Britax Child Safety, Inc. v. Nuna Int'l B.V., 17-cv-2724

• Decision Date: 23 December 2019
• Docket Number: No. 17-cv-2724,17-cv-2724
• Parties: BRITAX CHILD SAFETY, INC., Plaintiff, v. NUNA INTERNATIONAL B.V. and NUNA BABY ESSENTIALS, INC., Defendants.
• Court: U.S. District Court — Eastern District of Pennsylvania

BRITAX CHILD SAFETY, INC., Plaintiff, v. NUNA INTERNATIONAL B.V. and NUNA BABY ESSENTIALS, INC., Defendants.

No. 17-cv-2724

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF PENNSYLVANIA

December 23, 2019

OPINION

Decision on the parties' respective motions for claim construction, ECF Nos. 69 & 70

Joseph F. Leeson, Jr. United States District Judge

I. INTRODUCTION

In this patent infringement case, Plaintiff Britax Child Safety, Inc., alleges that Defendants Nuna International B.V. and Nuna Baby Essentials ("B.E."), Inc. (collectively, "Nuna"), infringed two of its patents for a specific design of a child car seat. Those patents—U.S. Patent No. 9,499,074 and U.S. Patent No. 9,586,504—relate specifically to a child car seat with a "tensioning mechanism" for applying tension to a seat belt to more easily secure the seat within a vehicle in either a forward or rearward facing position.¹ Presently before the Court are the parties' respective motions for the construction of several claim terms within the two patents pursuant to the Supreme Court's decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). Following a hearing on the motion, and for the reasons set forth below, the Court adopts the claim construction arguments of Britax and rejects those of Nuna.

II. BACKGROUND

A. The Alleged Infringement

The following facts are drawn from Britax's Amended Complaint, ECF No. 23, which remains the operative pleading in this case. Britax Child Safety, Inc. is both incorporated and principally operated in South Carolina, and "designs, develops, tests, and builds . . . industry-leading child safety restraints, including its child safety car seats." Am. Compl. ¶ 11. Defendant Nuna B.V. is incorporated and principally operated in the Netherlands. Id. ¶ 3. Defendant Nuna B.E., which is incorporated and principally operated in Pennsylvania, is a wholly-owned subsidiary of Nuna B.V. Id. ¶ 4. Similar to Britax, Nuna B.V. and Nuna B.E. focus on researching and developing child safety technologies and producing child safety products. Id. ¶ 7.

Britax alleges that Nuna has violated 35 U.S.C. § 271(a) by infringing two of its patents: United States Patent No. 9,499,074, issued November 22, 2016, and United States Patent No. 9,586,504, issued March 7, 2017. Am. Compl. ¶¶ 14-15. Both patents are entitled "Forward and Rearward Facing Child Seat with Belt Tensioning Mechanism for Improved Installation." Id. ¶¶ 14-15. The two patents "relate[ ] to a child safety seat that may be used in either a forward or rearward facing orientation and includes a tensioning mechanism to more fully secure the child safety seat to a vehicle seat, thereby allowing for ease in installation of the child safety seat." Id. ¶ 16.

In its Amended Complaint, Britax alleges that Nuna's child car seat the Nuna RAVA™ infringes on at least claim 13 of the '504 patent, and at least claim 1 of the '074 patent, in the manner in which it secures itself to the seatbelt. See Am. Compl. ¶¶ 17-18, 36-51. In a "Supplemental Disclosure on Infringement Contentions," submitted with its responsive claimconstruction brief, Britax submits more specific allegations of infringement. Specifically, "Britax asserts that [Nuna] infringe[d] claims 1-15 of U.S. Patent No. 9,568,504 . . . and claims 1-3, 5-7, and 16 of U.S. Patent No. 9,499,074." ECF No. 77-7 at 1. Britax further asserts that this infringement is manifest in two Nuna products: the Nuna RAVA™ car seat and the Nuna EXEC™ car seat. Id.

B. Procedural Background

The initial complaint in this matter was filed on June 16, 2017. See ECF No. 1. Nuna filed a motion to dismiss on October 20, 2017, see ECF No. 12, which was deemed moot after Britax filed an Amended Complaint on November 3, 2017, see ECF No. 23. On November 17, 2017, Nuna filed a motion to dismiss the Amended Complaint pursuant to Federal Rules of Civil Procedure 12(b)(2) and 12(b)(6). See ECF No. 26. In an Opinion dated July 26, 2018, this Court denied the Rule 12(b)(2) motion without prejudice to allow the parties to conduct jurisdictional discovery and denied the Rule 12(b)(6) motion outright, finding that Britax had stated a claim of patent infringement. See ECF No. 33.

Nuna B.V. and Nuna B.E. filed their Answers on September 7, 2018, see ECF Nos. 35 and 36, respectively, with Nuna B.E.'s Answer asserting counterclaims for declaratory judgment of non-infringement and invalidity of Britax's patents. The Court held a Rule 16 conference on October 10, 2018. See ECF Nos. 40-41.

On October 31, 2018, Nuna filed a motion to stay this case pending inter partes review,² see ECF Nos. 43, which Britax opposed, see ECF Nos. 44. Nuna's petition for inter partesreview of the '504 patent was subsequently dismissed by the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office ("the Board") on timeliness grounds. See ECF No. 48. On April 4, 2019, the Board issued a decision as to Nuna's petition for review of the '074 patent. The Board concluded that Nuna had "not demonstrated a reasonable likelihood of showing any challenged claim of the '074 patent is unpatentable," ECF No. 50 at 24, and denied inter partes review as a result. Nuna thereafter withdrew its motion to stay this case. See ECF No. 53.

The parties' opening claim construction briefs were filed on October 10, 2019, see ECF Nos. 69, 70, and their responsive claim construction briefs were filed on October 31, 2019, see ECF Nos. 76, 77. On November 12, 2019, counsel for both sides appeared before the Court for a hearing to address the parties' respective claim construction arguments.³ The hearing concluded the same day. The Court reserved decision on the pending motions, as well as to several objections raised to certain exhibits.

III. LEGAL PRINCIPLES OF CLAIM CONSTRUCTION

"[A] patent claim is that 'portion of the patent document that defines the scope of the patentee's rights.'" Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835 (2015) (quoting Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996)). In its decision in Markman, the Supreme Court affirmed that "the construction of a patent, including terms of art within its claim," is not a question for a jury but "exclusively" for "the court" to determine as a matter of law. 517 U.S. at 372. This makes sense in light of the purpose of claim construction, which "isto determin[e] the meaning and scope of the patent claims asserted to be infringed," such that the jury may then resolve the underlying question of infringement.⁴ CANVS Corp. v. United States, 126 Fed. Cl. 106, 112 (2016) (quoting O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008)).

When a court is presented with a purported dispute as to the meaning and scope of patent claim terms, the threshold question must be whether claim construction is truly necessary. As the Federal Circuit made clear shortly after the Supreme Court's decision in Markman was issued, that decision "do[es] not hold that the trial judge must repeat or restate every claim term in order to comply with the ruling that claim construction is for the court." U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). Rather, "[c]laim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy."⁵ Id. (emphasis added); see Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1331 (Fed. Cir. 2011) ("It is well settled that the role of a district court in construing claims is not to redefine claim recitations or to read limitations into the claims to obviate factual questions of infringement and validity but rather to give meaning to the limitations actually contained in the claims . . . ."). Therefore, a district court must engage inclaim construction where there is a genuine dispute as to the scope of claim language. See O2 Micro Int'l Ltd., 521 F.3d at 1360 ("When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute.") (emphasis added); cf. Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) (affirming the district court's declination to give a claim term any construction).

Determining whether there exists a genuine dispute as to the scope of a claim term must be resolved by first considering the "ordinary and customary meaning" of the term. FenF, LLC v. SmartThingz, Inc., 601 F. App'x 950, 952 (Fed. Cir. 2015). The "ordinary and customary meaning" is "the meaning that the term would have to a person of ordinary skill in the art when read in the context of the entire patent."⁶ Id.; Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 955 (Fed. Cir. 2000) ("As a starting point, the court gives claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art."). If the ordinary meaning of a term is readily apparent, construction of the claim term beyond the ordinary meaning may not be necessary. See CallWave Commc'ns, LLC v. AT&T Mobility, LLC, No. CV 12-1701, 2014 WL 7205657, at *9 (D. Del. Dec. 17, 2014) (finding no construction to be necessary where a claim term "uses ordinary English words, which may be given their plain and ordinary meaning"); Vapor Point LLC v. Moorhead, No. 4:11-CV-4639, 2013 WL 11275459, at *24 (S.D. Tex. Dec. 18, 2013) ("In cases where the ordinary meaning of the claim term is readily apparent even to a lay judge, the court need not go further into intrinsic or extrinsic evidence." (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005))).On the other hand, a "determination that a claim term 'needs no construction' or has the 'plain and ordinary meaning' may be inadequate when a term has more than one 'ordinary' meaning or when reliance on a term's 'ordinary'...