Edge Sys. LLC v. Cartessa Aesthetics, LLC

• Decision Date: 29 November 2021
• Docket Number: 20-CV-6082 (GRB)(ST)
• Citation: 571 F.Supp.3d 13
• Parties: EDGE SYSTEMS LLC, Plaintiff, v. CARTESSA AESTHETICS, LLC, Defendant.
• Court: U.S. District Court — Eastern District of New York

571 F.Supp.3d 13

EDGE SYSTEMS LLC, Plaintiff,

v.CARTESSA AESTHETICS, LLC, Defendant.

20-CV-6082 (GRB)(ST)

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

Signed November 29, 2021

Sean Michael Murray, Attorney for Plaintiff, Knobbe Martens, 2040 Main St., 14th Floor, Irvine, CA 92614.

Steven P. Tepera, Attorney for Defendant, Pillsbury Winthrop Shaw Pittman LLP, 401 Congress, Ste. 1700, Austin, TX 78701.

David George Keyko, Attorney for Defendant, Pillsbury Winthrop Shaw Pittman LLP, 31 West 52nd Street, New York, NY 10019.

MEMORANDUM AND ORDER

GARY R. BROWN, United States District Judge:

In this action, plaintiff Edge Systems LLC ("Edge") seeks recovery for purported infringement of several U.S. Patents¹ against defendant Cartessa Aesthetics, LLC ("Cartessa"), all relating to claimed inventions and improvements in hydradermabrasion systems for treating skin. Both plaintiff and defendant produce and market skincare treatment machines. Upon request of the parties, the Court conducted an expedited Markman hearing to resolve claim construction issues as to certain disputed terms. Additionally, the Court heard argument regarding a motion to strike Cartessa's affirmative defense of unclean hands. This opinion follows.

Procedural History

Plaintiff commenced this action for patent infringement under 35 U.S.C. §§ 271, 284, and 285 against defendant via the filing of a complaint in December 2020. Docket Entry ("DE") 1. In February 2021, defendant filed its answer followed by an amended answer. DE 17, 19. In an oral decision on April 14, 2021, the Court granted a motion to strike the affirmative defense of unclean hands. DE 25. In response, defendant filed a second amended answer. DE 29. In so doing, the defendant supplemented its unclean hands defense, adding several pages of supporting facts. Id. Plaintiff then refiled the motion to strike. DE 32. While the motion to strike was outstanding, the parties filed a stipulation setting forth a joint disputed claims term chart, DE 35, and submitted claim construction briefs. DE 38-42. On October 19, 2021, the Court held a Markman claim construction hearing. Neither side produced testimony.

Claim Construction Standards

Several years ago, then-district court Judge Joseph Bianco penned a cogent, thorough description of the applicable standard for a Markman hearing:

Claim construction is "exclusively within the province of the court."

Markman v. Westview Instruments, Inc. , 517 U.S. 370, 372 [116 S.Ct. 1384, 134 L.Ed.2d 577] (1996). Such construction "begins and ends" with the claim language itself, Renishaw PLC v. Marposs Societa’ per Azioni , 158 F.3d 1243, 1248 (Fed. Cir. 1998), but the court may consult extrinsic evidence "if needed to assist in determining the meaning or scope of technical terms in the claims," Pall Corp. v. Micron Separations, Inc. , 66 F.3d 1211, 1216 (Fed. Cir. 1995) ; seeVitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1584 (Fed. Cir. 1996) (explaining that the court may rely on extrinsic evidence, including expert and inventor testimony, dictionaries, and learned treaties).

In construing the claim language, the court must begin with the principle that "the words of a claim ‘are generally given their ordinary and customary meaning.’ " ( Phillips v. AWH Corp. , 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc ) (quoting Vitronics, 90 F.3d at 1582 )). This ordinary and customary meaning "is the meaning that the [claim] term would have to 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." Id. at 1313. "[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id.

"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. "In such circumstances general purpose dictionaries may be helpful." Id. In other cases, "determining the ordinary and customary meaning of the claim requires examination of terms that have a particular meaning in a field of art." Id. In those cases, "the court looks to those sources available to the public that show what a person of skill in the art would have understood the disputed claim language to mean." Id. (internal quotation marks and citation omitted). These sources include "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Id.

When the specification reveals a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess, the inventor's lexicography governs. Id. at 1316. Nevertheless, it is improper to read limitations from the specification into the claim. Callicrate v. Wadsworth Mfg., Inc. , 427 F.3d 1361, 1368 (Fed. Cir. 2005) (" ‘[I]f we once begin to include elements not mentioned in the claim, in order to limit such claim ... we should never know where to stop.’ " (alteration in original) (quoting Phillips , 415 F.3d at 1312 )). Thus, the court "do[es] not import limitations into claims from examples or embodiments appearing only in a patent's written description, even when a specification describes very specific embodiments of the invention or even describes only a single embodiment, unless the specification makes clear that ‘the patentee ... intends for the claims and the embodiments in the specification to be strictly coextensive.’ " JVW Enters., Inc. v. Interact Accessories, Inc. , 424 F.3d 1324, 1335 (Fed. Cir. 2005) (internal citations omitted).

Easyweb Innovations, LLC v. Twitter, Inc. , No. 11-CV-4550 (JFB), 2016 WL 1253674, at *5 (E.D.N.Y. Mar. 30, 2016), aff'd , 689 F. App'x 969 (Fed. Cir. 2017) ; Soter Technologies, LLC, v. IP Video Corp. , No. 20 CV 2989 (GRB), 2021 WL 4553188, at *1-2 (E.D.N.Y. Oct. 5, 2021) (same); Seoul Semiconductor Co., Ltd. v. Satco Prods., Inc. , No. 19-CV-4951 (GRB), 570 F.Supp.3d 59, 60–61 (E.D.N. Y Oct. 15, 2021) (same). The Federal Circuit has further held:

Claim construction seeks to ascribe the meaning to claim terms as a person of ordinary skill in the art at the time of invention would have understood them. Phillips v. AWH Corp. , 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (citing Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996) ). In an IPR proceeding, claims are given their broadest reasonable interpretation in light of the specification. In re Cuozzo Speed Techs., LLC , 793 F.3d 1268, 1279 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee , , 136 S.Ct. 890, 193 L.Ed.2d 783 (2015 [2016]). In construing terms, "the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips , 415 F.3d at 1313. Indeed, the specification is "the single best guide to the meaning of a disputed term" and "[u]sually, it is dispositive." Id. Thus, "claims ‘must be read in view of the specification, of which they are a part.’ " Id. at 1315 (quoting Markman v. Westview Instruments, Inc. , 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) ).

SAS Inst., Inc. v. ComplementSoft, LLC. , 825 F.3d 1341, 1347 (Fed. Cir. 2016), rev'd and remanded on other grounds sub nom. SAS Inst., Inc. v. Iancu , ––– U.S. ––––, 138 S. Ct. 1348, 200 L.Ed.2d 695 (2018). With this standard in mind, the Court turns to the disputed claim terms.

Discussion

1. Markman Hearing

Before the hearing, counsel appropriately met and conferred, significantly reducing the number of disputed claim terms, resulting in conservation of judicial resources and substantial cost savings for the litigants. Counsel identified eleven disputes, but, in reality, these disputes revolved around three terms: abrade, sharp, and "sharp edge configured to abrade skin." As such, the Court will focus on the principal disputes. See Interactive Wearables, LLC v. Polar Electro Oy , 501 F. Supp. 3d 162, 171 (E.D.N.Y. 2020) ("Addressing every claim of a challenged patent individually is not necessary where multiple claims are substantially similar and linked to the same abstract idea. Thus, where the claims asserted in the patent contain only minor differences in terminology [but] require performance of the same basic process, they should rise or fall together.") (citation omitted).² These disputes are identified and defined by the parties as follows:

?

DE. 35, Ex. A. The Court hereby construes the claims as follows:

A. "Abrade" and "Sharp."

The Federal Circuit has upheld Markman determinations that "declined to further construe [a] term because it was a ‘straightforward term’ that required no construction." Summit 6, LLC v. Samsung Elecs. Co. , 802 F.3d 1283, 1291 (Fed. Cir. 2015). Claim construction "is not an obligatory exercise in redundancy." U.S. Surgical Corp. v. Ethicon, Inc. , 103 F.3d 1554, 1568 (Fed. Cir. 1997). Two of the disputed terms – "abrade" and "sharp" – fall squarely in this category. Despite etymological sparring by the parties, common meanings prove satisfactory at this juncture.

Such a holding is consistent with courts which have reviewed these terms in the same or similar patents. One district judge reviewed these terms in each of the Asserted Patents and found:

The Court finds the terms "abrade," "abrasive," "abrading," and their other variations as used in the Asserted Patents are easily understood in the surrounding context of the claim language and specification.

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