ORDER CONSTRUING CONTESTED TERMS OF U.S. PATENT NO. 6,520,337

EDWARD J. DAVILA, District Judge.

Plaintiff Reflex Packaging, Inc. ("Reflex") brings suit against Defendant Lenovo (United States) Inc. ("Lenovo") for infringement of U.S. Patent No. 6,520,337. The parties dispute the proper construction of five terms used in the claims of the patent. The court held a technology tutorial and claim construction hearing on September 7, 2011. Upon consideration of the claims, specification, prosecution history, and other relevant evidence, and after hearing the arguments of the parties, the court construes the contested language of the patent-in-suit as set forth below.

I. BACKGROUND

U.S. Patent No. 6,520,337 issued on February 18, 2003, to Forrest Smith, the founder of Reflex. The invention described in the patent is a "unitary product cushioning structure" designed to protect a shock-sensitive product (for example, a laptop) when placed in a box for shipping or storage. The cushion is made of thermoformed plastic, which is an improvement over foamed polystyrene and other earlier solutions because thermoplastic cushions are resilient and less bulky, and can be stackable, reusable, and recyclable. Patent cols. 1-2.

Reflex and Lenovo ask the court to construe five terms used in the patent claims:

The parties do not dispute the relevant art or the qualifications of an individual having ordinary skill in that art. In general agreement with the statement of Plaintiff's expert, Dr. Herbert H. Schueneman, the court finds that the relevant art is protective packaging, and that a person skilled in that art would have 1) at least a bachelor-level degree in packaging or a related field, such as material science; 2) knowledge of, and industry experience with, polymeric sheet thermoforming; and 3) knowledge of and experience in the packaging industry generally.

II. LEGAL STANDARDS

Claim construction is a question of law to be decided by the court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd 517 U.S. 370 (1996). Patent claims are construed in the manner that "most naturally aligns with the patent's description of the invention." Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).

The first step in claim construction is to look to the language of the claims themselves. A disputed claim term should be construed in a manner consistent with its "ordinary and customary meaning," which is "the meaning that the term would have to a person of ordinary skill in the art in question." Phillips, 415 F.3d at 1312-13. Additionally, the use of the term in other claims may provide guidance regarding its proper construction. Id. at 1314.

The patentee's use of a claim term in the specification is highly relevant to understanding the proper context in which the term is used. Id. at 1315. Indeed, the specification is the "single best guide to the meaning of a disputed term." Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). A construction that imposes limitations not found in the claims is erroneous unless it is supported by an unambiguous restriction elsewhere in the intrinsic record. In these circumstances, "the inventor's intention, as expressed in the specification, is regarded as dispositive." Id. at 1316.

A final source of intrinsic evidence is the prosecution record and any statements made by the patentee to the United States Patent and Trademark Office regarding the scope of the invention. See Markman, 52 F.3d at 980 ("Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent."); Phillips, 415 F.3d at 1317. Because the prosecution history reflects an ongoing negotiation between the patentee and the USPTO, however, it often is difficult to determine with exact precision the scope or meaning of particular statements. Phillips, 415 F.3d at 1317. Thus, the prosecution history usually is accorded less weight than the claims and the specification. Id.

The court also may consider extrinsic evidence, such as dictionaries or technical treatises, especially if such sources are "helpful in determining the true meaning of language used in the patent claims." Phillips, 415 F.3d at 1318 (internal quotation omitted). Extrinsic evidence may aid the claim construction analysis, but cannot be used to contradict the meaning of a claim term derived from the intrinsic sources. Phillips, 415 F.3d at 1322-23.

III. CONSTRUCTION OF DISPUTED TERMS

"adapted to provide shock absorption protection for a shock sensitive product during shock loading conditions" (the "protection phrase")

As a threshold issue, the parties disagree about whether the protection phrase limits the scope of the patent at all since it appears only in the preambles of two independent claims.

"In general, a claim preamble is limiting if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim. However, if the body of the claim describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention, the preamble is generally not limiting unless there is clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art." Intirtool, Ltd. v. Texar Corp., 369 F.3d 1289, 1295 (Fed. Cir. 2004) (citations and internal quotations omitted). Statements of an invention's intended use are generally not limiting unless the inventor relied on the use to distinguish prior art. Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).

The wherein clause containing the protection phrase1 does limit the scope of the patented invention. In both claims 1 and 23, the clause contains the only appearance of the requirement that the cushion protect against shock in two mutually perpendicular directions. That requirement is a necessary and defining aspect of the invention, and not merely an introduction to the general field of the claim or a statement of intended use. See Kropa v. Robie, 187 F.2d 150, 152 (C.C.P.A. 1951).

The protection term does more than summarize the claim by way of introduction. The claim bodies (i.e., the portions of the claims following the word "comprising") require that the invention provide shock absorption support in two directions, but say nothing about shock absorption protection. Reflex maintains that "shock absorption support" and "shock absorption protection" mean different things; if that is the case—and, as explained below, it is—the clause which contains the protection term must be a limitation on the scope of the claims. This conclusion is confirmed by the fact that other sections of the claim2 refer back to the "three mutually perpendicular directions" to define the limitations they impose.

Given that the protection phrase is a limitation on the claim scope, the parties disagree as to whether it limits the scope of the invention by requiring some particular amount of shock reduction.

The patent contains two mentions of specific numerical ranges of g-forces. The specification notes that the fragility of shock sensitive devices is "typically[] from 20 g's to 100 g's," Patent at 1:41-45, and that "[g]enerally, a unitary product cushioning structure in keeping with the present invention will reduce the impact forces that are imparted to the shock sensitive product being cushioned, to less than 100 g's." Patent at 15:4-10.

In addition, the inventor specifically explained the protection phrase during prosecution:

Forrest Smith's Response to Office Action at 6-7, May 24, 2001 (filed as Blake Decl. Ex. C, Jan. 28, 2011, ECF No. 34). Lenovo contends that the inventor's statement defined the term to require that the cushion be capable of reducing shock forces of greater than 200 g to less than 100 g, and that to construe the term without defining "shock loading conditions" would render the claim indefinite and therefore invalid. Reflex argues that numerically limiting the claim scope is inappropriate.

When a claim term is expressed in "general descriptive words," it is usually improper to "limit the term to a numerical range that may appear in the written description or in other claims." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). On the other hand, "when a patentee uses a claim term throughout the entire specification, in a manner consistent with only a single meaning, he has defined that term by implication." Bell Atl. Network Servs. v. Covad Commc'ns Grp., Inc., 262 F.3d 1258, 1271 (Fed. Cir. 2001).

A recent Federal Circuit case applied these rules. In Conoco, Inc. v. Energy & Environmental Int'l, L.C., 460 F.3d 1349 (Fed. Cir. 2006), the parties disputed the construction of the claim term "water-alcohol mixture." The patent specification stated that the "amount of alcohol [in the mixture] may vary widely but it usually forms between about 0 and 70 weight percent of the suspending material, and more usually between about 30 and about 50 weight percent." The defendant-appellant argued that the claim term "water-alcohol mixture" should be defined, as indicated in the specification, as a mixture containing between zero and seventy percent alcohol. The Federal Circuit disagreed for three interrelated reasons. First, the language from the specification was used in reference to a preferred embodiment; second, the numerical ranges were not used in a context meant to limit the claims; and third, because the language itself—"may vary widely" and "usually"—inherently indicated that the ranges were not limiting.

Both appearances of a defined numerical range of g-forces in the patent itself are offered by way of example, using non-limiting language. The first mention of a particular range of g-forces in the specification (at 1:41-45) merely references the fragility levels of early shock sensitive products, and is qualified by the word "typically." The second mention (at 15:4-10) speaks generally to all embodiments of the invention, but—by the use of the word "generally"—is careful not to limit the scope of the claims. In context, the sentence teaches design parameters disclosing the best mode of practicing the invention, a requirement of the Patent Act. See 35 U.S.C. § 112. Likewise, the words "the best example" and "typically" make it clear that none of the language that identifies numerical ranges of g-forces in the quoted portion of the inventor's response to the Patent Office is inherently limiting.

Nor is it true that the patentee's use of the protection phrase is consistent only with Lenovo's proposed construction. Suppose that, over the next few years, computer manufacturers improve on the design of notebook computers so that the typical laptop is capable of withstanding a sudden acceleration of 120 g. Manufacturers of product cushioning structures like those described in the patent may respond—as the patent teaches at 13:66-14:19—by decreasing the thickness of the thermoformed plastic, which will save material but lessen the shock absorption ability of the cushion. Under Lenovo's proposed construction, the new cushion would not be covered by the patent claims even though the patent plainly teaches it and the literal claim language would plainly cover it. Such a result must be incorrect.

The court adopts Plaintiff's proposed construction of the protection phrase: "designed to reduce shock forces exerted on a shock sensitive product when the product and its packaging encounter shock forces due to rapid acceleration (either positive or negative acceleration), such as by being dropped."

"adapted to provide shock absorption support for a product during shock loading conditions" (the "support phrase")

In both claims 1 and 23, the support phrase appears twice, modifying two different parts of the cushioning structure: the inner product contacting wall and the product supporting platform. The parties' constructions differ as to whether the portions of the claimed invention modified by the phrase must themselves reduce shock forces exerted on a product, or whether they only need to hold the product while the cushioning structure as a whole reduces the shock forces exerted.

Lenovo argues that the plain language compels that any structure which is claimed to provide "shock absorption support" must itself absorb shock, and that to construe the term otherwise would read the words "shock absorption" out of the claim term. But the plain language is not that clear. A concrete slab on a bed of springs might be "adapted to provide shock absorption support," though the slab by itself does not absorb shock.

The specification's clearest indication of the meaning of "shock absorption support" is found at 11:66-12:35. The end of that passage reads,

12:26-35 (reference characters omitted) (emphasis supplied). In the embodiment described, the inner product contacting wall and the product supporting platform provide shock absorption support "as a consequence of the presence" of another required portion of the structure, the flexible shock absorbing spring transition section. It follows that the inner product contacting wall and the product supporting platform do not necessarily provide shock absorption support all on their own.

Lenovo is also incorrect that Reflex's construction reads the words "shock absorbing" out of the term. Reflex's construction requires that the structure "hold a product so that the cushioning structure can reduce the shock forces exerted." The support must be given in such a way that facilitates the shock absorption.

This reading comports with the claim language. It is natural to speak of the inner product contacting wall and the product supporting platform as the structures which provide "shock absorption support"—even if they do not absorb shock themselves—because they are designed to be the only portions of the cushioning structure which actually touch the product.

The court adopts Reflex's proposed construction of the support phrase: "designed to hold a product so that the cushioning structure can reduce the shock forces exerted on the product when the product and its packaging encounter shock forces due to rapid acceleration (either positive or negative acceleration), such as by being dropped."

"flexible shock absorbing spring transition section"

In the claim construction briefing leading up to the hearing, the parties proposed the constructions numbered "1." above. In response to concerns raised by the court at the hearing, the parties submitted the constructions numbered "2."3 Joint Supplemental Submission Re Claim Construction, Sept. 16, 2011, ECF No. 63. The supplemental submission reflected an oral agreement reached at the hearing that the section must be "elastic," and made efforts to narrow the gap between the parties' positions.4

The two more recent proposed constructions both make reference to typical shock loading conditions. The patent claims carefully avoid placing any limitation on the invention relating to the degree or quantity of shock absorption—this is discussed at some length in the portion of this order construing the protection phrase. Defining a claim term to depend on typical shock loading conditions invites an inquiry into what "typical" conditions are. Respecting the patent as written, the court's construction will attempt to avoid that foray.

Claim terms are to be construed "independent" of the accused product, Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991), but courts should keep the accused product in mind in order to make an accurate claim construction in the proper context. Lava Trading, Inc. v. Sonic Trading Mgmt. LLC, 445 F.3d 1348, 1350 (Fed. Cir. 2006). The record includes a photograph of the accused product in Plaintiff's opening claim construction brief, and the product itself may have circulated at the Markman hearing, but there is no indication of how the product behaves under shock loading conditions. Even without such evidence, it is clear that the core difference in the parties' constructions is about whether the patent covers a cushion which recovers its shape after shock loading but undergoes some visible change—for example, creasing. See Schueneman Decl. ¶ 18, Jan. 14, 2011, ECF No. 31.

The patent describes the shock loading response of the cushioning structure as a whole and of the spring transition section in particular. With regard to the structure as a whole, the specification notes the following:

Patent at 14:55-61 (emphasis supplied). By using the word "[g]enerally," the patentee signaled that this passage was not intended to be a limitation. There is a requirement in the claims that the structure be "resilient," and the quoted passage is best read as a "best mode" disclosure that an embodiment is most effective when designed to resist "permanent deformation." As for the shock response of the spring transition section in particular, the patent discloses only that it is capable of "momentary collapse." Patent at 12:15-18. A "momentary collapse" must necessarily be followed by a rebound, but the extent of rebound is unspecified.

Phillips makes clear that the focus in claim construction is on "the meaning of claim terms within the patent," and not on "the abstract meaning of words." 415 F.3d at 1321. The dictionary definition of "spring" (an "elastic" device "that recovers its original shape") is not in dispute and only underscores the question presented here: how much of its original shape must something recover to be a "spring"? How much to be a "flexible shock absorbing spring transition section" in the context of a packaging device? A dictionary is of little help in answering these questions.

In evaluating this term it is of paramount important to keep in mind the perspective from which the claims are to be construed: that of a person having ordinary skill in the art of protective packaging. It is common sense that plastic packaging materials—even those capable of being reused—are less valuable than the products they are designed to protect. Shippers and receivers of shock-sensitive goods tolerate imperfect resilience of plastic packaging materials so long as the payload is protected. A packaging expert would understand the patent-in-suit to allow for visible creasing.

The court construes "flexible shock absorbing spring transition section" to mean "section that reduces shock forces by flexing and then recovering its overall shape while experiencing only cosmetic wear and tear."

"product supporting platform"

The parties disagree about whether the invention's "product supporting platform" must be "raised" to "hold[] the product above the adjacent area." Reflex primarily contends that the term "product supporting platform" is self-explanatory, and proposes in the alternative a construction that defines the platform by reference to its position within the overall structure: "the portion of the product supporting region that extends inwardly from the inner product contacting wall." Lenovo interprets the term to mean "[a] raised surface of the product supporting region that holds the product above the adjacent area." Reflex argues that Lenovo's interpretation is an attempt to impose the "flexible joint" limitation of dependent claim 9 onto the other claims; Lenovo responds that Reflex's construction reads out any limitation inherent in the word "platform," rendering the word synonymous with "surface."

A claim interpretation which fails to cover the patentee's preferred embodiment is "rarely, if ever, correct." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). The claims should therefore be read to cover the embodiment depicted in Figure 1 of the patent. Applying the doctrine of claim differentiation to claims 1 and 9 implies that claim 1 should cover the structure depicted in Figure 1 even if the structure lacks the chamfer labeled by reference character 70. Patent at 11:16-26; see Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006) ("`[C]laim differentiation' refers to the presumption that an independent claim should not be construed as requiring a limitation added by a dependent claim."). In the specification, the patentee clearly refers to the surface that supports the product as a "platform" even though it is shown in every drawing extending inwardly from the lowest part of the inner product contacting wall, and even though it is below the adjacent upper ridge. A person having ordinary skill in the art reading the term platform in light of the specification would understand that the platform need not itself be raised above the adjacent area.

Lenovo's proposed construction of "product supporting platform"—a "raised surface . . . that holds the product above the adjacent area"—finds no support in the language of the patent. Nothing in the patent claims imposes any limitations on the positioning of the product within the product supporting region. Moreover, such a construction would force a jury to resolve new ambiguities about what constitutes the "adjacent area" and about how much of the product must be "above" it. The dictionary definition of "platform" cited by Lenovo—"a usu[ally] raised horizontal flat surface"—confirms that platforms are usually but not always raised. As used in the '37 patent, every indication is that the term "platform" might refer to a portion of the invention that is below the adjacent portions of the structure.

One availing argument for the insertion of a "raised" requirement was made at the claim construction hearing but is not found in the papers.5 The patent does not require that the platform be raised above the "adjacent area," but might be said to require that the platform be raised above the bottom of the cushioning structure. In other words, it is arguable that the patent claim requires that there be some separation between the product supporting platform and the corresponding parallel surface of the outer packaging container into which the cushion fits. But reading such a limitation into the term at issue is inappropriate because a "raised" requirement without the additional "above the adjacent area" limitation is not actually in dispute.6

The court adopts Reflex's proposed construction of the term.

"discontinuous"

Dependent Claim 10 of the patent limits the invention of Claim 1 by requiring (1) the presence of "at least two flexible shock absorbing spring transition sections between [] at least one outer container contacting wall and [] at least one outer product supporting region defining wall," and (2) that the outer container contacting wall be "discontinuous" between each of the spring transition sections. The parties disagree about whether the discontinuity in the outer container contacting wall must be "complete." The essence of the dispute is whether Claim 10 covers an embodiment which has at least two flexible shock absorbing spring transition sections connected by a single outer container contacting wall.

The plain meaning of discontinuous is clear—not continuous. The parties would disagree over whether "not continuous" can mean "not completely continuous." A dictionary does not help to resolve that question.

By its own terms, Claim 10—which is the only claim that includes the "discontinuous" limitation—requires only "at least one" outer container contacting wall. Lenovo acknowledges that its proposed requirement that the discontinuity in the outer container contacting wall be "complete" would further limit the claim to require the presence of at least two outer container contacting walls. See Lenovo's Responsive Claim Construction Br. 23:12-20. Requiring complete discontinuity would impose a stricter condition on the number of outer container contacting walls than is explicitly set by language elsewhere in the same claim, so a preliminary reading of the claim suggests that complete discontinuity is not required.

Lenovo argues that reading claim 10 in light of the patent's specification leads to a different conclusion. Figure 4 of the patent discloses an embodiment which does have two outer container contacting walls. Patent at 9:47-54. In that embodiment, "there are a pair of shock absorbing spring transition sections, each defined by its own respective outer container contacting wall. Thus, the outer container contacting wall is discontinuous between each of the flexible shock absorbing spring transition sections." Lenovo contends that because Claim 10 is "clearly directed" to that embodiment, it should be so limited.

Standing alone, the two quoted sentences explain why the depicted embodiment is covered by the language of claim 10, but they do not purport to limit the scope of claim 10 to the kind of discontinuity contained in the embodiment. That is, the written description does not demonstrate that "the patentee [intended] for the claims and the embodiments in the written description to be strictly coextensive." Phillips, 415 F.3d at 1323 (Fed. Cir. 2005).

Finally, Lenovo argues that the inventor's response to the patent examiner's non-final rejection limited the meaning of the term "discontinuous" to require complete separation between outer container contacting walls. The relevant portion of the inventor's response is reproduced here:

One natural reading of the patentee's emphasis on the word "between" is that the patentee is telling the examiner, in effect, to look at the figure and see how obvious the discontinuity is. Such a reading might suggest that the patentee never considered any kind of discontinuity other than a complete one, and that the patent claims should therefore be limited to what he meant by discontinuous. But another reading, just as plausible, is that the patentee is correcting a misunderstanding of the examiner that each wall be discontinuous on its own. In that case, the patentee was making no comment on the "completeness" of the discontinuity, but merely pointing out its location.

Because the record includes only the applicant's response—and not the examiner's rejection to which the applicant was responding—it is unclear which portion of the claim language the examiner took exception to. Moreover, the court cannot determine 1) whether the claim referred to in the response (which was then claim 11) was the same as what eventually became claim 10 of the issued patent; 2) whether Figure 4 referred to in the response is the same as Figure 4 in the issued patent; or 3) where "the passage at lines 21 to 25 of page 13" is now. Ambiguities of this type are what led the Federal Circuit to note that a patent's prosecution can be difficult to use to justify a definitive claim construction. See Phillips at 1317.

The record before the court does not give guidance sufficient to determine the meaning of the term "discontinuous." The term is not amenable to construction at this time. If either party still sincerely believes that construction of the term "discontinuous" would be an efficient use of court and party resources, it may file a request pursuant to Civil L.R. 7-11 to reopen construction of the term and to file supplemental briefs on the issue. Any such request should have the proposed supplemental brief attached (no more than five pages) and be accompanied by documents responsive to each of the concerns raised in the preceding paragraph. The case will proceed without a definite construction of that term for now.

IT IS SO ORDERED.