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Rice v. Mercedes-Benz USA LLC

United States District Court, W.D. Washington, Seattle

December 14, 2017



          Honorable Richard A. Jones United States District Judge.


         This matter comes before the Court on the parties' request for claim construction. Dkt. ## 33, 35.


         Plaintiffs 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 ¶ 10.

         The Court held a Markman hearing in this matter on December 8, 2017.


         The 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.”).

         The 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.

         Although 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.

         Beyond 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 law”).

         The 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.

         Extrinsic 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.”)

         IV. ...

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