Pure Imagination LLC v. Adaptics Limited

Filing 372

ORDER on Second Markman Claims Construction re 265 Brief - Opening filed by Adaptics Limited, 264 Brief - Opening, filed by Perfect Company; signed by Judge Ronald B. Leighton. (DN)

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HONORABLE RONALD B. LEIGHTON 1 2 3 4 5 6 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT TACOMA 7 8 9 10 11 12 CASE NO. C14-5976-RBL PERFECT COMPANY, Plaintiff, SECOND MARKMAN CLAIMS CONSTRUCTION v. ADAPTICS LIMITED, DKT. #264 & 265 Defendant. 13 14 THIS MATTER is before the Court following a claims construction hearing pursuant to 15 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). The parties seek construction of 16 seven claims of United States Patent No. 9,772,217 (the ‘217 patent). The Court has reviewed all 17 of the materials presented, and heard expert testimony and argument of counsel. 18 19 I. LEGAL STANDARD Claim construction is a matter of law for the court. Markman v. Westview Instruments, 20 Inc. 517 U.S. 370 (1996). The claims of the patent establish and limit the patentee’s right to 21 exclude by “describing the outer boundaries of the invention.” Warner-Jenkinson Co., Inc. v. 22 Hilton Davis Chem. Co., 520 U.S. 17, 27 n. 4 (1997). In construing the language of a claim, the 23 court primarily focuses on so-called “intrinsic evidence” which is comprised of the patent itself, 24 SECOND MARKMAN CLAIMS CONSTRUCTION -1 1 including the claims, the specification and, if in evidence, the prosecution history. See Phillips 2 v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Specifically, the court first looks to 3 the words of the claims themselves, both asserted and non-asserted, to define the scope of the 4 patented invention. The ordinary and customary meaning of a term is defined by a person of 5 ordinary skill in the art (PHOSITA) at the time of the invention. Id. The context in which a term 6 is used can be “highly instructive” in resolving the meaning of the term. Id. at 1314. For 7 example, if a claim has the term “steel baffle,” it strongly implies that the term “baffle” does not 8 inherently include objects made of steel. Id. Other claims in a patent may also provide valuable 9 contextual cues for deciphering the meaning of a term. Id. If a limitation is present in a 10 dependent claim, then there is a presumption that the limitation is not present in the parent claim. 11 Id. at 1314-15. 12 The court then reviews the specification to determine whether the inventor has used any 13 terms in a manner inconsistent with their ordinary meaning. The specification acts as a dictionary 14 when it expressly defines terms used in the claims or when it defines terms by implication[.] 15 Thus, the specification is always highly relevant to the claim construction analysis. Usually, it is 16 dispositive; it is the single best guide to the meaning of a disputed term. Id. 17 The prosecution history of a patent is the last piece of intrinsic evidence that a court 18 should consider when construing the claims of the patent. Id. at 1317. The prosecution history 19 provides evidence of how the U.S. Patent and Trademark Office (“PTO”) and the inventor 20 understood the patent. Id. A court, however, should be aware that the prosecution history 21 represents the ongoing negotiation between the PTO and the applicant, rather than the final 22 product. Id. As such, the prosecution history may lack the clarity of the specification and may 23 not be as useful for claim construction purposes. Id. In certain instances, however, the 24 DKT. #264 & 265 - 2 1 prosecution history may provide guidance of an applicant’s intent to specifically limit the scope 2 of a given claim term. Id. 3 Extrinsic evidence is the last category of evidence a court may consider when 4 construing patent claims. Id. Such extrinsic evidence includes expert and inventor 5 testimony, dictionaries, and learned treatises. Id. On its own, extrinsic evidence is 6 7 8 unlikely to be reliable in guiding the court’s claim construction. Id. at 1319. Instead, extrinsic evidence should be considered in the context of the intrinsic evidence. Id. A court may also use extrinsic evidence to determine how a person of ordinary skill in the 9 10 11 12 13 14 15 16 17 18 art would understand the claimed invention. Id. It is the Court’s duty to resolve fundamental disputes among the parties as to the scope of a claim term, but it is not the Court’s duty to construe every claim term, or to repeat or restate every claim term. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997); 02 Micro Int’l Ltd. v. Beyond Innovation Tech Corp., 521 F.3d 1351, 1362 (Fed. Cir. 2008). Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction. See Phillips v. AWH Corp., 415 F. 3d 1303, 1312 (Fed. Cir. 2005). II. DISPUTED TERMS 19 Because this is the second Markman hearing in this case, some terms have already been 20 21 22 construed. Dkt. #190. However, the following terms are disputed, and the Court’s constructions follow. 23 24 DKT. #264 & 265 - 3 1 1. The term “computing device” appears in claims 1, 5, 6, 9, and 13. The parties’ competing 2 3 “Computing Device” constructions are summarized in Perfect’s opening brief: 4 5 6 7 8 9 Dkt. #274, at 6. For its construction, Perfect relies chiefly on the following statement from the ‘217 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Patent: “the culinary ratio system 100 has a smart scale 102, a smart device 104 (computing device) and a communication 105 there between.” According to Perfect, this shows both that a “computing device” is something different from a “smart scale,” and that a “computing device” is synonymous with a “smart device.” Perfect then points to the ‘217 Patent’s examples of things that might constitute a “smart device,” which include “a personal computer and mobile device such as a tablet computer or a mobile phone.” Perfect notes that the drawings of a “smart device” in the ‘217 Patent show a tablet computer. In addition, Perfect contends that in the original nonprovisional (from which the ‘365 and ‘217 Patents derive), and in ‘365 and ‘217 Patents themselves, the location of the electronic display is described as being “with” a computing device. Adaptics argues that the ordinary meaning of “computing device” is the appropriate construction because the term merely consists of the word “device” modified by the word “computing.” In addition, Adaptics argues “computing device” should be construed the same way in both Patents, and the parties used the term in a generic sense previously for the ‘365 DKT. #264 & 265 - 4 1 Patent. Adaptics also contends that, because “examples of a smart device include a personal 2 computer and mobile device such as a tablet computer or mobile phone,” there cannot be a 3 requirement that the electronic display be located in the same housing. Adaptics goes on to argue 4 that the Court should not adopt Perfect’s construction because it would create redundancy with 5 other claim terms, such as “electronic display.” Adaptics similarly contends that, if “computing 6 device” and “smart device” were actually identical terms, it would make no sense for the patents 7 to differentiate between them. Finally, Adaptics argues that “claim differentiation strongly 8 implies that not all ‘computing devices’ come ‘with an electronic display,’ much less an 9 ‘integrated electronic display.’” Dkt. #265, at 10 (differentiating claims 1 and 13). 10 The Court agrees with Perfect that Adaptics’ ordinary meaning construction overlooks 11 the specification’s context. See Phillips, 415 F.3d at 1321 (“[H]eavy reliance on the dictionary 12 divorced from the intrinsic evidence risks transforming the meaning of the claim term to the 13 artisan into the meaning of the term in the abstract, out of its particular context, which is the 14 specification.”). The ‘217 Patent equates “computing device” with “smart device” by putting the 15 former in parentheses after the latter, showing that the words are intended to be used 16 interchangeably. This conclusion is reinforced by the specification’s statement that, “[w]hen 17 appropriate, like reference materials and characters are used to designate identical, 18 corresponding, or similar components in different figures.” This suggests that the author intended 19 to indicate such identicalness or similarity by subsequently inserting “computing device” in 20 parentheses next to “smart device.” 21 Although Adaptics argues that this parenthetical could also be a way of indicating that a 22 “smart device” is a specific example of a type of “computing device,” this theory would make 23 more sense if the article “a” were included in front of “computing device.” It also overlooks the 24 DKT. #264 & 265 - 5 1 fact that “computing device” was not included in parentheses after the term “smart scale,” which 2 is used earlier in the same sentence. If the term “computing device” were intended to bear a 3 broad definition, that definition would presumably also encompasses a “smart scale,” but the 4 specification specifically omits an association between those two terms. 5 Furthermore, the specification and claims uniformly make clear that the “computing 6 device” must be able to do three things: (1) receive real-time data from a scale, (2) perform 7 various types of computations based on the data received, and (2) cause an electronic display to 8 display real-time data. The term “computing device” first appears in the abstract, where it is 9 described as “configured to communicate with the scale.” The term is used only once in the 10 specification, as described already. Then, the term is used numerous times throughout claims 1 11 through 16. In all of these claims, the “computing device” is described as “receiving real-time 12 data from a scale” and “causing an electronic display to display real-time progress,” or as 13 “configured for” these functions. These capabilities are therefore essential qualities of the 14 “computing device” envisioned by the ‘217 Patent, and Perfect’s construction is correct to 15 encompass them. 16 However, while the Court agrees that “computing device” should not simply take on its 17 ordinary dictionary meaning, Perfect’s hyper-specific construction contradicts the ‘217 Patent in 18 several regards. First, if a “computing device” is the same as a “smart device,” then the definition 19 of “computing device” must necessarily include a “personal computer,” which is the first 20 example of a “smart device” listed in the specification. The specification also mentions 21 elsewhere that a user can enter commands for the app through the “smart device” using a 22 “mouse, a keyboard, or touch screen.” Because a personal computer can have a separate monitor 23 24 DKT. #264 & 265 - 6 1 and involves a mouse, Perfect’s requirement that a “computing device” have an “integrated 2 electronic display in the same housing” is incorrect. 3 Second, while all the claims reference the “computing device . . . causing the electronic 4 display to display real-time progress,” only claims 9 and 13 state that it is a “computing device 5 with an electronic display.” (emphasis added) While the word “with” implies the type of physical 6 integration between the “computing device” and “electronic display” that Perfect advocates for, 7 the omission of the word “with” from several claims implies that such integration is not 8 necessary. See Phillips, 415 F.3d at 1314 (“Differences among claims can also be a useful guide 9 in understanding the meaning of particular claim terms.”). The computing device could still 10 cause the electronic display to display data remotely or through a wired connection without 11 integration in the same housing. Consequently, Perfect’s construction is too narrow. 12 Perfect’s argument based on the drawings in the ‘217 Patent is also unpersuasive. The 13 first sentence in the “Brief Description of the Drawings” section states, “The present invention 14 will be described by way of exemplary embodiments, but not limitations, illustrated in the 15 accompanying drawings.” It later explains that the drawings “illustrate one or more embodiments 16 of the invention,” suggesting there could be more. See Cont'l Circuits LLC v. Intel Corp., No. 17 2018-1076, 2019 WL 489069, at *6 (Fed. Cir. Feb. 8, 2019) (stating that the Federal Circuit has 18 “expressly rejected the contention that if a patent describes only a single embodiment, the claims 19 of the patent must be construed as being limited to that embodiment”). This makes clear that the 20 Court’s interpretation of claim terms should not be limited by the drawings. 21 Because neither party’s construction is entirely satisfactory, the Court will adopt Perfect’s 22 construction but excise the phrase “. . . having an integrated electronic display in the same 23 housing, such as iPhone or an Android Phone or an iPad or a Tablet . . . .” Dkt. #264, at 12. The 24 DKT. #264 & 265 - 7 1 Court will also add the examples of a “smart device” listed in the specification and alter the end 2 of Perfect’s construction to conform to the actual language in the claims. “Computing device” 3 therefore means “a smart device, including a personal computer and mobile device such as a 4 tablet computer or a mobile phone, capable of receiving real time data and causing real time 5 progress of the measured amount of an ingredient to be displayed on an electronic display.” 6 2. 7 8 “Electronic Display” The term “electronic display” appears in claims 1, 5, 6, 9, 13, 17, and 21. The parties’ competing constructions are summarized in Perfect’s opening brief: 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Dkt. #264, at 15. The parties’ dispute over the construction of “electronic display” comes down to two words: “and” vs. “or.” Perfect argues that an “electronic display” must be able to represent “text and graphics” because the specification consistently depicts and describes this capability. Perfects also contends that an “electronic display” that only depicted text would be antithetical to displaying recipe blocks filling in proportion to the ingredient being added, which is Perfect’s central inventive concept. In addition, Perfect points to the statement in the specification that “the culinary ratio system 100 has one or more graphical displays to show the real-time amount for any ingredient being added . . . .” This indicates that at least one display must be capable of depicting graphics, which precludes Adaptics’ construction because it contemplates a scenario in which only text could be displayed. 23 24 DKT. #264 & 265 - 8 1 In defense of its “text or graphics” construction, Adaptics argues that Perfect’s 2 construction is foreclosed by the specification, which describes a drawing of a “scale display” as 3 displaying “real-time progress” that can be “graphical and/or numeric.” This argument, however, 4 relies on the “electronic display” being the same thing as the “scale display” in some 5 embodiments. Adaptics contends that this interpretation is correct for several reasons, while 6 Perfect argues that the “electronic display” has to be part of the “computing device.” This 7 disagreement about the possible locations of the “electronic display” is the main point of tension 8 between the parties. 9 Adaptics is correct that there is no consistent limitation in the specification or claims that 10 an “electronic display” be a part of the “computing device.” To the contrary, there are several 11 indications that the “electronic display” can be located on the “scale” in some embodiments. 12 Under the description of a “Two-Way Communications Connection,” the specification plainly 13 states that “the scale display can be synchronized and controlled by the app” to show, among 14 other things, “[r]eal-time progress of measurement.” “Electronic display” is never described in 15 the specification. However, the claims uniformly characterize “electronic display” as something 16 the “computing device” causes to display “real-time progress of the measured amount of the 17 active ingredient.” In addition, as mentioned in the previous section, just claims 9 through 15 18 describe a “computing device with an electronic display.” (emphasis added) Claims 1 through 8, 19 in contrast, only describe a “computing device causing an electronic display to display real-time 20 progress.” (emphasis added) The embodiments contemplated by claims 1 through 9 therefore 21 could correspond to the two-way communication connection described in the specification, 22 meaning an “electronic display” can be located on the scale in some embodiments. 23 24 DKT. #264 & 265 - 9 1 Because an “electronic display” can be located on the “scale,” Perfect’s construction 2 cannot be correct. The description for Figure 4 states that the “scale display” can display the 3 “[r]eal-time progress of measurement (graphical and/or numeric).” (emphasis added) Because at 4 least some embodiments involve a “scale display” that only depicts progress using numbers, and 5 in some embodiments an “electronic display” can be the “scale display,” it follows that in some 6 embodiments an “electronic display” need not be capable of depicting graphics. 7 This construction does not conflict with the specification’s requirement that the “culinary 8 ratio system” have “one or more graphical displays.” While this indicates that every embodiment 9 must have a graphical display somewhere, the specification contemplates that in some 10 embodiments both the scale and smart device displays “may be used for displaying information 11 about recipe ingredients.” Thus, while the “scale display” may depict that information in a solely 12 numerical form, the “smart device” could simultaneously depict the same information in a 13 graphical form. The fact that the claims do not appear to explicitly describe this dual-display 14 configuration does not mean that a second display could not exist, nor does it mean that the 15 “electronic display” that the claims do describe must be the one that depicts graphics. This 16 conclusion is reinforced by the claims’ consistent use of the article “an” before “electronic 17 display,” implying that there may be multiple. Thus, while it is true that the Perfect’s invention 18 must involve at least one display capable of depicting graphics, not every “electronic display” 19 must have that capability. 20 The Court adopts Adaptics’ construction. If Perfect had intended for “electronic display” 21 to uniformly mean “graphical display” or “smart device display,” it would have been easy to use 22 such terms in the claims or define such an equivalence in the specification. Instead, Perfect chose 23 to trade the more specific terminology from the specification for much broader language in the 24 DKT. #264 & 265 - 10 1 claims themselves. “Electronic display” accordingly means “a computer screen or other 2 electronic device capable of displaying text or graphics.”1 3 3. 4 5 “Scale” The term “scale” appears in claims 1, 5, 6, 9, 13, 17, and 21. The parties’ competing constructions are summarized in Perfect’s opening brief: 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Dkt #264, at 16. Perfect argues that its more restricted construction of “scale” is correct for several reasons. First, Perfect points to the background section of the ‘217 Patent, which contrasts Perfect’s scale with “the standard kitchen scale” and “the common digital kitchen scale.” Perfect also argues that the only “scale” described as part of an inventive embodiment in the ‘217 Patent is described as a “smart scale” and always shown as a digital kitchen scale. Perfect goes on to assert that Adaptics’ construction is overly broad and would produce absurd results, such as including bathroom scales or trucking scales. In response, Adaptics argues that Perfect’s requirement that the “scale” be “configured to be in communication with a smart device to provide real-time data” unnecessarily repeats limitations that are already present in the claims. As for Perfect’s use of the word “kitchen,” Adaptics contends that this narrowing descriptor is not included anywhere in the claims and only 21 22 23 24 1 The Court notes, however, that the construction presumes that an “electronic display” capable of displaying graphics can also display text and numbers. Otherwise, the “graphical and/or numeric” requirement from the description of the “scale display” would not be satisfied. (emphasis added) DKT. #264 & 265 - 11 1 appears twice in the background section of the specification. Adaptics observes that the ‘217 2 Patent does not limit the type of “scale” to “kitchen scale” anywhere. 3 The Court agrees with Adaptics that neither the specification nor the claims limit the 4 construction of “scale” to a “kitchen scale,” or even directly describe it in such terms. Instead, 5 the background section merely refers to kitchen scales as a means of emphasizing what Perfect’s 6 invention is improving upon. In addition, although the drawings depict kitchen scales, this alone 7 is not enough to mandate that all embodiments make use of kitchen scales. See Intel Corp., 2019 8 WL 489069, at *6. Perfect’s construction is therefore incorrect insofar as it refers to a “kitchen 9 scale.” (emphasis added) 10 However, the rest of Perfect’s construction is preferable to Adaptics’. The “scale” 11 described in the specification is uniformly referred to as a “smart scale.” The specification states, 12 “As shown in the embodiments in FIGS. 1-6, the culinary ratio system has a smart scale, a smart 13 device (computing device) and a communication connection.” Importantly, this statement is not 14 describing the embodiments but using the embodiments to describe the system itself, which 15 necessarily involves a smart scale. See Trustees of Columbia Univ. in City of New York v. 16 Symantec Corp., 811 F.3d 1359, 1365 (Fed. Cir. 2016) (distinguishing between a specification’s 17 description of preferred embodiment and statements that describe the overall scope of a term). 18 The “scale” described in every claim also has the ability to transmit “real-time data” to a 19 “computing device” as a uniform feature. This makes the second part of Perfect’s construction an 20 accurate description of the scope of the term “scale” as it is used in the claims. While language 21 similar to Perfect’s construction is also included in the claims themselves, this does not create the 22 kind of redundancy where some claims become purposeless because their defining limitations 23 have been incorporated into a term’s construction. See, e.g., Mynette Techs., Inc. v. United 24 DKT. #264 & 265 - 12 1 States, 139 Fed. Cl. 336, 354 (2018) (“responsive” and “readable” had to have different 2 meanings to avoid redundancy). Here, the inventor intended to exclude any scale incapable of 3 communicating real-time data to another device from the scope of the invention. Consequently, 4 “scale” means “a cabled or wireless smart scale capable of communicating with a smart device to 5 provide real-time data.” 6 4. 7 “Real-Time Progress” The term “real-time progress” appears in claims 1, 5, 6, 9, 13, 17, and 21. The term “real- 8 time” was already interpreted in the prior Markman hearing, so this dispute mainly focuses on 9 the word “progress.” See Dkt. #190. The parties’ competing constructions are summarized in 10 Perfect’s opening brief: 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Dkt. #264, at 11. More specifically, Perfect advocates for attaching the Merriam-Webster Dictionary definition of “progress” to the Court’s previous construction of “real-time,” yielding: “Relating to a system in which input data is processed within milliseconds so that it is available virtually immediately as feedback, the feedback showing movement toward a goal or to a further or higher stage.” Perfect argues that the specification does not suggest limiting the construction to an indication of “measured weight.” Perfect also contends that the phrase following “especially” is not limiting and therefore should not be included. Adaptics’ construction is basically an attempt to import aspects of their construction of “electronic display” into this term. According to Adaptics, its construction is necessary because DKT. #264 & 265 - 13 1 the specification states that “real-time progress of measurement” may be “graphical and/or 2 numeric.” However, as Perfect points out, its construction does not rule this out. Indeed, its 3 construction of “electronic display” also does not rule this out, since Perfect only contends that 4 the display must be capable of displaying graphical content, not that it always does. The parties’ disagreement over this term appears to serve no purpose. While “real-time 5 6 progress” is consistently used in the claims to refer to “real-time progress of the measured 7 amount of the active ingredient,” Adaptics’ construction does not capture the meaning of the 8 word “progress,” which refers to something that is ongoing. In this regard, Perfect’s construction 9 is more accurate. “Real-time progress” therefore means “Relating to a system in which input data 10 is processed within milliseconds so that it is available virtually immediately as feedback, the 11 feedback showing movement toward a goal or to a further or higher stage.” 12 6. 13 14 “Tared Weight” The term “tared weight” appears in claims 1, 5, 6, 9, 13, 17, and 21. The parties’ competing constructions are summarized in Perfect’s opening brief: 15 16 17 18 19 20 21 22 23 Dkt. #264, at 18. The parties are basically in agreement that these two definitions are functionally equivalent and simply argue over whether specificity or conciseness should be emphasized. Because the specificity of Perfect’s construction makes it easier to apply, the Court adopts it. 24 DKT. #264 & 265 - 14 1 7. The term “taring” appears in claims 1, 5, 6, 9, 13, 17, and 21. The parties’ competing 2 3 “Taring” constructions are summarized in Perfect’s opening brief: 4 5 6 7 Dkt. #264, at 21. 8 9 10 11 12 The parties’ disagreement for “taring” is essentially the same as for “tared weight.” The Court therefore adopts Perfect’s construction for the same reason. 8. “Culinary Combination” The term “culinary combination” appears in claims 1, 5, 6, 9, 13, 17, and 21. The parties’ competing constructions are summarized in Perfect’s opening brief: 13 14 15 16 17 18 19 20 21 22 23 24 Dkt. #264, at 19. Perfect argues that this term must be construed because the parties may disagree about its plain and ordinary meaning. Adaptics contends that construction is unnecessary because “culinary combination” appears in the preamble to the claims, which states, “A method for a computing device to assist a user in assembling a culinary combination according to a recipe, the recipe identifying one or more ingredients and one or more target amounts, each of the ingredients associated with one of the target amounts, the method comprising . . . .” Adaptics DKT. #264 & 265 - 15 1 asserts that this use of “culinary combination” does not limit how Perfect’s inventive “method” 2 operates and thus needs no construction. If the term is construed, Adaptics objects to Perfect’s 3 construction to the extent that it is limited to “human consumption.” 4 “Generally, the preamble does not limit the claims.” Allen Eng'g Corp. v. Bartell Indus., 5 Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). However, the preamble may be limiting “when the 6 claim drafter chooses to use both the preamble and the body to define the subject matter of the 7 claimed invention,” i.e., the preamble is “necessary to give life, meaning and vitality to the 8 claim.” Id. (internal quotations omitted). “On the other hand, a preamble is not limiting where a 9 patentee defines a structurally complete invention in the claim body and uses the preamble only 10 to state a purpose or intended use for the invention.” Poly-Am., L.P. v. GSE Lining Tech., Inc., 11 383 F.3d 1303, 1310 (Fed. Cir. 2004) (internal quotations omitted). Courts make this 12 determination “on the facts of each case in view of the claimed invention as a whole.” Allen 13 Eng'g, 299 F.3d at 1346. 14 In Poly-America, the court held that the term “blown-film” was limiting as used in the 15 preamble, which started every claim with, “A blown-film textured liner, comprising . . . .” 383 16 F.3d at 1310 (quoting US PAT 5763047). The court explained that the term represented an 17 “important characteristic of the claimed invention” and also pointed out that the term appeared in 18 the title, summary, embodiment descriptions, and all the claims. Id. Similarly, in Pitney Bowes, 19 Inc. v. Hewlett-Packard Co., the court held that a phrase in the preamble was limiting because it 20 was “intimately meshed with the ensuing language in the claim.” 182 F.3d 1298, 1306 (Fed. Cir. 21 1999). The court reached this conclusion because the last clause in the claim, which described 22 the type of shape the patented printer should generate, harkened back to the same terms that 23 appeared in the preamble. Id. 24 DKT. #264 & 265 - 16 1 In contrast, in Allen Engineering, the court held that the term “fast steering” was not 2 limiting as used in the preamble. 299 F.3d at 1347. The preamble described the invention as “[a] 3 self-propelled, fast steering motorized riding trowel for finishing a concrete surface, said trowel 4 comprising ....” Id. at 1346. The court held that the term merely described the invention’s 5 purpose, and noted that the specification and claims provided no interpretive frame of reference 6 for the term. Id. 7 Here, while “culinary combination” is used to identify the invention’s purpose and does 8 not itself show up in the body of the claims, it also defines the scope of a term that shows up 9 repeatedly in the claims: “ingredient.” Indeed, unlike Allen Engineering, the specification 10 provides an interpretive frame for “culinary combination” by stating, “As used herein, culinary 11 combinations will include creations of mixology and of cooking.” “Culinary combination” thus 12 limits the types of “ingredients” that the claims refer to, making “culinary combination” a 13 limiting term. 14 This leaves only the question of whether Perfect’s construction properly limits the term to 15 “human consumption.” While the embodiments depict food or drinks for human consumption, 16 the ‘217 patent only explicitly limits “culinary combination” by stating that it includes “creations 17 of mixology and of cooking.” Thus, even if those terms related solely to human consumption, the 18 specification does not create an exclusive list. The Merriam-Webster Dictionary defines 19 “culinary” as, “of or relating to the kitchen or cookery,” which also does not limit the definition 20 to human consumption. Consequently, the word “human” will be excised but Perfect’s 21 construction is otherwise adopted. Accordingly, “culinary combination” means “food produced 22 for consumption by a process by combining, mixing, and heating ingredients, or a drink for 23 consumption (e.g., cocktail) produced by mixing ingredients, often involving alcohol.” 24 DKT. #264 & 265 - 17 1 2 3 9. “Out of the Order” The term “out of the order” appears in claims 5, 13, and 21. The parties’ competing constructions are summarized in Perfect’s opening brief: 4 5 6 7 8 9 Dkt. #264, at 19. Perfect argues that its construction correctly corresponds to the specification, which states 10 that “[t]he culinary ratio system 100 displays ingredients and actions of a recipe in a logical and 11 intuitive order” and references a “recommended order of actions and ingredients.” The 12 specification later explains that Figure 18 shows how “[t]he culinary ratio system 100 keeps an 13 ingredient history of ingredient events,” including “any measured ingredient activity occurring 14 out-of-order.” According to Perfect, “the order” mentioned in the claims is actually “the 15 recommended order” described in the specification. 16 17 Adaptics argues that “out of the order” must be read within the context of the preceding clauses in claims 5, 13, and 21. Those clauses read: 18 19 20 21 22 23 24 DKT. #264 & 265 - 18 1 Adaptics argues that “the” is used to refer to the antecedent “an order.” Adaptics also equates 2 “out of” with “from,” and argues that there is no support for equating “out of the order” with 3 “out of order,” as Perfect advocates. The most important sticking point between the parties is the appropriate definition of “out 4 5 of.” The Merriam-Webster Dictionary defines “out of” as, “used as a function word to indicate 6 choice or selection from a group,” which would favor Adaptics’ construction. However, it also 7 defines it as, “used as a function word to indicate a position or state away from the usual or 8 expected,” which would favor Perfect’s definition. Whether or not “the order” referenced in the 9 claims is actually “the recommended order,” an “order” always refers to some kind of prescribed 10 sequence. Therefore, selecting an ingredient “away from” the order identified in the claims, even 11 if it is not necessarily the “recommended order” mentioned in the specification, would still 12 comport with Perfect’s construction. However, Perfect’s construction is ultimately superior to Adaptics because it aligns with 13 14 the specification’s description of how the system deals with “mistakes” that result from a user 15 adding an ingredient at the wrong time. Consequently, the Court adopts Perfect’s construction. 16 10. 17 18 “Target Amount” The term “target amount” appears in claims 1, 5, 6, 9, 13, 17, and 21. The parties’ competing constructions are summarized in Perfect’s opening brief: 19 20 21 22 23 Dkt. #264, at 20. 24 DKT. #264 & 265 - 19 Although Adaptics contends that “target amount” should be given its plain and ordinary 1 2 meaning, Adaptics also does not object to Perfect’s construction. See Dkt. #265, at 20. In light of 3 this, the Court adopts Perfect’s construction. 4 11. The term “upper threshold” appears in claims 1, 9, and 17. The parties’ competing 5 6 “Upper Threshold” constructions are summarized in Perfect’s opening brief: 7 8 9 10 Dkt. #264, at 21. 11 Adaptics has indicated that it has no objection to Perfect’s construction, and the Court 12 therefore adopts it. See Dkt. #264, at 21. 13 12. 14 “Real Time” Although “real time” was already construed during the prior Markman hearing [Dkt. 15 #190], Adaptics urges the Court to adopt its new construction, which it summarizes in its 16 opening brief: 17 18 19 20 21 22 Dkt. #265, at 15. 23 24 DKT. #264 & 265 - 20 1 Perfect argues that the Court should reject Adaptics’ new constructions of terms that were 2 already construed in the previous Markman hearing. Perfect points to Adaptics’ own Motion to 3 Consolidate the ‘365 and ‘217 patent cases, in which Adaptics argued that the two patents were 4 nearly identical. See Dkt. #213, at 2, 5. Adaptics assured the Court that Perfect would have the 5 ability to present additional terms for construction but did not suggest that it would re-visit 6 previously construed terms. Id. at 5. Perfect also identifies several cases holding that identical 7 terms in related patents should be construed consistently unless the Court is “otherwise 8 compelled.” See Omega Eng'g, Inc, v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003); see 9 also Trustees of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1369 10 (Fed. Cir. 2016). 11 Adaptics admits that its new construction is “very similar” to the current construction but 12 argues that its definition of “real time” is superior because it derives from a technical dictionary. 13 Dkt. #265, at 23-24. However, Adaptics’ expert “agrees with the Court’s current construction 14 generally.” Id. 15 The parties and the Court have already invested significant resources in construing the 16 term “real time.” Indeed, it was a primary focus of the first Markman hearing. The fact that 17 Adaptics moved to consolidate the ‘365 and ‘275 patent cases does not give it license to re- 18 litigate issues that have already been decided, especially where there is no substantial reason to 19 change course. As Perfect points out, Adaptics does not provide a sound reason for why it could 20 not have presented this construction at the prior Markman hearing. The IEEE Dictionary of 21 Standards and Terms that Adaptics relies on for its new construction is not new and certainly 22 does not post-date the last hearing. The Court will therefore not alter the current construction of 23 “real time.” 24 DKT. #264 & 265 - 21 1 2 13. “Period of Inactivity” “Period of inactivity” was also previously construed when the parties submitted their 3 Joint Claim Construction Chart, in which Adaptics waived objection to Perfect’s construction. 4 Dkt. #141. However, Adaptics argues for the following new construction, summarized in its 5 opening brief: 6 7 8 9 10 11 Dkt. #265, at 22. Adaptics argues that its new construction is necessary because Perfect’s previous 12 construction introduces an improper intent requirement by using the word “predetermined.” 13 Adaptics also contends that Perfect’s construction improperly focuses on the goal of data 14 monitoring instead of the data monitoring itself. Perfect responds that its construction is superior 15 because it accounts for the specification’s statement that “the user can adjust the period of 16 inactivity.” By ignoring this important description of the term in the specification, Perfect 17 contends that Adaptics’ construction falls short. Finally, Perfect points out that Adaptics’ use of 18 the word “significantly” introduces uncertainty. 19 For the same reasons described with respect to “real time,” the Court will not adopt 20 Adaptics’ new construction of “period of inactivity.” However, in addition, Perfect’s existing 21 construction more accurately accounts for the term’s meaning as used in the specification. While 22 it is true that Perfect’s construction focuses on the data monitoring’s goal, “period of inactivity” 23 24 DKT. #264 & 265 - 22 1 is referenced in the specification within a goal-oriented context. Specifically, the “period of 2 inactivity” tells the “scale” when to “perform[] a ‘tare’ and advance to the next recipe block.” 3 The word “predetermined” also does not introduce the “intent” element that Adaptics 4 insists on. Instead, it addresses the fact that the specification contemplates a specific “period of 5 inactivity” that must be set either by the product itself or adjusted by the user manually. 6 Adaptics’ construction does not address this context from the specification. The Court will 7 therefore not alter the current construction of “period of inactivity.” 8 9 10 CONCLUSION Therefore, the Court construes the disputed terms in the ‘217 patent as set forth above. IT IS SO ORDERED. 11 12 Dated this 20th day of February, 2019. 13 14 A 15 Ronald B. Leighton United States District Judge 16 17 18 19 20 21 22 23 24 DKT. #264 & 265 - 23

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