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Global Tech Led, LLC v. Hilumz International Corp.

United States District Court, M.D. Florida, Fort Myers Division

May 23, 2017

GLOBAL TECH LED, LLC, a Florida limited liability company, Plaintiff,
HILUMZ INTERNATIONAL CORP., a Georgia corporation, HILUMZ, LLC, a Georgia limited liability company, and HILUMZ USA, LLC, a Georgia limited liability company, Defendants/Third Party Plaintiffs JEFFREY J. NEWMAN and GARY K. MART, Third Party Defendants.



         This matter comes before the Court on the parties' respective Claim Construction Briefs (Docs. ## 82, 83) filed on September 13, 2016. Both sides filed Responses (Docs. #84, 85) on September 27, 2016. A Joint Pre-Hearing Statement (Doc. #90) was filed on November 1, 2016, and the Court held a “Markman[1] claim construction hearing on January 19, 2017.


         This case involves a patent infringement dispute between two business partners-turned-competitors in the retrofit light emitting diode (LED) lighting industry. In recent years, LED bulbs have become popular because they have a much longer lifespan than traditional incandescent bulbs, and the light they emit produces significantly less heat. The circuits that provide electrical current to LED bulbs do, however, produce a considerable amount of heat. This has motivated companies that manufacture LED bulbs to create - and seek patent protection for - apparatuses that both house the bulb and allow the heat generated by the circuitry to be dispersed efficiently.

         Plaintiff Global Tech LED, LLC is one such company. Global Tech is the assignee of the ownership rights to United States Patent No. 9, 091, 424 (the ‘424 Patent), entitled “LED Light Bulb, ”[2]which comprises a retrofit LED apparatus[3] made up of: a screw connector, which is configured to be screwed into a receiving socket of an electric light fixture; a bracket, which is physically attached to the screw connector; and a housing, which is rotatably coupled to the bracket, and which includes one or more LED units for generating light and one or more electrically powered cooling devices to remove heat from the vicinity of the LED units. (Doc. #1-1, p. 2.) This design allows the face of the housing - along with the back-attached fan (or “heat sink”) - to be rotated “orthogonally” (ninety degrees) from the receptacle's connector base. This, in turn, enables the heat generated by the circuitry to be dispelled advantageously away from the LED units, thereby preserving the life of those units.

         Plaintiffs contend that this rotatable feature constitutes the “true innovation” of the ‘424 Patent and is being infringed by a retrofit LED apparatus (the Retrofit Kit) invented by Defendants HiLumz International Corp., HiLumz, LLC, and HiLumz USA, LLC (collectively, Defendants). On September 15, 2015, Global Tech filed a Complaint (Doc. #1) accusing Defendants of “making, using selling, or offering for sale” one or more lighting products that infringe the claims the ‘424 Patent, either literally or under the doctrine of equivalents.[4] (Id. ¶ 36.) The Complaint seeks injunctive relief and money damages for Defendants' willful direct and indirect patent infringement, in violation of 35 U.S.C. § 271.

         Defendants do not dispute that the Retrofit Kit similarly allows the LED unit face, with its own attached heat sink, to be rotated orthogonally for efficient heat dispersal. They contend, however, that the Retrofit Kit cannot support an infringement claim because the apparatus contains no “screw connector” component, that is, no connector piece that can be screwed into an electrical socket and through which electricity travels to power the LED units. Rather, their product contains a hose clamp that attaches to the outside of the electrical socket and which conveys no power to the units. Plaintiffs maintain that the “screw connector” described in independent claims 1, 14, and 18 of the ‘424 Patent is not required to draw power from the electrical socket. It is this “screw connector” term that the Court has been asked to construe.


         A. Patent Infringement Overview and the Role of Patent Claims

         The patent laws permit any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, [to] obtain a patent therefor.” 35 U.S.C. § 101. Once obtained, a patent essentially provides notice that the invention described therein belongs to another and cannot be made, used, or sold without the patentee's permission. Anyone who does so infringes the patent, entitling the patentee to bring a civil action for infringement. Id. §§ 271(a), 281; see also Markman, 517 U.S. at 374 (“[P]atent lawsuits charge what is known as infringement and rest on allegations that the defendant without authority made, used or sold the patented invention, within the United States during the term of the patent therefor.” (internal alterations and citation omitted)).

         An application is required to obtain a patent. 35 U.S.C. § 111(a)(1). Each application must contain certain material, including a specification, one or more drawings, and an inventor's oath or declaration. Id. § 111(a)(2) (citing id. §§ 112, 113, 115). “The specification shall contain a written description of the invention, and of the manner and process of making and using it . . . and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.” Id. § 112(a). Moreover, and important here, “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor . . . regards as the invention.” Id. § 112(b).

         These claims “define[] the scope of the patentee's rights.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 835 (2015) (quoting Markman, 517 U.S. at 372); see also e.g., Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004) (“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.”). Practically speaking, the claims “function[] to forbid not only exact copies of an invention, but [also] products that go to ‘the heart of an invention but avoid[] the literal language of the claim by making a noncritical change.” Markman, 517 U.S. at 373-74 (quotation omitted).

         Because it is the claims that define and protect the patentee's rights, “[v]ictory in an infringement suit [first] requires a finding that the patent claim covers the alleged infringer's product or process.” Id. at 374 (citations omitted). This “in turn necessitates a determination of what the words in the claim mean.” Id.; see also Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1330 (Fed. Cir. 2001) (“A finding of noninfringement requires a two-step analytical approach. First, the claims of the patent must be construed to determine their scope. Second, a determination must be made as to whether the properly construed claims read on the accused device.” (citing Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993))).

         Determining what disputed words in a claim mean is a process known as claim construction. The claim construction process often culminates in a “Markman hearing” at which the parties defend their respective constructions before the Court.[5] “‘[T]he construction of a patent, including terms of art within its claim, ' is not for a jury but ‘exclusively' for ‘the court' to determine[, ] . . . even where the construction of a term of art has ‘evidentiary underpinnings.'” Teva Pharm., 135 S.Ct. at 835 (quoting Markman, 517 U.S. at 372, 390). In essence, the district court determines “the metes and bounds of the claims that define the patent right . . . as set forth in the patent documents.” Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d 1272, 1285 (Fed. Cir. 2014) (en banc), abrogated by Teva Pharm., 135 S.Ct. 831. The inquiry “is an objective one” under which the court “seeks to accord a claim the meaning it would have to a person of ordinary skill in the art at the time of the invention.” Innova/Pure Water, 381 F.3d at 1116 (citations omitted).

         B. Claim Construction Principles

         The seminal case of Phillips v. AWH Corp. sets forth the applicable standard for construing disputed patent claims:

In 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. In many cases that give rise to litigation, however, determining the ordinary and customary meaning of the claim requires examination of terms that have a particular meaning in a field of art. Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.

415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (internal citations omitted).

         These evidentiary “sources” fall into two general categories: intrinsic and extrinsic. In construing disputed claim terms, a court must first consider “the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1996) (en banc)). “[I]ntrinsic evidence is the most significant source of the legally operative meaning of disputed claim language.” Id. But “[a]ll intrinsic evidence is not equal.” Interactive Gift, 256 F.3d at 1331.

         The language used in the claims tops the hierarchy of intrinsic evidence. Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed. Cir. 1998) (“Even within the intrinsic evidence, however, there is a hierarchy of analytical tools. The actual words of the claim are the controlling focus.”). It is with that language a court must start, and on that language a court must remain focused throughout the construction process, “for it is that language that the patentee chose to use to ‘particularly point out and distinctly claim the subject matter which the patentee regards as his invention.'” Interactive Gift, 256 F.3d at 1331(internal alterations omitted) (quoting 35 U.S.C. § 112, ¶ 2); see also Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“The starting point for any claim construction must be the claims themselves.”). While the court primarily focuses on the language used in the specific claims whose construction is at issue, the court may also appropriately consider the language used in the patent's other claims. Phillips, 415 F.3d at 1314 (“Other claims of the patent in question . . . can also be valuable sources of enlightenment as to the meaning of a claim term.”).

         Next, the court reviews the patent's specification. Interactive Gift, 256 F.3d at 1331. Given that the specification is required to “contain a written description of the invention, and of the manner and process of making and using it, ” 35 U.S.C. § 112(a), 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.” Vitronics, 90 F.3d at 1582. “The written description is considered, in particular to determine if the patentee acted as his own lexicographer, as our law permits, and ascribed a certain meaning to those claim terms. If not, the ordinary meaning, to one skilled in the art, of the claim language controls.” Digital Biometrics, 149 F.3d at 1344.

         At the bottom of the intrinsic evidence hierarchy lies the patent's prosecution history, which the court may appropriately consider if it is a part of the record. Interactive Gift, 256 F.3d at 1331. This “consists of the complete record of the proceedings before the [Patent and Trademark Office (PTO)] and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317. The prosecution history presents probative insight into “how the PTO and the inventor understood the patent, ” and often reveals “whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it otherwise would be.”[6] Id.; see also Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The purpose of consulting the prosecution history in construing a claim is to ‘exclude any interpretation that was disclaimed during prosecution.'” (quoting ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1580 (Fed. Cir. 1988))). By consulting the prosecution history, the court can “ensure[] that claims are not construed one way in order to obtain their allowance and in a different way against accused infringers.” Chimie, 402 F.3d at 1384 (citation omitted).

         “[I]f after consideration of the intrinsic evidence there remains doubt as to the exact meaning of the claim terms, consideration of extrinsic evidence may be necessary to determine the proper construction.” Digital Biometrics, 149 F.3d at 1344. Appropriate sources include “expert testimony, dictionaries, and treatises.” Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1361 (Fed. Cir. 2014); see also Markman, 52 F.3d at 980. Although the extrinsic evidence “can shed useful light on the relevant art” Vanderlande Indus. Nederland BV v. I.T.C., 366 F.3d 1311, 1318 (Fed. Cir. 2004), it should always be “considered in the context of the intrinsic evidence.” Phillips, 415 F.3d at 1319. Whether to consider extrinsic evidence ultimately rests within the district court's discretion. Id.

         This Court now applies these principles to construe the claims at issue here.


         The parties dispute the meaning of “screw connector” as used in claims 1, 14, and 18 of the ‘424 Patent. Defendants contend that “screw connector” should be construed as “power connector, ” i.e., a connector that actually draws power from the receiving socket - something Defendants' Retrofit Kit does not do. While acknowledging the absence of any express claim language so requiring, Defendants believe this construction is supported by the ‘424 Patent's specification and the relevant prosecution history. Accordingly, Defendants propose replacing the language in claim 1 about the screw connector being “a male screw base, which supports the ...

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