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Julius Zorn, Inc. v. MEDI Manufacturing, Inc.

United States District Court, S.D. California

March 13, 2017

JULIUS ZORN, INC., Plaintiff,
v.
MEDI MANUFACTURING, INC. Defendant.

          CLAIM CONSTRUCTION ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NO. 7, 329, 232 B2

          Hon. Gonzalo P. Curiel United States District Judge

         The parties, Julius Zorn, Inc. (“Juzo”) and CircAid Medical Products, Inc. (“CircAid”), [1] to this patent infringement seek construction of ten claim terms found in U.S. Patent No. 7, 329, 232 B2, a therapeutic compression device. The claim construction hearing was held on January 5, 2017. The parties have submitted a Joint Claim Construction Chart, Dkt. No. 31, and a Joint Claim Construction Worksheet, Dkt. No. 32. The parties' competing claim constructions are detailed in the claim construction briefs submitted by Juzo, Dkt. No. 34, and CircAid, Dkt. No. 33. Both parties filed responses to one another's proposed claim constructions. Dkt. Nos. 36, 37. Having considered the moving papers and oral argument, the Court construes the terms in accordance with the principles set forth by the Federal Circuit on claim construction and orders as follows.

         BACKGROUND

         Defendant CircAid holds U.S. Patent No. 7, 329, 232 B2 (“the ‘232 patent”) entitled “Limb Encircling Therapeutic Compression Device.” Exhibit A, Dkt. No. 35-1 at 15. The Limb Encircling Therapeutic Compression Device is a “garment” with “inner and outer surfaces” with a “central region of substantially inelastic material.” The ‘232 Patent at 3:43-46. The garment contains a “plurality of bands” that extend “from the opposite lateral regions” of the garment so as to “encircle the limb.” Id. at 3:47-52. To use the garment, the user “encircles the limb, the inner surface of the garment placed against the limb, and draws the first lateral region toward the second longitudinal edge to stretch the central region.” Id. at 3:52-56. The effect of this action is to “provide a tension in the garment that will compress the limb.” Id. at 3:55-56. Plaintiff, bringing this suit protectively, argues that its intellectual property does not infringe on CircAid's and that it is entitled to a declaratory judgment of non-infringement. Dkt. No. 1.

         LEGAL STANDARD

         Claim construction is a matter of law to be determined by the court. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 838 (2015); Markman v. Westview Instr., Inc., 517 U.S. 370, 372 (1996). The purpose of claim construction is for the court to “determin[e] the meaning and scope of the patent claims asserted to be infringed.” O2 Micro Intern. Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (citing Markman, 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc)). “It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). As such, claims are to be construed in a manner that “stays true to the claim language and most naturally aligns with the patent's description of the invention.” Id. at 1316.

         To construe disputed terms, the court first looks to the claims themselves. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). Generally, claim language is given its “ordinary and customary meaning, ” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1312-13. In cases where the “ordinary and customary meaning” is clear, claim construction involves “little more than the application of the widely accepted meaning of commonly understood words.” Id. at 1314. “The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. In cases where it is not immediately apparent what a person of ordinary skill in the art would understand a claim to mean, the court looks to other sources to decipher the correct meaning. Id. at 1314. Those sources include intrinsic and extrinsic evidence “available to the public that show what a person of skill in the art would have understood disputed claim language to mean.” Id. “Importantly, the 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.” Id. at 1313.

         When such clarity is required, a court begins by examining the intrinsic record, consisting of the language of the claims, the patent specification and, if in evidence, the prosecution history of the challenged patent. Id. at 1314; see also Vederi, LLC v. Google, Inc., 774 F.3d 1376, 1382 (Fed. Cir. 2014). “The appropriate starting point . . . is always with the language of the asserted claim itself.” Comark Comms., Inc. v. Harris Corp., 156 F.3d 1182, 1186 (9th Cir. 1998). The context in which a disputed term appears often provides substantial guidance as to the meaning of the term. See Philips, 415 F.3d at 1313-14. A disputed term must be construed “consistently with its appearance in other places in the same claim or in other claims of the same patent.” Rexnord Corp. v. Latiram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Vederi, 774 F.3d at 1383.

         As for other intrinsic evidence, the specification “is always highly relevant to the claim construction analysis” and “usually dispositive.” Philips, 415 F.3d at 1315. In fact, it has been observed that “[a]part from the claim language itself, the specification is the single best guide to the meaning of a claim term.” Vederi, 774 F.3d at 1382; see also Philips, 415 F.3d at 1315. “[A] claim construction that excludes [a] preferred embodiment [described in the specification] is rarely, if ever, correct and would require highly persuasive evidentiary support.” Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010). Furthermore, the “written description part of the specification” should not be read to “delimit the right to exclude [as] [t]hat is the function and purpose of claims.” Markman, 52 F.3d at 980. Stated differently, a “claim construction must not import limitations from the specification into the claims.” Douglas Dynamics, LLC v. Buyers Prods. Co., 717 F.3d 1336, 1342 (Fed. Cir. 2013). It is, therefore, “improper to read limitations from a preferred embodiment described in the specification-even if it is the only embodiment-into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1327 (Fed. Cir. 2012) (citations omitted).

         “A patentee is, ” however, “free to be his own lexicographer.” Markman, 52 F.3d at 980. Where the inventor gives a term a special meaning, “the inventor's lexicography governs.” Philips, 415 F.3d at 1316. Similarly, where the inventor specifically disclaims a certain scope in the specification, that disclaimer is dispositive. Id.

         Generally speaking, “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term.” See Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). Where that is the case, “it is improper to rely on the extrinsic evidence” as “[t]he claims, specification, and file history, rather than extrinsic evidence, constitute the public record of the patentee's claim, a record on which the public is entitled to rely.” Id. However, to the extent “the intrinsic record is ambiguous, and when necessary, ” a court “may 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.” Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 711 F.3d 1348, 1360 (Fed. Cir. 2013). Extrinsic evidence, however, is “less significant than the intrinsic record” and “less reliable than the patent and its prosecution history in determining how to read claim terms.” Phillips, 415 F.3d at 1317-18 (internal quotations and citation omitted).

         Finally, “terms do not need to be construed [where] they are neither unfamiliar to the jury, confusing to the jury, nor affected by the specification or prosecution history.” See Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 528 F.Supp.2d 967, 976 (N.D. Cal. 2007) (citing United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy.”)). But where the parties dispute the scope of a claim term, it is the court's duty to resolve the dispute. O2 Micro, 521 F.3d at 1362.

         DISCUSSION

         The disputed terms are as follows: (1) “substantially inelastic material” (Claim 1); (2) “flat central region” (Claim 1); (3) “lateral regions disposed on opposite sides of the central region” (Claim 1(a)); (4) “a plurality of bands extending from lateral margins disposed at opposite edges of said opposite lateral regions wherein the bands extending from the opposite lateral regions are juxtaposed to pass between one another” (Claim 1(b)); (5) “proximal and distal edges” (Claim 1(b)(ii)); (6)“one or both edges comprise a curve or indentation” (Claim 1(b)(ii)); (7) “the central and lateral regions are biased into a three-dimensional curvature (Claim 2); (8) substantially perpendicular” (Claims 3, 6); (9) “said angle is independently selected for each band” (Claim 5); (10) “each of said bands”/ “said opposing bands”/ “said plurality of bands” (Claims 1(b), 3, 4, 5). The Court will address each in turn.

         1. “substantially inelastic material”

         Juzo proposes that the claim be construed as “indefinite” or, in the alternative, that it be construed to mean “material that has essentially zero stretch.” Dkt. No. 31 at 2. Specifically, Juzo argues that “[a]ny construction that allows a percentage of stretch other than essentially zero is contrary to the plain meaning and is unsupported by the intrinsic evidence, while any construction (or non-construction) that leaves the amount of stretch undefined and uncertain lacks the requisite clarity of claim scope and renders the claims invalid as indefinite.” Dkt. No. 34 at 7. CircAid, by contrast, contends that no construction is necessary as the term should be given its “plain meaning.” Id. Because the parties dispute the scope of the claim term, the Court must resolve the dispute as a matter of law. See O2 Micro, 521 F.3d at 1361.

         The central disagreement between the parties concerns whether or not the claim “substantially inelastic material” can include material with some limited stretch or elasticity. For the reasons stated below, the Court concludes that the plain and ordinary meaning of “substantially inelastic material, ” which is the meaning the term would have to a person skilled in the art after reviewing the intrinsic record, is broad enough to include fabric with limited stretch or elasticity and is not, otherwise, indefinite. See 02 Micro, 521 F.3d at 1360 (“Words of a claim are generally given their ordinary and customary meaning, which is the meaning a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention.”)

         The term “substantially inelastic material” appears in Claim 1 as follows: “a flat central region having inner and outer surfaces, said central region comprising substantially inelastic material.” The ‘232 Patent at 16:9-10. Claim 1 does not define the term “substantially inelastic material.” The Court also notes that nothing in the claim language requires that substantially inelastic material be fabric with essentially zero stretch or otherwise suggests that substantially inelastic material must have only negligible stretch characteristics. See generally the ‘232 Patent at 16:6-28. The Court further concludes that the word “substantially” is a meaningful modifier that allows for deviation from the word it seeks to modify. Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361, 1368-69 (Fed. Cir. 2004). Here, “substantially” modifies “inelastic.” As such, the plain and ordinary meaning of the phrase “substantially inelastic material” is broad enough to include fabrics with some, limited, elasticity or stretch. See Philips, 415 F.3d at 1314 (where the ordinary meaning as understood by a person of skill in the art is “readily apparent even to lay judges, ” claim construction “involves little more than the application of the widely accepted meaning of commonly understood words.”).

         Juzo nonetheless argues that its proposed construction is the only one that is faithful to the claim language and supported by the intrinsic record because the specification “clearly states that ‘substantially inelastic material' does not stretch, and that even slightly elastic materials are excluded from its scope.” Dkt. No. 34 at 7. The Court disagrees. Notwithstanding Juzo's protestations to the contrary, the specification's description of the preferred embodiments states quite the opposite. In fact, the specification specifically provides that “[n]eoprene fabric is particularly advantageous in that stretch characteristics permit it to shape, mold, and conform to the body, while applying a near inelastic compression to the body part.” See the ‘232 Patent at 9:21-42. The specification also refers to Velcro 3610 and Velcro 3800 as being preferred fabrics and describes both as being “flexible” and the latter, specifically, as having “limited stretch.” See the ‘232 Patent at 6:49-56 (“In one mode of fabrication, the therapeutic compression garments shown in FIG. 1, FIG. 3, and FIG. 5 are made in one piece from a flexible, foldable hook and loop type fabric (e.g. Velcro ™) having an outer loop surface which is preferably a light weight loop fabric of the type designated Velcro 3610 or Velcro 3800, the former being substantially inelastic and the latter having a limited stretch at least in the vertical or longitudinal direction.”)

         In other words, the specification unmistakably contemplates the use of fabric with some elasticity or stretch for use in the preferred embodiments. See Id. at 6:56-59 (“Other suitable materials range from inelastic to those with some elasticity such as neoprene that has a small amount of elasticity especially in the longitudinal but also circumferential axis.”) If the Court were to construe “substantially inelastic material” as “material that has essentially zero stretch, ” as Juzo proposes, then many of the preferred embodiments - described as having some stretch or elasticity - would be read out of the patent. Such a construction, however, is highly disfavored. “[A] claim construction that excludes [a] preferred embodiment [described in the specification] is rarely, if ever, correct and would require highly persuasive evidentiary support.” See Adams Respiratory, 616 F.3d at 1290.

         Juzo has not offered the highly persuasive evidentiary support needed to convince the Court that the correct claim construction reads out the preferred embodiments and warrants a departure from the plain and ordinary meaning of the term. In support of its position, Juzo contends that the above-mentioned portions of the specification should be disregarded because CircAid, despite discussing materials with semi-elastic, limited stretch, and elastic properties, [2] only claimed “substantially inelastic material.” See Dkt. No. 34 at 8. But this argument hinges on a predicate that the Court rejects. Juzo avers that the term “substantially inelastic material” cannot include material with limited stretch or greater because the patent only provides one example of material that is “substantially inelastic, ” and that material is Velcro 3610. See Transcript of Oral Argument, Dkt. No. 43 at 4-5. Thus, because Velcro 3610 has “no material stretch”[3]Juzo argues that the claim term must be defined as having the stretch properties of Velcro 3610. Id.

         The Court, however, is not persuaded that the patent has only provided one example of “substantially inelastic material.” Just because the specification describes one type of fabric (namely, Velcro 3610) as “substantially inelastic” does not mean that every other material described in the preferred embodiments is not “substantially inelastic.” In fact, such a reading is highly circumspect in light of the specification's identification of neoprene and Velcro 3800, two fabrics described by the patent as having more stretch that Velcro 3610, as preferred fabrics. That, it would seem to the Court, is an equally clear indication that the patentee intended materials with limited stretch or some elasticity to be covered by the claim's scope.

         That being said, in drawing this conclusion, the Court is not blind to the fact that the specification's description of preferred materials sends mixed signals. On the one hand, it explains that suitable fabrics are those than range from “inelastic to those with some elasticity such as neoprene.” The ‘232 Patent at 6:56-59. Yet on the other hand, the specification also describes various preferred embodiments as having (1) “a central region 10 made of a semi-elastic material such as neoprene and essentially inelastic band”; (2) as being “made from an elastic fabric or an inelastic Velcro-loop type fabric or combination of both”; or (3) as being “made from an elastic Neoprene fabric or an inelastic Velcro-loop type fabric or combination of both”). Id. at 10:61-65, 10:5-7, 10:18-20.

         At most, however, Juzo's citation to these and other passages demonstrates that the specification is ambiguous as to the stretch characteristics encompassed by “substantially inelastic material, ” not that the specification is clear-as-day that any material with limited stretch is not included in the claim scope. Ambiguous language in the specification, however, is not sufficient to support a disavowal. See Poly-America, L.P. v. API Industries, Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) (observing that the “standard for disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention includes or does not include a particular feature.”). As such, because Juzo's argument does not provide clear and unequivocal evidence that the scope of the term “substantially inelastic material” excludes fabric with limited stretch or greater, the Court rejects Juzo's proposed construction, which unnecessarily limits the plain and ordinary meaning of the term. See Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1357 (Fed. Cir. 2004) (“a patentee may claim an invention broadly and expect enforcement of the full scope of that language absent a clear disavowal or contrary definition in the specification.”).

         The Court is also not persuaded by Juzo's argument that this term is indefinite under 35 U.S.C. § 112.[4] As Juzo points out, a claim is indefinite if it “fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Dkt. No. 34 at 16 (citing Nautilus, Inc. v. Biosig Instruments, 134 S.Ct. 2120, 2124 (2014)) (emphasis omitted). “Reasonable certainty, ” however, does not require that a claim provide “absolute or mathematical precision.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370-71 (Fed. Cir. 2014). All that is required is that the claim language allow a person of ordinary skill to discern from the claims and specification what the bounds of the claim are to a reasonable certainty. Id. at 1382. Stated differently, there must not be a “zone of uncertainty” regarding claim scope. Nautilus, 134 S.Ct. at 2129.

         Juzo contends that the plain and ordinary meaning of “substantially inelastic material” renders the term indefinite because its leaves a “zone of uncertainty” as to the degree of elasticity that is covered or not covered by the claim. See Dkt. No. 34 at 9. The Court disagrees. The Federal Circuit has oft-observed that the term “substantial” is a “meaningful modifier implying ‘approximate, ' rather than ‘perfect, '” and that such modifiers are “descriptive terms commonly used in patent claims to avoid a strict numerical boundary to the specified parameter.” Liquid Dynamics, Inc., 355 F.3d at 1368. The Court, therefore, rejects Juzo's contention that just because the term “substantially inelastic” does not make clear what numerical degrees of elasticity are covered, that the term is somehow indefinite. See id.; see also Cordis Corp. v. Medtronic Ave., Inc., 339 F.3d 1352, 1361 (Fed. Cir. 2003) (concluding that “substantially uniform thickness” should be interpreted as “of largely or approximately uniform thickness” unless other intrinsic evidence imposes a “clear and unmistakable disclaimer” requiring a narrowing of the language); Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003) (finding that nothing in the record clearly limited the scope of “generally parallel” to the point that the adverb should be read to not broaden the meaning of parallel). Accordingly, the Court concludes that the term “substantially inelastic” is not indefinite or, at the very least, that Juzo has not carried its burden to demonstrate that the term is invalid for indefiniteness. See Microsoft Corp. v. I4I Ltd. P'ship, 564 U.S. 91, 97 (2011) (the party asserting invalidity must show it by clear and convincing evidence).

         In sum, the Court agrees with CircAid that Juzo's proposed construction narrows the plain and ordinary meaning, as understood by a person skilled in the art, of the term “substantially inelastic material.” The term “substantially inelastic material” covers material with some stretch or elasticity, as the term “substantially” is a well-understood modifier that allows for some deviation from the word it seeks to modify. See Liquid Dynamics, 355 F.3d at 1368-69. Accordingly, the Court construes “substantially inelastic material” as “largely but not wholly inelastic material.” See York Products, Inc. v. Central Tractor Farm & Family Center, 99 F.3d 1568, 1573 (Fed. Cir. 1996) (recognizing that a plain and ordinary meaning of “substantially” includes “largely but not wholly that which is specified”).[5]

         2. “flat central region”

         Juzo contends that this term is indefinite or, in the alternative, that it should be construed as “the region including the entire central axis of the garment running from the top to the bottom of the garment is level or even without raised areas or indentations when the garment is laid out.” Dkt. No. 34 at 9. By contrast, CircAid argues that the term “flat” should be construed as “non-tubular” and that “central region” does not require further construction. Dkt. No. 33 at 9. Because the parties dispute the scope of the claim term, the Court must resolve the disagreement as a matter of law. See O2 Micro, 521 F.3d at 1361.

         Here, the crux of the parties' dispute concerns whether or not the intrinsic record provides sufficient evidence to justify departing from the plain and ordinary meaning of “flat” and adopting CircAid's proposed construction of “non-tubular.” For the reasons that follow, the Court finds that the term “flat” does not mean “non-tubular, ” a term of substantially greater scope than the plain and ordinary meaning of the term. The Court also rejects Juzo's construction of “flat” as overly-restrictive and, instead, concludes that the term “flat” bears its plain and ordinary meaning, as understood by a person of ordinary skill in the art in light of the claims and specifications. See 02 Micro, 521 F.3d at 1360 (“Words of a claim are generally given their ordinary and customary meaning, which is the meaning a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention.”)

         The Court begins, as it must, with the claim language. Claim 1 states that the present invention is a garment “comprising: a flat central region having inner and outer surfaces, said central region comprising substantially inelastic material, and lateral regions disposed on opposite sides of the central region.” The ‘232 patent at 16:8-11 (emphasis added). There is nothing in the language of claim 1 that broadens the meaning of “flat” to mean “non-tubular.” See the ‘232 Patent at 16:6-27.

         CircAid argues, however, that its proposed construction is nonetheless supported by the claim language because “garments that are contoured to fit the body part are not merely disclosed, but are the preferred embodiment.” Dkt. No. 33 at 10. Indeed, the specification does repeatedly explain that the garment is designed to conform to the shapes of body parts. See the ‘232 Patent at 13:55-14:2 (“The therapeutic compression garment of FIG.10 consists of a central region . . . that accommodates the limb shape . . . Darts may be cut into a single piece of fabric to create a central region that accommodates the limb shape. Darts or seams are sewn into the central region enable the garment to conform to the bent shape of an arm at the elbow, the leg at the knee, or another jointed body part.”) (emphasis added); see also Id. at 14:2-13 (“Also, by varying the width of the central region, the garment would be formed to taper, or otherwise vary in circumference, in order to conform to the shape of the body part. . . . The darts are closed by sewing the curved edges together, creating a bend or limb-accommodating contour in the finished garment so that when the lateral regions are wrapped around and towards each other, the central and lateral regions are biased into a three-dimensional curvature in order to fit the body part.”) (emphasis added). Thus, because garments that can accommodate limb shapes are preferred embodiments, see the ‘232 at 3:57-59, CircAid argues that the Court should adopt its proposed construction because Juzo's proposed construction reads out those preferred embodiments.

         As an initial matter, the Court agrees with CircAid that Juzo's proposed construction essentially reads out a preferred embodiment. “[A] claim construction that excludes [a] preferred embodiment [described in the specification] is rarely, if ever, correct and would require highly persuasive evidentiary support.” See Adams Respiratory, 616 F.3d at 1290. Juzo argues that its proposed construction comports with the generally understood meaning of “flat.” See Dkt. No. 11 at 34. Juzo seeks to construe flat as “level or even without raised areas or indentations when the garment is laid out.” This additional language, however, is unnecessarily limiting.

         For one, the Court finds no support for the addition of “without raised areas or indentations” in the claim language. The Court further notes that the addition of the word “indentation” would actually add confusion and ambiguity to the claim terms because the word “indentation” already appears in claim 1 in the context of the present invention's plurality of bands. See the ‘232 patent at 16:19-20 (“wherein one or both edges comprise a curve of indentation.”) Two, there is no support for this additional language in the specification. Juzo suggests that its definition is supported by FIG.8, which depicts “a level or even sheet of material when the garment is laid out” with “no raised portions, curved sections, indentions or the like." See Dkt. No. 34 at 12. Yet because it is not proper to read limitations from the preferred embodiments into the claim terms, the Court rejects Juzo's attempt to do so here. See Douglas Dynamics, 111 F.3d at 1342 ("a claim construction must not import limitations from the specification in the claims.")

         While the Court agrees with CircAid that the specification cuts against Juzo's proposed construction, it nonetheless rejects CircAid's argument that there is sufficient intrinsic evidence to support construing "flat" as "non-tubular." The specification language that CircAid relies upon, see supra, establishes that the present invention includes garments with some three-dimensional shape, but it does not rise to the level of a disclaimer of the plain and ordinary meaning of "flat" and an embrace of a word that nearly means the opposite, "non-tubular." Put simply, the specification reveals no intent to give the term "flat" a special meaning. See Philips, 415 F.3d at 1316 (inventor's lexicography governs where term given special meaning).

         The Court is also unconvinced that the prosecution history provides the support needed to provide "flat" with any special meaning. CircAid argues that the prosecution history lends support to its construction of "flat" as "non-tubular" because the term "flat" was added to the claims in order to distinguish the present invention from prior art devices that were tubular. Dkt. No. 33 at 9. CircAid's argument places a particular emphasis on the Fowler garment, U.S. Patent No. 3, 856, 008, which was a "tubular garment" that had a central region that was a "wall of a long hollow cylinder, " which by definition is "arcuate or curved." Id.

(Image Omitted)

         The Fowler garment, U.S. Patent No. 3, 856, 008, Dkt. No. 33-4 at 2. Accordingly, CircAid contends, because “it is clear from the patent that ‘flat' was added to distinguish the invention from tubular prior art . . . ‘flat' should be construed as ‘non-tubular.'” Dkt. No. 33 at 11.

         However, that the patent writer added the term “flat” in order to differentiate the present invention from prior art, which was tubular, does not mean that the patentee surrendered only tubular garments when claiming the present invention. “[T]here is no principle of patent law that the scope of a surrender of subject matter during prosecution is limited to what is absolutely necessary to avoid a prior art reference that was the basis for an examiner's rejection. To the contrary, it frequently happens that patentees surrender more through amendment than may have been absolutely necessary to avoid particular prior art.” Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1361 (Fed. Cir. 2005).

         Here, by describing the present invention as a garment with a “flat central region” and providing for three-dimensionality in order to fit the body part, the patentee limited the claim beyond what was necessary in order to overcome prior art. CircAid cannot, therefore, now argue that a broader construction was contemplated in light of the prosecution history. See Id. at 1362; see also Int'l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1371 (Fed. Cir. 2004) (“The district court was not free to attribute new meaning to the term or to excuse the patentee from the consequences of its own word choice.”); Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1114-15 (Fed. Cir. 2002) (rejecting patentee's argument that “bonus points” should be read broadly based on efforts to distinguish the invention from prior art). Accordingly, the Court concludes that the patentee surrendered any garment that does not have a “flat central region” as that term would have been understood by a person of ordinary skill in the art, after consideration of the claim language and specification.

         Ultimately, the plain and ordinary meaning of a term must be understood through the lens of a person with ordinary skill in the art upon review of the intrinsic record. See O2 Micro, 521 F.3d at 1360. Thus, the Court must construe the ordinary meaning of flat in light of, not in spite of, the specification's clear intent to include garments that are contoured to accommodate a limb. Accordingly, the Court concludes that the plain and ordinary meaning of “flat” must be broad enough to encompass a small degree of three-dimensionality. Thus, the Court construes “flat” as “level when laid out, allowing for three-dimensionality in order to fit the body part.”

         2a. “central region”

         Juzo further contends that the Court needs to construe the term “central region” in addition to the term “flat.” Juzo argues that the term needs construction because the boundaries of the central region inform what region must be “flat” and to what region the “plurality of bands” must fasten.[6] As such, Juzo proposes construing “central region” to mean “the entire central axis of the garment running from the top to the bottom of the garment.” See Dkt. No. 33 at 13-14. CircAid contends that the term need not be construed because a juror would understand its plain and ordinary meaning. See Dkt. No. 36 at 6.

         It is worth reiterating that “the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question.” Phillips, 415 F.3d at 1313. Moreover, “the 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.” Id. Here, the Court agrees with Juzo that the meaning of “central region, ” when read in light of the claim terms and the specification, must include the entire longitudinal axis of the garment.

         The ‘232 patent describes the invention as having only three regions, a single “central region” and two “lateral regions.” See the ‘232 patent at 16:5-65. Claim 1 describes the garment as having a “flat central region . . . and lateral regions disposed on opposite sides of the central region.” The ‘232 patent at 16:8-11. Claim 2 describes the garment as “claim 1 wherein the central and lateral regions are biased into a three-dimensional curvature.” Id. at 16:28-30. The claim language makes no reference to any other region. Likewise, the specification and all of the preferred embodiments do not speak of any other region. As such, the Court finds that a person of ordinary skill in the art would understand the term “central region” to be mutually exclusive of the “lateral regions” and to include the entire central axis of the garment. If the central region did not run the longitudinal length of the garment, then there would be additional regions resting above and below the “central region” that are not encompassed by the “lateral regions” and that are not described anywhere else in the patent. Accordingly, the Court concludes that a person of ordinary skill in the art would understand the plain and ordinary meaning of “central region, ” when read in light of the claims and specification, to include the region comprising the entire longitudinal axis. As such the Court construes “central region” as “the central region, including the entire longitudinal axis of the garment.”

         In sum, the Court construes “a flat central region” as “a central region, including the entire longitudinal axis of the garment, that is level when laid out, allowing for ...


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