United States District Court, D. Connecticut
ORDER ON CLAIM CONSTRUCTION OF DISPUTED
Vanessa L. Bryant, United States District Judge
the Court is a patent infringement case filed by LEGO System
A/S (“LEGO” or “Plaintiff”) against
Rubicon Communications, LP (“Rubicon”) doing
business as SmallWorks (“SmallWorks”), Jamie
Thompson, and James Thompson (collectively,
“Defendants”) for the infringement of the
‘191 Patent Family, which includes U.S. Patent No. 7,
731, 191 (“the ‘191 Patent”) and its
continuation patents: U.S. Patent No. 8, 091, 891 (“the
‘892 Patent”), U.S. Patent No. 8, 628, 085
(“the ‘085 Patent”), and U.S. Patent No. 8,
894, 066 (“the ‘066 Patent”). Plaintiff
seeks monetary damages, an injunction against future
infringement of the asserted patents, and attorneys'
fees. [Dkt. 71 (Am. Compl.) at 10]. Defendants filed
counterclaims seeking declaratory judgment of invalidity and
non- infringement of each patent. [Dkt. 72 (Def.'s Ans.
Am. Compl.)]. The Court held a Markman hearing on
March 6, 2017, and now addresses claim construction terms.
offer SmallWorks BrickCase products that include
“LEGO® brick-compatible cases for iPhone, iPod,
iPad, and similar devices.” [Dkt. 71 ¶ 13].
Defendants operate a website where it sells, in relevant
part, its BrickCase products (it also sells BrickCase
products on other social media). Id. ¶ 14.
These BrickCase products are alleged to be available
worldwide in retail locations and online outlets.
Id. ¶ 18.
a company incorporated under the laws of Denmark where it
also has its principal place of business. Id. ¶
1. LEGO is one of the world's largest toy manufacturers,
and it is best known for its traditional LEGO® brick.
[Dkt. 36 (Pl.'s Markman Br.) at 2]. The company
is the owner of the four patents at issue in this case. LEGO
alleges that the sale of Defendant's products infringes
upon the ‘191 Patent Family.
‘191 Patent was filed on February 9, 2007, and
“claims benefit of” its provisional patent filed
February 10, 2006. [See Dkt. 71-4 (‘066
Patent), at 24]. The three continuation patents-‘892
Patent, ‘085 Patent, ‘066 Patent-all claim to
benefit from the provisional patent. LEGO asserts infringement of
all claims attributable to these patents.
‘191 Patent is the “original” as it is
“the first application in a chain of continuing
applications, ” but it is also known as the
“parent, ” a term “often used to refer to
the immediately preceding application upon which a continuing
application claims priority. . . .” Transco Prods.
Inc. v. Performance Contracting, Inc., 38 F.3d 551,
555-56 (Fed. Cir. 1994). A “continuing” patent
application is “one filed during the pendency of
another application which contains at least part of the
disclosure of the other application and names at least one
inventor in common with that application.” Id.
at 555. There are three types of “continuing”
patent applications: continuation, divisional, or
continuation-in-part (“CIP”). See Id.
(citing The Manual of Patent Examining Procedure
(“MPEP”), § 201.11 (1988). In this case all
continuing applications are classified as
“continuation” applications, see [Dkt.
71-2 at 2, Dkt. 71-3 at 2, Dkt. 71-4 at 2], which means they
“claim[ ] the same invention claimed in an earlier
application, although there may be some variation in the
scope of the subject matter claimed.” Transco
Prods., 38 F.3d at 555 (citing MPEP §
201.07). Notably, a continuing application “is entitled
to the benefit of the filing date of an earlier application
only as to common subject matter.” Id. at 556.
all four patents share the same specification, which includes
the written description and preferred
embodiments. Specifically, the ‘191 Patent Family
relates to patents for “a manual controller for
manipulating images or symbols on a visual display and, in
particular, to a controller that can be constructed with
user-arranged matable building elements to exhibit a
customized shape and style depending on user game-inspired,
ergonomic, or appearance preferences.” [Dkt. 71-1
(‘191 Patent) at 24 (1:20-25)]. In essence, the patents
enable LEGO pieces to be put on manual controllers so that
users can build on the controllers for their desired uses.
“Manual controllers for manipulating images or symbols
on a visual display of a computer device include, for
example, joysticks, game pads, steering wheels, guns, mice,
remote devices for television, stored multi-media display and
recording machines, cellular telephones, portable video game
systems, and portable multi-media devices.”
Id. (1:29-34). While the specifications are
identical, the variation lies with the claims themselves.
Below, the Court will address these variations as it resolves
the claim construction terms.
of a patent infringement case entails a two-step process, the
first of which is claim construction, and the second of which
is a comparison of the patented device or process to the
accused device or process applying the terms as construed.
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454
(Fed. Cir. 1998), abrogated on other grounds;
Phil-Insul Corp. v. Airlite Plastics Co., No.
2016-1982, 2017 WL 1374696, at *10 (Fed. Cir. Apr. 17, 2017)
(same). Only those terms that are in controversy need to be
construed, and the construction only needs to be to the
extent necessary to resolve the controversy. Vivid
Techs., Inc. v. Am. Science & Eng'g, Inc., 200
F.3d 795, 804 (Fed. Cir. 1999). Claim construction,
furthermore, is a question of law, and the Court has the
exclusive power to construe “the meaning of the
language used in the patent claim.” Markman v.
Westview Instruments, Inc., 52 F.3d 967, 977-79
(Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996);
3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d
1315, 1321 (Fed. Cir. 2013). Accordingly, “[c]laim
construction is a legal statement of the scope of the patent
right; it does not turn on witness credibility, but on the
content of the patent documents.” Lighting Ballast
Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d
1272, at 1284 (Fed. Cir. 2014) (en banc), vacated on
other grounds; In re Cuozzo Speed Techs, LLC,
793 F.3d 1268, 1286 (Fed. Cir. 2015) (citing Lighting
Ballast Control LLC for the principle that
“[l]egal doctrine in patent law starts with the
construction of the patent claims, for the claims measure the
legal rights provided by the patent.”).
Court is to begin the claim construction analysis with
intrinsic evidence. Irdeto Access, Inc. v. Echostar
Satellite Corp., 383 F.3d 1295, 1299-300 (Fed. Cir.
2004). “Intrinsic evidence includes the claim language,
the written description that precedes the claims in the
patent specification, and, if in evidence, the prosecution
history.” Chrisha Creations, Ltd. v. Dolgencorp,
Inc., 817 F.Supp.2d 363, 366 (S.D.N.Y. 2011) (citing
DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314,
1323 (Fed. Cir. 2001)). Procedurally, when constructing
patent claims, “claim terms are given their ordinary
and customary meaning, as they would be understood by one of
ordinary skill in the art in question at the time of the
invention.” 3M Innovative Props. Co., 725 F.3d
at 1321; Phillips v. AWH Corp., 415 F.3d 1303,
1312-13 (Fed. Cir. 2005). A person of ordinary skill in the
art “is deemed to read the claim term not only in the
context of the particular claim in which the disputed term
appears, but in the context of the entire patent, including
the specification.” Phillips, 415 F.3d at
1313. Courts must first rely only on intrinsic evidence to
resolve any claim term ambiguity, and it is impermissible to
use extrinsic evidence to “contradict the established
meaning of the claim language.” See DeMarini
Sports, 239 F.3d at 1323.
Patent Act requires the specification to “contain a
written description of the invention, and of the manner and
process of making it and using it, in such full, clear,
concise and exact terms as to enable any person skilled in
the art to which it pertains, or with which it is more nearly
connected, to make and use the same.” 35 U.S.C. §
112. A written description generally contains “an
abstract of the invention, a description of the
invention's background, a summary of the invention,
patent drawings, and a detailed description that discusses
preferred embodiments of the invention.” Chrisha
Creations, Ltd., 817 F.Supp.2d at 367; see Dymo
Costar Corp. v. Seiko Instruments USA, Inc., No.
3-00-cv-4 JHC, 2000 WL 502616, at *14 (D. Conn. Mar. 20,
2000) (listing “all parts of the specification”
as “the sections detailing the background, summary, and
preferred embodiment of the invention”) (citing
Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352,
1356-57 (Fed. Cir. 1999)); Lamoureux v. AnazaoHealth
Corp., 669 F.Supp.2d 227, 255 (D. Conn. 2009) (referring
to background of the invention of the specification to
determine appropriate claim construction).
[the specification] is dispositive; it is the single best
guide to the meaning of a disputed term.” Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996); Pressure Prods. Med. Supplies, Inc. v.
Greatbatch Ltd., 599 F.3d 1308, 1314 (Fed. Cir. 2010)
(quoting Phillips, 415 F.3d at 1314-15) (although
claim construction is dependent on the language of the claims
themselves, it requires reading that language “in view
of the specification, of which they are a part”).
“Idiosyncratic language, highly technical terms, or
terms coined by the inventor are best understood by reference
to the specification.” 3M Innovative Props.
Co., 725 F.3d at 1321; see also Thorner v. Sony
Comp. Entm't Am. LLC, 669 F.3d 1362, 1365-67 (Fed.
Cir. 2012) (“The words of a claim are generally given
their ordinary and customary meaning as understood by a
person of ordinary skill in the art when read in the context
of the specification and prosecution history.”). The
Court may refer to the “descriptive part of the
specification” to determine the scope and meaning where
the claims are based on the description. Phillips,
415 F.3d at 1315. The specification may be used to define
terms even in the absence of an “explicit definitional
format, ” as it may “define claim terms by
implication such that the meaning may be found in or
ascertained by a reading of the patent documents.”
Trustees of Columbia Univ. in City of New York, 811
F.3d 1359, 1364 (Fed. Cir. 2016).
though the specification informs the Court as to the use of
the terms in the claims, “limitations discussed in the
specification may not be read into the claims.” 3M
Innovative Props. Co., 725 F.3d at 1321 (citing
Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1287
(Fed. Cir. 2010)). References to a preferred embodiment in a
specification is not a claim limitation. Janssen
Pharmaceutica N.V. v. Eon Labs Mfg., Inc., No. CV
01-2322 (NG) (MDG), 2003 WL 25819555, at *9 (E.D.N.Y. Nov.
26, 2003) (citing SRI Int'l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc)).
That being said, “the patentee's choice of
preferred embodiments can shed light on the intended scope of
the claims.” Astrazaneca AB, Aktiebolaget Hassle,
KBI-E, Inc. v. Mut. Pharm. Co., Inc., 384 F.3d 1333,
1340 (Fed. Cir. 2004).
the preamble language is not to be interpreted to limit the
scope of the claim when it “merely states the purpose
or intended use of an invention.” United Techs.
Corp. v. PerkinElmer, Inc., 537 F.Supp.2d 392, 397 (D.
Conn. 2008) (citing Bicon, Inc. v. Straumann Co.,
441 F.3d 945, 952 (Fed. Cir. 2006)). The preamble may limit
the claim, however, when the body of the claim
“rel[ies] upon and derive[s] antecedent basis from the
preamble” or if the drafter “chooses to use
both the preamble and the body to define the subject
matter of the claimed invention.” United Techs.
Corp, 537 F.Supp.2d at 397. Determining whether the
preamble is limiting must be based on “the facts of
each case in light of the claim as a whole and the
invention described in the patent.”
Id. (quoting Eaton Corp. v. Rockwell Int'l
Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003)).
claims from the patent may also be helpful to determine the
meaning of a claim term, because in general claim terms are
consistently used throughout the patent. Phillips,
415 F.3d at 1314. An example of this principle is where a
dependent claim adds a limitation, because such a limitation
creates the presumption that the limitation does not exist in
the independent claim. Id. at 1314-15.
as here, multiple patents are at issue, claims must be
interpreted “consistently across all asserted
patents” when they “derive from the same parent
application and share many common terms.” Trustees
of Columbia Univ., 811 F.3d at 1369 (quoting NTP,
Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1293
(Fed. Cir. 2005), abrogated on other grounds recognized
in Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040,
1047 (Fed. Cir. 2016); Microsoft Corp. v. Multi-Tech.
Sys., Inc., 357 F.3d 1340, 1348 (Fed. Cir. 2004)
(construing the specification shared by all three patents the
same way); Abtox, Inc. v. Exitron Corp., 122 F.3d
1019 (Fed. Cir. 1997), modified on reh'g, 131
F.3d 1009, 1010 (Fed. Cir. 1997) (“Although these
claims have since issued in separate patents, it would be
improper to construe this term differently in one patent than
another, given their common ancestry.”). Notably,
“[i]t is recognized that an applicant can broaden as
well as restrict his claims during the procedures of patent
examinations, and that continuing applications may present
broader claims than were allowed in the parent.”
Hakim v. Cannon Avent Grp., PLC, 479 F.3d 1313, 1317
(Fed. Cir. 2007) (citing Symbol Tech., Inc. v. Lemelson
Med., Educ. & Research Found., 422 F.3d 1378, 1385
(Fed. Cir. 2005) (“Commonly, and justifiably, one might
refile an application to add subject matter in order to
attempt to support broader claims as the development of an
invention progresses, although entitlement to an earlier
filing date for any claimed subject matter may of course be
necessary to avoid a statutory bar created by intervening
events outlined in 35 U.S.C. §§ 102 and
prosecution history is another form of intrinsic evidence
relevant to claim construction, particularly where a court
must consider multiple patents in one family. Similar to the
specification, prosecution history reflects a patentee's
“attempt[ ] to explain and obtain the patent” and
evidences how the PTO and inventor understood the patent.
Phillips, 415 F.3d at 1317. “A statement made
during prosecution of related patents may be properly
considered in construing a term common to those patents,
regardless of whether the statement pre- or postdates the
issuance of the particular patent at issue.” Teva
Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343
(Fed. Cir. 2015). It is during prosecution history where an
applicant may “define (lexicography), explain, or
disavow claim scope during prosecution.” Id.
The prosecution history is particularly important because it
may demonstrate “whether the inventor limited the
invention in the course of prosecution, making the claim
scope narrower than it would otherwise be.”
Phillips, 415 F.3d at 1317. Limitation statements
made during prosecution are relevant to both later and
earlier issued patents. See Microsoft Corp., 357
F.3d at 1350 (“[W]e conclude that Multi-Tech's
statements made during the prosecution of the #627 patent
with regard to the scope of its inventions as disclosed in
the common specification are relevant not only to the #627
and the [later issued] #532 patents, but also to the earlier
issued #649 patent.”); Elkay Mfg. Co. v. Ebco Mfg.
Co., 192 F.3d 973, 980 (Fed. Cir. 1999) (“When
multiple patents derive from the same initial application,
the prosecution history regarding a claim limitation in any
patent that has issued applies with equal force to
subsequently issued patents that contain the same claim
limitation.”). Once such limitations are in place,
“an applicant cannot recapture claim scope that was
surrendered or disclaimed.” Hakim, 479 F.3d at
the intrinsic evidence alone cannot resolve claim term
ambiguity, the Court may also rely on extrinsic evidence,
“which consists of all evidence external to the patent
and prosecution history, including expert and inventor
testimony, dictionaries, and learned treatises.”
Phillips, 415 F.3d at 1317 (citing Markman,
52 F.3d at 980) (internal quotation marks omitted). Extrinsic
evidence, however, is less significant than intrinsic
evidence when “determining the legally operative
meaning of claim language. Id. (internal quotation
marks omitted). This is for five reasons: (1) extrinsic
evidence is not part of the patent and is not created at the
time of the patent prosecution to explain scope and meaning;
(2) extrinsic evidence may not be created by skilled artisans
and therefore may not reflect the artisan's
understanding; (3) expert reports and evidence is made for
the purpose of litigation and may be biased; (4) the large
volume of extrinsic evidence will lead parties to choose that
which is most favorable; and (5) undue reliance on extrinsic
evidence risks changing the meaning of claims. Id.
general and technical alike, may be helpful because they
“endeavor to collect the accepted meanings of terms
used in various fields of science and technology.”
Phillips, 415 F.3d at 1318. “In some cases,
the ordinary meaning of claim language as understood by a
person of skill in the art may be readily apparent even to
lay judges, and claim construction in such cases involves
little more than the application of the widely accepted
meaning of commonly understood words.”
Phillips, 415 F.3d at 1314. Where this is the case,
“general purpose dictionaries may be helpful.”
case, Plaintiff is asserting against the Defendant the
following claims: claims 1-6 and 8 of the ‘191 Patent,
claims 1-6 of the ‘892 Patent, claims 1-4 of the
‘085 Patent, and claims 1-8 of the ‘066 Patent.
[See Dkt. 36, at 3-5]. The parties dispute the
meaning of several specific terms found within the patent
claims and agree upon a few terms. The Court first addresses
the disputed terms.
parties dispute the construction of “configurable
manual controller, ” “manual controller, ”
and “controller.” “Configurable manual
controller” appears only in the ‘191 Patent
(claims 1-6 and 8); “manual controller” appears
in the ‘892 Patent and ‘085 Patent (claims 1, 4,
and 6; and claims 1, 2, and 4; respectively); and
“controller” appears only in the ‘066
Patent (claims 1, 2, and 4). [Dkt. 71-1, at 26-27; Dkt. 71-2
(‘892 Patent), at 26-27; Dkt. 71-3 (‘085 Patent),
at 26-27; Dkt. 71-4 (‘066 Patent), at 26-27].
background information for the ‘191, ‘892,
‘085, and ‘066 Patents all state, “Manual
controllers for manipulating images or symbols on a visual
display of a computer device include, for example, joysticks,
game pads, steering wheels, guns, mice, remote devices for
television, stored multi-media display and recording
machines, cellular telephones, portable video game systems,
and portable multi-media devices.” [Dkt. 71-1, at 24
advocates for a single, broad definition for the
“controller terms” where all
“controllers” are defined as a “a handheld
device used to manipulate images or symbols on a visual
display of a computing device, wherein the handheld device
and computing device may or may not be integrated (in a
single device).” [Dkt. 34-1 (Joint Disputed Claim Terms
Chart), at 2]. LEGO proposes the term
“configurable” be construed according to ordinary
meaning and does not require a separate definition. See
Id. at 9. In support of its argument, LEGO cites the
background information of the specification, which broadly
refers to a “manual controller” in terms of the
types, appearances, structures, and methods for operation.
[See, e.g., Dkt. 71-1, at 24 (1:48-51)].
argue that “controller terms” should have two
separate definitions. [Dkt. 35 (Def.'s Markman
Br.), at 8]. Both “manual controller” and
“controller” should be defined as “an
electronic device used to manually manipulate images or
symbols on a visual display of a computing device.”
[Dkt. 34-1, at 9]. In contrast, “configurable manual
controller” should be defined differently to include
the definition of “manual controller” with the
added phrase: “in which the electronic device is
adapted by the user attaching building elements onto the
electronic device itself.” Id. Defendants have
two principle arguments for disputing LEGO's proposed
Defendants claim that the ‘191 Patent's language
“configurable manual controller” contemplates
only a controller where the patterned surface portion is part
of the actual controller (i.e. there is no separate casing).
In support, Defendants argue that the preferred embodiments
in Figures 1 and 2 represent the “manual
controller” and “controller” referenced in
the ‘892 Patent, ‘085 Patent, and ‘066
Patent, on account of the reference to a “casing”
in these three patents' claims. [Dkt. 35, at 9; see,
e.g. Dkt. 71-2, at 26 (“a configurable
casing”); Dkt. 71-3, at 26 (same); Dkt. 71-4, at 26
(“providing a main casing”)]. As a comparison,
Figures 3 through 9 relate only to a “configurable
manual controller” because the building elements are
placed directly on the controller and there is no
“casing” present. [Dkt. 35, at 8]. Figures 1 and
4 are herein provided as examples for the reader's
argument lacks merit because it would lead to an inconsistent
interpretation of the “controller” claim terms as
they are referenced in the specification. Figure 1 is
expressly described as “an exploded view of a first
preferred embodiment of a configurable manual
controller.” [Dkt. 71-1, at 24-25 (2:56-57)
(emphasis added)]. It is therefore inconsistent for Figure 1
to represent a “manual controller” or
“controller, ” unless “configurable manual
controller” possesses a compatible definition.
Furthermore, the abstract in ‘191 expressly refers to
both Figure 1 and Figure 4 as representing a
“configurable manual controller.” See
Id. at 24 (2:67, 4:65-5:9) (listing 10 and
140, shown above, as examples of “configurable
manual controller”). There is no indication in the
specification that “configurable manual
controller” should have a substantively different
definition from “controller” or “manual
controller.” Rather, the words “configurable,
” “configured, ” and
“configurations” are used throughout the
specification in connection with various terms apart from
“manual controller.”Thus, the Court finds that
“controller” and “manual controller”
shall have the same claim construction and be applied
uniformly throughout each patent. “Configurable”
shall be construed according to its plain meaning.
Defendants posit that LEGO's phrase, “wherein the
handheld device and computing device may or may not be
integrated (in a single device), ” is inappropriate as
the claims do not contain this language and the specification
suggests the opposite conclusion is more accurate. Defendants
cite the detailed description of preferred embodiments, which
indicates Figure 1 “is used with a computing device
(not shown) for manipulating images or symbols on a display
(not shown)” and “[a]lthough it does not show a
cable, this embodiment can be connected to a computing device
through a cable or a wireless communication link.”
Id. at 24 (2:57-61).
well-settled that the specification, which includes preferred
embodiments, may not be used to limit the claim. See 3M
Innovative Props. Co., 725 F.3d at 1321 (“While we
construe the claims in light of the specification,
limitations discussed in the specification may not be read
into the claims.”); Janssen Pharmaceutica
N.V., 2003 WL 25819555, at *9 (noting a reference to a
preferred embodiment may not limit claims). That being said,
“[t]he 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
construction.” Reinshaw PLC v. Marposs Societa'
per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). A
proper claim construction should reflect a “full
understanding of what the inventors actually invented and
intended to envelop with the claim.” Id. It is
“entirely appropriate for a court, when conducting
claim construction, to rely heavily on the written
description for guidance as to the meaning of the
claims.” Phillips, 415 F.3d at 1317.
Court finds LEGO's proposed claim construction,
advocating that the controller and computing functions may be
separate devices or integrated in a single device, is
consistent with the background information in all the
patents. Defendants are correct in stating that preferred
embodiments shed light on a claim, and all of the preferred
embodiments depict control devices separate from the
computing device, but preferred embodiments do not limit
claims generally. Moreover, the examples of a “manual
controller[ ] for manipulating images or symbols on a visual
display of a computing device” in the background
information includes “cellular telephones, portable
video game systems, and portable multimedia devices”
all of which are electronic devices in which the controls and
the computing functions are integrated in a single device.
[Dkt. 71-1, at 24 (1:34-39)]. Adopting Defendants'
proposed definition would be inconsistent with the background
information and the requirement that patents be read as a
whole. 3M Innovative Props. Co., 725 F.3d at 1321.
aforementioned, where patents “derive from the same
parent application and share many common terms, [the Court]
must interpret the claims consistently across all asserted
patents.” NTP, Inc., 418 F.3d at 1293;
SightSound Techs., LLC. v. Apple Inc., 809 F.3d
1307, 1316 (Fed. Cir. 2015) (same). Claim 7 of the ‘066
Patent states, “[t]he method of claim 1, in which the
controller comprises a cellular telephone and a control
section, the cellular telephone being operationally
responsive to user-entered commands that are delivered to the
control section.” [Dkt. 71-4, at 27 (8:13-16)]. Such
language does not mean that the controller and visual display
are or are not integrated. This claim indicates the cellular
telephone can operate both as a functioning call device and ...