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Blunt Wrap U.S.A., Inc. v. Grabba-Leaf, LLC

United States District Court, S.D. Florida, Miami Division

January 19, 2018

BLUNT WRAP U.S.A., INC., Plaintiff,
GRABBA-LEAF, LLC, Defendant.



         THIS 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.


         Plaintiff 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].

         The 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.

         On 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].

         Because 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].

         On 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.

         On 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 procedures.


         “[T]he 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)).

         In 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. at 1313.

         When 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.

         When 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.”).


         I. The Patents and the Person of Ordinary Skill in the Art

         It is 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).

         It is 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.[1] 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.

         II. Claim Terms At Issue

         A. “Shell” and “Tube”

         Defendants 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.

         Plaintiff, 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 “shell.”


         The parties' proposed constructions of the term “shell” are as follows:

Plaintiff:an external case or outside covering.
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.

         Although 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 ...

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