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Lego System A/S v. Rubicon Communications, LP

United States District Court, D. Connecticut

September 27, 2017

LEGO SYSTEM A/S, Plaintiff,


          Hon. Vanessa L. Bryant, United States District Judge

         I. Introduction

         Before 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[1] (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.

         II. Background

         A. The Parties

         Defendants 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.

         LEGO is 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.

         B. The Patents

         The ‘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.[2] LEGO asserts infringement of all claims attributable to these patents.

         The ‘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”).[3] 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.

         Here, all four patents share the same specification, which includes the written description and preferred embodiments.[4] 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.

         III. Legal Standard

         Resolution 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.”).

         The 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.

         The 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).

         “Usually, [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).

         Even 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).

         Also, 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)).

         Other 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.

         Where, 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 103.”).

         The 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 1317.

         Where 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. at 1318-19.

         Dictionaries, 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.” Id.

         IV. Analysis

         In this 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.

         A. Disputed Terms

         1. “Controller” Terms

         The 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].

         The 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 (1:34-39)].

         LEGO 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)].

         Defendants 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 claim terms.

         First, 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 comparison:

         (Image Omitted)

         This 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.”[5]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.

         Second, 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).

         It is 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.

         The 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.

         As 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 ...

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