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Swimways Corporation v. Zuru, LLC

United States District Court, E.D. Virginia, Norfolk Division

March 10, 2014

ZURU, LLC, Defendant.


MARK S. DAVIS, District Judge.

This matter is before the Court following a Markman hearing, conducted for the purpose of construing five disputed claim terms of the patent-in-suit. After careful consideration of the briefs submitted by the parties and the arguments advanced at the Markman hearing, the Court issues the following Opinion and Order detailing the claim constructions in this case.


At issue in this case is a single patent titled "Self-Propelled Figure, " U.S. Patent No. 6, 860, 785 ("the 785 patent"). The 785 patent was filed on June 13, 2002 as Application No. 10/167, 410 and issued to Vap Creative, Ltd. ("yap") on March 1, 2005. SwimWays Corporation ("SwimWays") and Vap (collectively "Plaintiffs") allege that SwimWays "is an exclusive licensee, from yap, of the 785 patent." Compl. ¶ 2, ECF No. 1.

A. The 1785 Patent

The 785 patent's abstract describes the "Self-Propelled Figure" as a "figure that is configured to be propelled through a liquid." Compl., Ex. A at Abstract, ECF No. 1-1 [hereinafter "785 patent"]. "The figure includ[es] a torso, a flexible appendage coupled to the torso, and a drive configured to move the appendage with respect to the torso." Id . The 785 patent's specification further describes the figure as "a water toy, such as, a fish or a sea turtle, that can traverse through a liquid, such as water." Id. at 1:6-7. The specification acknowledges that "water toys that simulate animals have been developed, " and that "[s]ome [such] conventional water toys... include moving appendages that propel the toy through liquids." Id. at 1:10-14. However, the specification states that, unlike the appendages of conventional water toys, the "appendage [described in the 785 patent] is configured to flex while [it] is moving with respect to the torso." Id. at 1:23-26; 1:61-64. Thus, unlike the appendages of the "conventional water toys, " which "do not have life-like motions, " id. at 1:14-17, the combination of "relative motion and the flex of the appendage effectively propel[s] the toy figure through the liquid and provide[s] the appendage with life-like movements, " id. at 1:26-29; 1:64-67.

Figures 3-7 of the specification "illustrate the toy figure 100 disposed in a liquid at different stages of the relative movement between the torso 120 and the appendage 160." Id. at 2:25-30. The figures depict the relative movement as "a reciprocating pivotal motion with the appendage 160 pivoting about an axis 126 that is located at the rear of the torso." Id. at 2:25-30. "Because the flexible portion 164 of the appendage 160 flexes and bends as the appendage 160 moves with respect to the torso 120, the movement of the flexible portion constantly lags the motion of the rigid portion 162 of the appendage, " which the specification describes as "a wave-like, whipping motion." Id. at 3:13-19.

B. Procedural History

Plaintiffs filed the instant action against Defendant Zuru, LLC ("Zuru" or "Defendant") on June 14, 2013, alleging that Zuru has directly and indirectly infringed the 785 patent by manufacturing, distributing, selling, offering to sell, and/or importing "a variety of robotic fish products, sold under the name Robo Fish." Compl. ¶¶ 12-13, ECF No. 1. On August 12, 2013, after two extensions of time granted by the Court upon consent motions filed by the parties, Zuru filed its Answer, denying any infringement, including induced or contributory, and asserting several affirmative defenses, including invalidity of the patent-in-suit, prosecution history estoppel, joinder of an improper party, and other equitable doctrines. ECF No. 12. Additionally, Zuru alleges a counterclaim against Plaintiffs, seeking declaratory judgments that Zuru has not infringed the patent-in-suit and that the patent-in-suit is "invalid, unenforceable, and/or void under 35 U.S.C. §§ 102 and 103." Id. at 7. Zuru also requests injunctive relief to prevent Plaintiffs "from enforcing or threatening to enforce the 785 patent against [Zuru]" or any of its affiliates. Id. at 9.

On February 18, 2014, the Court held a Markman hearing, where it heard argument concerning the disputed claim terms. The Court will now address the proper construction of the disputed claim terms argued at the Markman hearing.


In Markman v. Westview Instruments, Inc. , 517 U.S. 370 (1996), the United States Supreme Court succinctly explained the basis for, and importance of, claim construction:

The Constitution empowers Congress "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." Art. I, § 8, cl. 8. Congress first exercised this authority in 1790, when it provided for the issuance of "letters patent, " Act of Apr. 10, 1790, ch. 7, § 1, 1 Stat. 109, which, like their modern counterparts, granted inventors "the right to exclude others from making, using, offering for sale, selling, or importing the patented invention, " in exchange for full disclosure of an invention, H. Schwartz, Patent Law and Practice 1, 33 (2d ed. 1995). It has long been understood that a patent must describe the exact scope of an invention and its manufacture to "secure to [the patentee] all to which he is entitled, [and] to apprise the public of what is still open to them." McClain v. Ortmayer , 141 U.S. 419, 424 (1891). Under the modern American system, these objectives are served by two distinct elements of a patent document. First, it contains a specification describing the invention "in such full, clear, concise, and exact terms as to enable any person skilled in the art... to make and use the same." 35 U.S.C. § 112; see also 3 E. Lipscomb, Walker on Patents § 10:1, pp. 183-184 (3d ed. 1985) (Lipscomb) (listing the requirements for a specification). Second, a patent includes one or more "claims, " which "particularly poin[t] out and distinctly clai[m] the subject matter which the applicant regards as his invention." 35 U.S.C. § 112. "A claim covers and secures a process, a machine, a manufacture, a composition of matter, or a design, but never the function or result of either, nor the scientific explanation of their operation." 6 Lipscomb § 21.17, at 315-316. The claim "define[s] the scope of a patent grant, " 3 id., § 11:1, at 280, and functions to forbid not only exact copies of an invention, but products that go to "the heart of an invention but avoids the literal language of the claim by making a noncritical change, " Schwartz, supra, at 82....
Characteristically, patent lawsuits charge what is known as infringement, Schwartz, supra, at 75, and rest on allegations that the defendant "without authority ma[de], use[d] or [sold the] patented invention, within the United States during the term of the patent therefor...." 35 U.S.C. § 271(a). Victory in an infringement suit requires a finding that the patent claim "covers the alleged infringer's product or process, " which in turn necessitates a determination of "what the words in the claim mean." Schwartz, supra, at 80; see also 3 Lipscomb § 11:2, at 288-290.

Id. at 373-74.

It is well-settled that a determination of infringement requires a two-step analysis: "First, the court determines the scope and meaning of the patent claims asserted" and second, "the properly construed claims are compared to the allegedly infringing device." Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc) (citing, inter alia, Markman , 517 U.S. at 371-73). In conducting this analysis, it must be remembered that "[i]t is a bedrock principle' of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp. , 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc. , 381 F.3d 1111, 1115 (Fed. Cir. 2004)); see Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("First, we look to the words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention.").

A. Claim Construction Principles

Focusing on the first step of the infringement analysis, the Federal Circuit has repeatedly stated that "the words of a claim are generally given their ordinary and customary meaning, '" and that "the 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 1312-13 (quoting Vitronics , 90 F.3d at 1582). This "provides an objective baseline from which to begin claim interpretation" and is based upon "the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art." Id. at 1313. As noted by the Federal Circuit:

It is the person of ordinary skill in the field of the invention through whose eyes the claims are construed. Such person is deemed to read the words used in the patent documents with an understanding of their meaning in the field, and to have knowledge of any special meaning and usage in the field. The inventor's words that are used to describe the invention-the inventor's lexicography-must be understood and interpreted by the court as they would be understood and interpreted by a person in that field of technology. Thus the court starts the decisionmaking process by reviewing the same resources as would that person, viz., the patent specification and the prosecution history.

Id. (quoting Multiform Desiccants, Inc. v. Medzam, Ltd. , 133 F.3d 1473, 1477 (Fed. Cir. 1998)). "In some cases, '" however, "the ordinary meaning of claim language as understood by a person of skill in the art 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.'" Acumed LLC v. Stryker Corp. , 483 F.3d 800, 805 (Fed. Cir. 2007) (quoting Phillips , 415 F.3d at 1314). Finally, when construing claim terms and phrases, the Court cannot add or subtract words from the claims or appeal to "abstract policy considerations" to broaden or narrow their scope. SmithKline Beecham Corp. v. Apotex Corp. , 403 F.3d 1331, 1339-40 (Fed. Cir. 2005); see also Quantum Corp. v. Rodime, PLC , 65 F.3d 1577, 1584 (Fed. Cir. 1995) (observing that "it is well settled that no matter how great the temptations of fairness or policy making, courts do not redraft claims").

B. Types of Evidence to Be Considered

In determining the meaning of disputed terms or phrases, the Court must first examine the claims themselves. See Phillips , 415 F.3d at 1312; Vitronics , 90 F.3d at 1582. Indeed, the Federal Circuit has stated that the claims themselves, "both asserted and unasserted, " can be "valuable sources of enlightenment as to the meaning of a claim term, " in part, because "claim terms are normally used consistently throughout the patent." Phillips , 415 F.3d at 1314. Furthermore, differences in claims can also be enlightening. "For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Id. at 1314-15.

"The claims, of course, do not stand alone, " but, rather, "must be read in view of the specification, of which they are a part.'" Id. at 1315 (quoting Markman v. Westview Instruments, Inc. , 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)); see also Vitronics , 90 F.3d at 1582 ("[T]he 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."); Multiform Desiccants , 133 F.3d at 1478 ("The best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history."). The specification, as required by statute, describes the manner and process of making and using the patented invention, and, therefore, "claims must be construed so as to be consistent with the specification." Merck & Co. v. Teva Pharms. USA, Inc. , 347 F.3d 1367, 1371 (Fed. Cir. 2003); see 35 U.S.C. § 112 (requiring that the specification describe an invention in "full, clear, concise, and exact terms"). The Federal Circuit and Supreme Court have thus long emphasized the specification's important role in claim construction, noting that, usually, the specification "is dispositive, " as it is "the single best guide to the meaning of the disputed term." Phillips , 415 F.3d at 1315 (quoting Vitronics , 90 F.3d at 1582); see Markman , 517 U.S. at 389 (referencing the "standard construction rule that a term can be defined only in a way that comports with the instrument as a whole"); Multiform Desiccants , 133 F.3d at 1478.

In addition to the claims and specification, the Court should consider the prosecution history, which consists of the complete record of the proceedings before the United States Patent and Trademark Office ("PTO"), including the prior art cited during the examination of the patent and any subsequent reexaminations. Phillips , 415 F.3d at 1317. The prosecution history "provides evidence of how the PTO and the inventor understood the patent" and "can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id . (citing Vitronics , 90 F.3d at 1582-83); see also Chimie v. PPG Indus., Inc. , 402 F.3d 1371, 1384 (Fed. Cir. 2005) (indicating that "the purpose of consulting the prosecution history" as part of claim construction is to exclude any "disclaimed" interpretation). "At the same time, because prosecution history represents an ongoing negotiation between the PTO and the inventor, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.'" Trading Techs. Int'l, Inc. v. eSpeed, Inc. , 595 F.3d 1340, 1352 (Fed. Cir. 2010) (quoting Netcraft Corp. v. eBay, Inc. , 549 F.3d 1394, 1401 (Fed. Cir. 2008)).

The Court may also examine extrinsic evidence, which includes "all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman , 52 F.3d at 980. For example, technical dictionaries may provide the Court with a better understanding of the underlying technology and the way in which one of skill in the art might use the claim terms. Phillips , 415 F.3d at 1318; see also Vitronics , 90 F.3d at 1584 n.6. General usage dictionaries may also be consulted, as they are "often useful to assist in understanding the commonly understood meaning of words" and "[a] dictionary definition has the value of being an unbiased source accessible to the public in advance of litigation.'" Phillips , 415 F.3d at 1322 (quoting Vitronics , 90 F.3d at 1585).[1] However, the Federal Circuit cautions that Alla general-usage dictionary cannot overcome art-specific evidence of the meaning' of a claim term, " that "the use of the dictionary may extend patent protection beyond what should properly be afforded by the inventor's patent, " and that "[t]here is no guarantee that a term is used in the same way in a treatise as it would be by the patentee." Phillips , 415 F.3d at 1322 (quoting Vanderlande Indus. Nderland BV v. Int'l Trade Comm'n , 366 F.3d 1311, 1321 (Fed. Cir. 2004)). Additionally, "different dictionaries may contain somewhat different sets of definitions for the same words. A claim should not rise or fall based upon the preferences of a particular dictionary editor, or the court's independent decision, uninformed by the specification, to rely on one dictionary rather than another." Id . Thus, "while extrinsic evidence can shed useful light on the relevant art, ' [the Federal Circuit has] explained that it is less significant than the intrinsic record in determining "the legally operative meaning of claim language."'" Id. at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp. , 388 F.3d 858, 862 (Fed. Cir. 2004)).

With the foregoing principles in mind, the Court will now examine the patents and the disputed claim terms.


In advance of the Markman hearing conducted by this Court, the parties submitted a joint claim construction and prehearing statement that included one agreed-upon claim term and five disputed claim terms. ECF No. 31. The Court adopts the parties' stipulated construction of the agreed-upon term, with minor ...

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