Bowling v. Hasbro, Inc.

Decision Date30 May 2007
Docket NumberC.A. No. 05-229 S.
Citation490 F.Supp.2d 262
PartiesMichael BOWLING, Plaintiff, v. HASBRO, INC., Defendant.
CourtU.S. District Court — District of Rhode Island

Christine K. Bush, Craig M. Scott, Duffy Sweeney & Scott, Ltd., Providence, RI, Douglas J. Williams, Thomas J. Leach, Merchant & Gould P.C., Minneapolis, MN, for Plaintiff.

David K.S. Cornwell, Tracey-Gene G. Durkin, Sterne Kessler Goldstein & Fox P.L.L.C., Washington, DC, Jeffrey K. Techentin, Adler Pollock & Sheehan P.C., Providence, RI, for Defendant.

OPINION AND ORDER

SMITH, District Judge.

Plaintiff Michael Bowling ("Bowling") has filed this patent infringement action against Hasbro, Inc. ("Hasbro") for allegedly infringing Bowling's United States Patent Number 5,938,197 (the "'197 patent"). The '197 patent, entitled "RANDOM NUMBER GENERATOR FOR GAME PLAYING," describes several polyhedral dice, one of which, the six-sided die (known in the gaming world as a "D-6"), is the subject of this dispute. The parties have identified two claims that require construction. Additionally, Bowling has moved for summary judgment on Hasbro's earlier motion to correct inventorship, and Hasbro has moved for partial summary judgment on marking. After careful consideration, and for the reasons that follow, the Court shall construe the disputed claims in the manner provided infra Part II.A, grant Bowling's Motion for Summary Judgment on the inventorship issue, and deny Hasbro's Motion for Partial Summary Judgment on the marking issue.

I. Background

Bowling, an engineer by training, is an afficionado of fantasy role-playing games, such as Dungeons & Dragons,1 and holds several domestic and international patents in dice design. His company, Crystal Caste, specializes in dice, miniatures, and gaming accessories, although the core feature of the enterprise is polyhedral dice, which are an essential component in role playing. The dice described in the '197 patent are of central importance to the business plan of Crystal Caste. These dice, ranging from a D-6 to a D-20, have extension member facets in the shape of opposing triangles. This unique shape is both functional and aesthetic. It allows the dice to have facets wide enough (at the triangle's base) to display readable indicia and, at the same time, resembles a crystal. Designing a polyhedral die in the shape of a crystal is a clever marketing ploy because, in fantasy circles, crystals are thought to be imbued with magical powers.2

At some point in 1999, Hasbro, a toy and game company, began selling "Monopoly, Millennium," an edition of the well-known commercial board game.3 The game included a die with characteristics similar to Bowling's patented die. In September 1999, Hasbro contacted Bowling by letter to discuss the possibility of using his die design. Bowling responded, in November 1999, by informing Hasbro that it was infringing the '197 patent, and demanding that Hasbro immediately cease its infringing activities. The parties thereafter exchanged a series of correspondence, but ultimately were unable to resolve the dispute. Bowling filed this infringement action in May 2005.

II. Discussion
A. Claim Construction
                Bowling's proposed Hasbro's proposed The Court's
                Claim Terms construction construction construction
                1. discrete facets     1. facets being           1. each extension                1. discrete facets
                being identically      identically shaped        member facet has                 being identically
                shaped and having      and having equal          the same or substantially        shaped and having
                equal surface areas    surface areas, without    the same                         equal surface areas
                                       regard to any             shape, as defined by             without regard to
                                       indented indicia          the outer perimeter              negligible variances
                                                                 of each such facet,              in surface area
                                                                 and the same or substantially    caused by indented
                                                                 the same                         indicia
                                                                 surface area, measured
                                                                 as the surface
                                                                 of a three-dimensional
                                                                 object
                17. extension member   17. facets are of         17. each extension               17. extension
                facets being           equal surface area,       member facet has                 member facets being
                equal in surface area  without regard to         the same or substantially        equal in surface
                                       any indented indicia      the same surface                 area, without
                                                                 area, measured                   regard to negligible
                                                                 as the surface of a              variances in surface
                                                                 three-dimensional                area caused by
                                                                 object                           indented indicia
                

The parties dispute the meaning of equal surface area as used in claims 1 and 17 of the '197 patent. Hasbro, referencing a technical dictionary, observes that surface area is generally understood as "a measure of how much area the solid would have if you could somehow break it apart and flatten it out." Barron's Dictionary of Mathematical Terms 327 (Douglas Downing ed., 2d ed.1995). This construction is important to Hasbro's claim because, under this definition, the facets of a die would not have surface areas equal to one another, as the '197 patent claims, unless those facets were flat. In other words, a die with indented indicia could not, as a matter of mathematics, have facets of equal surface area. See Merriam-Webster Dictionary 257 (1997) (defining "equal" as "of the same measure, quantity, value, quality, number, degree, or status as another."). This is because an indented indicium, whether an arable numeral or a combination of pips,4 augments the surface area of a given facet to a greater or lesser extent than another indented indicium. For example, if you were able to break apart a six-sided die, flatten out its facets, and compare them individually, you would see that the facet with six pips would cover more area than the facet with only one pip. No two facets have the same number of pips (the die would not randomly generate numbers otherwise), so it follows that no two facets would have the same surface area. According to Hasbro, because the plain meaning of equal surface area is readily understandable in light of the technical definition above, construction is at an end. Bowling responds that Hasbro's construction contradicts how a person of ordinary skill in the art of game playing would interpret equal surface area, ignores the specification, and, if accepted, would exclude the preferred embodiment of the invention.

Without endorsing all of Bowling's characterizations of the '197 patent, the Court agrees that Hasbro's construction cannot withstand a fair reading of the specification, and that its reliance on the extrinsic evidence of dictionary entries is, under the circumstances here, misplaced.

The construction of patent claims is a matter of law properly subject to summary disposition. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-79 (Fed.Cir.1995). "It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.Cir.2004). In construing claims, inquiring courts are to give claim terms "their ordinary and customary meaning," which is the meaning the terms "would have to a person of ordinary skill in the art in question at the time of the invention." Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.Cir.2005). "In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314. On such occasions, general purpose dictionaries may assist the court in ascertaining the correct construction of the claims. Id.

Where, as here, the claim terms are not so readily susceptible to interpretation, Phillips outlines what sources the district court may consider and teaches how much weight a particular source deserves. First and foremost, the intrinsic record, which consists of the claims themselves, the specification,5 sometimes referred to as the written description, and, where relevant, the prosecution history,6 provides the best guidance as to a claim's meaning. Id. at 1313-15. Among the sources of intrinsic evidence, Phillips places primary importance on the claims themselves, but recognizes that the claims "are part of `a fully integrated written instrument,' consisting principally of a specification that concludes with the claims." Id. at 1315 (quoting Markman, 52 F.3d at 978). For this reason, "claims `must be read in view of the specification, of which they are a part.'" Id. (quoting Markman, 52 F.3d at 979). Indeed, "the specification `is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)); see Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed.Cir.2004) ("In most cases, the best source for discerning the proper context of claim terms is the patent specification wherein the patent applicant describes the...

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