United States District Court, E.D. Michigan
SECOND ORDER ON CLAIM CONSTRUCTION
Victoria A. Roberts United States District Judge
issue are Choon's Design Inc.'s
(“Choon's”) 8, 485, 565
(“‘565”) and 8, 684, 420
(“‘420”) patents for a “Brunnian
Linkmaking Device and Kit” (“Rainbow
Loom”), and its 8, 622, 441 (“‘441”)
patent for a portable device to make similar products.
says the Rainbow Loom has enjoyed success and other
companies, including Defendant Tristar Products Inc.
(“Tristar”), copied its product.
loom is a kit described as containing a base and a pin bar or
pin bars. Tristar's “Bandaloom” loom is one
piece. The parties dispute whether Choon's patents are
broad enough to include a one-piece loom such that
Tristar's Bandaloom infringes Choon's patents.
the Court's second order on claim construction. In the
first Order on Claim Construction, the Court construed eight
terms, which the parties indicated could aid settlement. See
Choon's Design, Inc. v. Tristar Prod., Inc., No.
14-10848, 2016 WL 1626574 (E.D. Mich. Apr. 21, 2016).
Settlement attempts were futile.
the parties present additional terms to be construed. This
matter is fully briefed, and the Court finds that a second
Markman hearing is unnecessary to resolve the parties'
disputes. See CIAS, Inc. v. All. Gaming Corp., 424 F.Supp.2d
678, 682 (S.D.N.Y. 2006) (“A court may, but need not,
conduct a Markman hearing to determine the scope of the
claims”), aff'd, 504 F.3d 1356 (Fed. Cir. 2007);
see also Rogers v. Desa Int'l, Inc., 166 F.Supp.2d 1202,
1204 (E.D. Mich. 2001) (same) (collecting cases), aff'd,
198 Fed.Appx. 918 (Fed. Cir. 2006).
terms to be construed (along with the corresponding patent,
each party's proposed construction, and the Court's
construction of those terms) are summarized in the
STANDARD OF REVIEW & GUIDING PRINCIPLES IN CLAIM
words of the patent claim define the invention to which a
patentee may claim the right to exclude other inventions.
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005).
Claim construction “is the process of giving proper
meaning to the claim language.” Abtox, Inc. v. Exitron
Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997). Claim
construction is a question of law for the Court to determine.
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.
actual words of the claim are the controlling focus”
when defining the scope of a patented invention. Digital
Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed.
Cir. 1998). In interpreting a claim, the Court should look
first to intrinsic evidence - i.e., “the patent itself,
including the claims, the specification and, if in evidence,
the prosecution history.” Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
Intrinsic evidence is “the most significant
source” in determining the “legally operative
meaning of disputed claim language.” Id.
(because “[t]he specification contains a written
description of the invention which must be clear and complete
enough to enable those of ordinary skill in the art to make
and use it[, ] . . . the specification is always highly
relevant to the claim construction analysis. Usually, it is
dispositive. . . .”).
a general rule, all terms in a patent claim are to be given
their plain, ordinary and accustomed meaning to one of
ordinary skill in the relevant art.” Rexnord Corp. v.
Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001).
“Determining the limits of a patent claim requires
understanding its terms in the context in which they were
used by the inventor, considered by the examiner, and
understood in the field of the invention.” Toro Co. v.
White Consol. Indus., Inc., 199 F.3d 1295, 1299 (Fed. Cir.
“[U]nless compelled to do otherwise, a court will give
a claim term the full range of its ordinary meaning as
understood by an artisan of ordinary skill.” Rexnord,
274 F.3d at 1342. Moreover, the Court must construe each
claim term “consistently with its appearance in other
places in the same claim or in other claims of the same
ordinary meaning of a term may be readily apparent, such that
claim construction involves little more than the application
of the widely accepted meaning of commonly understood words.
Phillips, 415 F.3d at 1314. In these instances, general
purpose dictionaries may be helpful. Id.
meaning of the claim limitation is apparent from the
intrinsic evidence alone, it is improper to rely on extrinsic
evidence other than that used to determine the ordinary
meaning of the claim limitation. Bell Atl. Network Servs.,
Inc. v. Covad Commc'ns Grp., Inc., 262 F.3d 1258, 1268-69
(Fed. Cir. 2001). However, if the court cannot determine the
meaning of a term after assessing intrinsic evidence, it may
look to other evidence such as expert testimony, articles,
and inventor testimony. Id. at 1269. “This
extrinsic evidence may be used only to assist in the proper
understanding of the disputed limitation; it may not be used
to vary, contradict, expand, or limit the claim language from
how it is defined, even by implication, in the specification
or file history.” Id. (citations omitted).
of the patents are set forth in the Court's first Order
on Claim Construction. See Choon's Design, 2016 WL
1626574, at *3-4. The Court incorporates those descriptions
by reference here.
“opening on a front side”
Court construes the term “opening on a front
side” in claim 1 of the ‘565 patent to mean
“a space or groove on a forward facing side of each
pin.” This is consistent with the plain meaning of the
claim language and specification, as well as the construction
given by the Patent Trial and Appeal Board
says this term requires the “space or groove” to
be “on a common, forward facing side of each
pin.” In support of its construction, Choon's
points to claim 9 of the ‘565 patent - which requires
“a clip for securing ends of the series of links
together” - and demonstrative figures in which the
openings on each pin face a common direction to argue that
“[t]here is only one description of how to utilize a
loom to manufacture an item from elastic bands, and that
requires the slots be on a common side of each of the
proposed construction is undermined in several respects.
the plain language of the claim only requires that the
opening be on the “front side” of each pin; it
does not require that the opening be on a common side of all
pins. As Tristar states: “Had Choon's wanted to
require the openings to be on a common side, it easily could
have said so. It did just that in related U.S. Patent No. 8,
936, 283; [in that patent], unlike [the ‘565 patent],
claims 4 and 11 recite an “opening on a common front
the term “opening on a front side” in the
‘565 patent to mean the same as “opening on a
common front side” in the ‘283 patent would
impermissibly render the word “common” in the
‘283 patent superfluous. See Curtiss-Wright Flow
Control Corp. v. Velan, Inc., 438 F.3d 1374, 1381 (Fed. Cir.
2006) (claims should be construed to avoid a construction
“that would render additional, or different, language
in another independent claim superfluous”); Omega
Eng'g, Inc, v. Raytek Corp., 334 F.3d 1314, 1334 (Fed.
Cir. 2003) (“unless otherwise compelled, . . . the same
claim term in the same patent or related patents carries the
same construed meaning”); ...