United States District Court, S.D. Florida, Miami Division
ORDER ON CLAIM CONSTRUCTION
P. GAYLES, UNITED STATES DISTRICT JUDGE.
CAUSE comes before the Court for claim construction
of the patents forming the basis of the instant infringement
action. The parties' proposed claim construction appears
in Plaintiff's Motion for Summary Judgment and in the
Alternative for Partial Summary Judgment on the Issues of
Patent Validity and Infringement [ECF No. 45], Defendant,
Grabba Leaf, LLC's Response to Claim Construction Offered
as Part of Plaintiff's Motion for Summary Judgment [ECF
No. 78], and Plaintiff's Reply in Support of Claim
Construction [ECF No. 79]. In addition, the Court held an
evidentiary Markman Hearing on December 13, 2017.
Blunt Wrap U.S.A., Inc. (“Plaintiff”) brings this
action against Defendant Grabba-Leaf, LLC
(“Defendant”) for infringement of seven patents
issued by the United States Patent and Trademark Office
(“PTO”), nos. 7, 571, 730 (the “'730
Patent”), 7, 717, 119 (the “'119
Patent”), 7, 987, 858 (the “'858
Patent”), 8, 066, 012 (the “'012
Patent”), 8, 578, 944 (the “'944
Patent”), 8, 783, 266 (the “'266
Patent”), and 9, 161, 568 (the “'568
Patent”) (collectively, the “Patents”).
[ECF No. 14].
Patents are part of a single “family” of patents
owned by Plaintiff for improved “roll-your-own”
tobacco products, and methods of making the same. According
to the Patents, previously existing roll-your-own methods
required a consumer “to be skillful in the rolling of
cigars, that is to have a certain finger dexterity, which
would allow him to make the cigar shell without crushing the
tobacco leaves.” See, e.g., '730 Pat.,
Col. 1, 62-65. This causes inexperienced people to
“become frustrated when the finished product collapses
because the cigar was not properly rolled.”
Id. The invention in the Patents is described as
improving on that state of the art by “eliminating some
steps in the making of a ‘roll-your-own' tobacco
product.” Pats., Abstract.
August 24, 2017, Plaintiff filed a Motion for Summary
Judgment and in the Alternative for Partial Summary Judgment
on the Issues of Patent Validity and Infringement. [ECF No.
45]. In this Motion, Plaintiff relies on the Declaration of
Expert Witness Kimberly Cameron (the “Cameron
Report”) in support of its claim construction and
charges of infringement. [ECF No. 45-1]. At the same time,
Plaintiff filed motions to exclude testimony of
Defendant's expert witnesses, Michel Thorens and Peter
Matos. [ECF Nos. 48, 49].
the Court found summary judgment premature in advance of
claim construction by the Court, it set a Markman Hearing and
ordered additional claim construction briefing. [ECF Nos. 68,
73]. On November 10, 2017, Defendant filed its Response to
Claim Construction Offered as Part of Plaintiff's Motion
for Summary Judgment. [ECF No. 78]. In this response,
Defendant relies on the Rebuttal Expert Witness Report by
Michel Thorens (the “Thorens Report”) and the
Expert Witness Report by Peter Matos (the “Matos
Report”). [ECF Nos. 78-1, 78-2]. Plaintiff timely
replied with its own claim construction brief. [ECF No. 79].
December 12, 2017, the Court granted in part and denied in
part Plaintiff's Motion to Exclude Expert Testimony by
Peter A. Matos, an experienced patent attorney proffered as
an expert in patent prosecution, but not in the relevant art
of cigar making. [See ECF No. 89]. In its Order, the
Court noted that it would give no weight to areas of the
Matos Report regarding claim construction or prior art, or
any testimony thereof, but would allow testimony regarding
relevant patent practice and procedure generally.
December 13, 2017, The Court held a Markman Hearing, wherein
the parties presented arguments and expert testimony on the
disputed claim terms, prior art, and patent prosecution
role of a district court in construing claims is . . . to
give meaning to the limitations actually contained in the
claims, informed by the written description, the prosecution
history if in evidence, and any relevant extrinsic
evidence.” Am. Piledriving Equip., Inc. v. Geoquip,
Inc., 637 F.3d 1324, 1331 (Fed. Cir. 2011). “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.” U.S. Surgical Corp.
v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997).
A court must construe claim terms only “to the extent
necessary to resolve the controversy.” Wellman,
Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed.
Cir. 2011) (quoting Vivid Techs., Inc. v. Am. Sci. &
Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
claim construction, “the words of a claim ‘are
generally given their ordinary and customary
meaning.'” Phillips v. AWH Corp., 415 F.3d
1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996)). “[T]he 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 . . . .” Phillips, 415 F.3d
at 1313. To determine that meaning, “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.” Id. at 1314 (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). Such
sources include intrinsic and extrinsic evidence concerning
relevant scientific principles, the meaning of technical
terms, and the state of the art. Id. at 1314, 1317.
“The inquiry into how a person of ordinary skill in the
art understands a claim term provides an objective baseline
from which to begin claim interpretation.” Id.
interpreting any asserted claim, “court[s] should look
first to the intrinsic evidence of record, ” which
encompasses “the patent itself, including the claims,
the specification and, if in evidence, the prosecution
history.” Vitronics, 90 F.3d at 1583 (citing
Markman v. Westview Instruments, Inc., 52 F.3d 967,
979 (Fed. Cir. 1995) (en banc)). That is because,
“[p]roperly viewed, the ‘ordinary meaning' of
a claim term is its meaning to the ordinary artisan after
reading the entire patent.” Phillips, 415 F.3d
at 1321. Thus, the ordinary meaning of a term should not be
looked at “in a vacuum, ” but rather “in
the context of the written description and the prosecution
history.” Medrad, Inc. v. MRI Devices Corp.,
401 F.3d 1313, 1319 (Fed. Cir. 2005). In that context,
“the 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.'” Phillips, 415 F.3d at 1315
(quoting Vitronics, 90 F.3d at 1582). Yet,
“there is a fine line between reading a claim in
light of the patent's written description, and
reading a limitation into the claim from the written
description, ” which the Court must not do.
Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d
1312, 1321 (Fed. Cir. 2016); see also Phillips, 415
F.3d at 1323-24.
intrinsic evidence is “insufficient to enable the court
to determine the meaning of the asserted claims, . . .
extrinsic evidence . . . may also properly be relied on to
understand the technology and to construe the claims.”
Vitronics, 90 F.3d at 1584 (citing Markman,
52 F.3d at 979). “Extrinsic evidence . . . may be
helpful [to ascertain the meaning of a claim term] but is
‘less significant than the intrinsic record in
determining the legally operative meaning of claim
language.'” MBO Labs., Inc. v. Becton,
Dickinson & Co., 474 F.3d 1323, 1329 (Fed. Cir.
2007) (quoting Phillips, 415 F.3d at 1317).
Extrinsic evidence is very broad and includes dictionaries,
books on the art, expert testimony, and “other material
not part of the public record associated with the
patent.” Id. A court may rely on extrinsic
evidence only when a claim term is ambiguous and intrinsic
evidence does not resolve the ambiguity. See Intel Corp.
v. VIA Techs., Inc., 319 F.3d 1357, 1367 (Fed. Cir.
2003) (“When an analysis of intrinsic evidence
resolves any ambiguity in a disputed claim term, it is
improper to rely on extrinsic evidence to contradict the
meaning so ascertained.”).
The Patents and the Person of Ordinary Skill in the
undisputed that the claim terms in dispute each appear in
several claims of the many Patents at issue and are
co-related, stemming from the same parent application.
Neither party objects to a consistent construction of the
terms across all of the Patents, and both referenced the
specifications in the '730 Patent and '858 Patent
interchangeably in their claim construction briefs and at the
Markman Hearing. Therefore, for purposes of claim
construction, the Court will rely on the specification and
prosecution history of any and all of the related patents to
construe the claim terms at issue. See Omega Eng'g,
Inc. v. Raytek Corp., 334 F.3d 1314, 1333-34 (Fed. Cir.
2003) (noting that “prosecution disclaimer may arise
from disavowals made during the prosecution of ancestor
patent applications” and that when construing a common
term in dispute in related patents, the court will
“presume, unless otherwise compelled, that the same
claim term in the same patent or related patents carries the
same construed meaning.”); see also In re Rambus
Inc., 694 F.3d 42, 48 (Fed. Cir. 2012) (finding support
for a broad construction of a claim term by referencing
claims in related patents in the patent family).
also undisputed that a person of ordinary skill in the art of
the Patents here would have at least a high-school education
and two years of hand-rolling cigar experience, or the
educational equivalent thereof. Therefore, the Court construes
all of the claim terms in accordance with what this person of
ordinary skill in cigar rolling would have understood those
terms to mean at the time of the invention after reading the
Patents in their entirety, while keeping the context of their
written descriptions and prosecution history in mind, but
without limiting claim terms to any particular embodiment.
See generally Phillips, 415 F.3d 1303.
Claim Terms At Issue
“Shell” and “Tube”
contend that “shell” and “tube” must
have identical constructions because the terms are used
interchangeably throughout the written description, drawing,
and prosecution history. For instance, the '730 Patent,
titled “[c]igar tube, ” contains various claims
with the word “tube” and “cigar tube,
” but the term does not appear anywhere in the written
description of the Patent. During prosecution, Plaintiff
indicated that the word “tube” in the claims is
illustrated as numeral (10) of the drawings. Matos Report,
Ex. C, 2. But the Patent designates that same numeral (10) as
“a tobacco product shell of the present
invention.” '730 Pat., Col. 2, ln. 43-44. In
addition, during prosecution Plaintiff referred to sections
of the application that discussed the “wrapping and
rolling [of] tobacco leaves [to] form a shell of a desired
thickness.” Matos Report, Ex. C, 2. (referencing what
is now '730 Pat., Col. 3, ln. 1-3). From this, Defendant
concludes that the definitions of “shell” and
“tube” must be the same.
however, asserts that although it is true that a
“tube” is a “shell, ” it is because
“shell” is a collective term that includes, but
is not limited to, a “tube.” To support this,
Plaintiff points to the written description of Patent
'858, which indicates that Fig. 25 of the '858 Patent
shows packaging that can be used for “any shell
embodiment disclosed in this application including shaped
tube, slit tube, shaped tube, shell, shaped tube, [and]
spiral wrap; all of which embodiments will generically be
referred to as a shell.” '858 Pat., Col. 12, ln
30-34 (citations omitted). The Court finds this proposition
convincing, and thus will not construe the terms to be
identical, but instead will treat “tube” as being
a particular variant of the more generic term
parties' proposed constructions of the term
“shell” are as follows:
Plaintiff:an external case or outside
Defendant: a specifically sized, shaped and
pre-formed receptacle for smoking articles that has and
retains the pre-defined and uniform smokable shape that is to
be filled and smoked.
the '730 and '858 Patents use the term
“shell” throughout their specifications, only the
'730 Patent has claims that use the term, with two
independent claims as follows:
28. A product including a cigar shell for
holding an end user's tobacco fill material, comprising:
a sheet of material, the sheet of material being rolled into
a shell having a longitudinal axis and edges that are not
glued together, enabling the edges to be moved apart to open
the shell along the longitudinal axis so that tobacco fill
material can be added to the shell to form a cigar; wherein
the shell is packaged in packaging and remains ...