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Shoes by Firebug LLC v. Stride Rite Children's Group

United States District Court, E.D. Texas, Sherman Division

December 15, 2017




         Before the Court are Plaintiff Shoes by Firebug LLC's (“Firebug”) Opening Claim Construction Brief (Dkt. #40), Defendant Stride Rite Children's Group, LLC's (“Stride Rite”) Responsive Claim Construction Brief (Dkt. #46), and Plaintiff's Reply Claim Construction Brief (Dkt. #47). Also before the Court are the parties' September 26, 2017 P.R. 4-3 Joint Claim Construction and Prehearing Statement (Dkt. #32) and the parties' November 21, 2017 P.R. 4-5(d) Joint Claim Construction Chart (Dkt. #48). Further before the Court is Defendant's Supplemental Brief in Support of its Responsive Claim Construction Brief (Dkt. #55). The Court held a claim construction hearing on December 1, 2017, to determine the proper construction of the disputed claim terms in United States Patents Nos. 8, 992, 038 (“the '038 Patent”) and 9, 301, 574 (“the '574 Patent”).

         The Court issues this Claim Construction Memorandum Opinion and Order and hereby incorporates-by-reference the claim construction hearing and transcript as well as the demonstrative slides presented by the parties during the hearing. For the following reasons, the Court provides the constructions set forth below.


         Plaintiff brings suit alleging infringement of United States Patents Nos. 8, 992, 038 and 9, 301, 574. The '038 Patent, issued on March 31, 2015, and the '574 Patent, issued on April 5, 2016, both bear an earliest priority date of December 28, 2012. The '574 Patent is a continuation of the '038 Patent, and both patents-in-suit are titled “Internally Illuminated Light Diffusing Footwear.” The Abstract of the '038 Patent, for example, states:

An illumination system is housed in a footwear, the footwear including a sole and an upper. A structure and a liner form inner layers connected to the upper. A plurality of illumination sources are electrically connected to a power source and positioned adjacent to the liner. The illumination sources are positioned between the liner and upper. A batting is designed to be light diffusing, while the upper has a light diffusing section. The light emitted from the plurality of illumination sources is diffused as it passes through the batting and light diffusing section. Aesthetic designs can be creating [sic, created], either through the arrangement of the plurality of illumination sources or the provision of a light impermeable section on the upper. The light impermeable section, in combination with the light diffusion section, can be used to form or outline an aesthetic design. The result is an internally illuminated footwear with diffused light.

         Plaintiff asserts Claims 1, 5, 8, and 9 of the '038 Patent and Claims 1, 5, 8, and 9 of the '574 Patent (Dkt. #40 at p. 1).


         Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995). The purpose of claim construction is to resolve the meanings and technical scope of claim terms. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). When the parties dispute the scope of a claim term, “it is the court's duty to resolve it.” O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).

         “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) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent's intrinsic evidence to define the patented invention's scope. Id. at 1313-14; Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims, the rest of the specification, and the prosecution history. Phillips, 415 F.3d at 1312-13; Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary meaning as understood by one of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).

         Claim language guides the Court's construction of claim terms. Phillips, 415 F.3d at 1314. “[T]he context in which a term is used in the asserted claim can be highly instructive.” Id. Other claims, asserted and unasserted, can provide additional instruction because “terms are normally used consistently throughout the patent.” Id. Differences among claims, such as additional limitations in dependent claims, can provide further guidance. Id.

         “[C]laims ‘must be read in view of the specification, of which they are a part.'” Id. at 1315 (quoting Markman, 52 F.3d at 979). “[T]he specification ‘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.'” Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own terms, give a claim term a different meaning than it would otherwise possess, or disclaim or disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes terms possess their ordinary meaning, this presumption can be overcome by statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). This presumption does not arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).

         The specification may also resolve ambiguous claim terms “where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone.” Teleflex, 299 F.3d at 1325. For example, “[a] claim interpretation that excludes a preferred embodiment from the scope of the claim ‘is rarely, if ever, correct.'” Globetrotter Software, Inc. v. Elan Computer Group Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics, 90 F.3d at 1583). But, “[a]lthough the specification may aid the court in interpreting the meaning of disputed language in the claims, particular embodiments and examples appearing in the specification will not generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); accord Phillips, 415 F.3d at 1323.

         The prosecution history is another tool to supply the proper context for claim construction because a patentee may define a term during prosecution of the patent. Home Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (stating “[a]s in the case of the specification, a patent applicant may define a term in prosecuting a patent”). The well-established doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Omega Eng'g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). “Indeed, by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover.” Spectrum Int'l v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1988) (quotations omitted). “As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public's reliance on definitive statements made during prosecution.” Omega Eng'g, 334 F.3d at 1324. However, the prosecution history must show that the patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002). Statements will constitute disclaimer of scope only if they are “clear and unmistakable statements of disavowal.” See Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1358 (Fed. Cir. 2003). An “ambiguous disavowal” will not suffice. Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010) (citations omitted).

         Although “less significant than the intrinsic record in determining the legally operative meaning of claim language, ” the Court may rely on extrinsic evidence to “shed useful light on the relevant art.” Phillips, 415 F.3d at 1317 (quotations omitted). Technical dictionaries and treatises may help the Court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but such sources may also provide overly broad definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony may aid the Court in determining the particular meaning of a term in the pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim term are not useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its prosecution history in determining how to read claim terms.” Id.


         Agreed Claim Terms

         The parties submitted the following agreements in their September 26, 2017 P.R. 4-3 Joint Claim Construction and Prehearing Statement (Dkt. #32), their briefing, and their November 21, 2017 P.R. 4-5(d) Joint Claim Construction Chart, and the Court hereby adopts these agreements:


Agreed Construction

“interfacing layer”

('038 Patent, Cl. 1; '574 Patent, Cl. 1)

“reflective layer to which illumination sources are connected”


('038 Patent, Cl. 1; '574 Patent, Cl. 1)

“one or more layers closest to the foot in the interior of the footwear above the sole”

“light diffusing section”

('038 Patent, Cl. 9; '574 Patent, Cls. 1, 9)

“a section that causes light to be spread out and that hides a plurality of illumination sources

without blocking all light produced by the plurality of illumination sources”


('038 Patent, Cls. 1, 8; '574 Patent, Cls. 1, 8)

“the exterior layer(s) of a footwear above the sole”

(Dkt. #32 at Exhibit A; Dkt. #40 at p. 2; Dkt. #46 at p. 2; Dkt. #48 at Exhibit A).

         Disputed Claim Terms

         A. “adjacently connected to” ('038 Patent, Claim 1; '574 Patent, Claim 1)

Plaintiff's Proposed Construction

Defendant's Proposed Construction

“directly connected to”

“next to and contacting”

(Dkt. #32, App'x B at p. 6; Dkt. #40 at p. 4; Dkt. #46 at p. 12; Dkt. #48 at Exhibit A).

         1. The Parties' Positions

         Plaintiff argues that “Defendants . . . ask this Court to altogether remove the ‘connected to' requirement of ‘adjacently connected to' so that any two items next to and contacting one another within a footwear can satisfy the ‘adjacently connected to' limitation and read on the asserted claims.” (Dkt. #40 at p. 4). With reference to Claim 1 of the '038 Patent, for example, Plaintiff argues: “In the first limitation, the applicant uses ‘between' to describe the relative positions of the structure, the liner, and the upper; whereas in the second limitation, the applicant uses ‘adjacently connected to' to further require a connection between the structure and the upper.” (Dkt. #40 at p. 5). Plaintiff also submits that “the specifications of both Patents-in-Suit describe how illumination sources are connected to the interfacing layer and the purpose of the claimed interfacing layer.” (Dkt. #40 at p. 7). Further, Plaintiff cites prosecution history (Dkt. #40 at pp. 7-9)

         Defendant responds that “[i]n accordance with an ordinary and customary meaning, ‘adjacently connected to' simply describes the position of one element as next to and contacting another element, but not requiring actual attachment.” (Dkt. #46 at p. 12). Defendant urges that “no portion of the intrinsic record supports the notion that a connection requires more than contact between two elements.” (Dkt. #46 at p. 14). As to distinguishing between “connected to” and “adjacently connected to, ” Defendant argues that its proposal “addresses this distinction by requiring adjacently connected elements to be not only direct/indirectly contacting (‘connected to') each other but also next to and contacting (‘adjacently connected to') each other, i.e., the absence of an intermediate object connecting the two elements.” (Dkt. #46 at p. 15).

         Plaintiff replies that “Defendants' proposed construction completely ignores the prosecution history, in which two items that are adjacently connected to each other are described as being directly connected to each other.” (Dkt. #47 at p. 1) (emphasis in original).

         At the December 1, 2017 hearing, the parties presented oral arguments, such as noted herein.

         2. Analysis

         Claim 1 of the '038 Patent, for example, recites the term “adjacently connected to” and, as Plaintiff pointed out, also recites the phrases “positioned between” and “positioned adjacent to” (emphasis added):

1. An internally illuminated textile footwear comprises:
a footwear;
the footwear comprises a sole and an upper;
an illumination system;
the illumination system comprises a power source and a plurality of illumination sources;
a liner;
a ...

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