Otter Prods., LLC v. Treefrog Devs. Inc.

• Decision Date: 27 September 2012
• Docket Number: Civil Action No. 11-cv-02180-WJM-KMT
• Parties: OTTER PRODUCTS, LLC, a Colorado Limited Liability Company, Plaintiff/Counter-Defendant, v. TREEFROG DEVELOPMENTS INC. d/b/a LIFEPROOF, a Delaware Corporation, Defendant/Counter-Claimant.
• Court: U.S. District Court — District of Colorado

OTTER PRODUCTS, LLC, a Colorado Limited Liability Company, Plaintiff/Counter-Defendant,

v.TREEFROG DEVELOPMENTS INC. d/b/a LIFEPROOF,

a Delaware Corporation, Defendant/Counter-Claimant.

Civil Action No. 11-cv-02180-WJM-KMT

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO

Dated: September 27, 2012

Magistrate Judge Kathleen M. Tafoya

MEMORANDUM ON CLAIM CONSTRUCTION

I. Introduction

Plaintiff Otter Products, LLC ("Otter") contends that Defendant Treefrog Developments Inc. d/b/a LifeProof's ("LifeProof") iPhone 4/4S cases infringe claims in U.S. Patent No. 6,995,976 ("the '976 Patent") (Am. Compl., Ex. A), U.S. Patent. No. 7,158,376 ("the '376 Patent") (id., Ex. B), and U.S. Patent No. 7,609,512 ("the '512 Patent") (id., Ex. C). The independent claims Otter asserts against LifeProof are claims 1 and 12 of the '976 Patent, claim 11 of the '376 Patent, claims 1 and 3 of the '512 Patent, as well as certain specified dependent claims.

The '976 Patent describes a protective enclosure for a touch screen device. The '976 Patent was filed on August 20, 2003, issued February 7, 2006, and claims priority to a provisional application filed November 19, 2001. The first independent claim statesA protective enclosure for a touch screen device having a touch screen comprising:

a shell that is capable of enclosing and substantially surrounding said touch screen device, said touch screen device being a separate unit from said protective enclosure, said shell being adapted to insert and remove said touch screen device by hand, said shell being substantially submersibly watertight, substantially rigid and substantially crush-resistant, said shell being larger than said touch screen device so that there is a gap between an outer surface of said touch screen device and an inner surface of said shell so that said shell may flex when subjected to a crushing force without transmitting said force directly to said touch screen device, said shell having an elevated protective rim substantially surrounding a perimeter of said touch screen of said touch screen device so that when said touch screen device is disposed in said enclosure, said touch screen of said touch screen device is recessed with respect to said protective rim of said shell so that said elevated protective rim protects said touch screen from deflection and breakage by contact with an object that is larger than said perimeter of said protective rim; and a flexible protective membrane that is integrally fixed on said shell so that said flexible protective membrane is disposed over said touch screen of said touch screen device when said touch screen device is disposed in said enclosure, said flexible protective membrane having a back side that has a substantially planar smooth surface that is adjacent to said touch screen of said touch screen device when said touch screen device is disposed in said enclosure so that tactile inputs on a front side of said flexible protective membrane are communicated to said touch screen through said flexible protective membrane, said flexible protective membrane being at least partially transparent such that said touch screen is visible through said flexible protective membrane so that said touch screen is capable of displaying and capturing information through said flexible protective membrane.

('976 Patent, Claim 1.)

The '376 Patent describes and claims a protective enclosure for two distinct types of electronic devices: (1) a tablet PC having an interactive flat panel control,¹ and (2) a handheld device having a capacitance-sensing interactive flat-panel control. The '376 Patent was filed onSeptember 8, 2004, issued January 2, 2007, and also claims priority to the provisional application filed November 19, 2001. Claim 1 is not being asserted against LifeProof. Claim 11 states

A protective enclosure for a handheld device having a capacitance-sensing interactive flat-panel control comprising:

a shell that is capable of enclosing said handheld device, said handheld device being a separate unit from said protective enclosure, said handheld device being insertable in and removable from said enclosure by hand, said shell being substantially crush-resistant and having an elevated protective rim around a perimeter portion of said capacitance-sensing interactive flat-panel control of said handheld device so that when said handheld device is disposed in said enclosure, said capacitance-sensing interactive flat-panel control of said handheld device is recessed with respect to said protective rim of said shell so that said elevated protective rim protects said interactive flat-panel control from breakage; and

a protective membrane that is integrally fixed to said shell, said protective membrane disposed over said capacitance-sensing interactive flat-panel control of said handheld device when said handheld device is disposed in said enclosure, said protective membrane having a back side that has a substantially planar smooth surface that is adjacent to said capacitance-sensing interactive flat-panel control of said handheld device when said handheld device is disposed in said enclosure, said protective membrane being sufficiently thin that capacitive inputs on a front side of said protective membrane are transmitted to said capacitive-sensing interactive flat-panel control through said protective membrane, said protective membrane being at least partially transparent such that said interactive flat-panel control is visible through said protective membrane, said protective membrane having a dielectric constant such that capacitive inputs on a front side of said protective membrane are transmitted to said capacitance-sensing interactive flat-panel control.

('376 Patent, Claim 11.)

The '512 Patent describes a protective enclosure for an electronic device such as a laptop computer. Claim 1 of the '976 patent is representative of the '512 Patent for purposes of this order. The '512 Patent was filed on July 7, 2006, issued October 27, 2009, and also claims priority to the provisional application filed November 19, 2001.

II. Legal Issues and Standards

In Article I, Section 8 of the United States Constitution, the Founders authorized Congress to enact laws "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." Shortly thereafter Congress enacted the first patent law, declaring that anyone who had "invented or discovered any useful art, manufacture, engine, machine, or device or any improvement therein not before known or used" shall have "the sole and exclusive right and liberty of making, constructing, using and vending to others to be used" for a term not to exceed fourteen years. 1 Stat. 109-110 (1790); see also Bilski v. Kappos, __ U.S. __, 130 S. Ct. 3218, 3242 (2010) (providing history of U.S. patent system). Patents are a right to exclude others from gain from the invention, sometimes referred to as "exclusive advantages of commerce." Bilski, 130 S. Ct. at 3242. As such, the description of the boundaries of the invention is of paramount importance. A patentee must adequately notify the public of the scope of the invention. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). A claim is adequately described when a person skilled in the art "would understand the bounds of the claim when read in light of the specification . . . [and the claim] reasonably apprise[s] those skilled in the art of the scope of the invention . . . ." Solomon v. Kimberly-Clark Co., 216 F.3d 1372, 1378 (Fed. Cir. 2000) (quotation omitted).

A. Person of Ordinary Skill in the Art

A court must construe claim terms from the perspective of a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)(case initially arising from the District of Colorado). A "person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art." In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Prior art includes previous inventions or products which are "reasonably pertinent to the particular problem with which the inventor was involved." Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535 (Fed. Cir. 1983). "The person of ordinary skill is presumed to have access to the entire art not because he unrealistically carries the entire art in his head but because he knows how to find information in the art by researching accessible sources including the patent literature." In re Nilssen, 847 F.2d 841, 1988 WL 32917, at *2 (Fed. Cir. Apr. 14, 1988) (unpublished). Factors to be considered in determining skill level include: "type of problems encountered in art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field." Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986) (citing Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983)). Moreover, the actual inventor's skill is not determinative of the level of ordinary skill, because a person of ordinary skill is "presumed to be one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate . . . ." Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985) (also noting that the concepts underling the Constitution and the statutes that have created the patent system contemplate that inventors, as a class, possess something which "sets them apart from the workers of ordinary skill").

B. Principals of Construction

Generally, a claim term is given its "ordinary and customary meaning," that being the definition given by "a person of ordinary skill in the art in question at the time of the invention." Phillips, 415 F.3d at 1313. The Federal Circuit has explained that the claim...