The opinion of the court was delivered by: VIRGINIA A. Phillips United States District Judge
The Court conducted a hearing on January 23, 2009, on the parties' proposed construction of certain terms in the three Patents in Suit: Claim 1 of the '775 Patent and Claim 1 of the '308 Patent; Claim 10 of the '308 Patent; and Claim 1 of the '017 Patent, pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc) aff'd, 517 U.S. 370 (1996). Having considered the written submissions from both parties, as well as the arguments presented at the hearing, the Court now issues its claim construction order.
Plaintiffs Tokai Corporation, Scripto-Tokai Corporation, and Calico Brands, Inc. hold the three patents at issue in this suit, U.S. Patent Nos. 5,697,775, ("the '775 Patent"), 5,897,308 ("the '308 Patent"), and 6,093,017 ("the '017 Patent"). All three patents relate to safety devices on utility lighters designed to prevent accidental lighting.
Plaintiffs sued Defendants Easton Enterprises, Inc. and Fun Line Industries, Inc. on July 17, 2007, alleging infringement of the patents-in-suit. In this context, the parties seek construction of certain terms in the three patents.
Claim construction is a legal question for the Court. Markman, 517 U.S. at 390; Cyborg Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). To construe the claim, a court may consider the claim, the specifications, and the prosecution file history. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc).
The Court begins its construction of a patent claim with the words of the claim itself, which "are generally given their ordinary and customary meaning . . . , the meaning that the term would have to a person of ordinary skill in the art in question . . . as of the [patent's] effective filing date." Phillips, 415 F.3d at 1312-13.
The Court looks to the patent specifications when construing "the meaning of a claim term as it is used by the inventor in the context of the entirety of his invention. . . ." Comark Comm. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998). Furthermore, in the Phillips case, the Federal Circuit emphasized the specification's critical importance: it "is always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of a disputed term." Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
The prosecution history, like the specifications, provides evidence of how the Patent Officer and the inventor understood the patent. Phillips, 415 F.3d at 1317 (citing Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1206 (Fed. Cir. 1992)). The prosecution history "represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes." Id. (citing Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1380-82 (Fed. Cir. 2002); Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1580 (Fed. Cir. 1996)). The prosecution history, however, is important because it can present evidence "whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id. (citing Vitronics, 90 F.3d at 1582-83; Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005)).
In Phillips, the Federal Circuit also addressed the use of dictionaries in claim construction, reiterating that "[i]n 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. . . . In such circumstances, general purpose dictionaries may be helpful. Phillips, 415 F.3d at 1314 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)). With these principles in mind, the Court turns to the terms at issue.
A. Claim 1 of the '775 Patent: "A Locking Member Having an Engagement Section, which Interferes with a Portion of the Operation Member and Thereby Locks the Lighting Operation of the Operation Member"
Claim 1 of the '308 Patent: "A locking member, which interferes with the operation member and thereby locks the lighting operation of the operation member" The dispute between the parties over the construction of both these disputed claim terms centers on whether or not "interferes" necessarily denotes direct physical contact.
Plaintiffs propose the following construction for Claim 1 of the '775 Patent:
A part of the locking member that hinders movement of a part of the operation member and thereby locks the lighter. [¶] The engagement section and the operation member do not have to come into direct contact with each other so long as the locking member hinders movement of the operation member by intersecting the path of the operation member.
They propose the following construction for Claim 1 of the '308 Patent:
A locking member that hinders movement of the operation and thereby locks the lighter. [¶] The locking member and the operation member do not have to come into direct contact with each other so long as the locking member hinders movement of the operation member by intersecting the path of the operation member.
Joint Claim Construction and Prehearing Statement ("Jt. Cl. Con. and Preh'g St.") at 3.
Plaintiffs claim their proposed construction is supported by the plain language of the claim and the specifications, and urge the Court to reject Defendants' proposed construction because, inter alia, it imports a limitation from a preferred embodiment, a "cardinal sin" in claim construction. Plaintiffs' Opening Brief ("Pls.' Op. Br.") at 2-3.
Defendants propose the Court construe Claim 1 of Patent '775 as follows:
The engagement section of the locking member is in direct contact with a portion of the operation member, and thereby locks the ...