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Naturs Design, Inc. v. Silent Night, LLC

United States District Court, E.D. Michigan, Southern Division

November 29, 2016

NATURS DESIGN, INC., Plaintiff,
v.
SILENT NIGHT, LLC, a Michigan limited liability company, and BRUCE O. BAKER, an individual, Defendants.

          OPINION AND ORDER ON CLAIM CONSTRUCTION

          LINDA V. PARKER U.S. DISTRICT JUDGE

         On February 25, 2015, Naturs Design, Inc. (“Naturs” or “Plaintiff”) filed this lawsuit against Defendants Bruce Baker (“Defendant Baker”) and Silent Night, LLC (“Silent Night”) (collectively “Defendants”) alleging patent infringement of the patent-in-suit, U.S. Patent No. 8, 365, 733 (“the ‘733 patent”).

         Before the Court are the parties' claim construction briefs relating to interpretation of terms found in the preamble, body, and Claims 1, 2, and 4 of the ‘733 patent. The Court held a Markman hearing on April 13, 2016 to construe certain terms in the claim.[1] Defendants filed a supplemental brief on claim construction on October 11, 2016. (ECF No. 46.) Plaintiffs responded on October 20, 2016. (ECF No. 51.) The respective positions of the parties are displayed in the claim chart attached as Exhibit A.

         I. Background

         The patent-in-suit relates to a mask liner product, described and claimed in the patent as “[a] liner for use with a respiratory mask having a face-engaging portion.” (ECF No. 1-2 at Pg ID 23.) It was developed by Mr. Robert Rutan, the CEO of Naturs to “address the needs of his wife” who suffered from sleep apnea. (ECF No. 39 at Pg ID 781.) Mr. Rutan filed a provision patent application, No. 61/056, 893 (“the ‘893 provisional”), on May 29, 2008. (ECF No. 1 ¶ 14.) Approximately one year later, Mr. Rutan filed a non-provisional patent application, Serial No. 12/469, 998 (“the ‘998 application”), which claimed the benefit of the ‘893 provisional. (Id. ¶ 15.) The ‘998 application matured into the ‘733 patent on February 5, 2013. (Id.)

         Defendant Baker sent an e-mail to Mr. Rutan on September 17, 2013 stating that he had “designed, developed and begun manufacturing a mask liner product” and “proposed setting up a meeting to discuss” the product. (Id. ¶ 19.) Mr. Rutan replied on September 19, 2013, stating he would not meet with Defendant Baker and included in his response a reference to the ‘733 patent. (Id. ¶ 20.) After this correspondence, Defendant Baker manufactured and sold a CPAP mask liner product that Plaintiff alleges infringes on their patent. (ECF No. 39 at Pg ID 782.)

         Plaintiff filed this suit on February 25, 2015, alleging infringement of the ‘733 patent. Defendants disagree, stating the ‘733 patent is limiting in nature and focuses on a specific, narrow feature of the liner in combination with the mask. ECF No. 40 at Pg ID 907.) Relying on the prosecution history of the patent, Defendants argue that Plaintiff's patent cannot cover all respiratory mask liners.

         The terms in dispute for the purposes of claim construction are listed in the chart titled “Parties' Proposed Constructions for Claim Terms in U.S. Patent No. 8, 365, 733.” (ECF No. 34-1 at Pg ID 749-53.) The terms are found in the preamble and body, along with Claims 1, 2, and 4.

         Claim 1 of the ‘773 patent reads:

1. A liner for use with a respiratory mask having a face-engaging portion, the liner comprising:
a body constructed from an absorbent material, the body having an outer edge, an inner edge, wherein a perimeter of the outer edge is larger than a perimeter of the face-engaging portion of the respiratory mask for forming an extending portion of the body, the extending portion configured to be in non-adhering communication with a user's face, and the liner is configured to be releasably held by the mask and the user's face such that the outer edge extends beyond the face engaging portion.
Claim 2 of the ‘733 patent reads:
2. The liner according to claim 1, wherein the extending portion is a baffle for regulating the flow of air away from the face-engaging portion.
Claim 4 of the ‘733 patent reads:
4. The liner according to claim 1, wherein the outer edge has a shape scaled to a general shape of the face-engaging portion.

         The first dispute over construction for claim terms is over the phrase “respiratory mask, ” used in the preamble and body. The parties agree that “respiratory mask” means “a respiratory device sized to fit over a user's mouth and/or nose.” (ECF No. 34-1 at Pg ID 749.) However, Plaintiff argues that the phrase “respiratory mask” used in the preamble is not limiting and the claims are drawn to a liner for use with a respiratory mask. (Id.) Defendants argue that the preamble is limiting and the claims require a respiratory mask in combination with a liner. (Id.) Defendants' position is the claims otherwise would be invalid as indefinite, in particular to the perimeters of the body and face-engaging portion of the respiratory mask. (Id.)

         The second dispute arises from the use of the phrase “face-engaging portion” in the preamble and body. The parties agree that this term means “a portion formed to contact a user's face adjacent to the user's mouth and/or nose.” (Id. at Pg ID 749-50.) Again, Plaintiff argues that the preamble is not limiting and the liner is for use with a respiratory mask having a face-engaging portion. (Id.) However, Defendants' position is that the preamble is limiting and the claims require a respiratory mask in combination with a liner, “otherwise the claims would be invalid as indefinite, including with respect to the perimeters of the body and face engaging portion of the respiratory mask.” (Id.)

         The third dispute arises from the following terms, which both parties agree should have the same construction: “extending portion”; “extending portion of the body”; and “wherein a perimeter of the outer edge is larger than a perimeter of the face-engaging portion of the respiratory mask for forming an extending portion of the body.” (Id. at Pg ID 750-51.) These terms are found in Claims 1 and 2. Plaintiff argues that the Court should rely on the plain meaning of the term and that no construction is needed. Defendants, however, argue that these terms should be construed to mean a “loosely protruding portion of the liner formed by the liner's outer perimeter extending outwardly beyond the perimeter of the face engaging portion of the mask that is not secured or attached to the mask.” (Id.)

         Similarly, the fourth dispute arises from the phrase “extending portion configured to be in non-adhering communication with a user's face” as found in Claim 1. (Id. at 750) Plaintiff argues that the plain meaning of the phrase applies. (Id.) Defendants, however, argue that this phrase is indefinite and interpret it as: “the extending portion of the liner is not secured or attached to the respiratory mask in order to ...


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