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Leach v. Pharmedoc, Inc.

United States District Court, W.D. Oklahoma

June 12, 2019

JAMIE S. LEACH, and LEACHCO, INC. Plaintiffs,
v.
PHARMEDOC, INC. Defendant.

          ORDER

          SCOTT L. PALK, UNITED STATES DISTRICT JUDGE.

         Before the Court are the parties' claim construction briefing [Doc. Nos. 75-79] and a Joint Claim Construction and Pre-Hearing Statement [Doc. No. 72] which includes a claim construction chart. See Chart [Doc. No. 72-1].[1] The parties identify eight terms for claim construction which the Court addresses below.

         I. Background

         Plaintiffs allege Defendant has infringed Plaintiffs' U.S. Patent No. 6, 499, 164 for the Snoogle®, a J-shaped, full-body, pregnancy pillow (the ‘164 Patent). The ‘164 Patent is entitled BODY PILLOW WITH HORSESHOE-SHAPED TOP AND J-SHAPED BOTTOM. Plaintiff Jamie S. Leach invented the ‘164 Patent.[2] Plaintiff Leachco, Inc. (Leachco) is the sole licensee of the ‘164 Patent.

         The Court has conducted a claim construction hearing[3] and heard argument of counsel. The parties did not present any expert testimony and agree no such testimony is needed for claim construction.

         Each of the terms disputed by the parties appear in Claim 1 of the ‘164 Patent. Claim 1 provides:

1. A body pillow having a top which is essentially in the shape of a horseshoe[1] for accommodating an upper end of a person and a bottom which is essentially in the shape of a J[2] for accommodating a lower end of the person, a substantially cylindrical straight portion[3] connecting the horseshoe-shaped top[1] with the J-shaped bottom[2], the cross-sectional diameter of the body pillow[7] being between 7 and 12 inches, the horseshoe shaped top constituting[8] a semi-toroidal member[4] having a diameter of about 25 to 26 inches[5] and terminating in a foot spaced from the straight portion extending parallel to the straight portion and forming therewith a curved opening[6].

See ‘164 Patent, 6:8-17. Each term of Claim 1 disputed by the parties is designated by [ ] and numbered in the manner as designated by the parties.

         II. Legal Standards

         A. Claim Construction

         The claims of a patent define, in technical terms, the scope of protection conferred by the patent, i.e., the claims define the patentee's invention to which the patentee is entitled the right to exclude. See Markman, 517 U.S. at 373 (“[A] patent must describe the exact scope of an invention and its manufacture to secure to the patentee all to which he is entitled, and to apprise the public of what is still open to them.” (internal quotations, alterations and citation omitted)); Innova / Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004) (“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.”).

         Claim construction is a question of law for the court. Markman, 517 U.S. at 384. The court need only construe claims that are “in controversy” and only “to the extent necessary to resolve the controversy.” Vivid Techs, Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). “A determination that a claim term ‘needs no construction' or has the ‘plain and ordinary meaning' may be inadequate when a term has more than one ‘ordinary' meaning or when reliance on a term's ‘ordinary' meaning does not resolve the parties' dispute” - for example, when the scope of what is covered by the term remains in dispute notwithstanding the ordinary meaning of the term. O2 Micro Int'l, Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1361 (Fed. Cir. 2008). Ultimately, “[t]he 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.” Reinshaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).

         B. Sources for Construing Claims

         A court considers three primary sources, referred to as “intrinsic evidence, ” and often this evidence alone resolves any ambiguity as to a disputed claim term: (1) the language of the claims; (2) the specification (or written description); and (3) the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) . W hen intrinsic evidence is insufficient to enable the court to determine the meaning of disputed claims, a court may also consider extrinsic evidence. Id. at 1584. “Extrinsic evidence is that evidence which is external to the patent and file history, such as expert testimony, inventor testimony, dictionaries, and technical treatises and articles.” Id.

         1. Intrinsic Evidence

         a. Claim Language

         Claim terms are usually given their ordinary and customary meaning - “the meaning that the term would have to a person of ordinary skill in the art [POSITA] at the time of the invention, i.e., as of the effective filing date of the patent.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). This “objective baseline” is the starting point for claim construction. Id. at 1313. A POSITA reads the claim term in the context of the particular claim in which the disputed term appears, but also in the context of the patent as a whole including the patent specification and the prosecution history. Id.[4]

         b. The Specification

         Next, the court looks at a patent's specification as “[c]laims must be read in view of the specification, of which they are a part. Markman v. Westview Instrs., Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd 517 U.S. 370. “Usually, [the specification] is the single best guide to the meaning of a disputed term.” Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1321 (Fed. Cir. 2016) (quotation marks and citation omitted). But “there is a fine line between reading a claim in light of the written description and reading a limitation into the claim from the written description.” Id. (citation omitted). If a patentee selects a meaning distinct from that which the claim terms would otherwise have to a POSITA, the different meaning must be set forth in the specification in a manner sufficient to give one of ordinary skill notice of the change from the usual meaning. Innova / Pure Water, Inc., 381 F.3d at 1117.

         c. Prosecution History

         Third, the court may consider the prosecution history, if, as here, it is in evidence. Phillips, 415 F.3d at 1317. A patent's prosecution history contains a complete record of all the proceedings before the United States Patent and Trademark Office (PTO), including any express representations made by the applicant regarding the scope of the claims. Therefore, the prosecution history provides evidence of how the PTO and the inventor understood the patent, and the record before the PTO can be of critical significance in determining the meaning of the claims. Id. (“Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent.”) (citations omitted); 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 was disclaimed during prosecution.” (internal quotation marks and citation omitted)); see also Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) (citations omitted) (“The prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution. Claims may not be construed one way in order to obtain their allowance and in a different way against accused infringers.” (citations omitted)).

         2. Extrinsic Evidence

         Generally, courts view extrinsic evidence as “less reliable” than intrinsic evidence. Cont'l Circuits LLC v. Intel Corp., 915 F.3d 788, 799 (Fed. Cir. 2019). “[E]xtrinsic evidence in general, and expert testimony in particular, may be used only to help the court come to the proper understanding of the claims; it may not be used to vary or contradict the claim language.” Vitronics, 90 F.3d at 1584. As noted, the parties agree that no expert testimony is needed for claim construction in this case. Defendant, however, relies upon dictionary definitions to support certain of its proposed constructions. “Judges are free to . . . rely on dictionary definitions when construing claims, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents. Id., n. 6.

         III. Prosecution History

         Both parties cite the prosecution history of the ‘164 Patent in support of their respective claim constructions. Thus, the Court considers the prosecution history in construing the disputed terms of Claim 1. See Prosecution History of the ‘164 Patent (PH) [Doc. No. 76-4]. Claim 1 in the originally filed patent application read as follows:

A body pillow having an upper end which is essentially in the shape of a horseshoe and a lower end which is essentially in the shape of a J, a straight portion connecting the horseshoe-shaped top with the J-shaped bottom, the cross-sectional diameter of the body pillow being between 7 and 12 inches.

PH at Leachco 436.[5]

         A. The PTO's First Rejection

         Upon review, the PTO rejected Claim 1 finding it was unpatentable over a previously issued patent to Jacobson. PH at Leachco 453; see also Pis.' Brf., Ex. 6 (Jacobson Patent). The PTO found that "Jacobson discloses a pillow having a horseshoe-shaped upper end connected to a J-shaped lower end by a straight portion . . . ." Id. The PTO further found that "Jacobson discloses the claimed invention except for the cross-sectional diameter between 7-12 inches and the straight portions having lengths between 48-56 inches and 24-32 inches." Id. The PTO deemed these dimensions represented modifications involving "a mere change in size of a component" generally recognized "as being within the level of ordinary skill in the art." Id.

         (Image Omitted)

         1. Plaintiffs' First Response

         Plaintiffs then filed an amendment. The language Plaintiffs added to Amended Claim 1 is denoted by underlining __ and the language Plaintiffs deleted is denoted by bracketing [...]. Amended Claim 1 provided as follows:

A body pillow having [an upper end] atop which is essentially in the shape of a horseshoe for accommodating an upper end of a person and a [lower end] bottom which is essentially in the shape of a J for accommodating a lower end of the person, a substantially cylindrical straight portion connecting the horseshoe-shaped top with the J-shaped bottom, the cross-sectional diameter of the body pillow being between 7 and 12 inches, the horseshoe shaped top constituting a semi-toroidal member having a diameter of about 25 to 26 inches and terminating in a foot spaced from the straight portion and forming therewith a curved opening.

PH, Leachco at 464.

         B. The PTO's Second Rejection

         The PTO rejected Amended Claim 1 for being unpatentable over the Shaffner patent. See PH, Leachco at 468; see also Pis.' Brf, Ex. 8 (Shaffner Patent).

         (Image Omitted)

         The PTO did not, however, address the additional limitations that Plaintiffs added in the first response. Accordingly, Plaintiffs filed a request for reconsideration of Amended Claim 1. See id. at Leachco 474-475 (noting that “the Examiner has neglected to comment on the last three lines of Claim 1, to wit ‘the horseshoe-shaped top constituting a semi-toroidal member having a diameter of about 25 to 26 inches and terminating in a foot spaced from the straight portion and forming therewith a curved opening.'”).

         1. Plaintiffs' Second Response

         In requesting a reconsideration, Plaintiffs argued that the term “semi-toroidal” which would “connote a shape resembling roughly one half of a doughnut” is “not apparent in the drawing of Shaffner” and “particularly regarding Figure 5.” Id. at Leachco 475. But “more importantly, ” Plaintiffs argued, amended Claim 1 describes the semi-toroidal member “in terms of ‘terminating in a foot spaced from the straight portion and forming therewith a curved opening'” and Shaffner “clearly” does not show “a foot spaced from the straight portion and forming therewith a curved opening.” Id. Plaintiffs also argued that the described “foot” “has a function and purpose” which “prevents [the lady shown in Figure 7] from slipping off the pillow” thus further distinguishing Shaffner. Id.

         (Image Omitted)

         C. The PTO's Third Rejection

         The PTO then examined Amended Claim 1 and considered the additional limitations it had failed to previously consider. But the PTO found the Shaffner patent did, in fact, have a semi-toroidal member. Id. at Leachco 481 ("[T]oroidal is defined as doughnut-shaped and semi has a definition of partial or incomplete. Therefore, Shaffner clearly has a top constituting a semi-toroidal member defined by a partial / incomplete doughnut portion."). The PTO also found the limitation of "a cross-sectional diameter between 25-26 inches and terminating in a foot spaced from the straight portion" was an "obvious matter of design choice" and, therefore, not patentable over Shaffner. Id.

         1. Plaintiffs' Third Response

         Plaintiffs then filed a second amendment and added another limitation to Claim 1, the relevant portion of which provides as follows: "the horseshoe-shaped top constituting a semi-toroidal member having a diameter of about 25 to 26 inches and terminating in a foot spaced from the straight portion extending parallel to the straight portion and forming therewith a curved opening." Id. at Leachco 486. The specification was amended "to further describe Figure 6 in terms of the foot extending parallel to the straight section 14 and forming therewith a curved opening 44." Id.; see also '164 Patent 5:28-30. Defendants have provided an annotated version of the referenced Figure 6 as follows:

         (Image Omitted)

         Def's Brf at 16. Plaintiffs again reiterated that the purpose of the foot extending parallel limitation was to prevent the lady shown in Figure 7 from slipping off the pillow. See PH at Leachco 71.

         D. The PTO's Notice of Allowance

         In response to Plaintiffs' second amendment, the PTO issued its notice of Allowable Subject Matter. The PTO stated: "Claims 1-11 are allowed." See PH ...


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