United States District Court, W.D. Washington, Seattle
GREGORY H. RICE and ERGOSPACE, CORP., Plaintiffs,
MERCEDES-BENZ USA LLC, Defendant.
Honorable Richard A. Jones United States District Judge.
matter comes before the Court on the parties' request for
claim construction. Dkt. ## 33, 35.
designed and patented apparatuses “to minimize the
stress associated with using” computer pointing devices
and computer data entry devices. Dkt. # 5 (Amended Complaint)
at ¶¶ 8-9. Plaintiffs are suing Defendant for
infringement of these patents as they relate to certain S
Class and CL Class automobile palm rests. Id. at
Court held a Markman hearing in this matter on
December 8, 2017.
Court begins by reciting basic claim construction principles.
The specification of a patent begins with a written
description, which often includes drawings or illustrations,
and “conclude[s] with one or more claims particularly
pointing out and distinctly claiming the subject matter which
the inventor . . . regards as the invention.” 35 U.S.C.
§ 112(b). The claims reign supreme over the remainder of
a patent; they alone “define the scope of patent
protection.” Johnson & Johnston Assocs. Inc. v.
R.E. Serv. Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002)
(“[A] patent applicant defines his invention in the
claims, not in the [remainder of] the specification.”);
Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
868 F.2d 1251, 1257-58 (Fed. Cir. 1989) (“A claim in a
patent provides the metes and bounds of the right which the
patent confers on the patentee to exclude others from making,
using, or selling the protected invention.”).
Court alone determines what patent claims mean. In
Markman v. Westview Instruments, Inc., 517 U.S. 370,
372 (1996), the Supreme Court held that claim construction
“is exclusively within the province of the
court.” The “ultimate question of the proper
construction of the patent” may be treated “as a
question of law.” Teva Pharmaceuticals USA, Inc. v.
Sandoz, Inc., 135 S.Ct. 831, 837 (2015). Nevertheless, a
court may consult extrinsic evidence and make subsidiary
factual findings based thereon, which must be reviewed for
clear error. See Id. at 838.
the claims alone define the scope of the invention,
construing the claims requires the Court to start with the
language of the claims and also to look elsewhere. The
Federal Circuit's en banc decision in Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) provides
comprehensive instructions for navigating evidence relevant
to claim construction. The court begins with the language of
the claims themselves, which “provide substantial
guidance as to the meaning of particular claim terms.”
Id. at 1314; Amgen Inc. v. Hoechst Marion
Roussell, Inc., 457 F.3d 1293, 1301 (Fed. Cir. 2006)
(citing Phillips for the proposition that
“claim construction must begin with the words of the
claims themselves”). The court should “generally
give [claim terms] their ordinary and customary
meaning” in the eyes of a person of ordinary skill in
the art as of the filing date of the patent.
Phillips, 415 F.3d at 1312-13 (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed
Cir. 1996)). In some cases, the ordinary meaning “may
be readily apparent even to lay judges, ” in which case
the claim construction “involves little more than the
application of the widely accepted meaning of commonly
understood words.” Id. at 1314.
the claim language, the remainder of the specification is
“always highly relevant to the claim construction
analysis.” Id. at 1315 (quoting
Vitronics, 90 F.3d at 1582). The specification is
dispositive when the inventor uses it to explicitly define a
claim term, in which case “the inventor's
lexicography governs.” Id. at 1316. But even
where the specification does not explicitly define a term, it
may do so implicitly, id. at 1321, and in any event
is a “concordance for the claims, ” id.
at 1315 (citation omitted), on which the Court should
“rely heavily, ” id. at 1317. At the
same time, a court must toe a fine line “between using
the specification to interpret the meaning of a claim and
importing limitations from the specification into the
claim.” Id. at 1323; see also SciMed Life
Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242
F.3d 1337, 1340 (Fed. Cir. 2001) (describing “reading a
limitation from the written description into the
claims” as “one of the cardinal sins of patent
final source of “intrinsic evidence” bearing on
claim interpretation is the patent's prosecution history.
Phillips, 415 F.3d at 1317. The prosecution history
begins with the inventor's application to the USPTO, and
includes all communication between the inventor and the
USPTO, culminating in the USPTO's decision to issue the
patent. Vitronics, 90 F.3d at 1582. An inventor must
often disclaim part of the scope of an invention during
prosecution to obtain a patent. Where the prosecution history
reflects a “clear and unmistakable disavowal of scope,
” a court must construe the claims accordingly.
Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d
1123, 1136 (Fed. Cir. 2006). The court must recognize,
however, that “the prosecution history represents an
ongoing negotiation between the PTO and the applicant,
” and thus “often lacks the clarity of the
specification.” Phillips, 415 F.3d at 1317. It
is nonetheless useful for claim construction, although less
so than the specification. Id.
evidence is always “less significant” and in
general “less reliable” than intrinsic evidence.
Id. at 1318. Unlike intrinsic evidence, extrinsic
evidence is not “created at the time of patent
prosecution for the purpose of explaining the patent's
scope and meaning.” Id. The court has
discretion to use extrinsic evidence in claim construction,
but need not do so. Id. at 1319. Indeed, where the
intrinsic evidence is adequate to define a claim term,
“it is improper to rely on extrinsic evidence.”
Vitronics, 90 F.3d at 1583; Trilogy
Commc'ns, Inc. v. Times Fiber Commc'ns, Inc.,
109 F.3d 739, 744 (Fed. Cir. 1997) (“When . . . the
district court has concluded that the patent specification
and prosecution history adequately elucidate the proper
meaning of claims, expert testimony is not necessary and
certainly not crucial.”)