United States District Court, E.D. Texas, Sherman Division
CLAIM CONSTRUCTION MEMORANDUM OPINION AND
L. MAZZANT, UNITED STATES DISTRICT JUDGE.
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
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.
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.
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.
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).
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.
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.
‘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).
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.
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
“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
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:
('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,
“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.
“the exterior layer(s) of a footwear above
(Dkt. #32 at Exhibit A; Dkt. #40 at p. 2; Dkt. #46 at p. 2;
Dkt. #48 at Exhibit 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).
The Parties' Positions
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)
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).
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).
December 1, 2017 hearing, the parties presented oral
arguments, such as noted herein.
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”
1. An internally illuminated textile footwear comprises:
the footwear comprises a sole and an upper;
an illumination system;
the illumination system comprises a power source and a
plurality of illumination sources;