United States District Court, N.D. California
May 6, 2003
STEPHEN KEY DESIGN, LLC, et al., Plaintiffs,
LEGO SYSTEMS, INC., et al., Defendants.
The opinion of the court was delivered by: MARTIN JENKINS, District Judge.
CLAIM CONSTRUCTION ORDER
This matter concerns the alleged infringement of: (1) U.S.
Patent No. 6,086,697 (" '697 patent"), entitled "Rotating Label
System and Method," and (2) U.S. Patent No. 6,237,269 ("'269
patent"), entitled "Roll-Fed Method for Constructing a Rotatable
Label System." The Court will now construe the disputed claim
terms within the two patents.
Stephen M. Key is the named inventor in each of the patents,
both of which are assigned to Stephen Key Design, LLP.*fn1 The two
patents generally disclose systems and methods for "constructing
a rotatable label and attaching the rotatable label to a
container." '697 Patent at Abstract; '269 Patent at Abstract.
More specifically, the rotatable label described in the '697
patent "includes a release tab releasably attached to the
container, or to an inner label adhered to the container, to
secure the outer label to the container while the outer label is
wrapped around the container." '697 Patent at Abstract. The
release tab is subsequently detached, allowing the outer label to
rotate about the container. The '269 patent describes methods by
which the leading end of the outer label is "temporarily affixed
to the container while the outer label is wrapped around the
container. Once the trailing end is attached to a front surface
of the leading end, the outer label can be rotated about the
container over the inner label." '269 Patent at Abstract,
5:61-6:13. Both patents describe the outer label as preferably
being adapted with a transparent portion or window permitting the
viewing of information on the inner label and/or container. '697
Patent at Abstract; '269 Patent at Abstract.
Stephen Key Design and CCL Label (collectively, "Plaintiffs")
assert that Lego Systems, Inc., The Lego Group, and Lego Schweiz
AG (a.k.a. Lego Production AG) (collectively, "Defendants")
infringe both patents by manufacturing, distributing, and selling
a product called "Lego Bionicle," which utilizes a labeling
system that employs a fixed inner label, and an outer label that
rotates about the inner label and container. See id., Exh. C.
The construction of a patent claim is a matter of law for the
Court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372,
116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). To determine the meaning
of a patent claim, the Court considers three sources: the claims,
the specification, and the prosecution history. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en
bane), aff'd, Markman, 517 U.S. 370, 116 S.Ct. 1384,
134 L.Ed.2d 577.
First, the Court looks at the words of the claims. Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
"[T]he analytical focus must begin and remain centered on the
language of the claims themselves, for it is that language
[261 F. Supp.2d 1199]
that the patentee chose to use to particularly point out and
distinctly claim the subject matter which the patentee regards as
his invention." Texas Digital Systems, Inc. v. Telegenix, Inc.,
308 F.3d 1193, 1201-2 (Fed. Cir. 2002)(internal quotations and
citations omitted). Thus, there is a "heavy presumption" that
claim terms bear their ordinary meaning, as understood by persons
skilled in the relevant art. Id. at 1202; see also Teleflex, Inc.
v. Ficosa North America Corp., 299 F.3d 1313, 1325.
Second, it is always necessary to review the specification to
determine if the presumption of ordinary meaning is rebutted.
Texas Digital Systems, 308 F.3d at 1204. The presumption is only
rebutted in situations where the inventor (1) acting as his own
lexicographer, clearly set forth an "explicit definition" of the
term that is different from its ordinary meaning; or (2) has
disavowed or disclaimed scope of coverage by using words of
"manifest exclusion or restriction. . . ." Id. "But if the
meaning of the words themselves would not have been understood to
persons of skill in the art to be limited only to the examples or
embodiments described in the specification, reading the words in
such a confined way would mandate the wrong result and would
violate our proscription of not reading limitations from the
specification into the claims." Id; see also Teleflex, 299 F.3d
at 1326 ("limitations from the specification are not to be read
into the claims. . .").
Third, the court may consider the prosecution history of the
patent, if in evidence. Vitrouics, 90 F.3d at 1582. "Although the
prosecution history can and should be used to understand the
language used in the claims, it too cannot enlarge, diminish, or
vary the limitations in the claims." Markman, 52 F.3d at 980
(internal quotations and citations omitted). However, a
concession made or position taken to establish patentability in
view of prior art, upon which the examiner has relied, is a
substantive position on the technology for which a patent is
sought, and will generally generate an estoppel. In contrast,
when claim changes or arguments are made in order to more
particularly point out the applicant's invention, the purpose is
to impart precision, not to overcome prior art. Such prosecution
is not presumed to raise an estoppel, but is reviewed on its
facts, with the guidance of precedent. Pall Corp. v. Micron
Separations, Inc., 66 F.3d 1211, 1220 (Fed. Cir. 1995) (citations
Ordinarily, the Court should not rely on expert testimony to
assist in claim construction, because the public is entitled to
rely on the public record of the patentee's claim (as contained
in the patent claim, the specification, and the prosecution
history) to ascertain the scope of the claimed invention.
Vitronics, 90 F.3d at 1583. "[W]here the public record
unambiguously describes the scope of the patented invention,
reliance on any extrinsic evidence is improper." Id. Extrinsic
evidence should be used only if needed to assist in determining
the meaning or scope of technical terms in the claims, and may
not be used to vary or contradict the terms of the claims. Id.
(quoting Pall Corp., 66 F.3d at 1216); Markman, 52 F.3d at 981.
However, the Court is free to consult reference materials, such
as dictionaries, for assistance in determining the ordinary
meaning of a claim term and such sources are not considered
extrinsic evidence. Texas Digital Systems, 308 F.3d at 1202-03.
Further, the intrinsic record must be consulted to determine
which definition is most consistent with the use of the word by
the inventor. Id. at 1203. However, "[i]f more than one
dictionary definition is consistent with the use of the word[ ]
in the intrinsic record, the claim term[ ] may be construed to
encompass all such consistent meanings." Id.
[261 F. Supp.2d 1200]
The Court also has the discretion to admit and rely upon prior
art proffered by one of the parties, whether or not cited in the
specification or the file history, but only when the meaning of
the disputed terms cannot be ascertained from a careful reading
of the public record. Vitronics, 90 F.3d at 1584. Referring to
prior art may make it unnecessary to rely on expert testimony,
because prior art may be indicative of what those skilled in the
art generally believe a certain term means. Id. Unlike expert
testimony, these sources are accessible to the public prior to
litigation to aid in determining the scope of an invention. Id.
Finally, "[t]he subjective intent of the inventor when he used
a particular term is of little or no probative weight in
determining the scope of a claim (except as documented in the
prosecution history)." Markman, 52 F.3d at 985 (citation
omitted). "Rather the focus is on the objective test of what one
of ordinary skill in the art at the time of the invention would
have understood the term to mean." Id. at 986.
A. "applying an external physical pressure"
The term "applying an external physical pressure" appears only
in the '269 patent, and Plaintiffs propose the following
construction of the term: "The application of force to the
label(s) and container by holding and pressing apparatus that
arises. or acts from the outside; i.e., separate and independent
from the labels and container." Joint Claim Construction ("JCC")
Defendants object to the extent Plaintiffs' proposed
construction "attempts to make a dependant claim (claim 5 of the
'269 patent) broader than its referenced independent claim (claim
1 of the '269 patent)."*fn3 Defendants' Opposition to Brief Re:
Claim Construction of the '269 and '697 Patents ("Opposition") at
3:5-12; see also 35 U.S.C. § 112 ("a claim in dependant form
shall be construed to incorporate by reference all the
limitations of the claim to which it refers"). However,
Defendants fail to offer and the Court cannot
find any basis for determining that Plaintiffs' proposed
construction would render claim 5 broader than claim 1.*fn4 Claim 5
is simply one of several dependant claims describing various
methods of "temporarily coupling a leading end of an outer to the
inner label while the outer label is wrapped about the object,"
as described in claim 1. See '269 Patent at Claims 2, 5-4.*fn5
[261 F. Supp.2d 1201]
Therefore, the Court adopts Plaintiff's proposed construction
of "applying an external physical pressure" "[t]he
application of force to the label(s) and container by holding and
pressing apparatus that arises or acts from the outside; i.e.,
separate and independent from the labels and
container" which is consistent with the relevant dictionary
definition of "external." See Plaintiffs' Supporting Evidence,
Exh. E (Merriam-Webster's Collegiate Dictionary, Tenth Edition)
("of, relating to, or connected with the outside or an outer
part . . . applied or applicable to the outside"); see Texas
Digital Systems, 308 F.3d at 1203 ("[dictionaries,
encyclopedias and treatises, publicly available at the time the
patent is issued, are objective resources that serve as reliable
sources of information on the established meanings that would
have been attributed to the terms of the claims by those of skill
in the art").
B. "temporarily coupling"
The term "temporarily coupling" is used throughout both
patents.*fn6 Merriam-Webster's Collegiate Dictionary defines
"coupling" as "to fasten together." However, the parties' dispute
more precisely relates to the definition of "temporarily."
Plaintiffs contend that "temporarily coupling" means "[j]oiner,
pairing, or bringing together to momentarily connect." JCC at
8:12-20 (emphasis added). On the other hand, Defendants argue
that the "term requires a temporary physical securing, adhering,
or affixing, not mere physical contact, between the leading end
of the outer label and the inner label." Id. (emphasis added).
However, the definition of "temporarily" "lasting for a
time only" is broad enough to encompass both "momentary"
contact as well as "physical securing, adhering, or affixing."
See The Merriam Webster Dictionary, Home and Office Edition,
1995. Consequently, the term is not limited in the way Defendants
suggest. In fact, based on this definition, the only limitation
on "temporarily" is that it not be permanent., i.e., eventually
allowing the outer label to rotate about the inner label and/or
This definition is also consistent with the respective patent
specifications. The '269 patent specification describes several
methods of temporarily coupling the leading end of the outer
label with the inner label, including (1) a blast of air or other
gas; (2) moisture; (3) a holding or pressing apparatus; (4)
vacuum pressure; or (5) a static electric charge. Id. at
5:61-6:13.*fn7 The '697 patent, on the other hand, describes a
method by which "a release tab is removably attached to a
rotatable label to facilitate attachment of the label to a
container. The release tab is adhered to the container, or to a
label affixed to the container, to secure the label to the
container while the label is wrapped around the container. The
release tab is then detached from the label once the label is
wrapped about the container to permit the label to rotate about
the container." Id. at 1:64-2:4.
Therefore, the Court construes "temporarily coupling" to mean
the following: to fasten together for a limited time, and, upon
uncoupling, allowing the outer label
[261 F. Supp.2d 1202]
to rotate about the inner label and/or container.
C. "temporarily adhering"
The term "temporarily adhering" can be found in the '697
patent, and Plaintiffs propose the following construction of the
term: "To temporarily hold fast or stick by or as if by gluing,
suction, grasping, fusing or otherwise." JCC at 7:12-19. On the
other hand, Defendants simply incorporate by reference their
proposed construction of "temporarily coupling." Id. ("temporary
physical securing, adhering, or affixing, not mere physical
contact, between the leading end of the outer label and the inner
label"). Although there seems to be no genuine dispute as to the
meaning of the term "temporarily adhering," the Court adopts
Plaintiffs' proposed construction of the term because it is
consistent with the relevant definition contained in
Merriam-Webster's Collegiate Dictionary ("to hold fast or stick
by or as if by gluing, suction, grasping, or fusing").
D. "uncoupling the leading end"
The term "uncoupling the leading end" appears in the '269
patent, and Plaintiffs propose the following construction of the
term: "To detach, disjoin or disconnect the temporary connection
of the leading end." JCC at 15:9-13. Defendants object to
Plaintiffs' proposed construction to the extent it is
inconsistent with its proposed construction of "temporarily
coupling." Finding no inconsistency, the Court adopts Plaintiffs'
proposed construction of "uncoupling the leading end."
E. Undisputed Terms
The meanings of the following terms are undisputed and will be
adopted the Court for purposes of this action.*fn8
1. "attaching an inner label" ('269 patent): "To make fast (as by
gluing); fixedly joining the inner label to the container." JCC
at 1:5-8; see Opposition at 4:1-10.
2. "attaching and securing"('269 patent): "Attaching the inner
label and securing of the outer label" JCC at 3:5-9.
3. "between the top and bottom label panels" ('269 patent): "A
recessed portion is provided thereby defining a top and bottom
label panel at edges thereof. The recessed panel is between the
top and bottom label panel." JCC at 3:9-15; see also March 5,
2003 Letter from Parties.
4. "detaching the outer label from the inner label" ('697
patent): "Rotating the outer label relative to the inner label to
disengage the outer label from the inner label." JCC at 3:15-20;
see also Opposition at 4:25-5:2.
5. "detaching" ('697 patent): "To release or disengage" JCC
6. "feeding an inner label from the roll" ('269 patent): "To move
inner labels from a roll into a machine or opening in order to be
applied to the container." JCC at 4:9-13; see also Opposition at
7. "feeding an outer label from a roll" ('269 patent): "To move
outer labels from a roll into a machine or opening in order to be
applied to the container." JCC at 4:13-18; see also Opposition at
8. "holding the object stationary" ('269 patent): "Immobilizing
the container or permitting it to remain
[261 F. Supp.2d 1203]
at rest." JCC at 4:18-5:4; see also Opposition 5:8-10.
9. "providing an adhesive" ('269 patent): "To supply or make
available an adhesive." JCC at 5:5-9; see also Opposition at
10. "providing to and bottom label panels" ('269 patent): "A
recessed portion is provided thereby defining a top and bottom
label panel at the edges thereof." JCC at 5:9-14; see also March
5, 2003 Letter From Parties.
11. "roll-fed method" ('269 patent): "To move inner labels from a
roll into a machine or opening in order to be applied to the
container." JCC at 5:15-17; see also Opposition at 5:23-25.
12. "rolling the object" ('269 patent): "Rotating the container
about an axis." JCC at 5:17-20; see also Opposition at 5:27-6:2.
13. "securing the outer label about the object" ('697 patent):
"attaching the leading end of the outer label to the trailing
edge of the outer label thereby forming a shape about the
object." Opposition at 6:8-16.
14. "securing the outer label" ('269 patent): "attaching the
leading end of the outer label to the trailing end so that a
shape is formed outward of the inner label." Opposition at
15. "securing" ('269 and '697 patents): "attaching the leading
end of the outer label to the trailing end so that a shape is
formed outward of the inner label." Opposition at 6:25-7:5.
Based on the analysis above, the Court adopts the foregoing
constructions of the disputed claim terms.
IT IS SO ORDERED.