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Summer Infant USA, Inc. v. Tomy International, Inc.

United States District Court, D. Rhode Island

September 23, 2019

SUMMER INFANT USA, INC., Plaintiff/Counter Defendant,
v.
TOMY INTERNATIONAL, INC., Defendant/Counter Claimant.

          REPORT AND RECOMMENDATION REGARDING CLAIM CONSTRUCTION

          PATRICIA A. SULLIVAN, UNITED STATES MAGISTRATE JUDGE.

         U.S. Patent No. 6, 578, 209 (“’209 Patent”), titled “Tubs for Bathing Infants and Toddlers, ” issued on June 17, 2003. Defendant TOMY International, Inc. (“TOMY”) owns the ’209 Patent by assignment. The American subsidiary of a global toy company, TOMY sells an infant/toddler bathing tub, the “Sure Comfort Deluxe Newborn to Toddler Tub” (the “TOMY Tub”), which it contends is protected by the ’209 Patent.

         Plaintiff Summer Infant (USA), Inc., (“Summer Infant”) designs, markets and distributes infant/toddler products sold principally to large U.S. retailers. In 2017, Summer Infant was selling an infant/toddler bathing tub (the “Accused Product”) it had designed, which competed with the TOMY Tub. On November 14, 2017, TOMY sent Summer Infant a cease and desist letter, asserting that the Accused Product infringes the ’209 Patent. Summer Infant responded by initiating this action for a declaration that the Accused Product does not infringe the ’209 Patent; Summer Infant alleges that, at a minimum, the Accused Product does not have “two seating surfaces disposed at differing inclinations and extending from respective back rests to distal edges joined at a bottom surface apex, ” which limitation is common to every independent claim of the ’209 Patent. See ECF No. 1-1 (“’209 Patent”). TOMY counterclaimed for infringement; it alleges that the Accused Product meets the limitations of several claims of the ’209 Patent, either literally or under the doctrine of equivalents.

         Based on TOMY’s motion (ECF No. 34), [1] the matter is now before the Court for claim construction pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). In its claim construction brief, TOMY initially asked the Court to construe six disputed terms. During the hearing, the construction of two terms was resolved by agreement, [2] leaving four in issue. For one of the four in issue, TOMY has withdrawn its proposed construction and now asks the Court to construe it as “self-defining” based on its features as set out in the ’209 Patent, while Summer Infant has proposed a construction that it argues is based on the ordinary meaning. The construction of these four terms is referred to me for report and recommendation pursuant to 28 U.S.C. § 636(b)(1)(B).[3]

         I. BACKGROUND

         TOMY alleges that the Accused Product infringes independent Claims 1, 23, and 30, as well as dependent Claims 2-8, 12, 15, 18, 21, 24-29 and 31. All of these claims contain one or more of the terms to be construed. The parties’ positions regarding the terms in issue may be briefly summarized by the chart below, which is adapted from the charts in Summer Infant’s brief (ECF No. 36 at 4-5) and in TOMY’s hearing Exhibit A:

Claim term/phrase

TOMY’s Proposed Construction

Summer Infant’s Proposed Interpretation

“Molded plastic body”

“one-piece plastic body formed from a mold”

Ordinary meaning: “a plastic body formed from one or more molds”

“Seating surface(s)”

“a surface that supports the posterior or buttocks of the user when seated”

Ordinary meaning: “a surface that, in combination with a back rest, forms a seat”

“Distal edges joined at a bottom surface apex”

areas of the seating surfaces situated furthest away from their respective back rests are connected directly or indirectly by an intervening structure at a high point of the bottom surface of the body between the seating surfaces”

Ordinary meaning: “lines or points situated away from a back rest, connected at the high point of the bottom surface

“Wale”

Self-defining [4]

Ordinary meaning: “a horizontal constructional member used for bracing vertical members”

         The ’209 Patent’s Detailed Description describes the preferred embodiment in Figures 9 and 14 (which is referenced in Figure 9), and Figure 13; these are a useful reference for the terms in issue:

         (Image Omitted)

         II. CLAIM CONSTRUCTION PRINCIPLES

         The construction of claim terms is a question of law. Markman, 517 U.S. at 372; R&J Mfg., 2017 WL 8234397, at *2-3. As settled by Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the guiding principle of construction is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of . . . the effective filing date of the patent application.” Id. at 1313; see Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Meaning is properly derived from “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Phillips, 415 F.3d at 1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).

         Claim construction begins with the claims themselves; they “define the invention to which the patentee is entitled the right to exclude.” Id. at 1312. If the ordinary meaning of a claim term is readily apparent, claim construction involves little more than the application of the widely accepted meaning of commonly understood words. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (court may construe a claim term to have plain meaning when such a construction resolves dispute between the parties); Alifax Holding Spa v. Alcor Sci. Inc., C.A. No. 14-440S, 2017 WL 1533430, at *1 (D.R.I. Apr. 27, 2017) (“The words of the claims are given their ordinary and customary meanings, unless a word or phrase is expressly defined in the patent to mean something else.”). However, the determination that a claim term needs no construction may be inadequate when a term has more than one ordinary meaning or when reliance on ordinary meaning does not resolve the parties’ dispute. O2 Micro Int’l, 521 F.3d at 1361.

         “The claims, of course, do not stand alone.” Phillips, 515 F.3d at 1315. “Rather, they are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims.” Id. For that reason, “the specification is always highly relevant to the claim construction analysis.” Id. (quoting Vitronics, 90 F.3d at 1582). “The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.” Id. at 1316 (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).

         The claims are to be construed in a way that makes them consistent with, and no broader than, the invention disclosed in the specification. On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006) (“[C]laims cannot be of broader scope than the invention that is set forth in the specification.”); Phillips, 415 F.3d at 1316 (“[C]laims must be construed so as to be consistent with the specification, of which they are a part.”); Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1370 (Fed. Cir. 2003) (“where the specification makes clear at various points that the claimed invention is narrower than the claim language might imply, it is entirely permissible and proper to limit the claims”). On the other hand, “limitations from the specification are not to be read into the claims.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). While the specification can be used to interpret the claims, the court must be wary of confining the claims to the embodiments described in the specification. Phillips, 415 F.3d at 1323; see CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002) (“The drawings merely illustrated a particular embodiment.”). Nevertheless, if the specification reveals a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess, the inventor’s lexicography governs. Phillips, 415 F.3d at 1316. A claim construction that excludes the preferred embodiment is “rarely, if ever, correct and would require highly persuasive evidentiary support.” Vitonics, 90 F.3d at 1583.

         In addition to the claims and the specification, intrinsic evidence may also include the prosecution history to the extent that it bears on the scope of the invention, although the prosecution history is “less useful for claim construction purposes than the claim language and written description.” Avid. Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016). Construction of claims may also be guided by extrinsic evidence such as expert testimony and dictionary definitions to the extent they are “helpful in determining the ‘true meaning of language used in the patent claims.’” Phillips, 415 F.3d at 1317-19. However, such extrinsic evidence is viewed as less reliable and may not control if it contradicts the intrinsic record. Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, 824 F.3d 999, 1002-03 (Fed. Cir. 2016). The court must discount expert testimony that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history. Phillips, 415 F.3d at 1318.

         Once the proper meaning of a term is established, that term must have the same meaning for all claims in which it appears. Inverness Med. Switzerland GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365, 1371 (Fed. Cir. 2002). And if two alternative interpretations of particular claim language are equally plausible, the court should choose the narrower interpretation to avoid unfair surprise to the public. Athletic Alts., Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996) (broader interpretation of two alternatives undermines fair notice function of patent). This approach is particularly apt when the “ambiguity is the result of sloppy drafting, ” so that “[c]laim construction then becomes a game of crystal ball gazing, not resolved until this court’s gaze is announced.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1334-35 (Fed. Cir. 2013) (Plager, J., concurring).

         III. ANALYSIS OF DISPUTED CLAIMS

         A.Molded Plastic Body”

         The first term – “molded plastic body” – appears in the opening sentence of each of the independent claims in issue and also applies to all of the asserted dependent claims. TOMY seeks to limit the meaning of “molded plastic body” by a construction that specifies that the “molded plastic body” is one-piece and that it is formed from one mold – TOMY’s proposed construction is: “one-piece plastic body formed from a mold.” Summer Infant asks the Court to adopt a broader construction that is ...


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