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PDT Original Designs, LLC v. HangEmRight.com, LLC

United States District Court, D. Idaho

September 11, 2018

PDT ORIGINAL DESIGNS, LLC, Plaintiff,
v.
HANGEMRIGHT.COM, LLC, Defendant. PHRASE PDTS PROPOSED CONSTRUCTION HANGEMRIGHTS PROPOSED CONSTRUCTION PHRASE PDT'S PROPOSED CONSTRICTION HANGEURIGHT'S PROPOSED CONSTRUCTION

          MEMORANDUM DECISION AND ORDER

          David C. Nye, U.S. District Court Judge

         I. INTRODUCTION

         The Court held a Markman hearing on August 2, 2018, to interpret the claims of Plaintiff PDT Original Designs, LLC's (“PDT”) utility patent (United States Patent No. 8, 915, 382 (“'382 patent”)). The Court's interpretation is set forth below.

         II. BACKGROUND

         A. Procedural Background

         On August 2, 2017, PDT filed suit against Defendant HangEmRight.com LLC (“HangEmRight”). In this action, PDT seeks damages and a permanent injunction against HangEmRight for infringement of its ‘382 patent. PDT alleges that HangEmRight sells products which are protected by one or more claims and designs in the ‘382 patent. HangEmRight denies infringement. The Court now engages in the first step of the two-part infringement analysis: claim construction.

         B. Patent at Issue

         The sole patent at issue in this case is the ‘382 patent. The ‘382 patent discloses “an apparatus and system . . . for supporting a ski on a support structure. The apparatus includes a ski support member, a spacer, and a coupling element.” Dkt. 35-1, abstract. In layman's terms, the ‘382 patent covers devices (similar to a small nob, hook, or hanger) upon which a person can hang a single ski[1] in a vertical, upright, position for storage purposes. Storing a ski in this manner keeps the skis off the ground-thus avoiding unwanted damage. PDT's patented method for hanging skis also requires less space than storing skis horizontally.

         III. LEGAL STANDARD

         The Court begins with the first step of the two-step infringement analysis- determining the scope and meaning of the patent claims at issue. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). The construction of a patent is a question of law for the Court to decide. Id.; see also O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“When the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it.”). At the same time, the Court is not required to construe every limitation present in a patent's asserted claims. O2 Micro Int'l Ltd, 521 F.3d at 1359. “In some cases, the ordinary meaning of claim language . . . 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.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005) (en banc).

         To interpret the claims, the Court must look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language. Id.

         In evaluating the intrinsic evidence, the Court examines first the words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention. Id. Although words in a claim are generally given their ordinary and customary meaning, a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, so long as the special definition of the term is clearly stated in the patent specification or file history. Id.

         Intrinsic evidence also includes the prosecution history of the patent, if in evidence, which includes the complete record of all proceedings before the Patent and Trademark Office (PTO), including any express representations made by the applicant regarding the scope of the claims. As such, the record before the PTO is often of critical significance in determining the meaning of the claims. Included within an analysis of the file history may be an examination of the prior art cited therein. Id.

         In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to rely on extrinsic evidence.

         IV. ANALYSIS

         PDT's patent protects the designs of various apparatuses for hanging skis in a vertical position. At issue here is the language of the preamble, five phrases that appear in each claim, and four phrases from independent claims. The Court will address each in turn.

         1. The Preamble

PHRASE
PDTS PROPOSED CONSTRUCTION
HANGEMRIGHTS PROPOSED CONSTRUCTION

the ski having a binder toe piece and a binder heel piece coupled to a deck surface of the ski. the binder toe piece having a boot retention flange extending parallel to the deck surface of the ski. wherein the deck surface and the boot retention flange define a receiving space for receiving a toe end of a ski boot

Limiting as it adds meaning to the

shape and sizing of the elements discussed throughout the claims; a ski has a binder toe piece and binder heel piece, which are attached to surface of a ski; the binder toe piece receives the toe region of the ski boot and is formed by the binding flange and the deck of the ski

Not limiting as to structure of the apparatus as the skis and bindings are not claimed: meaning a separate binding toe piece and a binding heel piece attached to the top surface of a ski; means the toe section of a ski binding in conjunction with the ski forming generally a U-shape: tins is standard on a pair of downhill ski bindings likely does not need defining; meaning a ski can be hung on the device by the toe binding

         In the ‘382 patent, each of the asserted independent claims (1, 12, and 17) contain the following preamble:

[a]n apparatus for supporting a ski on a support structure, the ski having a binder tow piece and a binder heel piece coupled to a deck surface of the ski, the binder tow piece having a boot retention flange extending parallel to the deck surface of the ski, wherein the deck surface and boot retention flange define a receiving space for receiving a toe end of a ski boot . . ..

Dkt. 35-1, Claim 1, 12, 17. While both sides agree that the preamble is referring to a common ski, PDT asserts that the preamble is limiting as it discusses subsequent elements, while HangEmRight argues that the preamble does not limit the claims.

         “Generally, the preamble does not limit the claims.” Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). However, the preamble may be limiting “when the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention.” Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed.Cir.1995). If the preamble is “necessary to give life, meaning and vitality” to the claim, then the claim preamble should be construed as limiting. Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). This is determined “on the facts of each case in view of the claimed invention as a whole.” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987); see also Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572-73 (Fed. Cir. 1996) (“Whether a preamble stating the purpose and context of the invention constitutes a limitation . . . is determined on the facts of each case in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.”).

         One way that a preamble can be limiting is when the preamble provides an antecedent basis for the ensuing claim terms. Metabolite Labs., Inc. v. Corp. of Am. Holdings, 370 F.3d 1354, 1358-62 (Fed. Cir. 2004). Antecedent basis occurs when a term in the preamble is essential to understanding the limitation or term in the body of the claim. Id.

         PDT asserts that the reoccurring use of the word “the”[2] in the body of the claims is a sign that the preamble is providing antecedent basis as these references are to explanations (of objects or designs) laid out in the preamble. Additionally, PDT points to the Examiner's reasons for allowance and his references to these terms when he explained the differences between this patent and other patents. See Dkt. 35-5, at 14-15.

         For its part, HangEmRight asserts that the preamble is not limiting because the ski, the binder toe piece, and the other descriptions relative to the ski have no bearing on the invention itself (i.e. they are not part of the invention) but are only recited for context. HangEmRight asserts that the ‘382 patent claims a device that is positioned between the ski and the ski binder toe piece, but that it does not specifically reference a ski. According to HangEmRight, a person could hang anything from the hook and all the language specific to skis is not limiting because it is not a necessary part of the invention. The Court disagrees.

         While various items could potentially be hung from the devices of the ‘382 patent, the whole purpose of the invention is to “support[] a ski on a support structure.” Dkt. 35-1, abstract. Explaining the various pieces of a ski is not just helpful, or an example of what could be hung; it is the whole purpose of the ‘382 patent. The language of the preamble is limiting as it gives meaning to the various claims, defines their scope, and aids third-parties in understanding the parameters of the claimed inventions.

         For these reasons, the Court accepts PDT's proposed construction and reads the preamble in claims 1, 12, and 17 as limiting.

         2. “A ski support member”

PHRASE

PDT'S PROPOSED CONSTRICTION

HANGEMRIGHT'S PROPOSED CONSTRICTION

A ski support member

The part of the apparatus for supporting a ski with dimensions and an overall shape intended to engage and support a ski

The part of the apparatus for supporting a ski and separate element from the spacer and the coupling element

         Each of the asserted claims requires a “ski support member.” The parties agree that this is the part of the design that physically supports the ski, or upon which the ski physically rests (the piece depicted as 206 below). However, the parties dispute whether the ski support member must be designed with an overall shape intended to engage and support a ski and whether the ski support member must be a separate element from the spacer and coupling mechanism. The Court will analyze both arguments.

         (Image Omitted)

         A. Dimensions and overall shape

         PDT argues that the ski support member must be shaped in such a way as to engage and support a ski. In other words, the ski support member's shape should match the interior of the ski binding's shape-similar to a ball going into a joint-and complement each other. HangEmRight asserts that shape is not an essential element and anything that holds up a ski will suffice.

         In support of its proposed construction, PDT references the specifications of the ‘382 patent and the various references to how the ski support piece “engages the binder toe piece, ”[3] is “positioned within the receiving space, ”[4] and is placed in that location as to “prevent[] rotation of the ski.”[5]

         HangEmRight contends that the shape of the ski support piece is irrelevant, that it simply must be positioned within the receiving space (between the toe binder piece and the heel binder piece), and should hold the ski vertical to qualify. It appears that PDT agrees with this assertion. PDT is not claiming that the ski support member must be contoured to match the ski binder exactly (arguably it could have done this-after all, PDT does use phrases such as “having a contour that matches a contour of the receiving space” in other claims of the ‘382 patent), but simply that it must have an overall shape to engage and support the ski. HangEmRight also contends that Figure 11 of the ‘382 patent contradicts PDT's proposed construction as it is simply a round nob.

         (Image Omitted)

         In light of Figure 11, HangEmRight contends that any functional language is superfluous and that the ski support member is anything that can be positioned within the receiving space. PDT reiterates that the support member should be-at least-similar in shape to better engage and hold the ski upright.

         While it is true that the patent is devoid of words or phrases indicating that this support member should be shaped to fit a ski, that is the whole point of the invention. Like the preamble, HangEmRight's construction obliviates the phrases in the ‘382 patent to the point that they have no meaning at all. It is true that arguably anything could hold up a ski if it fit in the space between the bindings, but that is beyond the point. This is not a design patent where the drawings control, but rather a utility patent that describes an outcome or process, i.e., holding up skis. The ski support member must do that: support a ski so that it does not fall. Accordingly, some shaping is necessary. An object shaped larger or smaller than the space-or shaped contrary to the receiving space-could result in the ski falling off the hook. This outcome defeats the purpose of the invention. Furthermore, while HangEmRight claims that an exact shape is unnecessary, PDT's definition does not require an exact shape either, but rather that the piece has “an overall shape intended to engage and support a ski.”

         B. Separate element

         HangEmRight contends that the ski support member is a separate element from the spacer and coupling element. While it is true that some of the claims visually appear to have three separate elements-and the specifications specifically note that the embodiment depicts separate components-the specifications also outline that “one of skill in the art will recognize that in certain embodiment the ski support member [] and the spacer [] may be a single unitarily molded component.” Dkt. 35-1, 6:11-15. Therefore, while some preferred embodiments of the ‘382 ...


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