Chrisha Creations, Ltd. v. Dolgencorp, Inc.
| Citation | 2011 Markman 4529225,817 F.Supp.2d 363 |
| Decision Date | 28 September 2011 |
| Docket Number | No. 08 Civ. 1065(MGC).,08 Civ. 1065(MGC). |
| Parties | CHRISHA CREATIONS, LTD., Plaintiff, v. DOLGENCORP, INC., Dollar General Corporation, and Family Dollar Stores, Inc., Defendants. |
| Court | U.S. District Court — Southern District of New York |
OPINION TEXT STARTS HERE
Edwards Angell Palmer & Dodge, LLP, by: Peter C. Schechter, Esq., Jennifer L. Dereka, Esq., New York, NY, for Plaintiff.
Kudman Trachten Aloe LLP, by: Thomas M. Furth, Esq., Alisa Silverstein, Esq., New York, NY, for Defendants.
Chrisha Creations, Ltd. sues Dolgencorp., Inc., Dollar General Corp., and Family Dollar Stores, Inc. for infringing U.S. Patents Nos. 7,302,769 (“the '769 patent”) and 7,216,446 (“the '446 Patent”). Because the parties do not agree on the correct construction of certain terms used in the claims of the '769 patent, I held a hearing in accordance with Markman v. Westview Instruments, 52 F.3d 967, 979 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).
The parties market and sell cold-air inflatable displays, often used for seasonal lawn decoration, advertising, and event attraction. A cold-air inflatable display is made from a permeable fabric skin and inflated by a continuously blowing fan. Because the air blown into the display escapes through the fabric at the same rate as the new air supplied from the fan enters, the display maintains its shape without any need for a frame.
The invention claimed in the '769 patent is the fan assembly that inflates these displays. According to the background section in the '769 patent, prior displays relied on fan assemblies which are permanently affixed to the fabric. Since the fan assembly in those displays is a permanent component, a consumer who wished to purchase multiple displays was required to buy multiple fan assemblies. Yet not every purchaser of multiple displays has a need for multiple fan assemblies. Many such purchasers exhibit only one seasonally appropriate display at a time, such as a Santa Claus around Christmas and an Uncle Sam around Independence Day. The permanent affixation of the fan assembly to the fabric prevents those consumers from buying a single fan that can be used in a number of displays. The '769 patent claims a fan assembly that solves this problem. According to the patent specification, that fan assembly is “interchangeable” between different displays, which eliminates the need to buy a new fan assembly with every new display.
On December 4, 2007, the U.S. Patent and Trademark Office (“PTO”) issued the ' 769 patent, entitled “Interchangeable Fan Assembly for Cold–Air Inflatable Displays,” to inventor William Machala. Machala subsequently assigned the ' 769 patent to plaintiff Chrisha Creations. The '769 patent contains three independent claims (claims 1, 6, and 12) and ten dependent claims (claims 2, 3, 4, 5, 7, 8, 9, 10, 11, and 13). Plaintiff alleges that defendants' device infringes claim 6 of the '769 patent, in which the inventor describes his invention as a coldair inflatable display comprising a permeable fabric, an interchangeable fan assembly, and a lighting arrangement.
“Although the construction of the claim is independent of the device charged with infringement, it is convenient for the court to concentrate on those aspects of the claim whose relation to the accused device is in dispute.” Pall Corp. v. Hemasure Inc., 181 F.3d 1305, 1308 (Fed.Cir.1999). Plaintiff alleges that defendants market and sell cold-air inflatable displays in which the fan assembly is attached to the display's fabric skin via a single-use cable tie. The cable tie is threaded through a sheath in the display's fabric and is then pulled taut around a groove in the housing that encases the fan. This procedure secures the fan to the fabric. Once fastened, the cable tie cannot be loosened. As a result, in order to transfer a fan between displays using the accused device, one must cut through the cable tie securing the fan to the first display and use a new cable tie to secure it to the second display.
The parties disagree about the meaning of claim 6's language, which is discussed below.
The first step of a patent infringement analysis is determining the meaning and scope of the patent claims alleged to have been infringed. Markman, 52 F.3d at 976. This step, commonly called claim construction, is an issue of law exclusively for the court. Id. at 970–71. Its purpose is to “elaborat[e] the normally terse claim language in order to understand and explain, but not to change, the scope of the claims.” DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1322 (Fed.Cir.2001). A court should construe “only those [claim] terms ... that are in controversy, and only to the extent necessary to resolve the controversy.” McNeil–PPC, Inc. v. Perrigo Co., 443 F.Supp.2d 492, 501 (S.D.N.Y.2006) (alterations in original) (quoting Vivid Techs., Inc. v. Am. Science & Eng'g, Inc., 200 F.3d 795, 803 (Fed.Cir.1999)).
Interpretation of the asserted claims begins with a review of the intrinsic evidence. Intrinsic evidence includes the claim language, the written description that precedes the claims in the patent specification, and, if in evidence, the prosecution history. DeMarini Sports, 239 F.3d at 1323. “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).
Claim language
The Patent Act requires a patent applicant to conclude a patent specification “with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, para. 2. Those claims “define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (en banc). Accordingly, claim construction begins with the words of the claims themselves. Vitronics, 90 F.3d at 1582. A claim's terms are to be construed as would “a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application,” understand them. Phillips, 415 F.3d at 1313.
Written description
Although the claims define the scope of the invention, they do not stand alone. Rather, Id. at 1315 (internal citations and quotation marks omitted). By statute, a specification must provide “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” 35 U.S.C. § 112, para. 1. This written description generally consists of an abstract of the invention, a description of the invention's background, a summary of the invention, patent drawings, and a detailed description that discusses preferred embodiments of the invention. See Inv. Tech. Group, Inc. v. Liquidnet Holdings, Inc., Nos. 07 Civ. 510 & 07 Civ. 6886, 2010 WL 199912, at *3 (S.D.N.Y. Jan. 19, 2010).
Although the written description is always important for claim construction, the Federal Circuit has stressed the need to be wary of importing limitations from the written description into a claim that is not so limited on its face. Phillips, 415 F.3d at 1323. In particular, it has cautioned that claims are not necessarily confined to the specific embodiments presented in the written description. Id. In assessing “whether a person of skill in the art would understand the embodiments to define the outer limits of the claim term or merely to be exemplary in nature,” a court should be mindful that:
[o]ne of the best ways to teach a person of ordinary skill in the art how to make and use the invention is to provide an example of how to practice the invention in a particular case. Much of the time, upon reading the specification in that context, it will become clear whether the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive. The manner in which the patentee uses a term within the specification and claims usually will make the distinction apparent.
Id. (internal citation omitted).
The last form of intrinsic evidence is the history of the patent's prosecution before the PTO. “[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” Id. at 1317. This doctrine of claim disclaimer prevents patentees from “recapturing through claim interpretation specific meanings disclaimed during prosecution.” Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed.Cir.2003). The doctrine does not apply, however, unless the alleged disavowal of claim scope would be unambiguous to one of ordinary skill in the art. Id. at 1324. In other words, “[f]or a prosecution statement to prevail over the plain language of the claim, the statement must be clear and unmistakable such that the public should be entitled to rely on any definitive statements made during prosecution.” Elbex Video, Ltd. v. Sensormatic Elec. Corp., 508 F.3d 1366, 1373 (Fed.Cir.2007) (internal quotation marks omitted).
The parties disagree about the meaning of two terms that appear in claim...
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