United States District Court, D. Idaho
MEMORANDUM DECISION AND ORDER
C. Nye. U.S. District Court Judge.
Court held a Markman hearing on August 21, 2018, to
interpret the claims of Plaintiff Patent Holder, LLC's
(“Patent Holder”) patent (United States Patent
No. 9, 062, 700 (“‘700 patent”)). The
Court's interpretation is set forth below.
August 11, 2017, Patent Holder filed suit against Defendants
Lone Wolf Distributors, Inc, and Lone Wolf R&D, LLC
(collectively “Lone Wolf”). In this suit, Patent
Holder seeks damages and a permanent injunction against Lone
Wolf for infringement of its ‘700 patent. Patent Holder
alleges that Lone Wolf manufactures products which are
covered by one of more claims and designs of the ‘700
patent. Lone Wolf denies infringement. The Court now engages
in the first step of the two-part infringement analysis:
Patent at Issue
sole patent at issue in this case is the ‘700 patent.
The ‘700 patent discloses “a firearm enhanced
trigger control connector.” Dkt. 43-2, at 1,
abstract. In layman's terms, the ‘700
patent covers an after-market firearm part that when placed
in a handgun shortens the distance that the trigger must
travel to discharge the firearm. Said differently, with such
a product installed, the space from where a person begins to
pull, or squeeze, the trigger, and the point at which the
trigger actually engages the firing pin is shortened. The
purpose of this device is to increase precision and accuracy
Court engages here in 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 matter 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).
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.
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 if the special definition of the
term is clearly stated in the patent specification or file
evidence also includes the prosecution history of the patent,
if in evidence, which includes the complete record of all the
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
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.
issue here are two phrases in Claim 1, and one phrase in
Claim 8 of the ‘700 patent. While there are slight
nuances between the parties' proposed constructions,
broadly speaking, Patent Holder alleges that the Court should
construe each disputed phrase by its plain and ordinary
meaning with limited alterations, or simply leave each as
written. Lone Wolf, on the other hand, asserts that each
phrase is invalid for indefiniteness. Alternatively, Lone
Wolf's proposed construction of each disputed term seeks
to clarify areas it believes are-as currently
drafted-impermissibly vague and must be altered in order to
aid a jury in determining infringement. The Court will
address each disputed claim in turn.
threshold matter, however, the Court must discuss the
principle of indefiniteness as it is Lone Wolf's main
argument in this case.
of indefiniteness are often determined at summary judgment
rather than claim construction; however, this is not a hard
and fast rule. Whether to decide the issue of invalidity
based on indefiniteness at the claim construction stage
depends on the circumstances and claims at issue in a given
Federal Circuit has made clear that indefiniteness is a legal
question that district courts may decide prior to trial.
Personalized Media Commc'ns, LLC v. Int'l Trade
Comm'n, 161 F.3d 696, 705 (Fed. Cir. 1998) (“A
determination of claim indefiniteness is a legal conclusion
that is drawn from the court's performance of its duty as
the construer of patent claims.”). Whether that occurs
at claim construction or summary judgment is a matter within
a court's discretion. See e.g. Indus. Tech.
Research Inst. v. LG Elecs. Inc., No.
3:13-CV-02016-GPC, 2014 WL 6907449, at *3 (S.D. Cal. Dec. 8,
2014) (holding that a District Court “has discretion as
to when to determine indefiniteness during patent case
proceedings”). Other courts in this Circuit have
recognized that “it is appropriate for [district
courts] to address indefiniteness issues at the claim
construction stage.” Eon Corp. IP Holdings LLC v.
Aruba Networks Inc., 2014 WL 938511, at *3 (N. D. Cal.
Mar. 5, 2015); see also Brandywine Commc'ns Techs.,
LLC v. AT & T Corp., No. C 12-2494 CW, 2014 WL
1569544, at *13 (N. D. Cal. Apr. 18, 2014).
three disputed claims in this case, Lone Wolf claims that all
three are indefinite. Frankly, if the Court decided not to
take up indefiniteness now, the Court would not rule on any
of the issues and reopen the exact same discussion at summary
judgment. Furthermore, the parties have begun briefing
summary judgment-albeit on a slightly different basis-and
requiring them to “re-brief” these issues would