Pelican Int'l v. Hobie Cat Co.

• Decision Date: 01 February 2022
• Docket Number: 20-cv-2390-BAS-MSB
• Parties: PELICAN INTERNATIONAL INC., Plaintiff, v. HOBIE CAT COMPANY, et al., Defendants.
• Court: U.S. District Court — Southern District of California

PELICAN INTERNATIONAL INC., Plaintiff,
v.
HOBIE CAT COMPANY, et al., Defendants.

No. 20-cv-2390-BAS-MSB

United States District Court, S.D. California

February 1, 2022

CLAIM CONSTRUCTION ORDER FOR UNITED STATES PATENT NO. 10, 829, 189

Hon. Cynthia Bashant, United States District Judge.

Pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), this Court conducted a Markman hearing (“Hearing”) on November 9, 2021 in the above-captioned patent-infringement case in order to construct ten disputed claim terms and phrases for United States Patent No. 10, 829, 189 (“‘189 Patent”), filed February 27, 2019. (See Markman Hr'g Tr. (“Tr.”), ECF No. 62.) Prior to the Hearing, the parties submitted their joint claim construction chart (see Chart, ECF No. 39-1) and briefing (see ECF Nos. 40-41, 43, 47) in accordance with this District's local rules and this Court's scheduling order. For the reasons set forth on the record at the Hearing, and discussed below, the Court enters the following claim constructions.

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I. BACKGROUND

Plaintiff Pelican International Inc. ("Pelican") brought this patent infringement action against Defendants Hobie Cat Company and Hobie Cat Company II, LLC (collectively, "Hobie Cat"), alleging infringement of the '189 Patent. As shown in Figure 1 and Figure 11 below, the '189 Patent relates to an interface for mounting a pedal-propulsion system on to a thermo formed kayak for hands-free propulsion of the watercraft. (See '189 Patent, Ex. A to Lyons Deck, ECF No. 40-2.)

Pelican claims that the accused device-Hobie's line of "Mirage Passport Kayaks"- infringed, and continues to infringe, upon one or more claims of the '189 Patent. (First Am. Compl. ¶ 13, ECF No. 16.) In its Answer, Hobie Cat counter-claimed for declaratory judgments of non-infringement and patent invalidity. (Answer, ECF No. 17.)

The disputed claim terms and phrases are summarized herein and in the parties' Chart, which the Court hereby incorporates by reference (see ECF No. 39-1).

II. Principles of Claim Construction

"A determination of infringement involves a two-step analysis. 'First, the claim must be properly construed to determine its scope and meaning. Second, the claim as

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properly construed must be compared to the accused device or process.'” Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1320 (Fed. Cir. 2003) (quoting Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993)); see also Wavetronix LLC v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1354 (Fed. Cir. 2009). The first step of the infringement analysis, often referred to as claim construction, is now before this Court. Claim construction “is exclusively within the province of the court [to decide], ” not the jury. Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996); see also Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 326 (2015) (opining judges, not juries, are better suited to interpret the meaning of a disputed claim term).

A. Evidence Reviewed During Claim Construction

“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)). In deciphering the meaning of disputed claim terms, courts “generally” must ascribe to those terms “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312; see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “[T]he 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 of the patent application.” Phillips, 415 F.3d at 1313. “The inquiry into the meaning that claim terms would have to a person of skill in the art at the time of the invention is an objective one. This being the case, a court looks to those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.” Innova/Pure Water, 381 F.3d at 1116. “Those 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. (citing Markman, 52 F.3d 967, 979-80 (Fed. Cir. 1995), affirmed 517 U.S. at 370). “In construing the patent, a court must consider intrinsic evidence, ” i.e., the

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specification, ^[1] the claims of the patent, ^[2] and the prosecution history, and “may consider extrinsic evidence, ” e.g., dictionary sources, “when appropriate.” Pulse Eng'g, Inc. v. Mascon, Inc., No. 08CV0595 JM (AJB), 2009 WL 755321, at *1 (S.D. Cal. Mar. 9, 2009) (citing Phillips, 415 F.3d at 1314) (emphasis in original).

Courts first look to the words used in the claims themselves, including their context. See Scanner Techs. Corp. v. ICOS Vision Sys. Corp., N.V., 365 F.3d 1299, 1303 (Fed. Cir. 2004) (holding that claim construction “begins and ends” with a claim's actual words). Claims are interpreted subject to the standard canons of claim construction. See, e.g., Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 F.3d 1291, 1300 (Fed. Cir. 2014). For example, “the person of ordinary skill 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 1314 (citing Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)); Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (“We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history.”). Furthermore, because a term that appears in multiple claims should generally be construed consistently, “[o]ther claims of the patent in question, both asserted and unasserted . . ., [can] be valuable sources of enlightenment as to the meaning of the [disputed] claim term.” Phillips, 415 F.3d at 1314 (citing Vitronics, 90 F.3d at 1582). On the other hand, courts presume the use of different words or phrases in separate claims “to indicate that the claims have different meanings and scope” under the doctrine of “claim differentiation.” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1369 (Fed. Cir. 2007).

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Claims do “not require elaborate interpretation.” Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001). 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.”^[3] Phillips, 415 F.3d at 1314 (citing 3M, 265 F.3d at 1352).

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; accord Phillips, 415 F.3d at 1317 (“It is entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims.”). Importantly, the specification “may reveal a special definition given to a claim term by the patentee that differs from the [plain and ordinary] meaning it would otherwise possess. In such cases, the inventor's lexicography governs.” Phillips, 415 F.3d at 1316.

Another bedrock principal of claim construction is that courts are not to read limitations from the specifications-including the drawings therein, or “Figures”-into the claims. As explained by the Federal Circuit in Phillips, there is a “distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim.” Id. at 1323. The Federal Circuit has “expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” Id.

As mentioned above, in consulting intrinsic evidence, courts may look beyond the patent itself and consult the prosecution history, so long as such history is in evidence. See Id. at 1317. The patent, together with the prosecution history, “usually provides the technological and temporal context to enable the court to ascertain the meaning of the claim

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to one of ordinary skill in the art at the time of the invention.” V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1310 (Fed. Cir. 2005).

“In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term.” Vitronics, 90 F.3d at 1583. However, although it is “less significant than the intrinsic record in determining the legally operative meaning of claim language[, ]” a Court may use extrinsic evidence “to shed useful light on the relevant art[.]” Phillips, 415 F.3d at 1317 (instructing extrinsic evidence “can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand the claim terms to mean”). Extrinsic evidence includes outside sources, expert testimony, and learned treatises. See Pulse, 2009 WL 755321, at *2; see 24/7 Customer, Inc. v. LivePerson, Inc., 235 F.Supp.3d 1102, 1107 (N.D. Cal. 2016) (“Within the class of extrinsic evidence, dictionaries, and especially technical dictionaries, ‘can assist the court in determining the meaning of particular terminology to those of skill in the art' because they ‘endeavor to collect the accepted meanings of...