United States District Court, C.D. California
ZIPSHADE INDUSTRIAL B.V.I. Corp., Plaintiff/Counter-Defendant,
LOWES HOME CENTERS, LLC; WHOLE SPACE INDUSTRIES; and DOES 1-50, inclusive, Defendants/Counter-Claimants.
CLAIM CONSTRUCTION ORDER
D. WRIGHT UNITED STATES DISTRICT JUDGE.
patent infringement case involves patent number 8, 245, 756
(“the '756 Patent”) entitled “Pull
Down, Push Up, Shade Apparatus” owned by
Plaintiff-Counter Defendant Zipshade International
Corporation (“Zipshade”). (First Am. Compl.
(“FAC”) ¶ 9, ECF No. 17.)
Defendant-Counterclaimant Wholespace Industries Ltd.
(“Wholespace”) manufactures Roman shades for
Defendant-Counterclaimant Lowe's Homecenter's Allen
Roth Brand which allegedly include an infringing apparatus.
(Id. ¶¶ 10, 13-19.)
'756 Patent allows for the raising or lowering of window
shades and Venetian blinds (collectively “window
coverings”) by hand. ('756 Patent, Col. 1:10- 13,
22-24, ECF No. 120-2.) Before Plaintiff's invention, such
window coverings were typically raised or lowered with the
assistance of a pull-cord. (Id. at Col. 1:10- 17.)
Designing out the pull-cord makes window coverings easier to
manipulate and eliminates any risk of strangulation for small
children. (Id. at Col. 1:17-20.) In addition to
eliminating the pull-cord, the invention also ensures that
window coverings are “automatically kept level.”
(Id. at Col. 1:26-27.)
9, 2016, the Court held a claim construction hearing
regarding the five most significant terms as identified by
the parties: rotary member, rotor, primary line/lifting cord,
secondary line, and coupled. (ECF No. 139.) This claim
construction order defines those terms.
might be expected for a common household item like a window
covering, the '756 Patent references a long list of prior
art dating back decades. The '756 Patent is a
continuation in part from patent number 6, 837, 294 (Appl.
No. 10/623, 776) (“the '294 Patent”), which
itself is a continuation in part from patent number 6, 991,
020 (Appl. No. 10/360, 305) (“the '020
case began when Plaintiff filed a complaint alleging a single
cause of action for infringement on July 29, 2014. (Compl.
¶¶ 13-19, ECF No. 1.) Plaintiff filed a first
amended complaint on August 15, 2014. (ECF No. 17.) On
November 10, 2014, Defendants each filed an answer and a
counterclaim requesting declaratory relief (noninfringement
and invalidity). (ECF Nos. 46-47, 50-51.) Plaintiff filed
answers to the counterclaims on December 12, 2014. (ECF Nos.
January 5, 2015, Defendant Wholespace filed a petition for
inter partes review of the '756 Patent (IPR 2015-00488).
(See Stip. to Stay 2, ECF No. 76.) On July 24, 2015,
the PTAB denied Defendant Wholespace's request for inter
partes review in its entirety citing Defendant
Wholespace's failure to: “identify clearly the
grounds and references on which [it] is relying to assert
that the challenged claims are not patentable; . . . to
specify sufficiently where the limitations of the challenged
claims are taught or suggested by the cited references; and .
. . to provide a sufficiently detailed explanation of the
significance of the citations to these references and the
Judkins declaration-as required under [various statutes and
federal rules].” Wholespace Indus. v. Zipshade
Indus. Corp., IPR2015-00488, at 18 (PTAB July 24, 2015).
In short, Defendant Wholespace's argumentation and use of
references was so poor that the PTAB believed institution of
inter partes review would be a waste of time. Id.
(“we are not persuaded that the record before us
demonstrates a reasonable likelihood that [Defendant
Wholespace] will prevail in establishing that at least one
challenged claim would have been obvious”).
29, 2015, Defendant Wholespace filed another petition for IPR
seeking to correct the problems highlighted by the PTAB in
its July 24, 2015 decision. (Status Report 2-3, ECF No. 82.)
On January 29, 2016, the PTAB again rejected Defendant
Wholespace's request for IPR. Wholespace Indus. v.
Zipshade Indus. Corp., IPR 2015-01632, at 10 (PTAB Jan
29, 2016). The PTAB concluded that Defendant Wholespace's
new petition was substantially the same as its previous
petition. Id. at 9.
February 16, 2016, Plaintiff and Defendants submitted their
Joint Claim Construction and Prehearing Statement. (ECF No.
98.) Plaintiff and Defendants agreed that the five most
significant (and likely case dispositive) terms are: rotary
member, rotor, primary line/lifting cord, secondary line, and
coupled. (Joint Claim Construction Prehearing Statement
(“JCCPS”) 50, ECF No. 98.) However, they agreed
on little else. Plaintiff proposed five additional terms for
construction and Defendants put forth countless other
terms/phrases for construction based on the sides'
initial exchange of terms. (Id. at 2-49.)
pointed out in the statement that Plaintiff changed many of
its proposed constructions and disclosed its expert witness
only four days before the Joint Claim Construction and
Prehearing Statement was due in violation of the Northern
District of California Local Patent Rules 4-1 and 4-2, which
require the exchange of constructions and citations to
supporting evidence at least twenty-one days prior to the
submission of the Joint Claim Construction and Prehearing
Statement. (See Id. at 53- 58; see also
N.D. Cal. Patent L.R. 4-1, 4-2). Based on this failure to
disclose, Defendants requested that the Court compel
Plaintiff to use its originally proffered terms and
constructions. (JCCPS 58.) Defendants also requested that the
Court exclude Plaintiff's expert witness from testifying.
(Id. at 59.) Plaintiff responded by arguing that its
redefinition of terms was merely a narrowing of its original
list necessary to comply with the Court's ten-term limit
and that there was still plenty of time for Defendants to
depose the witness before the claim construction hearing.
(Id. at 60.)
March 15, 2016, Defendants filed a “Motion to Strike
Plaintiff's Expert Witness and Expert Witness
Summary” from the Joint Claim Construction and
Prehearing Statement. (ECF No. 105.) Defendants put forth
largely the same arguments they made in the Joint Claim
Construction and Prehearing Statement. (Mot. 2-10, ECF No.
105.) Plaintiff also put forth largely the same arguments it
made in the Joint Claim Construction and Prehearing
Statement, adding that Northern District of California Local
Patent Rule 4-4 allows for the identification of a witness
in either the preliminary exchange or in the Joint
Claim Construction and Prehearing Statement. (Opp'n 5-8,
ECF No. 109.) The Magistrate Judge took the middle road:
granting in part and denying in part Defendants' motion.
(ECF No. 115.) She ordered Plaintiff to produce an expert
report and make its expert available for deposition and
allowed Defendants to identify a rebuttal witness.
15, 2016, the United States Patent and Trademark Office
(“PTO”) granted ex parte reexamination of the
'756 Patent in light of a “substantial new question
of patentability.” (RJN, Ex. A at 6, ECF No. 118.) On
January 17, 2017, the PTO issued a reexamination certificate
affirming the patentability of all twenty-four of the
patent's claims. (ECF No. 127-1.) No changes were made to
the claim language, specification, or figures. (Id.)
February 21, 2017, the Court issued an order setting the
remaining dates and deadlines for claim construction. (ECF
No. 130.) On March 30, 2017, Defendants submitted their claim
construction brief. (ECF No. 131.) In their brief, Defendants
continued to evince a lack of clarity as to exactly which
terms would be construed at the claim construction hearing.
(Defs. Br. 1-4, ECF No. 131.) Defendants also filed a
supplement to their claim construction brief requesting that
the Court exclude “the report” of Plaintiff's
expert witness, Dr. Pratt, and “any testimony”
relating to the report at the claim construction hearing.
(Defs. Suppl. Br. 1, ECF No. 132.)
Plaintiff and Defendants seemingly still at odds over exactly
which terms would be construed at the claim construction
hearing, the Court took action to impose some order on the
process. On April 7, 2017, the Court informed the parties
that it would construe the five most significant terms, which
the parties had already briefed and agreed were likely to be
case dispositive. (ECF No. 135.) On April 26, 2017, Plaintiff
filed its reply. (ECF No. 136.)
9, 2017, the Court received a demonstration of the technology
and held a claim construction hearing. (See ECF No.
139.) At the conclusion of that hearing, the Court took the
matter under submission. (Id.)
construction is an interpretive matter “exclusively
within the province of the court, ” that begins with an
analysis of the claim language itself. Markman v.
Westview Instruments, Inc., 517 U.S. 370, 372 (1996).
This process involves an analysis of how a person of ordinary
skill in the art (“POSITA”) would interpret the
relevant term(s) in light of both the claim in which the term
appears and of the entire patent. Phillips v. AWH
Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).
Accordingly, claims must be read in light of the
specification, which is “always highly relevant to the
claim construction analysis.” Id. at 1315
(internal quotations omitted). That being said, the general
rule is that limitations from the specification may not be
imported into the claims. Comark Commc'ns, Inc. v.
Harris Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998).
“[T]he line between construing terms and importing
limitations can be discerned with reasonable certainty and
predictability if the court's focus remains on
understanding how a person of ordinary skill in the art would
understand the claim terms.” Phillips, 415
F.3d at 1323.
“ordinary and customary meaning” of disputed
claim terms is at the heart of claim construction.
Phillips, 415 F.3d at 1312-13 (internal quotations
and citations omitted). However, in two situations, meanings
other than the “ordinary and customary” will
supersede: (1) when a patentee sets out a definition and acts
as his own lexicographer; or (2) when the patentee disavows
the full scope of a claim term either during prosecution or
in the specification. Thorner v. Sony Comput. Entm't
Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
Admissibility of the Plaintiff's Expert Witness's
and Defendants are sharply divided on the issue of whether
evidence offered by Plaintiff's expert, Dr. Pratt, should
be admitted. Defendants put forth two arguments for excluding
Dr. Pratt's report and testimony. (Defs. Suppl. Br. 2-5.)
Dr. Pratt Does Not Possess Sufficient Experience in the
Window Coverings Industry to be an Expert or a
Defendants argue that Plaintiff's expert does not have
sufficient experience in the window coverings industry to
qualify either as an expert or a POSITA. (Id. at 1,
3-4.) In support of this position, Defendants point out that
Dr. Pratt admitted during his deposition that he has no
window covering design experience and that he would not be
considered a POSITA in that industry. (Id.) Based on
these statements and Dr. Pratt's background, Defendants
argue that this case is substantially similar to Sport
Dimension, Inc. v. Coleman Co., 820 F.3d 1316 (Fed. Cir.
2016) in which the Federal Circuit affirmed a Central
District of California court's decision to exclude an
expert witness. (Defs. Br. 24.) In Sport Dimension,
the issue was whether an industrial design consultant with
four decades of experience could provide expert testimony
about the design of personal floatation devices, i.e.
lifejackets. 820 F.3d at 1323. In finding that the district
court did not abuse its discretion in excluding the expert,
the Federal Circuit noted that the expert disclaimed any
expertise in the field of personal floatation devices, that
his opinions were based on his “imagination”
rather than any actual experience, and that he never designed
a personal floatation device as part of his employment.
response, Plaintiff puts forth a number of cases indicating
that experts need only meet minimal standards to be admitted
under Federal Rule of Evidence 702. (Reply 11, ECF No. 136.)
For instance, in Icon-IP Pty Ltd. v. Specialized Bicycle
Components, Inc., the court emphasized that the Ninth
Circuit “contemplates a broad conception of
expert qualifications” and that an expert “need
not be officially credentialed in the specific [subject]
matter [area] under dispute” to be admitted. 87
F.Supp.3d 928, 938 (2015) (quoting Hangarter v. Provident
Life & Accident Ins. Co., 373 F.3d 998, 1015 (9th
Cir. 2004) (emphasis in original) and Massok v. Keller
Indus., Inc., 147 Fed.Appx. 651, 656 (9th Cir. 2005));
see also United States v. Garcia, 7 F.3d 885, 889-90
(9th Cir. 1993) (noting this “lack of
particularized expertise goes to the weight accorded
[to] . . . testimony, not to the admissibility of [one's]
opinion as an expert” (emphasis added)). The other
cases Plaintiff cites confirm this broad conception. See
e.g., People v. Kinder Morgan Energy Partners,
L.P., 159 F.Supp.3d 1182, 1190 (S.D. Cal.
thoroughly reviewing the cases presented by both sides, the
Court has determined that the report and testimony of
Plaintiff's expert should not be excluded on relevance
grounds. This case is less about the specifics of window
coverings and more about the function of a mechanism. Dr.
Pratt possesses sufficient general expertise in mechanisms
and related education to provide valuable insight on this
topic. (See Pratt Report, Ex. 1 at 23 (indicating an
explicit expertise in “mechanisms, ” and masters
degree in mechanical engineering), 24 (indicating work
experience developing mechanisms), ECF No. 120-3); see
also Fed. R. Evid. 702 (courts should take into account
whether an expert's “specialized knowledge will
help [them] understand the evidence or to determine a fact in
issue.”). Dr. Pratt is a POSITA with regard to
finding, the Court notes that the present case is
distinguishable from Sport Dimension. While not
every industrial designer may have sufficient knowledge of
personal floatation devices to opine on that subject, every
engineer in possession of graduate degree in mechanical
engineering should be able to understand the interworkings of
a pulley system. Indeed, Plaintiff's expert presents, as
part of his report, a sample problem from a third-year
engineering textbook that is designed to test engineering
students' knowledge of pulley systems. (Pratt Report 16.)
Court also notes that its decision here is consistent with
its previous decision in Farstone Techonology, Inc. v.
Apple Inc., No. 8:13-CV-1537-ODW, 2015 WL 857706, at *4
(C.D. Cal. Feb. 27, 2015). In Farstone Technology,
the issue was whether an expert with a doctorate degree in
electrical engineering and teaching experience in software
and hardware design was sufficiently qualified to testify at
a claim construction on the subject of backup/recovery
systems even though he lacked specific experience
“design[ing] or implement[ing] backup/recovery
systems.” 2015 WL 857706, at *4. The Court found that
he was, noting that his background was sufficiently related
to the subject of backup/recovery systems. Id.
on the related nature of Dr. Pratt's experience, past
cases decided by this Court, and the Ninth Circuit's
general consensus that “[t]he threshold for [expert]
qualification is low for purposes of admissibility, ”
the Court will not exclude Dr. Pratt's report or
testimony on relevance grounds. In re ConAgra Foods,
Inc., 302 F.R.D. 537, 550-51 (C.D. Cal. 2014) (quoting
PixArt Imaging, Inc. v. Avago Tech. Gen. IP (Singapore)
Pte. Ltd., No. C 10-00544 JW, 2011 WL 5417090, at *4
(N.D. Cal. Oct. 27, 2011)).
Dr. Pratt Failed to Read the Patent Owner's Statement and
Prosecution History of the Parent Patents Before Authoring
second argument is that Dr. Pratt's report should be
excluded because it is based on an incomplete review of the
record. (Defs. Br. 23; Defs. Suppl. Br. 5.) Specifically,
Defendants argue that Dr. Pratt did not review “the
patent owner's statement of IPR2015-00488 and did not
review arguments presented during prosecution of U.S. Patent
Application Nos. 10/623, 776 and 10/360, 305.” (Defs.
does not deny that Dr. Pratt failed to review the patent
owner's statement for IPR2015-00488 and the relevant
parent patent prosecution histories in preparing his report.
(Reply 14.) However, Plaintiff argues that Dr. Pratt did
review the majority of relevant materials (the '756
Patent, the prosecution history of the '756 Patent, and
the Joint Claim Construction and Prehearing Statement) and
that Dr. Pratt's failure to review the patent owner's
statement and the parent patent prosecution histories is
inconsequential as these materials ultimately have no effect
on any of the constructions. (Id.)
Rule of Evidence 702 instructs courts to consider expert
testimony where (1) the testimony is based upon sufficient
facts or data; (2) the testimony is the product of reliable
principles and methods; and (3) the expert has reliably
applied the principles and methods to the facts of the case.
The Court finds that while Dr. Pratt may not have reviewed
certain relevant evidence in preparing his report, this
oversight does not warrant the draconian measure of
exclusion. Primiano v. Cook, 598 F.3d 558, 564 (9th
Cir. 2010) (“[s]haky but admissible evidence is to be
attacked by cross examination, contrary evidence, and
attention to the burden of proof, not exclusion.”). Dr.
Pratt's opinions still have some value despite his
failure to review the entire record. As the Court is now
acutely aware of the specific shortcomings of Dr. Pratt's
report, it is more than capable of accounting for those
shortcomings and will reduce the weight given to Dr.
Pratt's report where appropriate.
Rotary Member (34 & 35 in figure)
A pulley within the counterbalance mechanism coupled
in some way to a spring and having a unique axis of
rotation with one or more receiving surfaces. (Pl.
Opening Br. 4, ECF No. 120.)
A single pulley such that a double pulley is two
rotary members and is not a single rotary member.
(Defs. Br. 9.)
of Disagreement Between the Parties:
and Defendants disagree over whether a “rotary
member” may have more than one receiving surface.
argument is simple: neither the claim nor the specification
indicates that rotary members must possess a specific number
of receiving surfaces. (Pl. Opening Br. 4.) Plaintiff argues
that the defining feature of a rotary member is not the
number of receiving surfaces it possesses but rather its
unique axis of rotation. (Id. 4- 6.) Plaintiff's
expert echoes this assessment. (Pratt Report 9.)
sole argument is based on a
disclaimer/disavowal Plaintiff allegedly made in the patent
owner's statement for IPR2015-00488. (Defs. Br. 6-7.)
Defendants contend that Plaintiff disclaimed/disavowed any
multi-receiving surface structure from being a rotary member.
(Id. at 7.) Specifically, Defendants point to