Factory Direct Wholesale, LLC v. Office Kick, Inc.

• Docket Number: Civil Action 4:21-cv-368
• Decision Date: 11 September 2023
• Parties: FACTORY DIRECT WHOLESALE, LLC, Plaintiff, v. OFFICE KICK, INC., and CKNAPP SALES, INC. Defendant. OFFICE KICK, INC., and CKNAPP SALES, INC., Counterclaim Plaintiffs, v. FACTORY DIRECT WHOLESALE, LLC, DEFU USA, LLC, and HANPING LIU, Counterclaim Defendant/Third Party Counterclaim Defendants.
• Court: U.S. District Court — Southern District of Georgia

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FACTORY DIRECT WHOLESALE, LLC, Plaintiff,
v.
OFFICE KICK, INC., and CKNAPP SALES, INC. Defendant.

OFFICE KICK, INC., and CKNAPP SALES, INC., Counterclaim Plaintiffs,
v.
FACTORY DIRECT WHOLESALE, LLC, DEFU USA, LLC, and HANPING LIU, Counterclaim Defendant/Third Party Counterclaim Defendants.

Civil Action No. 4:21-cv-368

United States District Court, S.D. Georgia, Savannah Division

September 11, 2023

ORDER

R. STAN BAKER, UNITED STATES DISTRICT JUDGE

Before the Court is the Magistrate Judge's July 5, 2023 Report and Recommendation (“R&R”) regarding the construction of disputed claims in the patents at issue in this case. (Doc. 103.) Defendants Office Kick, Inc. (“OfficeKick”) and CKNAPP Sales, Inc. (“CKNAPP”, and, collectively with Office Kick, “Defendants”) object to a limited portion of the R&R, (doc. 104); Plaintiff Factory Direct Wholesale, LLC responded, (doc. 106), and Defendants replied, (doc. 112). For the following reasons, the Court SUSTAINS Defendants' objections, in

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part, and OVERRULES them, in part. (Doc. 104.) The Court ADOPTS the July 5, 2023 R&R as its opinion, in part, and DECLINES to ADOPT it, in part. (Doc. 103.)

BACKGROUND

As the Magistrate Judge explained, Plaintiff sells adjustable standing desk converter units on Amazon.com which allow users to either stand or sit while using the work surface. (Doc. 103, pp. 1-2.) CKNAPP, also known as “Vivo,” is a parent company of Office Kick, which holds three desk converter patents: (1) Patent No. 11,134,773 (the “773 Patent”), (2) Patent No. 11,134,774 (the “774 Patent”), and (3) Patent No. 10,575,630 (the “630 Patent,” and, collectively with the 773 and 774 Patents, the “Patents”). (Id., p. 2; see also doc. 15-6 (630 Patent); doc. 15-1 (773 Patent); doc. 15-5 (774 Patent).) Plaintiff asserts that although the 774 Patent purports to be a continuation of the 773 Patent, and the 773 Patent purports to be a continuation of the 630 Patent, the 774 Patent and 773 Patent are actually “continuations-in-part” because they add substantive content. (Doc. 103, p. 2 (citing doc. 71, p. 6 n.3).) Plaintiff alleges that Defendants' counsel wrote to Amazon demanding that it remove two of Plaintiff's models because they infringed the 773 Patent; Amazon subsequently removed the models. (Id., pp. 2-3.) Amazon eventually removed more of Plaintiff s models at Defendants' request because they purportedly infringed one of the Patents. (Id., p. 3.) Plaintiff brought this action against Defendants asserting claims for tortious interference, civil conspiracy, declaratory judgment of non-infringement of the Patents, and declaratory judgment of invalidity of the Patents. (Doc. 15, pp. 30-43.) Following a claim construction hearing, (doc. 82 (Minute Entry); doc. 86 (Transcript)), the Magistrate Judge recommended constructions for eleven disputed claims in the Patents, (doc. 103), to which Defendants filed limited objections, (doc. 104.)

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ANALYSIS

As the Magistrate Judge explained, (doc. 103, p. 4), “a district court's duty at the claim construction stage is, simply, the one that [the Federal Circuit^[1] described . . . many times before: to resolve a dispute about claim scope that has been raised by the parties.” Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1319 (Fed. Cir. 2016). Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995).

“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.” Britax Child Safety, Inc. v. Nuna Int'l B.V., 2019 WL 7161687, at *3 (E.D. Pa. Dec. 23, 2019). Claim construction is necessary “[w]hen the parties raise an actual dispute regarding the proper scope of claims.” Kaufman v. Microsoft Corp., 34 F.4th 1360, 1369 (Fed. Cir. 2022) (quoting O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (emphasis added)); see also Fastship, LLC v. United States, 114 Fed.Cl. 499, 504 (2013) (“Although the trial court is not required to construe every term in a patent, it must construe any term for which claim scope is disputed.”). “A [court's] 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' meaning does not resolve the parties' dispute.” O2 Micro, 521 F.3d at 1361.

The Federal Circuit has “frequently stated that the words of a claim are generally given their ordinary and customary meaning. [Cits.] [It has] made clear, moreover, that the ordinary and customary meaning of a claim term 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, i.e., as of the effective filing date

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of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (quotations and citations omitted).^[2] “Importantly, the [POSITA] 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.^[3] Although “[t]he claim construction inquiry . . . begins and ends in all cases with the actual words of the claim,” Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998), courts must also consider “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.” Phillips, 415 F.3d at 1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). “Further, a court construing patent claim terms need not adopt the constructions proposed by the parties, and should determine its own constructions if it determines the parties' proposals to be legally flawed.” Holmberg v. United States, 124 Fed.Cl. 610, 613 (2016).

As the Magistrate Judge explained, (doc. 103, pp. 8-9), “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.' ” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Courts, however, must “us[e] the specification [only] to interpret the meaning of a claim”, and may not “import[ ] limitations from the specification into the claim.” Phillips, 415 F.3d at 1323. “[T]he court may also consider the

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prosecution history of the patent, if in evidence.” Vitronics Corp., 90 F.3d at 1582. The prosecution history consists of “all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims.” Id. However, since 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.” Phillips, 415 F.3d at 1317. Courts may also examine “extrinsic evidence,” e.g., dictionaries, treatises, and expert testimony, id. at 1318; however, extrinsic evidence is “less significant than the intrinsic record”, and “cannot alter any claim meaning discernible from intrinsic evidence.” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004).

The R&R acknowledged, (doc. 103, p. 10), there are “only two exceptions to [the] general rule” that claim terms are construed according to their plain and ordinary meaning, as understood by the POSITA: “1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term' other than its plain and ordinary meaning.” Id. (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). “The standard for disavowal of claim scope is similarly exacting.” Id. at 1366. “[I]n order for prosecution disclaimer to attach, the disavowal must be both clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1325 (Fed. Cir. 2013). “Where the alleged disavowal is ambiguous, or even ‘amenable to multiple reasonable interpretations,' [the Federal Circuit has] declined to find prosecution disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016)

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(quoting Cordis Corp, v. Medtronic AVE, Inc.. 339 F.3d 1352, 1359 (Fed. Cir. 2003)). “The party seeking to invoke . . . disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer.” Trivascular, Inc, v. Samuels, 812 F.3d 1056, 1063-64 (Fed. Cir. 2016) (citation and quotations omitted).

I. The Court adopts the Magistrate Judge's unobjected-to recommendations.

Plaintiff proposes constructions for eleven disputed terms designated 1 .a, 1 .b, 1 .c, 1 .d, 1 .e, l.f, 1, 2, 3, 4, and 5. (Doc. 72-1, pp. 1-8.) Defendants contend that “[n]o construction is necessary” for any of the terms. (Doc. 77, p. 26.) The Magistrate Judge recommended constructions for the eleven terms, (doc. 103, pp. 67-68), and Defendants only object to the recommendations regarding Terms l.a, l.b, and 1. (Doc. 104, p. 5.) The Court agrees with the Magistrate Judge's unobjected-to recommendations regarding Terms l.c, I d, l.e, l.f, 2, 3, 4, and 5, and ADOPTS them as its opinion. The Court will summarize its constructions below.

II. The Court declines to adopt the Magistrate Judge's recommendations regarding Terms l.a and l.b.

The Magistrate Judge...