Denneroll Holdings Pty Ltd. v. Chirodesign Grp., LLC

• Decision Date: 23 February 2016
• Docket Number: CIVIL ACTION NO. 4:15-CV-740
• Parties: DENNEROLL HOLDINGS PTY LIMITED, et al, Plaintiffs, v. CHIRODESIGN GROUP, LLC, et al, Defendants.
• Court: U.S. District Court — Southern District of Texas

DENNEROLL HOLDINGS PTY LIMITED, et al, Plaintiffs, v. CHIRODESIGN GROUP, LLC, et al, Defendants.

CIVIL ACTION NO. 4:15-CV-740

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF TEXAS HOUSTON DIVISION

February 23, 2016

MEMORANDUM & ORDER

Before the Court are the claim construction briefs filed by both parties in this patent infringement suit.¹ On January 15, 2016, the Court held a hearing, in accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), during which the parties presented argument in support of their proposed constructions. After considering the arguments of counsel, the evidence, and the applicable law, the Court finds that the disputed claims of the patent-in-suit should be construed as set forth herein.

Also pending before the Court are Defendants' Motion for Partial Summary Judgment on Non-Infringement (Doc. No. 36) and Defendants' Motion for Partial Summary Judgment on Patent Marking (Doc. No. 32).² For the reasons set forth below, the Court finds that both of these motions for partial summary judgment must be denied.

I. BACKGROUND

Plaintiffs Denneroll Holdings Pty Limited and Denneroll Industries International Pty Limited (collectively "Denneroll" or "Plaintiffs") brought suit against Defendants ChiroDesignGroup, LLC and Marie L. Webster³ (collectively "ChiroDesign" or "Defendants"), alleging that Defendants infringed U.S. Patent No. 8,713,732 (the "'732 patent"), which Plaintiffs own. The '732 patent describes an orthotic device used to treat abnormal curvature of the human neck by stretching ligaments, muscles, and other soft tissues in a person's neck. See Pls.' Tech. Tutorial 1-2 (Doc. No. 65). To use the device, patients lie face-up on their backs, with the device placed in between the back of the neck and the underlying surface, like a pillow. Id. at 3. Figure 3 of the '732 patent, excerpted below, shows one preferred embodiment:

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II. CLAIM CONSTRUCTION

A. Legal Standard

Claim construction is a matter of law, and thus the task of determining the proper construction of all disputed claim terms lies with the Court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). "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.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The general rule is that each claim term is construed according to its ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention and in thecontext of the patent. Phillips, 415 F.3d at 1312-13. The inquiry into the meaning that claim terms would have to a person of ordinary skill in the art is an objective one. Innova/Pure Water, 381 F.3d at 1116.

Courts must begin this inquiry by considering the intrinsic evidence, which consists of the claims themselves, the specification, and the prosecution history. Phillips, 415 F.3d at 1313-14. "The appropriate starting point . . . is always with the language of the asserted claim itself." Comark Comm, Inv. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). Courts must then look to the specification (or "written description"), the part of the patent where the inventor describes and illustrates the invention in significant detail. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). As the Federal Circuit has repeatedly stated, claims "'must be read in view of the specification, of which they are a part.'" Phillips, 415 F.3d at 1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). 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." Vitronics, 90 F.3d at 1582. The prosecution history is another tool to supply the proper context for claim construction because, like the specification, the prosecution history provides evidence of how the Patent and Trademark Office (PTO) and the inventor understood the patent. Phillips, 415 F.3d at 1317. However, "because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes." Id. at 1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution history may be "unhelpful as an interpretive resource").

In most circumstances, analysis of the intrinsic evidence alone will resolve claim construction disputes. Vitronics, 90 F.3d at 1583. However, if the intrinsic evidence does not resolve ambiguities, extrinsic evidence may be considered. Extrinsic evidence, such as expert and inventor testimony, dictionaries, and treatises, "'can shed light on the relevant art,' but is less significant than the intrinsic record in determining the 'legally operative meaning of disputed claim language.'" C.R. Bard, Inc. v. United States Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (quoting Vanderlande Indus. Nederland BV v. Int'l Trade Comm'n, 366 F.3d 1311, 1318 (Fed. Cir. 2004)).

B. Construction of Disputed Claim Terms

The Asserted Claims of the '732 patent are claims 1, 2, 5-7, and 9-17. The only independent claim in the '732 patent is claim 1; the subsequent claims are all dependent. The claim construction briefs present nine distinct terms the constructions of which are in dispute between the parties. The Court will address them term by term.

1. "orthotic device"

The term "orthotic device" is used in all of the claims in the '732 patent.⁴ The parties do not have an actual dispute as to the ordinary meaning of this term. Defendants suggest that the term refers to "an artificial or mechanical aid that supports or assist[s] movement of a weak or injured part of the body." Defs.' Resp. Claim Construction Br. 15 (Doc. No. 71). Plaintiffs suggest that the term refers to "instruments which are applied to the human body to align, support, or correct deformities, or to improve the movement of joints, spine, or limbs." Pls.'Reply Claim Construction Br. 4 (Doc. No. 76). There is not a significant difference between these definitions.

The parties' real dispute is whether this term is indefinite. Defendants contend that the '732 patent does not "define an orthotic device or otherwise explain how the claimed device qualifies as an orthotic device, or conversely, what would not qualify as an orthotic device." Defs.' Resp. Claim Construction Br. at 15. Plaintiffs contend that the meaning of "orthotic device" is clear from the patent and that no further construction is needed.

The Court agrees with Plaintiffs. The first substantive paragraph of the specification states that "the present invention relates to an orthotic device for stretching tissue within the neck of a patient." '732 patent 1:10 (emphasis added). This statement informs a person of ordinary skill in the art, with reasonable certainty, as to the meaning of "orthotic device" and the scope of the invention. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). The meaning of "orthotic device" may vary depending on the context in which it is used, but the text of the specification is sufficient to clarify the scope of this term as it is used in the '732 patent. Therefore, the term is not indefinite and a construction is not needed.

2. "orthogonal"

Claim 1, and all of its dependent claims, describe the invention as:

[A] body having a base, two lateral side faces, and two terminal ends, at least one of the lateral side faces and each of the terminal ends defining a plane orthogonal to a plane defined by the base

See '732 patent 6:4-6. As the parties explained at the Markman hearing, these words, translated into plain English, essentially mean that the sides of the invention are "orthogonal" to its base. See also Defs.' Mot. P. Summ. J. 5 n.1 (Doc. No. 36) (translating the phrase into "plain English"). Both parties agree that the generic or lay definition of "orthogonal" is"perpendicular." See id. at 15 ("Structures that are orthogonal are perpendicular to, or at 90° angles of, each other"); id. (collecting dictionary definitions); Pls.' Resp. Opp. Defs.' Mot. P. Summ. J. 15 (Doc. No. 47) (discussing "the analogous term 'perpendicular'"); Pls.' Claim Construction Br. 18 (Doc. No. 67) ("The term 'perpendicular' is just a synonym for 'orthogonal'. . . ."). But of course, "[w]hat the claim terms would mean to laymen is irrelevant." Dana Corp. v. Am. Axle & Mfg., Inc., 110 F. App'x 871, 877 (Fed. Cir. 2004). Rather, the Court must determine "how a person of ordinary skill in the art" would understand the claim term "in the context of the particular claim in which the disputed term appears" and "in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313. When read in the context of the '732 patent and from the perspective of a person of ordinary skill in the art, the term "orthogonal," according to the parties, could mean one of two things. Plaintiffs argue that "a construction should allow some deviation from exactly 90 degrees." Pls.' Claim Construction Br. at 19; see also Pls.' Resp. Opp. Defs.' Mot. P. Summ. J. Non-infringement at 4, 15-18 (arguing that "orthogonal" means "generally orthogonal" and its "meaning is not limited to exactly 90°"). Defendants, on the other hand, contend that "orthogonal" means that "two planes are oriented . . . 90 degrees to each other." Defs.' Resp. Claim Construction Br. at 16; see also Defs.' Mot. P. Summ. J. Non-infringement 15 (Doc. No. 36). Defendants' proposed construction of "orthogonal" thus requires a level of mathematical exactitude—i.e., that the sides...