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May 6, 2003


The opinion of the court was delivered by: Martin Jenkins, District Judge.



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 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 omitted).

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 ...

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