Abp Patent Holding v. Convergent Label Technology

• Decision Date: 25 January 2002
• Docket Number: No. 6:00CV1087-ORL-22JGG.,6:00CV1087-ORL-22JGG.
• Citation: 194 F.Supp.2d 1257
• Parties: ABP PATENT HOLDING, LLC, Plaintiff, v. CONVERGENT LABEL TECHNOLOGY, INC., and MOORE NORTH AMERICA, INC., Defendants.
• Court: U.S. District Court — Middle District of Florida

194 F.Supp.2d 1257

ABP PATENT HOLDING, LLC, Plaintiff, v. CONVERGENT LABEL TECHNOLOGY, INC., and MOORE NORTH AMERICA, INC., Defendants.

No. 6:00CV1087-ORL-22JGG.

United States District Court, M.D. Florida, Orlando Division.

January 25, 2002.

Stephen D. Milbrath, Herbert L. Allen, Brian R. Gilchrist, Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., Orlando, FL, for ABP Patent Holding, LLC, a Florida Limited Liability Company, plaintiffs.

R. Steven Ruta, Victor L. Chapman, Barrett, Chapman & Ruta, P.A., Orlando, FL, John M. Kilroy, Jr., Shughart Thomson & Kilroy, Gardiner B. Davis, Teresa A. Woody, Richard P. Stitt, Kansas City, MO, Mark E. Brown, Shughart Thomson & Kilroy, P.C., Overland Park, KS, Jeffry H. Nelson, Robert A. Molan, Sheri L. Gordon, Nixon & Vanderhye, P.C., Arlington, VA, James H. Beusse, Beusse, Brownlee, Bowdoin & Wolter, P.A., Orlando, FL, for Convergent Label Technology, Inc., a Florida corporation, Moore North America, Inc., a Delaware corporation, defendants.

ORDER

CONWAY, District Judge.

This cause comes before the Court on the following motions: Defendants' Joint Motion to Construe U.S. Patent No. 5,642,906 (Doc. 80); Plaintiff's Motion for Markman Hearing (Doc. 83); Defendants' Joint Motion to Construe U.S. Patent No. 5,855,395 (Doc. 86); Plaintiff's Motion for Summary Judgment (Doc. 106); Defendants' Motion for Summary Judgment of Non-Infringement (Doc. 119); Defendants' Motion for Summary Judgment of Invalidity for Prior Art (Doc. 111); `and Defendants' Motion for Summary Judgment of Patent Invalidity Under 35 U.S.C. § 102(f) and § 112 (Doc. 116).

I. BACKGROUND

Plaintiff, ABP Patent Holdings LLP ("ABP"), is the assignee of three patents, U.S. Patent No. 5,642,906 ("the '906 Patent"), U.S. Patent No. 5,855,395 ("the '395 Patent"), and U.S. Patent No. 6,036,231 ("the '231 Patent"). ABP filed this action alleging that Defendants, Convergent Label Technology, Inc. ("Convergent") and Moore North America, Inc. ("Moore"), infringed the aforementioned patents.¹ The parties filed the instant motions asking the Court to construe certain claims in each patent. On October 17, 2001 and October 24, 2001, Magistrate Judge James Glazebrook held a Markman hearing on the instant motions. At the hearing, the parties agreed that the '231 patent does not require interpretation by the Court.

ABP's patents concern an efficient method of labeling prescription drug vials. The patents disclose pharmacy forms having labels upon which prescription information may be printed. The labels can then be simultaneously removed by a pharmacist, separated from each other if necessary, and then simultaneously applied to a prescription bottle. Additionally, ABP's pharmacy forms have a backing sheet to which the labels adhere. The labels are connected to each other by perforations that allow the labels to be readily separated from each other before being applied to the prescription bottle.

Convergent supplies pharmacy label forms to various pharmacies, in competition with ABP. ABP's Complaint alleges that Convergent has infringed or induced infringement of certain claims in the '906 and '395 patents. Convergent contends that during the prosecution of the patents, ABP limited the scope of its claims. Convergent therefore asks that the Court construe Claim 1 of the '906 patent and Claim 17 of the '395 patent to require that the main label of ABP's form be connected to the auxiliary labels on the form.² ABP argues that the disputed claims merely require that any two labels on the form be connected.

After conducting a Markman hearing and reviewing the parties' memoranda and supporting evidence, Judge Glazebrook issued a Report and Recommendation ("R & R") in which he determined that both Claim 1 of the '906 patent and Claim 17 of the '395 patent should be construed to require that the main and auxiliary labels of ABP's form be connected. ABP filed objections to the R & R; those objections are now ripe for review.

Additionally, the parties have filed cross-motions for summary judgment which are also ripe for review.

II. MOTIONS TO CONSTRUE PATENTS

A. Standard of Review

After a magistrate judge issues a report and recommendation, the district judge must make a de novo determination of the findings and/or recommendations to which any party objects. 28 U.S.C. § 636(b)(1). After reviewing the R & R, objections, and response thereto, the district judge "may accept, reject, or modify, in whole or in part," the findings or recommendations made by the magistrate. Id.

B. DISCUSSION

ABP raises essentially two objections to the R & R. First, it contends that Judge Glazebrook impermissibly added language to the disputed claims, in effect, rewriting them. Second, ABP argues that Judge Glazebrook incorrectly concluded that ABP disavowed subject matter otherwise available in the disputed claims.

Before the Court undertakes an analysis of the disputed claims, it must address ABP's contention that Judge Glazebrook added language to its claims. The Court believes that Judge Glazebrook took no such steps. The motions filed by both ABP and Convergent requested that the Court construe the disputed claims. It is well settled that the task of claim construction permits and requires the Court "neither to limit nor to broaden the claims, but to define, as a matter of law, the invention that has been patented." Netword, LLC v. Centraal Corporation, 242 F.3d 1347, 1352 (Fed.Cir.2001). In the R & R, Judge Glazebrook determined that the phrase "one of the labels" should be understood to mean the "main label." He further determined that the phrase "another label" referred to the "auxiliary label." In coming to these conclusions, Judge Glazebrook did not "add" to the language of the claims. Rather, he defined those arguably ambiguous terms in a manner that he believed to be consistent with the patent specification and the prosecution history. As such, ABP's objection on the grounds that Judge Glazebrook impermissibly added language to the claims is without merit.

1. The '906 Patent

Turning now to the actual construction of the claims, the Court first addresses ABP's objections to the R & R's treatment of Claim 1 of the '906 patent.

Claim 1 reads in its entirety:

A method for use by a pharmacist in labeling a container for a prescription drug to be dispensed to a customer, comprising the steps of:

I. providing blank form for printing on at least one label to be affixed to the container, the form comprising:

(a) at least two labels releasably adhered to a backing sheet, each of said labels being provided with a printable surface upon which may be printed information relating to the prescription drug;

(b) adhesive means on the surface of each of said labels that is opposite the printable surface for affixing said labels to said container; and

(c) means for connecting said labels such that:

(1) the removal of one of the labels from the backing sheet will simultaneously remove from the backing sheet the other label to which it is connected; and

(2) the two removed labels optionally may be readily separated from each other prior to affixing any of said labels to said container;

II. printing information concerning a prescription on at least one of said labels;

III. simultaneously removing from the backing sheet at least said two labels; and

IV. affixing at least one of said two labels to said prescription drug container.

Defendants' Exhibit 2 at Tab U.S. Patent 5,642,906, MNA 000119.

ABP argues that the language of Claim 1 is not ambiguous, and must therefore, be given its plain and ordinary meaning, which is not limited in scope to a pharmacy form in which the main and auxiliary labels are connected. Convergent contends that both the patent specification and prosecution history of the '906 patent make it clear that the claims "are directed to a prescription pharmacy label having a main prescription label connected by tear lines to auxiliary warning labels." Doc. 81 at 9.

The starting point for the Court's analysis of Claim 1 is the actual language of the claim. It is well-settled that, "as a general rule, all terms in a patent claim are to be given their plain, ordinary and accustomed meaning to one of ordinary skill in the relevant art." Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 2001 WL 1456191 at *3 (Fed.Cir.) (quoting Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299 (Fed.Cir.1999)). Ordinarily, "there is `a heavy presumption' in favor of the ordinary meaning of claim language" Bell Atlantic Network Services, Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed.Cir.2001) (quoting Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed.Cir.1999)). However, that presumption can be overcome: "(1) where the patentee has chosen to be his own lexicographer, or (2) where a claim term deprives the claim of clarity such that there is `no means by which the scope of the claim may be ascertained from the language used.'" Id. ABP argues that neither of these situations exists, and Claim 1 should, therefore, be construed only by the terms of its plain meaning.

ABP contends, and Judge Glazebrook agreed that "Claim 1 does not literally require connected main and warning labels that are simultaneously removable." Doc. 190 at 16. This Court also agrees with that statement. Claim 1 does not use the words "main" or "warning" to describe the labels on its form. ABP believes the Court's inquiry should end here. Were the Court to accept this position, any pharmacy label form in which any two labels were connected would infringe upon Claim 1.

Convergent argues that the literal language of Claim 1 cannot be the starting and ending point for determining its scope. The law clearly supports Convergent's position. "It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification, and,...