Simplehuman, LLC v. Itouchless Housewares & Prods., Inc.
| Decision Date | 14 December 2020 |
| Docket Number | Case No. 4:19-cv-02701-HSG |
| Citation | 506 F.Supp.3d 830 |
| Parties | SIMPLEHUMAN, LLC, Plaintiff, v. ITOUCHLESS HOUSEWARES AND PRODUCTS, INC., Defendant. |
| Court | U.S. District Court — Northern District of California |
Ali S. Razai, Brandon Geoffrey Smith, Jared Christian Bunker, Nicole Antoinette Rossi Townes, Nicole Rossi Townes, Paul Adam Stewart, Knobbe Martens Olson & Bear, LLP, Irvine, CA, for Plaintiff.
Victor de Gyarfas, Tiffany Kim Sung, Foley & Lardner LLP, Los Angeles, CA, for Defendant.
CLAIM CONSTRUCTION ORDER
Re: Dkt. No. 55
Plaintiff simplehuman, LLC ("simplehuman") brings this patent infringement action against defendant iTouchless Housewares and Products ("iTouchless") for alleged infringement of U.S. Design Patent Nos. D644,807 (the "D807 Patent") and D729,485 (the "D485 Patent"), as well as U.S. Patent No. 6,626,316 (the "’316 Patent"). Now before the Court are the parties’ claim construction disputes. After carefully reviewing and considering the parties’ arguments and the evidence submitted,1 the Court ADOPTS the following constructions.
Claim construction is a question of law to be determined by the Court. Markman v. Westview Instruments, Inc. , 517 U.S. 370, 384, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). "The purpose of claim construction is to determine the meaning and scope of the patent claims asserted to be infringed." O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co. , 521 F.3d 1351, 1360 (Fed. Cir. 2008) (quotation omitted).
Generally, claim terms should be "given their ordinary and customary meaning"—in other words, "the meaning that the term[s] would have to a person of ordinary skill in the art in question at the time of the invention." Phillips v. AWH Corp. , 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (quotation omitted). There are only two circumstances where a claim is not entitled to its plain and ordinary meaning: "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 Entm't Am. LLC , 669 F.3d 1362, 1365 (Fed. Cir. 2012).
When construing claim terms, the Federal Circuit emphasizes the importance of intrinsic evidence such as the language of the claims themselves, the specification, and the prosecution history. Phillips , 415 F.3d at 1312–17. The claim language can "provide substantial guidance as to the meaning of particular claim terms," both through the context in which the claim terms are used and through comparison with other claims in the patent. Id. at 1314. The specification is likewise a crucial source of information. Id. at 1315–17. Although it is improper to read limitations from the specification into the claims, the specification is "the single best guide to the meaning of a disputed term" and "usually dispositive." Id. at 1315 ; see also Merck & Co. v. Teva Pharm. USA, Inc. , 347 F.3d 1367, 1371 (Fed. Cir. 2003) (). The prosecution history, while often lacking the "clarity" of the specification, also constitutes intrinsic evidence that provides "evidence of how the PTO and the inventor understood the patent." Phillips , 415 F.3d at 1317.
Despite the importance of intrinsic evidence, courts may also consider extrinsic evidence—technical dictionaries, learned treatises, expert and inventor testimony, and the like—to help construe the claims. Id. at 1317–18. For example, dictionaries may reveal what the ordinary and customary meaning of a term would have been to a person of ordinary skill in the art at the time of the invention. Frans Nooren Afdichtingssystemen B.V. v. Stopaq Amcorr Inc., 744 F.3d 715, 722 (Fed. Cir. 2014) (). Expert testimony can also help "to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Phillips , 415 F.3d at 1318. Extrinsic evidence is, however, "less significant than the intrinsic record in determining the legally operative meaning of claim language." Id. at 1317 (quotation omitted).
With respect to design patents, claim construction may be used, for example, to describe the role of particular drafting conventions (e.g., broken lines), to assess and describe the effect of the prosecution history, or to distinguish ornamental from purely functional features of the design. Egyptian Goddess, Inc. v. Swisa, Inc. , 543 F.3d 665, 680 (Fed. Cir. 2008) (en banc). However, the Federal Circuit has cautioned against excessive verbal description. Id. at 679 ; Crocs, Inc. v. Int'l Trade Com'n , 598 F.3d 1294, 1302 (Fed. Cir. 2010). Because design patents are usually "claimed as shown," the illustration in the patent "is its own best description." Crocs , 598 F.3d at 1302-03 (citation omitted). Verbal description risks placing undue emphasis on particular features at the expense of the "overall impression" of the design to an ordinary observer, as required by the test for infringement. See id. Nevertheless, the amount of detail to be provided by claim construction lies within the discretion of the court. Egyptian Goddess , 543 F.3d at 679.
The parties first dispute whether certain lines in the D807 and D485 Patents are "contour" lines or "seams." The below annotated versions of Figure 1 of the D807 Patent and Figure 1 of the D485 Patent, respectively, point out the disputed lines on the claimed trash cans:
simplehuman argues that the disputed lines are "shading" or contour lines meant to demonstrate the general shape of the trash cans. See 37 C.F.R. § 1.152 (). iTouchless, on the other hand, argues that the disputed lines are seams because convention and regulation suggest that light, tightly-spaced lines should be used for shading. See 37 C.F.R. § 1.84(m) ( ). Both parties attach extrinsic evidence that purports to show their preferred line style used as shading.
The specification largely resolves the dispute. The illustrations in the design patents show the disputed lines in views where they cannot possibly represent shading. Starting with the D807 Patent, Figure 1 (represented above) shows that the disputed lines occur on the right side of the trash can. The top view of the trash can (Figure 4) suggests an oval shape where the right side is largely flat. Figure 2, which shows the front view, confirms the general flatness of the right side. Yet Figure 3, which shows the right side view, includes the disputed lines around the center:2
Similarly, the top of the trash can, which is shown in Figures 2 and 3 to be entirely flat, includes the disputed lines in the "top-down" view of Figure 4, where they cannot possibly represent shading.
Turning to the D485 Patent, Figures 2 through 4 present a similar story. Considering the views holistically, the claimed design is essentially a rectangular box with rounded corners. Common experience dictates that a straight view of any one side would show an even surface with shading on each end. Yet Figures 2 and 3 show single straight lines on those surfaces, which extend to the entirely flat top:
And the top view (Figure 4) again shows the disputed lines from a perspective where they cannot represent shading or contour:
Furthermore, as iTouchless points out, the disputed lines are conspicuously missing from certain locations that have identical contours in both patents, such as the inner surface of the head (but not the inner surface of the body) of the trash can in the D807 Patent:
At most, the disputed lines thus represent a delineation between rounded and flat surfaces. Even by the minimalist standards of shading urged by simplehuman, that does not suffice to show contour because it does not indicate which surface is receding (because it is curved) and includes lines in views where there would be no contour difference (the top down views). Moreover, as iTouchless convincingly argues, the use of straight undifferentiated lines to delineate changes in contour, regardless of perspective, is inherently ambiguous because it cannot distinguish contour changes from ornamental surface features. Accordingly, if this is shading, then it is inadequate under 37 C.F.R. § 1.152.
The only other intrinsic evidence presented in the record lies in the prosecution history. During prosecution, simplehuman initially included both drawings and a photograph, which shows shading where the drawing depicts lines. (See Dkt. No. 57 ("Gandy Decl.") Ex. O at 8.) The examiner allowed the claims but included an amendment that removed the photograph because "[d]rawings made with two different drafting techniques cannot be included in the same drawing disclosure." (Id. at 39.) The amendment was made pursuant to 37 C.F.R. § 1.152, which states that "[p]hotographs and ink drawings are not permitted to be combined as formal drawings in one application," and which the USPTO enacted because the inclusion of both photographs and drawings "would result in a high probability of inconsistencies between corresponding elements on the drawings as compared with the photographs." See Manual of Patent Examining Procedure ("MPEP") § 1503.02 (V),...
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