Cacace v. Meyer Mktg. (Macau Commercial Offshore) Co.

• Decision Date: 13 September 2011
• Docket Number: Case No. 06–CV–2938 (KMK).
• Citation: 2011 Markman 4089966,812 F.Supp.2d 547
• Parties: Chris CACACE and Culinary Edge Creations, LLC, Plaintiffs, v. MEYER MARKETING (MACAU COMMERCIAL OFFSHORE) CO., LTD. and Meyer Corporation, U.S., Defendants.
• Court: U.S. District Court — Southern District of New York

2011 Markman 4089966

812 F.Supp.2d 547

Chris CACACE and Culinary Edge Creations, LLC, Plaintiffs,

v.MEYER MARKETING (MACAU COMMERCIAL OFFSHORE) CO., LTD. and Meyer Corporation, U.S., Defendants.

Case No. 06–CV–2938 (KMK).

United States District Court, S.D. New York.

Sept. 13, 2011.

Steven D. Chin, Esq., Charlotte Ann Pontillo, Esq., Kasowitz, Benson, Torres & Friedman, LLP, New York, NY, for Plaintiffs.

Joshua C. Krumholz, Esq., Holland & Knight LLP, Boston, MA, for Defendants.

OPINION AND ORDER

KENNETH M. KARAS, District Judge.

Plaintiffs Chris Cacace (“Cacace”) and Culinary Edge Creations, LLC (“CEC”) (collectively, “Plaintiffs”) bring this patent infringement action against Defendants Meyer Corporation, U.S. (“Meyer U.S.”) and its affiliate, Meyer Marketing (Macau Commercial Offshore) Co., Ltd. (“Meyer Macau”) (collectively, “Meyer” or “Defendants”), alleging that Defendants have infringed a patent over which Cacace claims ownership and over which CEC claims exploitation rights. The Parties have sought an opinion from the Court to construct the meaning of several claim terms in the patent. What follows is the Court's construction of those claims. Defendants have also moved for summary judgment, asserting that Plaintiffs' patent is invalid based on prior art that anticipates the patent's claims. For the reasons stated herein, Defendants' motion is denied.

I. Background

A. Facts ¹

United States Patent No. 6,497,174 (“the '174 Patent”), entitled “Cooking Pan for Sautéing and Deglazing,” was issued to Cacace on December 24, 2002. (Pls.' Opening Claim Construction Br. (“Pls.' Opening Br.”) 1.) The '174 Patent is “generally directed to cookware designed to facilitate the mixing of food while cooking without utensils and with minimal spillage.” ( Id.) It discloses a pan design that allows users to mix the pan's contents by manipulating the pan's handle—specifically, the pan design causes the contents of the pan to be propelled upwards, above the cooking surface, then to be directed back into the pan onto the cooking surface. ( Id.) Cacace licensed exploitation rights in the '174 Patent to CEC, a company of which he is the principal, including the right to enter into contracts for the manufacture, marketing and distribution of products based upon the '174 Patent. See Cacace v. Meyer Mktg. (Macau Commercial Offshore) Co., 589 F.Supp.2d 314, 316 (S.D.N.Y.2008) (hereinafter “ Cacace I ”). CEC and Meyer executed a license agreement (the “License Agreement”) on October 28, 2004, which allowed Meyer to manufacture and sell pans based on the '174 Patent (with a royalty of one dollar per pan sold based on the '174 Patent to be paid to CEC) and included a carve-out provision which allowed Meyer to manufacture and market its own pans (based on its own designs) separate and apart from the pans under the License Agreement, without infringing the '174 Patent. See id. at 316–17. Meyer thereafter manufactured and sold pans, under other brand names, and the Parties disputed whether these pans were covered under the License Agreement and, thus, whether royalties were to be paid to CEC on them. See id. at 317–18. Plaintiffs filed suit against Defendants in this Court, alleging two counts of patent infringement in violation of 35 U.S.C. § 271. See id. at 318. Defendants filed counterclaims, alleging non-infringement and invalidity of the '174 Patent, in addition to various tort claims. See id. Both Parties moved for summary judgment, and both motions were denied by this Court in Cacace I. (Dkt. No. 65.)

Meyer continues to assert that its pans do not infringe the '174 Patent, disputing Plaintiffs' constructions of several of the claim terms. ( See Defs.' Opening Claim Construction Br. (“Defs.' Opening Br.”); Defs.' Rebuttal Claim Construction Br. (“Defs.' Rebuttal”).) The Parties' proposed claim constructions are discussed below. Additionally, Meyer has introduced prior art, a Japanese patent application, JP 9–234157 (“the '157 reference”) to the Court, which it contends renders the '174 Patent invalid. (Pls.' Resp. to Defs.' Local Civil Rule 56.1 Statement of Material Facts and Pls.' Local Civil Rule 56.1 Statement of Additional Material Facts (“Pls.' 56.1”) ¶ 3; Defs.' Local Civil Rule 56.1 Statement of Material Facts (“Defs.' 56.1”) ¶ 3.) The '157 reference was published on September 9, 1997, and discloses a cooking pan consisting of a base that forms a cooking surface that is bounded by a side wall. (Pls.' 56.1 ¶¶ 4–6; Defs.' 56.1 ¶¶ 4–6.) The side wall has an inside surface which is a line having a curve, including at the top edge of the side wall opposite the handle. (Pls.' 56.1 ¶ 13; Defs.' 56.1 ¶ 13; Decl. of Peter I. Sanborn in Supp. of Defs.' Mot. for Summ. J. of Invalidity of U.S. Patent No. 6,497,174 (“Sanborn Decl.”) Ex. 3, at MM0000134.) The '157 reference further “depicts and describes a cooking pan where the lower portion of the side wall opposite the handle has a curvilinear profile,² so that food pieces that are propelled upward near that side wall when the handle is pulled backward, are directed toward the inside surface of the lower portion of the opposite side wall.” ³ (Defs.' 56.1 ¶ 16.) These features are similar to those disclosed in the ' 174 Patent. ( See Parties' J.A. of Intrinsic and Extrinsic Evidence for Claim Construction (“J.A.”) 1–9.) Defendants included several visual comparisons between the pans disclosed by the ' 174 Patent and the '157 reference, including numerous angle measurements which were calculated using a computer program. (Defs.' 56.1 ¶¶ 28–39.) However, Plaintiffs assert that these depictions, and the angle measurements included within them, should not be relied upon, arguing that Defendants did not provide any factual support for their accuracy, and that there are ambiguities in some of the measurements relied upon by Defendants.⁴ (Pls.' 56.1 ¶¶ 28–39.) Further, Plaintiffs argue that there is at least one claim limitation in the ' 174 Patent that is not disclosed by the '157 reference and, therefore, that the ' 157 reference does not anticipate the ' 174 Patent or render it invalid. (Pls.' Opp'n to Defs.' Mot. for Summ. J. (“Pls.' Mem.”) 2.)

B. Procedural History

Plaintiffs filed the Complaint on April 14, 2006. (Dkt. No. 1.) The Parties initially filed cross-motions for summary judgment (Dkt. Nos. 27, 38), which were both denied by the Court in Cacace I, (Dkt. No. 65). On March 12, 2010, the Parties filed claim construction statements for the disputed claim (“Claim 1”) of the '174 Patent (Dkt. Nos. 72, 73), and on April 2, 2010, the Parties filed responses to each other's construction statements, (Dkt. Nos. 78, 80). A Markman hearing was held on February 16, 2011. On December 16, 2010, Defendants moved for summary judgment based on invalidity of the '174 Patent. (Dkt. No. 103.) Oral argument on this motion also was heard by the Court on February 16, 2011.

II. Discussion

A. Claim Construction

1. Standard of Review

“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.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 374, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (internal quotation omitted). In Markman, the Supreme Court held that “the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.” Id. at 372, 116 S.Ct. 1384. The purpose of claim construction “is 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 Corp., 242 F.3d 1347, 1352 (Fed.Cir.2001).

The importance of intrinsic evidence in patent construction claims has been well established:

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, if in evidence, the prosecution history. Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language.

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996) (internal citation omitted); accord Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005) (en banc). “In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term.” Vitronics Corp., 90 F.3d at 1583. In fact, where the intrinsic evidence is sufficient to resolve ambiguities, “it is improper to rely on extrinsic evidence” to construe a claim. Id.

“All intrinsic evidence [of a claim] is not equal.” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed.Cir.2001). The first source of a claim is the claim language itself, because “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips, 415 F.3d at 1312 (internal quotations omitted); accord Vitronics Corp., 90 F.3d at 1582 (“First, we look to the words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention.”). During claim construction, a disputed term is typically given its “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1312–13 (internal quotation omitted). However, “a patentee may choose to be his [or her] own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.” Vitronics Corp., 90 F.3d at 1582. After the claim's language, the court should then consider the rest of the intrinsic evidence, beginning with the specification and finishing with the prosecution history. See id. “This history contains the complete record of all the...