Vistan Corp. v. Fadei USA, Inc.

• Decision Date: 27 April 2012
• Docket Number: Case No. C 10-4862 JCS
• Parties: VISTAN CORPORATION., Plaintiff(s), v. FADEI USA, INC. et al., Defendant(s).
• Court: U.S. District Court — Northern District of California

VISTAN CORPORATION., Plaintiff(s),

v.FADEI USA, INC. et al., Defendant(s).

Case No. C 10-4862 JCS

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA

Dated: April 27, 2012

CLAIM CONSTRUCTION ORDER

I. INTRODUCTION

On October 27, 2010, Plaintiff Vistan Corporation ("Plaintiff") filed a complaint alleging infringement by Defendants Fadei, Inc., Pan American engineering and Equipment Co., Manuel Silva and Mariani Packing Co., Inc. ("Defendants") of U.S. Patent No. 5, 870,949 ("the '949 Patent").¹ Before the Court is the task of construing certain terms used in the '949 Patent.²

II. OVERVIEW OF THE TECHNOLOGY

A. The '949 Patent

The invention disclosed in the '949 Patent is entitled "Pitting Apparatus With Box Cam; Wiping Blade, or Separating Assembly." Vistan's Opening Claim Construction Brief ("Pl.'s Br."), Declaration of Michael J. Brown ("Brown Decl."), Ex. A, the '949 Patent.

The patented invention is designed to remove pits from prunes or dates ("or similar soft fruit"). '949 Patent 1:6-8. The patented invention contains at least one "box cam" assembly for driving the pitting knives to the holders containing the fruit, a separating assembly, which improves the efficiency of separation of the pitted fruit flesh from the holders after pitting, and a wiping blade that wipes pits from the holders after the fruit has been pitted. The invention has two main embodiments - one that is continuous, meaning that the holders are driven continuously during pitting, and one in which the holders can be driven intermittently so that they are stationary during pitting.

III. LEGAL STANDARDS

A. Claim Construction Standards

A determination of infringement is a two-step process. Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d 1440, 1443 (Fed. Cir. 1997). The first step is claim construction, which is a question of law to be determined by the court. Id. The second step is an analysis of infringement, in which it must be determined whether a particular device infringes a properly construed claim. Id. Infringement analysis is a question of fact. Id.

"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) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Generally, claim terms are given the ordinary and customary meaning that would be ascribed to them by a person of ordinary skill in the field of the invention. Id. at 1313; see also Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) ("[U]nlesscompelled to do otherwise, a court will give a claim term the full range of its ordinary meaning as understood by an artisan of ordinary skill").

The most "significant source of the legally operative meaning of disputed claim language" is the intrinsic evidence of record, that is, the claims, the specification and the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). This is because "the person of ordinary skill in the art 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 1313. In some cases, the specification may reveal a "special meaning" given by the inventor that differs from the meaning the term might otherwise possess. Id. at 1316; see also Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (holding that where a disputed claim term has "no previous meaning to those of ordinary skill in the art, its meaning, then, must be found elsewhere in the patent."). In such instances, "the inventor's lexicography governs." Phillips, 415 F.3d at 1316. Similarly, a specification may reveal "an intentional disclaimer, or disavowal, of claim scope by the inventor." Id.

"[T]he Federal Circuit has held that if commonly understood words are used, then 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.'" Board of Trustees of Leland Stanford Jr. Univ. v. Roche Molecular Systems, Inc., 528 F. Supp. 2d 967, 976 (N.D. Cal. 2007) (quoting Phillips, 415 F.3d at 1314); see also United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding that "[c]laim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy."). Thus, in Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc., the court held that a claim term did not need construction where it was "neither unfamiliar to the jury, confusing to the jury, nor affected by the specification or prosecution history." 528 F. Supp. 2d at 976.

A person of ordinary skill in the art also looks to the prosecution history of a patent to understand how the patent applicant and the Patent Office understood the claim terms. Phillips, 415F.3d at 1314. "The prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution." Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995).

While claims are to be construed in light of the specification, courts must be careful not to read limitations from the specification into the claim. Phillips, 415 F.3d at 1323. If a patent specification describes only a single embodiment, that does not mean the claims of the patent necessarily must be construed as limited to that embodiment. Id. Rather, it is to be understood that the purpose of the specification "[is] to teach and enable those of skill in the art to make and use the invention" and that sometimes, the best way to do that is to provide an example. Id. Similarly, the Federal Circuit has cautioned that "patent coverage is not necessarily limited to inventions that look like the ones in the figures," noting that taking such an approach to claim construction would amount to "import[ing] limitations onto the claim from the specification, which is fraught with danger." MBO Laboratories, Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007).

Courts may also use extrinsic evidence in construing claim terms if it is necessary, so long as such evidence is not used to "enlarge, diminish, or vary the limitations in the claims." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) ("Markman I"); see also Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002) ("Patent documents are written for persons familiar with the relevant field; the patentee is not required to include in the specification information readily understood by practitioners, lest every patent be required to be written as a comprehensive tutorial and treatise for the generalist, instead of a concise statement for persons in the field. Thus resolution of any ambiguity arising from the claims and specification may be aided by extrinsic evidence of usage and meaning of a term in the context of the invention."). As the court explained in Markman, "[extrinsic] evidence may be helpful to explain scientific principles, the meaning of technical terms, and terms of art that appear in the patent and prosecution history." 52 F.3d at 980. The Federal Circuit has warned, however, that such evidence is generally "less reliable than the patent and its prosecution history. . ." Phillips, 415 F.3d at 1318. Thus, courts are free to consult dictionaries and technical treatises so long as they are careful not to elevate them "to suchprominence . . . that it focuses the inquiry on the abstract meaning of [the] words rather than on the meaning of the claim terms within the context of the patent." Phillips, 415 F.3d at 1321.

In recent years, the Federal Circuit has offered considerable guidance on the role extrinsic evidence should play in claim construction. In Phillips, the Federal Circuit rejected a methodology that it had previously set forth in Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) for the use of extrinsic evidence, warning that it placed too great an emphasis on dictionary definitions and other treatises. 415 F.3d at 1321. The Federal Circuit explained its conclusion as follows:

Although the concern expressed by the court in Texas Digital was valid, the methodology it adopted placed too much reliance on extrinsic sources such as dictionaries, treatises, and encyclopedias and too little on intrinsic sources, in particular the specification and prosecution history. While the court noted that the specification must be consulted in every case, it suggested a methodology for claim interpretation in which the specification should be consulted only after a determination is made, whether based on a dictionary, treatise, or other source, as to the ordinary meaning or meanings of the claim term in dispute. Even then, recourse to the specification is limited to determining whether the specification excludes one of the meanings derived from the dictionary, whether the presumption in favor of the dictionary definition of the claim term has been overcome by "an explicit definition of the term different from its ordinary meaning," or whether the inventor "has disavowed or disclaimed scope of coverage, by using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope." 308 F.3d at 1204. In effect, the Texas Digital approach limits the role of the specification in claim construction to serving as a check on the dictionary meaning of a

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