretation"

at

the

of

the

(quoting Vitronics,

objective

and

time

is

baseline

based

upon

from

"the

well-settled understanding that inventors are typically persons

skilled in

the field of

the invention and

that patents are

addressed to and intended to be read by others of skill in the

pertinent art."

of

Id. at 1313.

As noted by the Federal Circuit:

It is the person of ordinary skill in the field
the invention through whose eyes the claims are

construed.

Such

person

is

deemed

to

read

the

words

used in the patent documents with an understanding of
their meaning in the field, and to have knowledge of
any

special

inventor's

meaning
words

and

that

usage
are

in

used

the

field.
describe

to

The
the

invention-the
inventor's
lexicography-must
be
understood and interpreted by the court as they would
be understood and interpreted by a person in that
field of
technology.
Thus
the court starts
the
decisionmaking process by reviewing the same resources
as would that person, viz., the patent specification
and the prosecution history.

Id.

(quoting Multiform

F.3d 1473, 1477

"'the

Desiccants,

(Fed. Cir.

ordinary meaning

Inc.

1998)).

of

claim

v.

Medzam,

Ltd.,

133

"'In some cases,'" however,

language

as

understood by

a

person of skill in the art may be readily apparent even to lay
judges,

more

and

than

claim

the

construction

application

of

commonly understood words.'"

F.3d 800,

1314) .

805

(Fed.

Finally,

Cir.

in

the

scope.

policy

cases

widely

2007)

little

meaning

Stryker Corp.,

(quoting Phillips,

when construing claim terms

considerations"

involves

accepted

Acumed LLC v.

Court cannot add or subtract words
"abstract

such

415

broaden

and phrases,

or

SmithKline Beecham Corp. v. Apotex Corp.,

483

F.3d at

from the claims or appeal
to

of

narrow

the
to

their

403 F.3d 1331,

1339-40 (Fed. Cir.
65 F.3d 1577,

2005); see also Quantum Corp.

1584

(Fed. Cir.

1995)

v. Rodime,

(observing that "it is well

settled that no matter how great the temptations of
policy making,

the

Types of Evidence to Be Considered

determining

Court

Phillips,

fairness or

courts do not redraft claims").

B.

In

must

the

first

meaning of
examine

disputed

the

terms

claims

415 F.3d at 1312; Vitronics,

or phrases,

themselves.

90 F.3d at 1582.

See

Indeed,

the Federal Circuit has stated that the claims themselves,
asserted

and

enlightenment

because
the

PLC,

unasserted,"

as

to

the

"claim terms

patent."

can

meaning

be

of

"valuable

a

claim

"both

sources

term,"

in

of

part,

are normally used consistently throughout
1314.

Furthermore,

differences in claims can also be enlightening.

"For example,

the

a

presence

Phillips,

of

limitation gives

a

415

F.3d

dependent

rise

to

a

claim

at

that

presumption

adds

that

the

question is not present in the independent claim."

particular

limitation

in

Id. at 1314-

15.

"The claims,

of

course,

do

not stand alone,"

but,

rather,

"'must be read in view of the specification, of which they are a
part.'"

Id.

Inc. ,

F.3d

52

Vitronics,

90

at

1315

967,

F.3d

(quoting Markman v.

979

(Fed.

Cir.

1995)

at

1582

("[T]he

Westview Instruments,
(en

banc));

specification

highly relevant to the claim construction analysis.

8

see

is

also

always

Usually,

it

is dispositive; it is the single best guide to the meaning of a
disputed term."); Multiform Desiccants,
best

source

for

understanding

a

specification from which it arose,
prosecution
statute,
the

history.").

The

133 F.3d at 1478 ("The

technical

term

is

informed, as needed, by the

specification,

as

required

invention,

and,

therefore,

"claims

must

construed so as to be consistent with the specification."
v. Teva Pharms.

2003);

by

describes the manner and process of making and using

patented

& Co.

the

see

describe

35 U.S.C.

an

terms").

USA,

Inc.,

§ 112

invention

in

347 F.3d 1367,

(requiring
"full,

that

clear,

1371

the

be

Merck

(Fed. Cir.

specification

concise,

and

exact

The Federal Circuit and Supreme Court have thus long

emphasized

the

construction,

specification's

noting

that,

important

usually,

the

role

in

claim

specification

"is

dispositive, " as it is "the single best guide to the meaning of
the

disputed

Vitronics,

term."

90

F.3d

Phillips,
at

1582);

415

see

F.3d

at

Markman,

1315

517

(quoting

U.S.

at

389

(referencing the "standard construction rule that a term can be
defined

only

in

a

way

that

whole"); Multiform Desiccants,

In

addition

should consider
complete

Patent

record

and

to

the

comports

with

Trademark

the

claims

and

proceedings

Office

instrument

as

a

133 F.3d at 1478.

specification,

the prosecution history,
of

the

("PTO"),

the

which consists

before

the

including

United

the

Court
of

the

States

prior

art

cited during the examination of the patent and any subsequent
reexaminations.
history

415 F.3d at 1317.

Phillips,

"provides

evidence

of

how

the

PTO

The prosecution
and

the

inventor

understood the patent" and "can often inform the meaning of the
claim language by demonstrating how the inventor understood the

invention and whether the inventor limited the invention in the

course of prosecution,

making the claim scope narrower than it

would otherwise be."

Id.

83);

see also Chimie v.

(Fed. Cir. 2005)

(citing Vitronics,

PPG Indus.,

Inc.,

90

402

F.3d at

1582-

F.3d 1371,

1384

(indicating that "the purpose of consulting the

prosecution history" as part of claim construction is to exclude

any

"disclaimed"

prosecution

interpretation).

history

represents

"At

an

the

ongoing

same

time,

because

negotiation

between

the PTO and the inventor,

'it often lacks the clarity of the

specification

less

purposes.'"

and

thus

is

Trading Techs.

F.3d

1340,

1352

eBay,

Inc.,

549 F.3d 1394,

The

Court

(Fed.

may

Cir.

useful

Int'l,

2010)

Inc.

for

claim

v.

construction

eSpeed,

(quoting Netcraft

Inc.,

Corp.

595

v.

1401 (Fed. Cir. 2008)).

also

examine

extrinsic

which

includes

"all evidence external

history,

including expert and inventor testimony, dictionaries,

and learned treatises."
technical

dictionaries

Markman,
may

to the patent

evidence,

and prosecution

52 F.3d at 980.

provide

the

Court

For example,

with

a

better

understanding of the underlying technology and the way in which

10

one of
415

skill

F.3d

General

in the art might use the claim terms.

at

1318;

see

also

usage dictionaries

Vitronics,

may also be

90

F.3d

Phillips,

at

consulted,

1584

as

n.6.

they are

"often useful to assist in understanding the commonly understood
meaning of words"

and "[a]

dictionary definition has

the value

of being an unbiased source 'accessible to the public in advance

of litigation.'"

Phillips,

415 F.3d at 1322

90 F.3d at 1585).1

However,

"'a

dictionary

general-usage

evidence of

the meaning'

dictionary
properly

may
be

extend

afforded

the Federal Circuit cautions that
cannot

overcome

of a claim term,"

patent
by

(quoting Vitronics,

protection

the

inventor's

art-specific

that "the use of the

beyond

what

patent,"

and

should
that

"[t]here is no guarantee that a term is used in the same way in

a treatise as it would be by the patentee."
at

1322

Comm'n,

(quoting Vanderlande

366

F.3d 1311,

1 In Phillips,

1321

Indus.

(Fed.

Phillips,

Nderland BV v.

Cir.

2004)).

415 F.3d

Int'1

Trade

Additionally,

the Federal Circuit expressly discounted the approach

taken in Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), in which the court placed greater emphasis on
dictionary definitions of claim terms.
Phillips, 415 F.3d at 1319-20
("Although the concern expressed by the court in Texas Digital was
valid,
the methodology
it
adopted placed
too much reliance
on
extrinsic sources such as dictionaries, treatises, and encyclopedias
and too little on intrinsic sources, in particular the specification
and prosecution history.").
The Phillips opinion reaffirmed the
approach used in Vitronics, Markman, and Innova as the proper approach
for claim construction,
but acknowledged that there was "no magic
formula," and that a district court is not "barred from considering
any particular sources ... as long as those sources are not used to
contradict claim meaning that is unambiguous in light of the intrinsic
evidence."

Id.

at 1324.

11

"different

dictionaries

definitions

may

contain

for the same words.

somewhat

different

sets

A claim should not rise or fall

based upon the preferences of a particular dictionary editor,
the

court's

independent

specification,

Id.

Thus,

to

decision,

uninformed

rely on one dictionary rather

"while extrinsic evidence

'less significant

"the

legally

1317

(quoting C.R.

858,

862

than

operative

(Fed. Cir.

Bard,

the

intrinsic

meaning

Inc.

of

by

or
the

than another."

'can shed useful light on

the relevant art, ' [the Federal Circuit has]

is

of

claim

v. U.S.

explained that it

record in determining
language."'"

Surgical Corp.,

id.

388

at

F.3d

2004)).

With the foregoing principles

in mind,

the Court will now

examine the patents and the disputed claim terms.
III.

ANALYSIS OF THE DISPUTED CLAIM TERMS

In advance of

the Markman hearing conducted by this Court,

the parties submitted a joint claim construction and prehearing
statement

that

included

one

agreed-upon

terms.

ECF

No.

disputed

claim

parties'

stipulated construction of

minor

grammatical

adjustments,2

31.

The

the

and

claim

term

Court

and

adopts

agreed-upon term,

addresses

each

five

the
with

of

the

rise

nor

2 Accordingly, the Court adopts the following construction:
1) "neutrally buoyant" is construed to mean
sink when no propulsive force is applied."

12

"neither

disputed claim terms herein.3
1.

"flexible appendage"

a. Proposed Constructions & Court Ruling

SwimWays:

Plain

and

ordinary

meaning.

No

construction

No

construction

required.

Zuru: "an appendage capable of bending"

Court:
Plain
required.
b.

parties

dispute

clarified

regarding

"flexible."
that

ordinary

meaning.

Discussion

The

and

the

this

Counsel

phrase

construction.

term

the

Markman

centers

on

hearing
the

that

definition

the
of

for Zuru conceded at the Markman hearing

"capable

And,

at

as

of"

is

SwimWays

not

has

vital

observed,

to

its

proposed

Zuru's

proposed

3 The Court acknowledges the parties' dispute regarding whether the
Court must affirmatively construe claim terms where only one party
asserts that construction is necessary.
See, e.g., Def.'s Br. at 5-6,
ECF No. 21; Pis.' Resp. Br. at 2, ECF No. 23.
Recognizing that a
"determination

that

a

claim

term

'plain and ordinary meaning'

'needs

may be

no

construction'

inadequate when a

or has

the

term has more

than one 'ordinary' meaning or when reliance on a term's 'ordinary'
meaning does not resolve the parties' dispute," 02 Micro Int'l Ltd. v.
Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir.
2008)

(citing

Federal

Phillips,

Circuit's

415

instruction

F.3d
to

at

1314),

construe

this

those

Court

claims

follows
"that

are

the
in

controversy,
and
only
to
the
extent
necessary
to
resolve
the
controversy," Vivid Techs., Inc. v. Am. Science Eng'g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999) (internal citations omitted).
Accordingly,
where
"the parties present a
fundamental
dispute regarding the
[meaning and] scope of a claim term," 02 Micro, 521 F.3d at 1362
(emphasis added), and where the plain and ordinary meaning of the term
does not resolve that dispute, see Finjan, inc. v. Secure Computing

Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010), "the court, not the jury,
must resolve that dispute," 02 Micro,

13

521 F.3d at 1360.

construction merely repeats the term "appendage."

at

9,

ECF

construe

No.

the

20.

Accordingly,

terms

"that

are

in

because

the

controversy,

See Pis.'

Court
and

need only

only

to

extent necessary to resolve the controversy, " Vivid Techs.,

v.

Am.

Science Eng'g,

(internal

citations

Inc.,

200 F.3d 795,

omitted),

the

Court

803

(Fed.

focuses

Br.

Cir.

its

the
Inc.

1999)

discussion

on the term "flexible."

Zuru asserts

that

its

proposed construction is

with the . . . '785 patent specification,"

"consistent

"the plain meaning of

the term as would be understood by one of ordinary skill in the

art,"

and

"the

flexible as

8-9,

ECF

[Merriam-Webster]

dictionary,"

'capable of bending or being bent.'"

No.

21

(quoting

term

"the

file history of

'flexible

patentee
term."

appendage'

disputed

the

Def.'s Resp.

arguing

that

the

"flexible"

is

well-known

term

clarity,"

Pis.'

affirmative
ambiguity

sufficient
for
Resp.

Br.

construction

into

the

'785 patent

shows

unambiguous

and

because

jury's

Zuru

without

at

4,

may

SwimWays disagrees,

No.

23,

of

any
and

introduce
of

the

term

substitutes

providing

understanding

14

the

meaning"

. . .

the
the

"merely

ECF

that
that

24.

ordinary

Zuru

interpretation of

initial

ECF No.

and

another

addition,

not

is

at 5,

"plain

http://www.

the

examiner's

Br.

at

In

"defines

Def.'s Br. at

Merriam-Webster.com

merriam-webster.com/dictionary/flexible).
contends,

which

the

one

additional
because

"an

unnecessary

[term],"

Pis.'

Br.

at

9,

patentee

ECF No.

did

not

20.

Furthermore,

propose

to

the

SwimWays

examiner

contends

any

that

definition

"flexible" other than its plain and ordinary meaning.
at

the

of

See id.

8.

A

careful

"words

of

the

review
claims

specification,
Equip.,

2011)

of

the

themselves,

[and]

(quoting Innova,
beyond

"flexible."

the

evidence,

remainder

the

Inc.,

637 F.3d 1324,

381 F.3d at 1116),

plain

and

ordinary

namely

of

the prosecution history," Am.

Inc. v. Geoquip,

meaning

intrinsic

the

the

['785]

Piledriving

1332

(Fed.

Cir.

reveals no special

meaning

of

the

term

The claims do not expressly define the term,

claim simply describing three "flexible appendage[s]"

one

that are

"configured to flex," '785 patent, 9:54-61, 10:3 (claim 18), and
the remaining claims describing a "flexible appendage" with "the
second end having a greater flexibility than the first end," id.
at 8:43-44
11:14-15

describes

(claim 1),

(claim

the

26),

9:17-18
12:9-10

"flexibility

of

(claim 8),
(claim

10:26-27

31).

The

the appendage,"

(claim 22),
specification

stating

in

the

detailed description that the "appendage flexes or bends,"

"is

flexing or bending," and "is configured to bend or flex."
e.g.,

'785 patent,

describes

the

2:14-15,

"flexible material"

retain shape and form,"
flex."

2:48-49,

Id. at 4:58-61.

"yet []
The

as

4:41.

being

The

specification

"rigid enough

to

flexible enough to bend and

"flexibility of

15

See,

the appendage,"

described

in

the

specification

as

causing,

appendage to flex or bend," id. at 2:36-39,

in

part,

"the

evidences no attempt

by the patentee to give the term "flexible" a meaning other than
its plain and ordinary meaning.
The

prosecution

history

also

lends

no

support

to

Zuru's

contention that construction is necessary because "the patentee
made

the

effort

to

conduct

a

personal

examiner in order to address the meaning of
Resp.

Br.

that

the

at 5,

ECF No.

patentee

argued

interpretation of

e.g.,

the

Def.'s Br.,

additional

to

C

Indeed,

198,

is

overly

ECF No.

22-3,4 which

favoring

a

evidence

to

support

it

in

broad

well-settled that

the

intrinsic

see,

lends

plain

and

claim terms

should not be given "a restrictive construction unless

clear

Def.'s

during prosecution,

presumption
it

the

the record shows

examiner's

"flexible"

at

the

the

with

the term."

To the contrary,

against

term

Ex.

support

ordinary meaning.

24.

interview

there is

evidence,

or

a

broader meaning is specifically disclaimed during prosecution."
Aventis

Pharms.

(Fed.

Cir.

2013)

Grp.,

Inc.

v.

Inc.

v.

Amino Chems.

(citing Vitronics,

Comfortrac,

Inc.,

492

Ltd.,

90

715 F.3d 1363,

F.3d at

F.3d 1326,

1582;
1331

1375

Saunders

(Fed.

Cir.

4 The examiner had originally rejected several of the patentee's claims
based on prior art "disclos[ing] ... a flexible appendage," where
"flexible" was interpreted to mean "that [the appendage] can move from
one direction to another direction," Def.'s Br., Ex. C at 161, ECF No.

22-3, which the Court views as an overly broad interpretation beyond
the plain and ordinary meaning of flexible.

16

2007)).

Moreover,

in

order

to

construction during prosecution,

disclaim

a

particular

a patentee must make

"a

clear

and unmistakable disavowal of scope during prosecution" by,
example,

"explicitly characteriz[ing] an aspect of his invention

in a specific manner to overcome prior art."

v.

Endo

Pharm.

Inc.,

(emphasis added);
Inc.,

for

438

F.3d

1123,

1136

see also Microsoft Corp.

357 F.3d 1340,

1349

(Fed.

Cir.

Purdue Pharma L.P.

(Fed.

v.

Cir.

2006)

Multi-Tech Sys.,

2004).

Although

it is

fairly clear that patentee did "characterize an aspect of his
invention"

during

prosecution,

that

characterization

was

consistent with the plain and ordinary meaning of flexible and

was made specifically
broad interpretation.

to disabuse
Accordingly,

the examiner

of an overly

the Court finds no disavowal

by the patentee of the scope of the plain and ordinary meaning
of the term.

Nor does the extrinsic evidence reveal a meaning different

from

the

plain

and

ordinary

meaning.

Zuru's

proposed

construction merely paraphrases

the plain language of the term

in

the

a

manner

provided
(emphasis

by

"consistent

the

added).

with

dictionary."
This

definition

Def.'s

Court

Br.

of

at

"question[s]

flexible

as

9,

ECF

No.

21

need

to

[Zuru's]

consult a dictionary to determine the meaning of such [a] well-

known

term[]."

C.R.

Bard,

388

F.3d at

863.

"Indeed,

. . .

merely rephrasing or paraphrasing the plain language of a claim

17

by

substituting

synonyms

construction."

Accordingly,

"involves

Id.

because

little

accepted meaning
F.3d at 1314,
See U.S.

not

(internal

claim

more
of

does

represent

quotation

construction

than

the

genuine

marks

regarding

application

of

commonly understood words,"

claim

omitted).

this

the

term

widely

Phillips,

415

the Court declines to construe the disputed term.

Surgical Corp.

(Fed. Cir. 1997)

v.

Ethicon,

Inc.,

103

F.3d 1554,

1568

("Claim construction ... is not an obligatory

exercise in redundancy.").
2.

"coupled to said torso"

a. Proposed Constructions & Court Ruling

SwimWays:

Plain

and

ordinary

meaning.

No

construction

needed.

Alternatively:

"connected

to

said

torso,

either

directly or indirectly"5
Zuru: "connected directly to the torso"

Court:

"connected

to

said

torso,

either

directly

or

indirectly"
b. Discussion

The parties' dispute regarding this term hinges on the term

"coupled to."

The parties agree that the plain and ordinary

meaning of "coupled to" anticipates a connection,

but disagree

as

and

to

whether

the

See Pis.' Resp. Br.

term

anticipates

at 6, ECF No.

23.

18

both

direct

indirect

connections.

Zuru, proposing a construction encompassing only a

direct connection,
appendage

must

asserts

be

that

connected

"the claims require[]
directly

to

the

that the

torso

without

another element interposed between the appendage and the torso."

Def.'s Resp.

Br. at 7,

ECF No. 24.

Zuru also alleges that its

construction is consistent with the "the plain meaning of the
term as
art,"

9,

would be

as well

ECF No.

understood by

as the

21.

thus,

Pis.'

Br.

is

of

ordinary

'785 patent specification.

skill

in

the

Def.'s Br. at

SwimWays argues that the plain and ordinary

meaning "encompass[es]
and,

one

both direct and indirect connection[s]"

"broader

at 9,

ECF No.

than

Zuru's

proposed

20.

In addition,

construction."

SwimWays contends,

"the specification clearly reveals that the term was intended to
encompass

indirect

connections"

and asserts

evidence of the patentee acting as his

that

there is

"no

own lexicographer to

redefine this term and limit it only to a direct connection."
Id.

at

portion

10.

Because

of the

neither party disputes

disputed

term,

the

Court

As

Circuit

"said

construes

disputed "coupled to" portion of the term.
Corp.,

the

See U.S.

torso"

only the
Surgical

103 F.3d at 1568.

a preliminary matter,

has

construed

held

broadly

that
so

"the
as

the Court notes

term
to

'coupled to'

allow

an

that

the Federal

...

indirect

should be

attachment."

Bradford Co. v. Conteyor N. Am., Inc., 603 F.3d 1262, 1270 (Fed.

19

Cir. 2010).
Court,
the

Likewise,

several district

courts,

including this

have determined that the plain and ordinary meaning of

term

"coupled"

connections.

anticipates

both

See Asetek Holdings,

direct

and

Inc. v. Coolit Sys., No: C-

12-4498, 2013 U.S. Dist. LEXIS 170488, at *17 (N.D.

(concluding "in principle,
isolation

-

could

connections");
No.

2002)

2002

support

U.S.

Cal. 2013)

. . . that the term 'coupled'

Silicon Image,

3:01cv266,

indirect

either

Inc.

Dist.

v.

LEXIS

direct

or

indirect

Genesis Microchip,
28916,

at

*88

- in

Inc.,

(E.D.

Va.

(observing that the "common usage of the term 'couple'

supports

both

direct

and

indirect

connections");

Silicon

Graphics, Inc. v. Nvidia Corp., 68 F. Supp. 2d 331, 346 (D. Del.

1999)

(noting that "the ordinary and accustomed meaning of the

term 'couple,' even when used in an electronics context does not

solely

mean

'directly coupled'"

ordinary meaning
directly
whether

or
the

in this

context

indirectly'").
patentee

and

Thus,

clearly

"determineing]

is

that

the

'coupled or connected,

the

Court

disclaimed

must

indirect

determine

connections

from the scope of the term "coupled to."

A careful review of the intrinsic evidence, beginning with
the claims in this case,

reveals no "clear intention

patentee]

claim

to

connections.
will

not

be

limit

Innova,
'read

the

scope"

381 F.3d at 1117
restrictively

20

to

exclude

[of the
indirect

(observing that "claims

unless

the

patentee

has

demonstrated a clear intention to limit the claim scope using
words

or

(quoting

expressions

of

Liebel-Flarsheim Co.

905-09 (Fed. Cir. 2004)).
describe

manifest

various

"drivefs]

v.

Medrad,

to

or

Inc.,

restriction'"

358

F.3d

898,

Rather, the '785 patent claims simply

"appendage[s]

coupled

exclusion

said

coupled

torso

and

to

to

said

said

torso"

and

appendage[s]"

without specifying whether those connections must be direct or

indirect.
8);

See '785 patent at 8:1-21 (Claim 1); 8:54-9:1 (Claim

10:24-29

26);

(Claim 18);

10:24-28

(Claim 22);

10:53-54

(Claim

11:21-24 (Claim 31).

Although

the

Court

may

not

import

limitations

from

the

specification into the claim, it "can rely on the specification
'to understand what

the patentee has

claimed and disclaimed.'"

SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1196 (Fed Cir.
2013)

(quoting SafeTCare Mfg., Inc. v. Tele-Made,

Inc., 497 F.3d

1262, 1270 (Fed. Cir. 2007)); see also Aventis Pharms. Inc., 715

F.3d at 1373 (quoting Multiform Desiccants,

133 F.3d at 1478)

("The specification provides the 'best source' for construing a

claim

term

use.").

in

the

and determining

confining

inventor's

intent

regarding

Zuru asserts that the "embodiments shown and described

'785

construction,"

However,

the

patent
Def.'s

mindful
the

of

claims

also

Br.

at

necessitate

10,

the Federal
to

[the

21

ECF No.

21

Circuit's

Zuru's

proposed

(emphasis

added).

"warnfing]

against

specification's]

embodiments,"

Phillips, 415 F.3d at 1323,6 the Court notes that, in any event,
the

embodiments

specification

contained

appear

connections.

For

and

to

described

suggest

example,

in

both

with

the

direct

respect

to

'785

patent's

and

indirect

Figure

9,

the

specification provides:

Projections (not shown) that are coupled to the torso
220 engage with the openings 266 to pivotally couple
the

appendage

260

to

the

torso

220.

In

alternative

embodiments other coupling mechanisms, such as brads,
rivets,
etc.,
are used to pivotally couple the
appendage to the torso.

'785 patent,

3:56-61.

the appendage and the

The

presence

of

In this instance,
torso appears

"other

the connection between

to be a direct connection.

coupling mechanisms,

such

as

brads,

rivets, etc.," does not change the connection from a direct one

into

an

indirect

one.

With

respect

to

the

embodiment

illustrated in Figures 14-16, the specification provides:
In the illustrated embodiment,
and 520

the arm appendages 510

are coupled to a front axle 512

that extends

through the torso 420 and is pivotally coupled to the
torso.
Similarly, the leg appendages 530 and 540 are
coupled to a rear axle 532 that extends through the
torso 420 and is pivotally coupled to the torso.
In
the illustrated embodiment ends of each of the axles
512 and 532 are disposed within a portion of the

appendages

510,

520,

530,

and

540

to

couple

the

appendages
to
the
axles.
In
another embodiment
another mechanism, such as an adhesive, is used to
couple the appendages to the respective axles.

6 See also Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363,
1381 (Fed. Cir. 2009) (stating that "embodiments appearing in the
written description will not be used to limit claim language that has
broader effect").

22

'785

patent,

6:37-47.

Again,

the

appendages

appear

to

be

directly connected to the axles — the presence of "an adhesive"
does not effect an indirect connection.

Conversely,

however,

the

specification

with

respect

to

Figure 1 provides:

As illustrated schematically in FIG. 1, the toy figure
100 includes a torso 120, an appendage 160 coupled to
the torso 120, and a drive 140
torso 120.
A link 124, such

operatively

couples

the

drive

that is coupled to
as a drive shaft,

140

to

160.

the

appendage

~

'785 patent,

2:1-5 (emphasis added).

In this embodiment,

the

drive is "coupled to" the torso by means of an intermediary in
the form of a "link . . . such as a drive shaft."

the

coupling

mechanisms

in

the

direct

Id.

connections

Unlike

discussed

above, which appear to serve no other purpose except to connect
the

elements,

the drive

function,

independent

Thus,

drive

the

shaft

of

shaft

its

is,

in

this

additional

in

effect,

between the drive and the appendage.
Court

determines

that

indirect connections

the

embodiment has

its

own

connective

function.

indirect

connection

an

Id.

specification

Accordingly,
does

not

the

disclaim

from the scope of the term "coupled to"

but, in fact, specifically contemplates their use.

Furthermore,

the Court determines that the embodiments are "merely exemplary"
of this understanding and do not function to define

the outer

limit of the scope of the disputed term as anything other than

23

the plain and ordinary meaning.

Phillips,

there has

the scope of

been no

prosecution,

disavowal

of

the scope of the claim,

and specification,

Therefore,

415 F.3d at 1323.

this

As

term during

as expressed in the claims

controls.

having

carefully

considered

the

parties'

proposed constructions and the arguments advanced at the Markman

hearing,

and finding no disavowal of the term's scope by the

patentee in the claims,
the Court "construe[s]
indirect attachment."

specification,

or prosecution history,

['coupled to'] broadly so as to allow an
Bradford, 603 F.3d at 1270.

3. "configured to propel the figure through the li<juid"
a. Proposed Constructions & Court Ruling

SwimWays:

Plain

and

ordinary

meaning.

No

construction

required.

Zuru: "The appendage is capable of applying a driving force
to the figure."

Court:

Plain

and

ordinary

meaning.

No

construction

required.
b. Discussion

The parties dispute two aspects of this term.
parties

term

disagree

or

"propel."

adopt

as

the

to

whether

plain

and

the

Court

ordinary

First,

the

should construe

the

meaning

of

the

term

SwimWays asserts that "the claim term is clear upon

its face to a person of ordinary skill in the art" and that the

patentee did not intend to define the term as "anything other

24

than its plain and ordinary meaning."
Zuru asserts

20.

with

"the

plain

specification,"

that

forward

of

the

term,"

and the "definition of

or

imparts motion.'"

Br.

at 11, ECF No.

its proposed construction is

meaning

the [Merriam-Webster]
drive

Pis.'

"the

consistent

'785

patent

'propel' as provided by

dictionary," which "defines propel as

onward

Def.'s

or

as

Br.

if

by

means

at 14-15,

of

a

ECF No.

force

'to
that

21 (quoting

Merriam-Webster.com at http://www.merriam-webster.com/dictionary
/propel).

Second,

the parties

ordinary definition of

capability.

dispute whether

the plain and

"configured to" includes more than mere

SwimWays asserts that the "fact that an appendage

may be capable of applying some unspecified 'driving force'

to

the figure does not necessarily indicate that it is 'configured
to propel the figure through the liquid.'"
6,

ECF No.

23

(emphasis added).

Pis.' Resp. Br. at

Zuru counters

that the

'785

"specification explains that an appendage that is configured to

propel the figure through liquid is an appendage that is capable

of applying a driving force to the figure."
8,

ECF No.

24 (emphasis added).

Def.'s Resp. Br. at

Zuru adds that,

"[w]hile the

word 'propel' may have a plain and ordinary meaning, this plain
meaning does not provide guidance about the scope of what it
means

to be 'configured'

to propel a figure through liquid."

Id.

25

i. "propel"

A

careful

"words

of

review

the

claims

specification,

[and]

of

the

intrinsic

themselves,

the

evidence,

remainder

the prosecution history,"

Equip., 637 F.3d at 1332,

of

Am.

not

expressly

define

the

the

['785]

Piledriving

reveals no special meaning other than

the plain and ordinary meaning of the term "propel."
do

namely

the

term,

but

simply

The claims
describe

an

"appendage [that] is configured to propel the figure through the
liquid,"

'785 patent at 8:48-49

(claim 1),

8:56-57

(claim 8),

11:22-23 (claim 31), a "figure configured to be . . . propelled
through water, id.

at 10:20-21

(claim 22), and a "figure . . .

propelled through a liquid," id^ at 10:57-58 (claim 26), 11:1718

(claim 31) .

expressly

The

defining

propelled.

The

remainder of
"propel,"

the specification,

describes

specification

states

without

how

the

figure

is

that

the

"drive

is

configured to produce a force sufficient to move the appendage
with respect to the torso."
8:61-9:7,
torso

said

11:25-27 ("drive configured to produce forces on said

and

cyclical

Id^ at 1:61-63; see also id. at

on

said

. . . appendage[s]

sufficient

to

produce

relative motion between said . . . appendage[s]

torso");

id_;_

at

10:29-33

("drive

being

configured

and

to

produce forces on said torso and said appendage sufficient to

produce reciprocating pivotal motion between said appendage and
said

torso").

The

specification

26

elucidates

that

it

is

the

"relative

motion

and

effectively propel
1:64-66;
that,

the

configured

to

"figure

claim

of

flex

of

the

appendage

[that]

the toy figure through the liquid."

see also id.

although

the

at 2:4-5.

patentee

propel

1"

the

at

The prosecution history reveals

added

figure

during

Id.

the

phrase

through

prosecution,

"said

the

the

appendage

liquid"

patentee

to

the

made

no

effort to further define "propel" beyond its plain and ordinary
meaning.

Def.'s Br.,

Ex.

C at 188,

ECF No.

22.

Nor does the extrinsic evidence "'shed useful light on the

relevant art.'"
388 F.3d at

Phillips,

862) .

415 F.3d at 1317

Zuru merely proposes a construction that is

"consistent with the definition of

dictionary,"

(quoting C.R. Bard,

Def.'s

Br.

concede that "the word

at

15,

'propel' as provided by the

ECF

No.

21,

863.

"involves

to

Again,

this Court

[Zuru's] need to consult a dictionary to determine

the meaning of such [a] well-known term[]."

at

appears

'propel' may have a plain and ordinary

meaning," Def.'s Resp. Br. at 8, ECF No. 24.
"question[s]

and

Because

little

claim

more

accepted meaning of

construction

than

the

C.R. Bard, 388 F.3d

regarding

application

commonly understood words,"

of

this

the

term

widely

Phillips,

415

F.3d at 1314, the Court declines to construe the disputed term.
ii. "configured to"

At the Markman hearing,
"configured

to"

implies

counsel for SwimWays asserted that

an arrangement

27

in

a

manner

to

achieve

this

result

Zuru

under

argued

a

certain set

that

functional"

the

disputed

language,

limitation,

i.e.,

placed

the

in

of

circumstances.

claim

describing

that

the

liquid,

a

uses

neither

appendage

nor

term

Counsel

a

propels

the

structural

for

"pseudofunctional

figure

limitation,

when

i.e.,

proscribing the shape or size or arrangement of the drive that
does the propelling.
term

should

Thus,

describe

Zuru's counsel argued,

either

a

structure

that

the construed

propels

performance of the structure when placed in liquid.

such ambiguity,
the appendage

or

the

To remedy

counsel proposed a construction specifying that
is

"capable

placed in the liquid.

of"

However,

"capable of," as Zuru proposes,

applying

a

driving

force when

replacing "configured to" with
clarifies neither the structure

nor the function of the figure or its appendage.

Moreover,

a

construction that an appendage is merely "capable" of propelling
a figure through a liquid fails to adequately convey that the

appendage is actually "configured to" propel the figure through
the liquid.

Inc.,

659

See,

e.g.,

F.3d 1376,

Typhoon Touch Techs.,

1380

(Fed.

Cir.

2011)

Inc.

v.

Dell,

(distinguishing

between a device configured to perform a certain function and a

device that is simply capable of being configured to perform
that function).

Although

the

claims

themselves

do

not

expressly

define

"configured to," a consideration of "the remainder of the ['785]

28

specification" is instructive.
at

1332.

Am. Piledriving Equip.,

Keeping in mind the presumption that

term in the same or related patents
meaning," Omega Eng'g,

carries

334 F.3d at 1334,

"the same claim

the same construed

the Court considers the

use of "configured to" elsewhere in the '785 patent,
"the

context

Disney,

Co.,

Phillips,

of

the

346

F.3d

415

F.3d

surrounding

1082,

at

words,"

1088

1314.

(Fed.

The

637 F.3d

ACTV,

Cir.

claims

as well as

Inc.

describe

Walt

see

2003);

v.

also

a

figure

"configured to be substantially neutrally buoyant," as well as
one that is "configured to be at least partially immersed" in a
liquid.

58;

See

'785 patent at 8:45-51; 9:50-51;

11:16-17;

12:28-30.

The

detailed

10:20-21; 10:57-

description

of

the

specification states that "the toy figure is configured to be
placed

in

a

liquid,

such

as

water."

Id.

at

1:60-64.

It

describes one embodiment of the figure that "is configured to
float when ...

it is placed in water,"

id.

at 7:44-45,

and

another embodiment that "is configured to sink when placed in

water," id. at 7:47-48.

Yet another embodiment "is configured

to be suspended at a range of depths when the toy turtle is

placed

in

water."

Id.

at

7:49-51.

In

these

instances,

interpreting "configured to" as "capable of" would render these

descriptions and claims "virtually devoid of meaning."
LLC

v.

106659,

Abb,

Inc.,

at *33,

No.

6:ll-CV-0048,

2012 WL 3112302,

29

2012

at *11

U.S.

(E.D.

sipco,

Dist.

Tex.

LEXIS

July 30,

2012)

(observing

requiring
limits

that

only mere

to

the

" [interpreting

capability would

claims");

see

also

'configured

eliminate
Agilent

to'

as

any meaningful

Techs.,

Inc.

v.

Affymetrix, Inc., 567 F.3d 1366, 1378 (Fed. Cir. 2009)(rejecting

the construction of a closed chamber "adapted to"

as meaning

"capable of" because "the closed chamber is not merely capable
of being set
apart.");

apart

from its

Prism Techs.,

surroundings

- it

LLC v. Adobe Sys.,

is in

No.

fact

8:10CV220,

set
2012

U.S. Dist. LEXIS 17860, 34-38, 2012 WL 381868 (D. Neb. Feb. 14,
2012)

(construing "adapted to" to mean "configured to," "because

'adapted to'

does not mean the same

It cannot be

the

toy

figure

Indeed,

thing as

'capable of.'").

case that the patentee intended to describe a

merely

"capable

of"

being

placed

in a

liquid.

it is hard to imagine a figure that is not capable of

being so placed.

Likewise, it is difficult to imagine that the

patentee intended to describe a figure that was merely "capable

of"

floating,

sinking,

or one capable of being "substantially

neutrally buoyant" or "partially immersed in" a liquid.
A

review of

the

extrinsic

evidence

further

confirms

that

Zuru's proposed construction is not consistent with the plain

and ordinary meaning of "configured to."

Although Zuru cites no

dictionary definition for "configure," the dictionary cited by
Zuru

for the terms

"flexible," Def.'s Br.

"coupled," id^ at 14,

"propel," id_;_ at 15,

30

at 9,

ECF No.

21,

"flex," id^ at 18,

and "planar," id., defines "configure" as "to arrange or prepare
(something)

so

that

it

Merriam-Webster.com,

can

be

Configure

Definition,

http://www.merriam-webster.com/dictionary

/configure (last visited Feb.

general-usage

used,"

dictionaries

25, 2014).

consulted

Moreover,

by

the

none of the

Court

defines

"configure" as to render merely "capable of."7
Accordingly,

because

"[interpreting

'configured

to'

as

requiring only mere capability would eliminate any meaningful
limits to the claims," Abb,

*33,

2012 U.S.

the Court "hereby construes

plain

and

ordinary

meaning,

Dist.

LEXIS 106659,

'configured to'

which

the

Court

at

as having its
understands

to

require not merely being capable of being configured but rather

being actually configured," Sipco, LLC v. Amazon.com,

Inc., No.

2:08-cv-359,

147

Tex.

Oct.

2012 U.S.

19,

Dist.

LEXIS 150940,

at *144,

(E.D.

2012).

7 The Court considered several general-usage dictionaries, none of
which define "configure" as to render "capable of."

Third New International Dictionary (1987 ed.),
"configure"

as:

"1:

to

shape according

to

See Webster's

unabridged (defining

some model:

cause

to

conform.
2: to arrange in a certain form, figure, or shape: give a
configuration to"); Merriam Webster's Collegiate Dictionary (10th ed.
1997) (defining "configure" as: "to set up for operation esp. in a
particular way"); The Compact Oxford English Dictionary (2d ed. 1991)
(defining "configure" as: "1. To fashion according to something else
as a model; to conform in figure or fashion.
2. To represent by a
figure or image, to figure.
3.
To fashion by combination and
arrangement; to give an astrological configuration to; to put together

in a certain form or figure.
configuration

for;

to

4.

combine

Computing.
(a

program

To choose or design a
or

device)

with

other

elements to perform a certain task or provide a certain capability.").

31

4.

"configured to

relative

flex in response to said drive producing the

motion"

AND

"configured

configuration in response

to

to

flex

into

a

non-planar

said drive producing the relative

motion"

a. Proposed Constructions & Court Ruling

SwimWays:

Plain

and

ordinary

meaning.

No

construction

required.

Zuru: "The appendage is capable of bending such that
entire appendage is not in a single plane."

Court:

"configured

to

bend,

produced by said drive,

in

response

to

the

the

motion

such that the entire appendage is

not in a single plane."
b. Discussion

At the Markman hearing, the parties agreed to the following
construction proposed by the Court regarding the disputed term:

"appendage bends,

in response to the motion produced by said

drive, such that the entire appendage is not in a single plane."
Because

a

controversy,

court

and

need

only

only

to

construe

the extent

controversy," Vivid Techs.,

claims

"that

necessary

200 F.3d at 803,

are

in

to resolve

the

the Court adopts

the construction agreed upon by the parties at the February 18,
2014

Markman hearing,

with minor

adjustments

grammatical form of the original term.

reflecting

If either party objects

to the construed term as adjusted by the Court,
ORDERED

to

submit

its

objection

32

and

the

supporting

that party is
brief

within

seven (7) days of the issuance of this Opinion and Order.

5. "cause said appendage to have a wave-like whipping motion"
a. Proposed Constructions & Court Ruling

SwimWays:

Plain

and

ordinary

meaning.

No

construction

required.

Zuru: "The appendage is capable of moving such that second
portion of the appendage lags behind the movement of a
first portion of the appendage."

Court: "cause said appendage to move in a whipping fashion,
such that a portion of the appendage lags behind the
movement of another portion of the appendage that is closer
to

the

torso"

b. Discussion

The crux of

the parties'

dispute

is whether the patentee

acted as a lexicographer with regard to this term.

SwimWays

contends that the disputed term requires no construction because
the

term's

"description of

the appendage's motion

apt and intuitively-understandable one."
No.

20.

plain

Zuru disagrees,

and

ordinary

Pis.'

...

Br.

is

at 13,

an

ECF

arguing that the term "does not have a

meaning, " but

is

instead

"an

ambiguous

conglomeration of metaphors" that "is really only understandable
'when read in light of the specification'" and,

thus,

"requires

construction to meaningfully determine the scope of the claim."

Def.'s Resp. Br. at 10, ECF No. 24 (quoting Pis.' Br. at 13, ECF
No.

20).

Zuru

asserts

that

its

proposed construction

of

the

term is "consistent with . . . the '785 patent specification as

well as the plain meaning of the term as would be understood by

33

one of

ordinary skill

in the art."

Def.'s

Br.

at

19,

ECF No.

21.

Patent law allows a patentee to be a lexicographer, meaning
that he "may use terms in a manner contrary to or inconsistent

with
F.3d

one or more
at

1582

Genentech,
However,

of

(quoting

Inc.,
"[t]o

'clearly set

their ordinary meanings."

904

act

other than its

F.2d

as

forth

a

Hormone

its

Research

1558,

own

1562

Found.,

(Fed.

lexicographer,

definition

of

the

Vitronics,
Inc.

Cir.

must

claim

term'

plain and ordinary meaning, " Thorner v.

Computer Entm't Am.

LLC,

(quoting CCS Fitness,

669 F.3d 1362,

Inc. v.

1365

(Fed.

Brunswick Corp.,

v.

1990)).

a patentee

disputed

90

Sony

Cir. 2012)

288 F.3d 1359,

1366 (Fed. Cir. 2002)), indicating an "'express intent to impart
a novel meaning,'" Schering Corp. v. Amgen Inc., 222 F.3d 1347,
1353 (Fed. Cir. 2000)

(quoting York Prod., Inc. v. Cent. Tractor

Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996)).

special

meaning

deliberateness,

must
and

prosecution history.

appear

precision"

with
in

"reasonable
the

Any

clarity,

specification

or

Abbott Labs, v. Syntron Bioresearch, Inc.,

334 F.3d 1343, 1354 (Fed. Cir. 2003) (emphasis omitted) (quoting
In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)).

The disputed term appears throughout the claims.
one

claim,

substantially

the
the

"wave-like,
same

way,

whipping
with

34

motion"

minor

is

In all but
described

variations:

"said

appendage flexes

in a direction opposite

to

that of

the motion

of said appendage during at least a portion of the reciprocating

pivotal motion,
pivotal

the flex of the appendage and the reciprocating

motion

cause

said

appendage

to

have

a

wave-like,

whipping motion."

'785 patent,

12:13-18; accord id. at 8:29-34,

9:19-26,

11:1-7;

see icL

of

10:34-39,

said

appendages

with

but

respect

to

at

10:9-12

said

("the motion

torso

cause

the

appendages to have a wave-like whipping motion").

Because "wave-like,
potentially ambiguous

the

"remainder

Equip.,

637

corresponding

of

['785]

at

F.3d

1332,

discussion in

v.

1998),

to determine

'785

interpretations,

the

Prods.

The

whipping motion" may evoke multiple and

specification,"

including

the

Am.

Piledriving

"drawings

the written description,"

QSound Labs. , Inc.,

patent's

the Court also considers

157

F.3d 1325,

1336

and

Desper

(Fed.

Cir.

the definition intended by the patentee.

specification provides

an

in-depth textual

description of the movement of the appendage relative to the

torso.

Referring

to

Figures

3-7,

the

written

description

describes each stage of movement as visually illustrated in the
figures:

Fig. 3 shows the . . . figure 100 in a first stage of
the

relative

motion.

In

the

first

stage,

the

appendage 160 is pivoting in a first direction A with
respect to the torso 120 . . . [and] both the flexible

portion 164 and the rigid portion 162 of the appendage
The flexibility of the appendage
move in direction A.
160

and the

resistance of

the

35

liquid,

however,

cause

the flexible portion 164 of the appendage 160 to flex
or bend in a direction opposite to
that of
the
movement of the appendage.

Fig.
4 shows
. . . the second stage,
[where]
the
appendage
160
has
reversed
its
direction
and
is
pivoting in a second direction B with respect to the
torso 120.
The rigid portion . . . has also reversed
its direction and is moving in the second direction B.
The flexible portion . . . , however, is still moving

in the first direction A.
In this second stage, the
flexible portion ... is flexing or bending in the
same

direction

portion

of

as

the

that

of

the

appendage.

motion

Fig.

5

of

at

shows

least

. . .

a

the

third stage, [where] the appendage 160 [including the
rigid portion 162 of the appendage] is still pivoting
in

the

second

direction

B.

...

The

flexible

portion 164 of the appendage 160, however, has changed
its direction and is moving in the second direction B
. . . [and] is also flexing or bending in an [sic]
direction opposite to that of the movement of the
appendage.

Fig. 6 shows . . . the fourth stage, [where] the
appendage 160 has changed its direction and is again

pivoting in the first direction A.
162 of the appendage 160 has

The rigid portion
also changed its

direction and is again moving in the first direction
A.
The flexible portion 164 of the appendage 160,
however, is still moving
. . . [and]
is flexing

in the second direction B
or bending in the same

direction as that of the motion of at least a portion
of the appendage. Fig. 7 shows . . . the fifth stage,
[where] the appendage is still pivoting in the first
direction A.
The flexible portion 164 of the
appendage 160, however,

has changed its direction and

is again moving in the first direction A . . . [and]
is also flexing or bending in a direction opposite to
that of the movement of the appendage.
Id- at 2:30-3:12.

The specification likens the movement of the

appendage to "a wave-like,

whipping motion,"

explaining that,

"[b]ecause the flexible portion 164 of the appendage 160 flexes
and bends as the appendage 160 moves with respect to the torso

36

120,

the movement

of

the

flexible portion

constantly

motion of the rigid portion 162 of the appendage."
19.
a

lags

the

Id. at 3:13-

Thus, although the patentee may not have intended to act as
lexicographer,

the

specification

"'clearly

definition of the disputed claim term'

ordinary

meaning,"

Thorner,

669

Fitness,

Inc.,

F.3d

1366),

288

deliberateness,

Heeding

the

warning

specification,

Cir.

2005)),

described

in

F.3d

at

with

v.

415

for

Federal

See,

e.g.,

"the

toy

'785 patent,
reef

motion that
5:59-64

is

(same

fish

200

has

"against

embodiments" described in the

PLC,

403

F.3d 1364,

that

the

(citing

Nazomi

1369

likewise

refer

those figures as

"wave-like,
(explaining

substantially

whipping
that
the

the motion
same

"toy

regarding "toy turtle 400").

koi

fish

Furthermore,

300");

to

the

motion."
of

wave-like

described above and illustrated in Figs.
regarding

(Fed.

remaining embodiments

specification

4:42-45

CCS

clarity,

Circuit

1323

embodiment's

a

334 F.3d at 1354.

at

observes

'785 patent's

each

(quoting

"reasonable

Figures 3-7 and the textual description of
standard

1365

F.3d

ARM Holdings,

the Court
the

the

[specific]

Phillips,

Inc.

of

forth

other than its plain and

and precision," Abbott Labs.,

confining the claims to

Commc'ns,

at

set[s]

7:26-27

3-7");
(same

in all but one claim,

the disputed term follows a claim limitation specifying that the
appendage

move

in

the

manner

described

and

illustrated

in

Figures 3-7 or that the appendage move pivotally with respect to

37

the torso, which comports with the embodiments referenced above.
See

'785 patent,

substantially

(citing
flexes

8:29-34;

in

a

9:19-26;

identical

10:34-39;

language

direction opposite

to

that

11:1-7;

12:11-18

"said

appendage

that
of

the motion of

appendage during at least a portion of the [motion],
the

appendage

wavelike

and

the

[motion]

whipping motion");

limitations .on the
motion of

cause

but

movement

of

see

the

to have

at

10:9-12

appendage

said appendages with respect

appendages

the flex of

said appendage

id.

to

said

to

have

(making no

except

that

"the

said torso cause the

a wave-like whipping motion.").

Therefore,

considering the context in which the disputed term is used,
Court

finds

that

the

"wave-like,

a

whipping motion"

as

the

described

and illustrated in Figures 3-7 would be understood by a person

having ordinary skill in the art,

not as merely exemplary, but

as a definition of the outer limit of the claim.

Phillips,

415

F.3d at 1323.

Accordingly,
manner

the

consistent

specification
constantly
appendage."

with

that

lags

Court

the

construes

the

"the

'785

of

the

'785 patent at 3:13-19.

38

disputed

patent's

movement

motion

the

of

explanation

the

rigid

term

flexible

portion

162

in

in

a

the

portion
of

the

IV.

For

Opinion

the

and

reasons

Order

as

set

the

CONCLUSION

forth

above,

the

construction

of

Court

the

issues

disputed

this

claim

terms in the '785 patent.
The Clerk is

REQUESTED

to

send a

copy of

this

Opinion and

Order to counsel of record for the parties.
It

is

so ORDERED.

'Tfll&fe-

/s/

Mark S.
UNITED

Norfolk,

Virginia

March j0_, 2014

39

STATES

Davis

DISTRICT JUDGE