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February 5, 1997

PYTHON PET PRODUCTS, INC., Defendant. PYTHON PRODUCTS, INC., Counter-claimant, vs. LEE'S AQUARIUM & PET PRODUCTS, INC., and LEE SCHULTZ, Counter-Defendants.

The opinion of the court was delivered by: BREWSTER







 On Friday, January 31, 1997, the above-captioned matter came on regularly for hearing upon cross-motions for summary judgment. After due consideration of the moving and opposition papers and the arguments of counsel at hearing, the Court hereby:

(1) GRANTS Plaintiff's for Summary Judgment of Non-infringement;
(2) DENIES Counter-claimant's Motion for Summary Judgment of Infringement;
(3) DENIES Plaintiff's Motion for Summary Adjudication of Invalidity;
(4) DENIES Plaintiff's Motion for Summary Adjudication of Equitable Estoppel;
(5) GRANTS Counter-claimant's Motion for Summary Adjudication on Equitable Estoppel claim finding no Equitable Estoppel and;
(6) DISMISSES BY STIPULATION Counter-claimant's Claims for Unfair Competition and Business Disparagement.


 On March 1, 1996, Plaintiff filed a suit seeking declaratory judgment of non-infringement and patent invalidity against Python with respect to Python's U.S. Patent No. 4,610,784 ('784 Patent). Python filed an answer and counterclaim, alleging that LAPP's product (the Ultimate Gravel Vac or "UGV") *fn1" infringed on the '784 patent, literally and under the doctrine of equivalents. Plaintiff's complaint was amended adding a cause of action for Equitable Estoppel against Python. Defendant's counterclaim was also amended adding causes of action against LAPP and its owner Lee Schultz for unfair competition, unfair trade practice, unfair competitive practices under the Lanham Act, 15 U.S.C. § 1125(a), and business disparagement under the Lanham Act.

 LAPP's product, the UGV, is very similar, yet contains differences that LAPP contends prevent it from infringing on the '784 patent. The main difference is that the UGV contains a "claw" that is attached to the bottom of the gravel tube. The claw contains teeth with tiny slots that are used to scratch the gravel on the bottom of the tank and release the sediment, which is then swept into the tube through the small slots, up through the gravel tube and flexible hose and out into the drain. According to Plaintiff, the claw prevents any gravel from entering the tube, as the slots are not wide enough to accommodate the size of gravel. Plaintiff's claim of non-infringement is based on this difference in function and design.

 Python now moves this Court for summary judgment on their patent infringement counterclaim, and LAPP's equitable estoppel claim. LAPP moves this Court for summary judgment on the patent invalidity, infringement (literal and doctrine of equivalents), and equitable estoppel claims, as well as summary adjudication on the unfair competition and business disparagement counterclaims. The parties additionally requested the Court to conduct a Markman hearing construing the claims in the patent, which this Court did during the oral hearing on Friday, January 31, 1997.


 A. Standards of Law

 1. Markman Hearing

 In Markman v. Westview Instruments, Inc., 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996), the United States Supreme Court held that the interpretation of patent claims is a question of law exclusively within the province of the court. When construing patent claims, a court must consider the claims themselves, the specification, and the prosecution history of the patent. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir, 1995). In addition to these sources, a court may also consider extrinsic evidence in order to determine the true meaning of the language employed in the patent. Id. at 980. However, if an analysis of the intrinsic evidence (claim language, specification and prosecution history) resolves any ambiguity in a disputed claim term, it is improper for the court to rely on extrinsic evidence. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).

 2. Summary Judgment

 On a motion for summary judgment pursuant to Federal Rule of Civil Procedure 56, the moving party must first establish that there is "no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law." British Airways Board v. Boeing Co., 585 F.2d 946, 951 (9th Cir. 1978), reh'g denied, 441 U.S. 968, 60 L. Ed. 2d 1074, 99 S. Ct. 2420 (1979). Summary judgment must be granted if the party responding to the motion fails "to make a sufficient showing on an essential element of her case with respect to which she has the burden of proof." Celotex Corp. v. Catrett, 477 U.S. 317, 323, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986). Although the moving party has the initial burden of demonstrating that summary judgment is proper, that burden may be discharged by pointing out to the court an absence of facts to support the nonmoving party's case. Id. at 325. The moving party is not required to produce evidence showing the absence of a genuine issue of material fact on such issues, nor must the moving party support its motion with evidence negating the nonmoving party's claim. United Steelworkers of America, et. al. v. Phelps Dodge, et. al., 865 F.2d 1539, 1542 (9th Cir. 1989), cert. denied, 493 U.S. 809, 107 L. Ed. 2d 20, 110 S. Ct. 51 (1989).

 The burden then shifts to the nonmoving party to show that summary judgment is not appropriate. Celotex, 477 U.S. at 324. To make such a showing, the nonmoving party must go beyond the pleadings to designate specific facts showing that there is a genuine issue for trial. Id. Such evidence need not be in a form admissible at trial to avoid summary judgment. Id. When considering whether summary judgment is appropriate, the Court should draw all reasonable inferences in favor of the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 257, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986) The Court should then ask whether evidence has been presented which would allow a reasonable jury to find for the non-moving party. Id. at 249-252. If the Court finds that no reasonable fact-finder could, considering the evidence presented by the non-moving party and the inferences therefrom, find in favor of that party, summary judgment is warranted.

 B. Markman Hearing - Interpreting the Claims

 In order for this Court to render a decision on the pending motions for summary judgment, it must first interpret and construe the patent claims in dispute in this action. In the instant case, the meaning of the term "gravel" as used in the '784 patent and the meaning of claims 1 and 10 of the '784 patent are in dispute. The dispute centers around whether the term gravel includes sand, as Python contends. If Python's contention is correct, then LAPP's product, which has the capability of drawing sand into the gravel tube, could potentially infringe Python's patent under the doctrine of equivalents. *fn2" Under Markman v. Westview Instruments Inc., claim interpretation is a question of law; therefore it is the Court's responsibility to determine the meaning of these disputed terms and claims.

 1. The Term "Gravel"

 The meaning of the term "gravel" as it is used throughout the '784 patent claims is critical to determining whether LAPP's product infringes Python's '784 patent. The term gravel is used a total of 204 times throughout the patent. As discussed above, when construing patent claims, the court must consider the claims themselves, the specification, and the prosecution history of the patent. If an analysis of this intrinsic evidence resolves the ambiguity in the disputed claim term, the court should not rely on extrinsic evidence. However, if the term cannot be defined by referring to this intrinsic evidence, the court can refer to extrinsic evidence to aid in its determination of the meaning of the claim terms. The Federal Circuit has noted that prior art documents and dictionaries are more objective types of extrinsic evidence than opinion testimony, "whether by an attorney or artisan in the field of technology to which the patent is directed." Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1585 (Fed. Cir. 1996).

 a. The Claims

 LAPP contends that although the word gravel is used continuously throughout the patent claims and specification, it is never defined. Case law instructs that although an inventor is free to use terms in a manner other than their ordinary meaning, if the special definition of the term is not clearly stated in the patent specification or patent history, the term will be interpreted as having its ordinary and customary meaning. See Markman, 52 F.3d at 979; Hoechst Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575, 1578 (Fed. Cir.)("A technical term used in a patent document is interpreted as having the meaning that it would be given by persons experienced in the field of the invention, unless it is apparent from the patent and the prosecution history that the inventor used the term with a different meaning.")(citations omitted), cert. denied, 136 L. Ed. 2d 198, 117 S. Ct. 275 (1996).

 Looking to the words of the claims themselves, no express definition of the word gravel is provided. Python contends that when the claims are read in view of the specification of which they are apart, as required by case law, a definition of gravel is found. Column 6, lines 19-22 of the specification reads: "The gravel is sufficiently heavy that it will fall back to the floor of the aquarium while sediment is carried away with the water discharged through the elongated hose." Python contends that this sentence defines the term gravel by reference to its weight. This sentence, however, is a small part of the entire specification that describes in detail the basic function of a preferred embodiment of the claims. In other words, this sentence is merely one part of the complete description of how the claims, read together, function to clean the aquarium tank; it does not define the word gravel. This statement does not say what gravel "is," it says what it "does." A definition, on the other hand, is a "statement of what a thing is." See Webster's New World Dictionary of the American Language, Second College Edition, 1984 Simon and Schuster, p. 370. Therefore, Python's attempt to transform the sentence in its specification into a definition of the term gravel fails.

 b. The Specification

 The specification may act as a sort of dictionary when it expressly defines terms used in the claims or when it defines terms by implication. Vitronics, 90 F.3d at 1582. Additionally, the fact that a patent specification emphasizes a limitation from its beginning to its end supports a finding that such limitation is part of the claimed invention. Gentex Corp. v. Donnelly Corp., 69 F.3d 527, 529-30 (Fed. Cir. 1995).

 As discussed above, the specification does not define the disputed term gravel. Rather the specification repeatedly uses the term to explain the function of the claims and limits the scope of the patent to an invention or device that lifts gravel into the gravel tube, churns it, and then allows the gravel to fall back into the tank. Once the court defines the term gravel, the scope of the patent will be clear and a device that falls outside the patent's scope will not be considered an infringing device.

 c. Prosecution History

 In interpreting the disputed terms, the court may also consider the prosecution history of the patent, which may include representations made by the applicant regarding the scope of the claims. In the instant case, the applicant (Reyneirs) did not, at any time during the prosecution of the patent, assign any special meaning to the term gravel. The term, although it was used throughout the claims and specification, was neither expressly nor impliedly defined in the patent. Since gravel is not otherwise defined by the patent, the assumption would be that the term gravel is to be given the "meaning that it would be given by persons experienced in the field of the invention." Hoechst, 78 F.3d at 1578.

 d. Extrinsic Evidence

 The intrinsic evidence analyzed above does not aid the court in defining the disputed term in the instant patent. What is clear from the above analysis is that the term gravel should be assigned its ordinary and customary meaning in construing the patent at issue. To presumably aid the court in determining the ordinary and customary meaning of the term, the parties submitted numerous dictionary definitions as well as declarations that purport to define the term gravel. Python argues that the definition includes sand. To support its contention, Python submitted the Declaration of Lance Reyneirs, the original holder of the '784 patent. Reyneirs states in his declaration that:

as one skilled in the art of constructing aquariums, I understand the term "gravel" as used in this patent to teach the use of natural aggregate material typically and historically, used in lining the bottom of aquariums. . . . "Gravel" as used in the '784 patent is understood by the great majority of aquarium hobbyists to include aggregate materials ranging in size from coarse sand to pebbles to small chunks of rock. A typical natural aquarium gravel setup will include aggregate material of varying sized, almost always including coarse sand.

 Reyneirs' 2nd Decl., P37.

 Additionally, Python attached the Declaration of Ralph Speice, who has been an active tropical and marine fish aquarium hobbyist for over 50 years, and has served as monthly contributing editor for "Fresh Water and Marine Aquarium" magazine since 1978. Mr. Speice essentially restates the same definition given by Mr. Reyneirs to describe the term gravel. Python also submitted the definition of gravel obtained from the 1991 version of Random House ...

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