Probatter Sports, LLC v. Joyner Technologies, Inc.

• Decision Date: 01 August 2007
• Docket Number: No. 05-CV-2045-LRR.,05-CV-2045-LRR.
• Citation: 518 F.Supp.2d 1051
• Parties: PROBATTER SPORTS, LLC, Plaintiff/Counterclaim-Defendant, v. JOYNER TECHNOLOGIES, INC., Defendant/Counterclaim-Defendant,
• Court: U.S. District Court — Northern District of Iowa

518 F.Supp.2d 1051

PROBATTER SPORTS, LLC, Plaintiff/Counterclaim-Defendant, v. JOYNER TECHNOLOGIES, INC., Defendant/Counterclaim-Defendant,

No. 05-CV-2045-LRR.

United States District Court, N.D. Iowa, Eastern Division.

August 1, 2007.

[518 F.Supp.2d 1055]

Michael Ryan Patrick, Pepe & Hazard, LLP, Southport, CT, Richard E. MacLean, Susan M. Schlesinger, Grimes & Battersby, LLP, Norwalk, CT, Stephen J. Holtman, Simmons Perrin Albright Ellwood, Cedar Rapids, IA, Thomas R. Fitzgerald, Hiscock & Barclay, LLP, Rochester, NY, for Plaintiff/Counterclaim-Defendant.

James S. Zmuda, Califf & Harper, Moline, IL, John C. McNett, Quentin G. Cantrell, Woodard, Emhardt, Moriarty, Mcnett & Henry, LLP, Indianapolis, IN, for Defendant/Counterclaim-Plaintiff.

ORDER REGARDING CLAIM CONSTRUCTION

LINDA R. READE, Chief Judge.

I. INTRODUCTION

This matter comes before the court for construction of the disputed claims of the two patents-in-suit, the '134 Patent¹ and the '512 Patent.²

II. BACKGROUND

On June 14, 2007, the court held a Markman³ hearing ("Hearing") in this patent infringement action. Attorneys Stephen J. Holtman and Susan M. Schlesinger represented Plaintiff/Counterclaim-Defendant ProBatter Sports, LLC ("Pro-Batter"). Attorneys Quentin G. Cantrell, John C. McNett and James S. Zmuda represented Defendant/Counterclaim-Plaintiff Joyner Technologies, Inc. ("Joyner").

The court finds that the disputed claims of the two patents-in-suit are fully submitted and ready for construction. In construing such claims, the court considers (1) the parties' arguments at the Hearing, (2) the latest version of the parties' briefs and attached materials⁴ a and (3) the parties' Joint Amended Claim Construction Chart ("JACCC") (docket no. 174).⁵

III. JURISDICTION

The court has original jurisdiction of civil actions "arising under any Act of Congress relating to patents." 28 U.S.C. § 1338(a). It also has jurisdiction over related claims of unfair competition. Id § 1338(b). ProBatter's Complaint (docket no. 1) and Joyner's Second Amended Counterclaim (docket no. 71) raise various claims of patent infringement, in violation of 35 U.S.C. § 271, and common law unfair competition. Therefore, the court has subject-matter jurisdiction pursuant to § 1338(a) and (b).

IV. PRINCIPLES OF CLAIM CONSTRUCTION

A patent is a legal document that describes the exact scope of an invention to "secure to [the patentee] all to which he is entitled [and] to apprise the public of what is still open to them." Markman v. Westview Instruments, Inc., 517 U.S. 370, 373, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (citations omitted). By statute, a patent consists of two different elements: one or more "claims," which "particularly poin[t] out and distinctly clai[m] the subject matter which the applicant regards as his invention," and the "specification," which describes the invention "in such full, clear, concise and exact terms as to enable any person skilled in the art ... to make and use the same." Id. (citing 35 U.S.C. § 112). "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 goal of claim construction is to give proper meaning and scope to claim language. Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed.Cir.1997).

There is "no magic formula or catechism for conducting claim construction." Phillips, 415 F.3d at 1324. However, the Federal Circuit Court of Appeals has developed the following general principles:

A. Claims

Claim construction always starts with the language of the claim itself. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996); see also Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed.Cir.1998) ("The actual words of the claim are the controlling focus.") (citing Thermctlloy, Inc. v. Aavid Eng'g, Inc., 121 F.3d 691, 693 (Fed.Cir. 1997)); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir.1998) (stating that claim construction "begins and ends in all cases with the actual words of the claim"); SRI Ina v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed.Cir.1985) ("[I]t is the claims that measure the invention.") (emphasis in original). "[T]he words of a claim `are generally given their ordinary and customary meaning.'" Phillips, 415 F.3d at 1312 (quoting Vitronics, 90 F.3d at 1582). The ordinary rules of grammar and syntax also apply. In re Hyatt, 708 F.2d 712, 714 (Fed.Cir.1983).

"[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 (citation omitted). The perspective of a person of ordinary skill in the art is "based on the wellsettled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to be read by others of skill in the pertinent art." Id. (citing, in part, Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed.Cir.2002)). In certain cases, however, the patentee may unequivocally impart a novel meaning to claim terms. Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314 1323 (Fed.Cir.2003) (citations omitted). "It is a well-established axiom in patent law that a patentee is free to be his or her own lexicographer and thus may use terms in a manner contrary to or inconsistent with one or more of their ordinary meanings." Hormone Research Found., Inc. v. Genentech, Inc., 904 F.2d 1558, 1563 (Fed. Cir.1990). Therefore, "it is always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning." Vitronics, 90 F.3d at 1582.

B. Specification

The claims "must be read in view of the specification, of which they are a part." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir. 1995), affd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The specification is "the primary basis for construing the claims.'" Phillips, 415 F.3d at 1315 (quoting Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir.1985)). "The close kinship between the [specification] and the claims is enforced by the statutory requirement that the specification describe the claimed invention in `full, clear, concise, and exact terms.'" Id. at 1316 (quoting 35 U.S.C. 112). The Federal Circuit Court of Appeals recently summarized:

Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.

Id. (quoting Renishaw, 158 F.3d at 1250).

If there is a dispute about the meaning of a claim term, the specification presents "the single best guide to the meaning of the disputed term." Vitronics, 90 F.3d at 1582. "[T]he purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so." Phillips, 415 F.3d at 1323. It is well-settled, however, that courts should not ordinarily read a limitation into a claim from the specification. As the Federal Circuit Court of Appeals makes clear:

[The Federal Circuit Court of Appeals] has consistently adhered to the proposition that courts cannot alter what the patentee has chosen to claim as his invention, that limitations appearing in the specification will not be read into claims, and that interpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.

Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1348 (Fed.Cir.1998) (citations omitted, emphasis in original); accord KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed.Cir.2000) ("[A]lthough the specifications may well indicate that certain embodiments are preferred, particular embodiments appearing in a specification will not be read into the claims when the claim language is broader than such embodiments.") (quoting Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed.Cir.1994)). To avoid pitfalls, the court must remain focused "on understanding how a person of ordinary skill in the art would understand the claim terms." Phillips, 415 F.3d at 1323.

C. Prosecution History

The court should also consider the patent's prosecution history, if it is in evidence. Phillips, 415 F.3d at 1317. The prosecution history consists of the record of the patent before the United States Patent and Trademark Office ("PTO"). Id. The prosecution history includes the prior art cited during the examination of the patent. Id.

Although the prosecution history may assist in claim interpretation, as a general rule it may not "enlarge, diminish or vary the limitations in the claims." Markman, 52 F.3d at 980 (internal quotations omitted). Moreover, the prosecution history "often lacks the clarity of the specification and thus is less useful for claim construction purposes." Phillips, 415 F.3d at 1317.

Nonetheless, the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be. Vitronics, 90 F.3d at 1582-83; see also Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed.Cir. 2005) ("The purpose of consulting the prosecution history in construing a claim is to `exclude any interpretation that...