The opinion of the court was delivered by: Judge Nora Barry Fischer
This is a patent infringement action brought by Wonderland Nurserygoods Co., Ltd ("Wonderland") against Thorley Industries, LLC d/b/a 4Moms ("Thorley"). (Docket No. 1). Wonderland filed this case on February 16, 2012, alleging the infringement of U.S. Patent No. 8,047,609 ("the '609 Patent"), entitled "Infant Rocking Chair and Driving Device for Driving the Same." (Id. at ¶ 8). The technologies at issue are mechanical driving devices to create an infant chair that moves both up-and-down and back-and-forth. (Id.)
Wonderland is a Taiwanese company that designs, manufactures and distributes products for infants and young children. (Id. at ¶ 4, 7). Wonderland is the assignee of the '609 Patent. (Id. at ¶ 8). Thorley is a Pennsylvania corporation, with its offices in Pittsburgh, which makes infant rocking chairs (the "Accused Product") under the brand name "mamaRoo". (Docket Nos. 1 at ¶ 10; 19 at 3)
Thorley asserts five affirmative defenses against Wonderland's infringement claim: failure to state a claim, noninfringement, invalidity, estoppel, and failure to provide notice.
(Docket No. 19 at ¶¶ 15-19). Thorley asserts counterclaims for non-infringement and invalidity. (Id.at 4-5). Wonderland answers that its patent is valid and infringed. (Docket No. 21). It asserts the affirmative defenses of failure to state a claim of non-infringement, (id. at ¶ 15), and failure to state a claim of invalidity. (Id. at ¶ 16).*fn1
On March 14, 2012, the Court denied Thorley's Motion to Stay Proceedings Pending Reexamination of the patent by the USPTO because the Court found that Plaintiff would be unduly prejudiced if this Court were to grant a stay.*fn2 (Docket No. 23).
Accordingly, the parties filed a "Joint Disputed Claim Terms Chart" pursuant to LPR 4.2 of the Local Patent Rules for the United States District Court for the Western District of Pennsylvania on June 21, 2012.*fn3 (Docket No. 39). Opening claim construction briefs, along with exhibits in support, were filed on July 20, 2012 and August 10, 2012 by Wonderland and Thorley, respectively. (Docket Nos. 39-42). Wonderland filed a reply brief and supporting declarations on August 24, 2012. (Docket No. 43). On September 6, 2012, the Court ordered the parties to meet and confer to determine if there were any claim terms to which there were no substantive disputes. (Docket No. 44). Accordingly, the parties filed a corrected "Revised Joint Disputed Claim Terms Chart" pursuant to said order on September 25, 2012. (Docket No. 46)
As scheduled in the Initial Patent Scheduling Order, a technology tutorial and a Markman*fn4 claim construction hearing were held on September 27, 2012. (Docket Nos. 30, 47).
The transcript of said hearing was filed on November 7, 2012 (Docket No. 51). Both parties then filed post-hearing claim construction briefs on November 15, 2012. (Docket Nos. 53, 54). The parties further met and conferred in accordance with the Court's November 9, 2012 Order; however, as stated in their Joint Status Report filed on November 29, 2012, they were unable to reach agreements on any remaining disputed terms. (Docket Nos. 52, 57). As such, this matter is ripe for disposition.
"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) (citing Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2005)); see also Zircon Corp. v. Stanley Black & Decker, Inc., 452 F. App'x 966 (Fed. Cir. 2011), reh'g denied (Dec. 7, 2011); N.A. Water Sys., LLC v. Aquatech Int'l Corp., 2012 WL 3597825 (W.D. Pa. Aug. 20, 2012). In patent infringement litigation, the court is to first determine, as a matter of law, the proper construction, or meaning, of the disputed patent claims. Id. Once the claim terms have been properly construed, the fact finder must then determine whether the accused product or method infringes the asserted claims as so construed. See Markman, 517 U.S. 370.
The decision by the United States Court of Appeals for the Federal Circuit in Phillips provides a blueprint for the court's claim construction analysis:
A court construing a patent claim seeks to [afford] a claim the [ordinary and customary] meaning it would have to a person of ordinary skill in the art at the time of the invention....
In some cases, 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 ... involves little more than the application of the widely accepted meaning of commonly understood words ....
In many cases ..., however, determining the ordinary and customary meaning of the claim requires examination of terms that have a particular meaning in a field of art. Because the meaning ... as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean .... Those sources include the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art ....
Within the class of extrinsic evidence, the court has observed that dictionaries and treatises can be useful in claim construction .... We have especially noted the help ... technical dictionaries may provide to a court to better understand the underlying technology and the way in which one of skill in the art might use the claim terms .... Because dictionaries, and especially technical dictionaries, endeavor to collect the accepted meanings of terms used in various fields of science and technology, those resources have been properly recognized as among the many tools that can assist the court in determining the meaning of particular terminology to those of skill in the art .... Such evidence, we have held, may be considered if the court deems it helpful in determining the true meaning of [the] language used . . . .
[Although] ... extrinsic evidence in [a] general [sense is] less reliable than [intrinsic evidence] in determining how to read claim terms, .... encyclopedias and treatises [can be] particularly useful resources to assist the court in determining the ordinary and customary meanings of claim terms [so long as they are considered within the context of the intrinsic evidence].
Phillips, 415 F.3d at 1303, 1313, 1314, 1318-19 (citations and internal quotations omitted).
In looking to the intrinsic evidence, the court considers the language of the claim, the specification and the prosecution history. Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The claim itself is of primary importance since "it is that language that the patentee chose to use to 'particularly point[ ] out and distinctly [ ] claim the subject matter which the patentee regards as his invention.'" Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (Fed. Cir. 2000) (quoting 35 U.S.C. § 112, ¶ 2). However, the Federal Circuit advises in Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005), that "[w]e cannot look at the ordinary meaning of the term ... in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history."
Next, the Court must look to the specification in the patent. As to the specification, the Federal Circuit has stated that it "is always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of the disputed claim." Vitronics, 90 F.3d at 1582; Phillips, 415 F.3d at 1315; Zircon, 452 Fed. Appx. at 972. The Federal Circuit states that "it is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims." Phillips, 415 F.3d at 1317. However, the Federal Circuit cautions that there is a danger in reading limitations from the specification into the claim. Id. at 1323 (citing Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) ("there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification")). While the specification may be the best guide in interpreting a disputed term, the court must be careful to use the specification only to ascertain its meaning and not to impose a limit on a claim term. Id.; see also Abbott Lab. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (courts may not limit broad claim language to that described in even a single embodiment absent a clear intention by the patentee to so limit the claim scope); Karlin Technology, Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 973 (Fed. Cir. 1999) ("The general rule . . . is that the claims of a patent are not limited to the preferred embodiment" of the invention described in the specification).
The final piece of intrinsic evidence which the Court may consider is the prosecution or file history. Zircon, 452 F. App'x. at 972. The prosecution history "consists of all express representations made by or on behalf of the applicant to the [patent] examiner to induce a patent grant." Howmedica Osteonics Corp. v. Wright Medical Tech., Inc., 540 F.3d 1337, 1346 (Fed. Cir. 2008) (internal quotations and citations omitted). The prosecution history, therefore, can provide some insight into the scope of the invention, as understood by the inventor and the USPTO, as well as whether that scope is narrower than the claim language would otherwise indicate. Phillips, 415 F.3d at 1317. A caveat to the use of the prosecution history is that it "often lacks the clarity of the specification and thus is less useful for claim construction purposes." Id. As a result, in order for a limitation of the scope of the claims to be read from the prosecution history, the inventor must have made a "clear and unmistakable disavowal" of a broader scope of protection during prosecution. See Purdue Pharma L.P. v. Endo Pharms. Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006).
If the meaning of a claim's terms cannot be ascertained through interpretation of the intrinsic evidence a court may look to extrinsic evidence, "which 'consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.'" Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d 967, 980 (Fed. Cir. 1995)); see also Zircon, 452 F. App'x. at 972; N.A. Water Sys., 2012 WL 3597825. Although extrinsic evidence "can shed useful light on the relevant art," such evidence is less significant in defining a claim term than intrinsic evidence. Phillips, 415 F.3d at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (internal quotation omitted)). This is because "[i]n most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term," and "[i]n such circumstances, it is improper to rely on extrinsic evidence." Vitronics, 90 F.3d at 1583. Therefore, extrinsic evidence "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" or the other intrinsic evidence. Id. at 1584.
The '609 Patent, entitled "Infant Rocking Chair and Driving Device for Driving the Same", was filed on June 28, 2007 and issued on November 1, 2011. '609 Patent col. 1. ln. 1-12. The terms still in dispute are: (A) "infant rocking chair"; (B) "bottom seat"; (C) "motor shaft"; (D) "crank"; (E) "guiding elements; (F) "connected fixedly" and "attached fixedly". (Docket Nos. 46, 57). The Court will now construe each of these terms, in turn.
The parties dispute the construction of the term "infant rocking chair" found in the preamble to claims 1, 12, and 19. (Docket No. 46). The parties' proposed constructions are as follows:
The Court addresses the following arguments: (1) whether the disputed term is a limitation on the claims since it is found in the preamble; (2) whether the "chair" must be designed to hold an infant or just be capable of holding an infant; and (3) whether the "chair" must move in two directions at the same time. (Id.).
Claims 1 and 19 both start with preambles stating: "A driving device for an infant rocking chair, the infant rocking chair including a seat body and a bottom seat, said driving device comprising:.". '609 Patent col. 6. ln. 47-50; col. 8. ln. 39-41. Correspondingly, Claim 12's preamble starts "An infant rocking chair comprising.". '609 Patent col. 7. ln. 58.
Wonderland argues that the preamble defines two important components of the invention the "seat body" and the "bottom seat". '609 Patent at col. 1, ln. 48-50 and col. 8, ln. 39-41. Wonderland also insists that the term "infant rocking chair" is not background information; rather, it is the "antecedent basis for two essential components of the infant rocking chair, the 'seat body' and the 'bottom seat'" and is, therefore, limiting. (Docket No. 43 at 1- 4).
On the other hand, Thorley claims that the preamble terminology is not limiting because the body of Claims 1 and 19 refer to the "driving device for use in an infant rocking chair." (Docket No. 41 at 8) (emphasis added). Thorley asserts that this driving device is not dependent on the "infant rocking chair" language, as it explains the device's intended use or purpose. (Id.).Additionally, Thorley contends that the body of Claim 12, which follows the word "comprising," offers a complete invention without reference to the preamble. (Id. at 9).
A preamble to a claim may be a limitation if it recites a limitation or is "necessary to give life, meaning, and vitality" to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Such limitation is "determined on the facts of each case in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history." Deere & Co. v. Bush Hog, LLC, 2012 WL 6013405 (Fed. Cir. Dec. 4, 2012) (internal citations omitted). "No litmus test defines when a preamble limits claim scope," but "[i]n general, a preamble limits the claimed invention if it recites essential structure or steps, or if the preamble is used in the prosecution history to limit the scope of the claim." In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347 (Fed. Cir. 2002). The preamble is not regarded as limiting when the patent claim otherwise describes a complete invention, when the preamble is merely duplicative of limitations in the body, or when it operates only as an introduction to the general field of the invention. See, e.g., Am. Med. Sys., Inc. v. Biolitic, Inc., 618 F.3d 1354, 1358-59 (Fed. Cir. 2010) (preamble not limiting if the patent "describes a structurally complete invention in the claim body and uses the preamble only to state a purpose."); Symantec Corp. v. Computer Associates Int'l., Inc., 522 F.3d 1279, 1288-89 (Fed. Cir. 2008); Hearing Components, Inc. v. Shure, Inc., 600 F.3d 1357, 1366 (Fed. Cir. 2010) (preamble not limiting when it is "simply an introduction to the general field of the claim.") The Federal Circuit recently stated that a limiting preamble term is one that describes a "fundamental characteristic of the claimed invention" that informs one with skill in the art as to the structure required by the claim. Deere & Co., 2012 WL 6013405 at *7 (holding that in a patent disclosing an "easy clean dual wall deck" for a rotary cutter, the preamble phrase, "rotary cutter deck" was a limitation as it was necessary to understand the subject matter encompassed by the claim; the specification also repeatedly referred to the "present invention" as "an improved deck for a rotary cutter," or a "rotary cutter deck"; and the title of the patent, the summary of the invention, and every drawing described the invention as a deck for a rotary cutter.)
In this instance, the Court finds the preamble language limiting. The term "infant rocking chair" is referred to as the antecedent basis for certain elements of the claim body. Without the preamble language, there is no seat body or bottom seat of the "infant rocking chair" to which the various claim elements attach. '609 Patent col. 6. ln. 47-50; col. 8. ln. 39-41; col. 7. ln. 58. Recitation of "infant rocking chair" in Claims 1, 12, and 19 is necessary to understand the subject matter encompassed by the claim. See Deere & Co., 2012 WL 6013405, at *7. While Thorley argues the claims are directed at the driving device only, the intrinsic evidence plainly demonstrates that the claims are directed at both the driving device and rocking chair. To this end, pertinent intrinsic evidence is that: the title of the patent is "Infant Rocking Chair and Driving Device for Driving the Same," 12 of the 15 figures show the "chair" feature and the summary of the invention includes the description of the "infant rocking chair". (Docket No. 53 at 5); '609 Patent col. 1. ln. 1 (emphasis added); ln. 39-41. Even considering the driving device alone, the patent shows that the driving device does not just happen to be used in infant rocking chairs; its fundamental purpose is to provide motion that mimics a person holding an infant in his or her arms, "resulting in infant comfort". 609 Patent col. 1. ln. 20-38; (Docket No. 51at 56). Thus, the preamble term, "infant rocking chair" "give[s] life" to the claim and shall be considered limiting. Pitney Bowes, Inc. 182 F.3d at 1305.
Having found the term "infant rocking chair" limiting, the Court now construes the term in light of the parties' competing arguments.
2. "Infant Rocking Chair" as Capable or Designed to Hold an Infant Wonderland maintains that an "infant rocking chair" should be designed to hold an infant, not merely capable of holding an infant "so long as one could set an infant on it." (Docket No. 43 at 7). In support, Wonderland offers examples of inventions that could conceivably fit Thorley's proposed definition of "a seat or chair-like device capable of holding an infant." (Id.). These examples include ...