United States District Court, W.D. Washington, Tacoma
AMENDED  MARKMAN CLAIMS
B. LEIGHTON, United States District Judge
MATTER is before the Court following a claims construction
hearing pursuant to Markman v. Westview Instruments,
Inc. 517 U.S. 370 (1996). The parties seek construction
of six claims of United States Patent No. 8, 829, 365 (the
'365 patent). The Court has reviewed all of the materials
presented, and heard expert testimony and argument of
construction is a matter of law for the court. Markman v.
Westview Instruments, Inc. 517 U.S. 370 (1996). The
claims of the patent establish and limit the patentee's
right to exclude by "describing the outer boundaries of
the invention." Warner-Jenkinson Co., Inc. v. Hilton
Davis Chem. Co., 520 U.S. 17, 27 n. 4 (1997). In
construing the language of a claim, the court primarily
focuses on so-called "intrinsic evidence" which is
comprised of the patent itself, including the claims, the
specification and, if in evidence, the prosecution history.
See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
Cir. 2005). Specifically, the court first looks to the words
of the claims themselves, both asserted and non-asserted, to
define the scope of the patented invention. The ordinary and
customary meaning of a term is defined by a person of
ordinary skill in the art (PHOSITA) at the time of the
invention. Id. The context in which a term is used
can be "highly instructive" in resolving the
meaning of the term. Id. at 1314. For example, if a
claim has the term "steel baffle, " it strongly
implies that the term "baffle" does not inherently
include objects made of steel. Id. Other claims in a
patent may also provide valuable contextual cues for
deciphering the meaning of a term. Id. If a
limitation is present in a dependent claim, then there is a
presumption that the limitation is not present in the parent
claim. Mat 1314-15.
court then reviews the specification to determine whether the
inventor has used any terms in a manner inconsistent with
their ordinary meaning. The specification acts as a
dictionary when it expressly defines terms used in the claims
or when it defines terms by implication[.] Thus, the
specification is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the
single best guide to the meaning of a disputed term.
prosecution history of a patent is the last piece of
intrinsic evidence that a court should consider when
construing the claims of the patent. Id. at 1317.
The prosecution history provides evidence of how the U.S.
Patent and Trademark Office ("PTO") and the
inventor understood the patent. Id. A court,
however, should be aware that the prosecution history
represents the ongoing negotiation between the PTO and the
applicant, rather than the final product. Id. As
such, the prosecution history may lack the clarity of the
specification and may not be as useful for claim construction
purposes. Id. In certain instances, however, the
prosecution history may provide guidance of an
applicant's intent to specifically limit the scope of a
given claim term. Id.
evidence is the last category of evidence a court may
consider when construing patent claims. Id. Such
extrinsic evidence includes expert and inventor testimony,
dictionaries, and learned treatises. Id. On its own,
extrinsic evidence is unlikely to be reliable in guiding the
court's claim construction. Id. at 1319.
Instead, extrinsic evidence should be considered in the
context of the intrinsic evidence. Id. A court may
also use extrinsic evidence to determine how a person of
ordinary skill in the art would understand the claimed
invention. Id. It is the Court's duty to resolve
fundamental disputes among the parties as to the scope of a
claim term, but it is not the Court's duty to construe
every claim term, or to repeat or restate every claim term.
See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d
1554, 1568 (Fed. Cir. 1997); 02 Micro Int'l Ltd. v.
Beyond Innovation Tech Corp., 521 F.3d 1351, 1362 (Fed.
Ultimately, the interpretation to be given a term can only be
determined and confirmed with a full understanding of what
the inventors actually invented and intended to envelop with
the claim. The 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
See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
initial matter, the Court notes that the arguments made in
the plaintiffs opening claims construction brief were made to
the USPTO on re-examination of the '365 patent. As
Perfect Co. emphasizes, the examiner confirmed all of the
claims as issued:
Original claims 5, 8, 10, 14, 16, 18-20, 23-25, 27, 29, are
patentable and new claims 30-34 are allowable.
Independent claims 5 and 14 are patentable because the prior
art of record did not disclose or fairly teach the following
claim limitation; displaying on the display a real-time
progress of the first ingredient being added to the
scale by displaying a first portion of the first recipe block
in a different manner than a second portion of the first
recipe block, wherein a ratio of the first portion of the
first recipe block displayed to the second portion of the
first recipe block displayed is changed in real-time and is
proportional to a ratio of the real-time measured amount of
the first ingredient compared to the target amount for the
Dkt 128-1, Decision on Reexamination, dated July 5,
2017, page 2 (emphasis in original).
Co. correctly argues that this determination is strong
support for its claims construction, and for its argument
that the claims are not indefinite.
parties' primary dispute is over the term "real
time" in the '365 patent. The Court's