Protective Optics, Inc. v. Panoptx, Inc.
| Decision Date | 23 October 2006 |
| Docket Number | No. C 05-2732 CRB.,C 05-2732 CRB. |
| Citation | 458 F.Supp.2d 1053 |
| Court | U.S. District Court — Northern District of California |
| Parties | PROTECTIVE OPTICS, INC., Plaintiffs, v. PANOPTX, INC., Defendant. |
E. Patrick Ellisen, Greenberg Traurig, LLP, East Palo Alto, CA, Barry J. Parker, Carr McClellan Ingersoll Thompson & Horn, Burlingame, CA, Brian Andrew Carpenter, Greenberg Traurig LLP, Denver, CO, for Plaintiffs.
Kenneth E. Keller, Michael D. Lisi, Krieg Keller Sloan Reilley & Roman LLP, San Francisco, CA, for Defendant.
Protective Optics, Inc. ("Protective") filed suit against Panoptx, Inc. ("Panoptx") for infringement of U.S. Patent No. 6,062,688 ("the '688 patent"). The parties filed a Joint Claim Construction Statement asking that the Court construe four claim terms.
The '688 patent, entitled "Detachable Eyeglass Foam Shield," discloses an eye shielding system to prevent liquids and solids from entering the face area behind eyeglasses. The patent was issued May 16, 2000, to Mr. Joseph Vinas. By assignment, Protective Optics, Inc. is the owner of the entire right, title, and interest of the '688 patent.
The relevant patent claims are directed to an "eye shield system," and the "shield" itself.1 Generally, the system includes an air-permeable shield that is releasably secured to the frame of eyeglasses. When the system is worn, the shield sits between the entire perimeter of the frame and the wearer's face. The purpose of the shield is to "block," "resist," or "prevent" the passage of liquids and solids from reaching the eyes. The shield is formed from airpermeable material to allow the passage of gases so as to prevent fogging of the lenses.
The patentee described shields known in the prior art, and asserted that these systems did not meet all of the needs of persons who must wear prescription glasses and are subject to the risk of harmful substances coming in contact with their eyes. For example, prior art shields suffered from one or more of the following characteristics: not being detachable, not providing continuous coverage around the periphery, leaving a gap between the shield and the face, or not being airpermeable. According to the patentee, the invention is designed to surmount all of these prior shortcomings.
Claim construction is a matter of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995), aff'd, 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). When construing claims, a court first looks to intrinsic evidence of record, and thereafter, if appropriate, to extrinsic evidence. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). Intrinsic evidence comprises the patent claims, the specification, and, if entered into evidence, the prosecution history. Id. Intrinsic evidence also comprises the prior art cited in a patent or during the prosecution. Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed.Cir.2003). In most cases, the intrinsic evidence alone will determine the proper meaning of the claim terms. Vitronics, 90 F.3d at 1583.
When construing claims, the analysis begins with, and must focus on, the language of the claims themselves. Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed.Cir.2001). If the claim language is clear on its face, then the rest of the intrinsic evidence is considered only for whether any deviation from the plain meaning is specified. Id. Deviation may be warranted if, for example, the patentee has "chosen to be his own lexicographer," or if the patentee has disclaimed a certain portion of the claim scope that would otherwise be afforded by the plain meaning. Id. (citations omitted). Where the claim language is not clear, other intrinsic evidence is used to resolve the lack of clarity. Id.
Generally, a court gives the words of a claim their ordinary and customary meaning. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005). 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 of the patent application." Id. at 1313. The context in which a word appears in a claim informs the construction of that word. Id. at 1314. Where there are several common meanings, the patent disclosure "serves to point away from the improper meanings and toward the proper meanings." Brookhillr-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed.Cir.2003) (citation omitted). If more than one definition is consistent with the usage of a term in the claims, the term may be construed to encompass all consistent meanings. Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1203 (Fed.Cir.2002).
Claims must be read in light of the specification. Markman, 52 F.3d at 979. The specification "is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582. Where a claim term has multiple, yet potentially consistent, definitions, the rest of the intrinsic record, beginning with the specification, provides further guidance. Brookhill-Wilk, F.3d at 1300. If the patentee explicitly defined a claim in the specification, that definition trumps the ordinary meaning of the term. CCS Fitness v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir. 2002). The specification may define a term by implication. Phillips, 415 F.3d at 1321. The specification may also reveal a disclaimer of the claim scope by indicating that the invention and all of its embodiments only occupy part of the broad meaning of a claim term. SciMed Life Sys. v. Advanced Cardiovascular Sys., 242 F.3d 1337,1343-4 (Fed.Cir.2001).
It is error, however, to import a limitation from the specification into the claim. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed.Cir.2004). Standing alone, an embodiment disclosed in the specification does not limit the claims. Id. at 906. Even when the specification describes only a single embodiment, the claims of the patent are not to be construed as restricted to that embodiment unless the patentee demonstrates a clear intention to limit the claim scope using "words or expressions of manifest exclusion or restriction." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.Cir.2002). Absent clear statements of scope, courts are constrained to follow the language of the claims and not that of the written description provided by the specification. Id. at 1328; see also Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed.Cir.1988) ().
Conversely, a construction that excludes a preferred embodiment is "rarely, if ever, correct." Pfizer Inc. v. Teva Pharm., USA Inc., 429 F.3d 1364, 1374 (Fed.Cir. 2005) (quoting SanDisk Corp. v. Memorex Products, Inc., 415 F.3d 1278, 1285 (Fed. Cir.2005)). Courts require highly persuasive evidence that the claims do not encompass a preferred embodiment. Vitronics, 90 F.3d at 1583.
The parties have requested the Court to construe the following terms:
(1) "blocks passage of
liquids and solids" claims 1 and 42
(2) "to seal" or "a seal" claims 1 and 16
(3) "resists passage of
liquids and solids" claim 15
(4) "prevent the passage of
liquids and solids"2 claim 42
The first and third terms are both used to modify the description of the air-permeable material that forms the shield, and will be analyzed together. The fourth term is used in the context of how the shield "engage[s] with a wearer's face." The second group of terms uses the word "seal" as a verb and a noun, also in the context of how the shield contacts the wearer's face.
The primary dispute between the parties is the degree to which the shield material, and the point of contact between the shield and the face of the wearer, each affect the ability of liquids or solids to breach the eye shield system. Panoptx argues that the claim terms all require that the material and the seal formed between shield and face must be essentially "impenetrable." In contrast, Protective contends that the seal and the material need not function in such an absolute manner. Protective contends that the construction proposed by Panoptx impermissibly imports a single embodiment described in the specification into the claims. The following analysis considers as intrinsic evidence the claims and the specification.3
Claims 1, 15, and 42 contain the terms "blocks" and "resists" and recite, in relevant part:
1 .... a shield, comprising an airpermeable material, having left and right ends, and forward and rearward sides, wherein the air-permeable material allows passage of gasses, but blocks passage of liquids and solids, and the shield has two lens openings formed therein. . . .
'688 patent at 10:1-5 (emphasis added).
15 .... a shield structure, comprising an air-permeable material, having forward and rearward sides, wherein said air-permeable material allows passages of gasses, but resists passage of liquids and solids, said forward side has at least one lens opening formed therein, and said forward side is operable to be releasably secured to the rearward side of the frame....
Id. at 10:64-11:4 (emphasis added).
42 .... a unitary body configured to fit interstitially between a pair of eyeglasses and a wearer's face, said unitary body comprising an air-permeable material that blocks the passage of solids and liquids there through....
Id. at 13:33-36 (emphasis added).
Preventive proposes a construction of "impedes" for the term "blocks," and "hinders" for the term "resists." Panoptx contends that both terms should be construed to mean "stops or does not...
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