UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable Clark S. Cheney
`Chief Administrative Law Judge
`
`In the Matter of
`
`CERTAIN CRAFTING MACHINES AND
`COMPONENTS THEREOF
`
`Inv. No. 337-TA-1426
`
`RESPONDENTS’ OPENING CLAIM CONSTRUCTION BRIEF
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`III.
`
`IV.
`V.
`VI.
`
`VII.
`
`INTRODUCTION ............................................................................................................. 1
`BACKGROUND ............................................................................................................... 1
`LEGAL STANDARD ........................................................................................................ 2
`A.
`Claim Construction ................................................................................................ 2
`B.
`Indefiniteness ......................................................................................................... 3
`PERSON OF ORDINARY SKILL IN THE ART ............................................................. 3
`UNDISPUTED CONSTRUCTIONS ................................................................................ 4
`DISPUTED CONSTRUCTIONS ...................................................................................... 4
`A.
`The ’758 And ’646 Patents .................................................................................... 4
`1.
`“substrate” (’758 patent, claims 1, 4, 12, 13, 17, 18, 23; ’646
`patent, claim 14)......................................................................................... 4
`“located within” (’758 patent, claim 18; ’646 patent, claims 5, 14) .......... 8
`2.
`The ’758 Patent .................................................................................................... 11
`1.
`“the shell” (’758 patent, claims 19, 20) ................................................... 11
`The ’646 Patent .................................................................................................... 13
`1.
`“planar” (’646 patent, claims 9, 11, 13, 16) ............................................. 13
`CONCLUSION ................................................................................................................ 16
`
`A.
`
`B.
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Ajinomoto Co. v. Int’l Trade Comm’n,
`932 F.3d 1342 (Fed. Cir. 2019)..............................................................................................7, 8
`
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`672 F.3d 1335 (Fed. Cir. 2012)..................................................................................................9
`
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010)................................................................................................14
`
`Bushnell Hawthorne, LLC v. Cisco Sys., Inc.,
`813 F. App’x 522 (Fed. Cir. 2020) ......................................................................................3, 12
`
`Collabo Innovations, Inc. v. OmniVision Tech., Inc.,
`No. 16-197, 2017 WL 3670661 (D. Del., Aug. 25, 2017) .......................................................12
`
`Energizer Holdings, Inc. v. Int’l Trade Comm’n,
`435 F.3d 1366 (Fed. Cir. 2006)..................................................................................................3
`
`Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc.,
`815 F.3d 1314 (Fed. Cir. 2016)..................................................................................................2
`
`Gemalto S.A. v. HTC Corp.,
`754 F.3d 1364 (Fed. Cir. 2014)..................................................................................................2
`
`Halliburton Energy Servs., Inc. v. M-I LLC,
`514 F.3d 1244 (Fed. Cir. 2008)..................................................................................................3
`
`Liberty Ammunition, Inc. v. U.S.,
`835 F.3d 1388 (Fed. Cir. 2016)..................................................................................................7
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995)......................................................................................................2
`
`Medrad, Inc. v. MRI Devices Corp.,
`401 F.3d 1313 (Fed. Cir. 2005)..................................................................................................2
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) .............................................................................................................3, 13
`
`Novo Indus., L.P. v. Micro Molds Corp.,
`350 F.3d 1348 (Fed. Cir. 2003)................................................................................................13
`
`ii
`
`

`

`Nystrom v. TREX Co.,
`424 F.3d 1136 (Fed. Cir. 2005)..................................................................................................2
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd.,
`521 F.3d 1351 (Fed. Cir. 2008)................................................................................................14
`
`Omega Engineering, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003)..................................................................................................8
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..................................................................................................2
`
`SpeedTrack, Inc. v. Amazon.com,
`998 F.3d 1373 (Fed. Cir. 2021)..................................................................................................8
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)..................................................................................................13
`
`Statutes
`
`35 U.S.C. § 112(b) ...........................................................................................................................3
`
`35 U.S.C. § 282(b)(3)(A) .................................................................................................................3
`
`Other Authorities
`
`Ground Rule 7.2 ...............................................................................................................................1
`
`iii
`
`

`

`RXM-2
`
`RXM-5
`
`RXM-6
`
`RXM-7
`
`RXM-8
`
`Production No.
`Exhibit No. Description
`JXM-1
`U.S. Patent No. 11,208,758 (“the ’758 Patent”) CRI00002650
`JXM-2
`U.S. Patent No. 11,905,646 (“the ’646 Patent”) CRI00002668
`JXM-3
`Joint Claim Construction Chart
`N/A
`JXM-4
`’758 Patent File History
`CRI00004050
`JXM-5
`’646 Patent File History
`CRI00002886
`RXM-1
`HTVRONT’s Response to Cricut’s
`N/A
`Interrogatory No. 9
`Cricut’s Response to HTVRONT’s
`Interrogatory No. 10
`Merriam-Webster, “include”
`Oxford Concise Dictionary of Mathematics,
`“coincident”
`The American Heritage Dictionary of the
`English Language, “coincident,” “planar,” and
`“flat”
`Collins English Dictionary, Twelfth Edition,
`“coincident” and “flat”
`Collins English Dictionary, Thirteenth Edition,
`“planar”
`Oxford Student’s Dictionary, “flat”
`
`RXM-3
`RXM-4
`
`JOINT TABLE OF EXHIBITS
`
`N/A
`
`N/A
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`iv
`
`

`

`Pursuant to Order No. 2 (Ground Rule 7.2) and Corrected Order No. 6, Respondents
`
`Hunan Sijiu Technology, Co. Ltd. (f/k/a Hunan Sijiu Electronic Technology Co., Ltd.) and
`
`Guangdong Rongtu Technology Co., Ltd. (collectively, “HTVRONT” or “Respondents”) submit
`
`this opening claim construction brief related to asserted claims of U.S. Patent Nos. 11,208,758
`
`(JXM-1, hereinafter “the ’758 patent”) and 11,905,646 (JXM-2, hereinafter “the ’646 patent”).
`
`None of the parties identified any term from asserted U.S. Patent Nos. D893,563 (“the ’D563
`
`patent”), D910,724 (“the ’D724 patent”), D926,237 (“the ’D237 patent”) and D1,029,090 (“the
`
`’D090 patent”) for construction.
`
`I.
`
`INTRODUCTION
`
`The claim construction disputes in this investigation are simple and straightforward, and
`
`they generally hinge on one question: should Cricut be limited to the words it chose in drafting
`
`its claims? Under the law, it must be, and the intrinsic record is in accord. HTVRONT’s
`
`constructions are true to this intrinsic record and reflect the plain meaning of the words that
`
`Cricut selected to include in its claims, often after being forced to amend in view of the prior art.
`
`Cricut’s proposals, on the other hand, seek to broaden the plain meaning of the disputed terms
`
`and to recapture ground that Cricut gave up during prosecution. The CALJ should reject Cricut’s
`
`proposals and adopt HTVRONT’s constructions.
`
`II.
`
`BACKGROUND
`
`The ’758 and ’646 patents are related patents that claim a heat press. The ’758 and ’646
`
`patents purport to claim a “safe” and “cost effective” heat press for a “home-use setting.” ’758
`
`patent, 1:29-32.1 Cricut’s ’646 patent is a continuation of its ’758 patent, which is in turn a
`
`1 When addressing terms that are common across both patents, all citations to the specification
`will be to the ’758 patent. Because the specifications are identical, the citations apply equally to
`the ’646 patent.
`
`1
`
`

`

`continuation of unasserted U.S. Pat. No. 10,876,250. ’758 patent, INID # (63); ’646 patent, INID
`
`# (63). The ’758 patent and the ’646 patent share identical figures and specifications. ’758 patent,
`
`INID # (63); ’646 patent, INID # (63). The ’758 and ’646 patents issued in view of Cricut’s
`
`representations to the examiner. JXM-4 (’758 patent file history); JXM-5 (’646 patent file
`
`history).
`
`III.
`
`LEGAL STANDARD
`
`A.
`
`Claim Construction
`
`“[T]he court has the power and obligation to construe as a matter of law the meaning of
`
`language used in the patent claim.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 979
`
`(Fed. Cir. 1995). “It 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) (internal quotation marks omitted). “[T]he words of a claim are
`
`generally given their ordinary and customary meaning.” Id. at 1312 (citation and internal
`
`quotation marks omitted). However, the Court “cannot look at the ordinary meaning of the term
`
`... in a vacuum. Rather, we must look at the ordinary meaning in the context of the written
`
`description and the prosecution history.” Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313,
`
`1319 (Fed. Cir. 2005) (ellipsis in original) (citation omitted). “A party is, therefore, ‘not entitled
`
`to a claim construction divorced from the context of the written description and prosecution
`
`history.’” Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., 815 F.3d 1314, 1320 (Fed.
`
`Cir. 2016) (quoting Nystrom v. TREX Co., 424 F.3d 1136, 1144-45 (Fed. Cir. 2005)). “[W]hen
`
`multiple patents derive from the same initial application, the prosecution history regarding a
`
`claim limitation in any patent that has issued applies with equal force to subsequently issued
`
`patents that contain the same claim limitation.” Gemalto S.A. v. HTC Corp., 754 F.3d 1364, 1371
`
`(Fed. Cir. 2014) (citations and internal quotation marks omitted) (construing claims based on
`
`2
`
`

`

`prosecution history of related patents when both patents claimed priority to the same initial
`
`application).
`
`B.
`
`Indefiniteness
`
`Under 35 U.S.C. § 112(b), a patent “specification shall conclude with one or more claims
`
`particularly pointing out and distinctly claiming the subject matter which the inventor or a joint
`
`inventor regards as the invention.” Where “claims, read in light of the specification delineating
`
`the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in
`
`the art about the scope of the invention[,]” they are indefinite and invalid. Nautilus, Inc. v. Biosig
`
`Instruments, Inc., 572 U.S. 898, 901 (2014); see also 35 U.S.C. § 112(b); 35 U.S.C. §
`
`282(b)(3)(A). “[T]he patent statute requires that the scope of the claims be sufficiently definite to
`
`inform the public of the bounds of the protected invention, i.e., what subject matter is covered by
`
`the exclusive rights of the patent.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244,
`
`1249 (Fed. Cir. 2008). A term is indefinite if its meaning is not reasonably ascertainable.
`
`Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006).
`
`“The lack of antecedent basis signals a potential indefiniteness problem but does not end
`
`the inquiry.” Bushnell Hawthorne, LLC v. Cisco Sys., Inc., 813 F. App’x 522, 526 (Fed. Cir.
`
`2020). The inquiry turns on whether the claim, despite the lack of explicit antecedent basis, has a
`
`reasonably certain scope in context. Id. (quoting Energizer Holdings, 435 F.3d at 1370).
`
`IV.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`HTVRONT contends that a person of ordinary skill in the art (“POSITA”) in the subject
`
`matter of the Asserted Patents would have “an undergraduate degree in industrial design,
`
`mechanical engineering, or equivalent education, and two years of experience relating to the
`
`design of consumer electronic products. Additional experience may substitute for a formal
`
`3
`
`

`

`degree and additional education may substitute for experience.” RXM-1 (HTVRONT Response
`
`to Cricut Interrogatory No. 9).
`
`Cricut contends that a POSITA with respect to the Asserted Patents would have “an
`
`undergraduate degree in industrial design or equivalent education, and would have two years of
`
`industry experience in the design and production of consumer electronic products.” RXM-2
`
`(Cricut Response to HTVRONT Interrogatory No. 10).
`
`While the parties dispute the correct definition, regardless of which is adopted,
`
`HTVRONT’s proposed constructions and positions remain the same.
`
`V.
`
`UNDISPUTED CONSTRUCTIONS
`
`As identified on the parties’ Joint Claim Construction Chart (JXM-3), the parties agree on
`
`the following constructions:
`
`Term
`“wherein the insulation portion comprises glass
`reinforced nylon, the glass reinforced nylon
`comprising a first layer of insulating material; and
`wherein the insulation portion further comprises a
`second layer of insulating material, the second
`layer of insulating material comprising glass
`fibers”
`[’646 Patent, claim 1]
`“ends”
`[’646 Patent, claim 14]
`
`VI.
`
`DISPUTED CONSTRUCTIONS
`
`A.
`
`The ’758 And ’646 Patents
`
`Agreed Construction
`“the insulation portion including a first layer
`comprising glass reinforced nylon and a second
`layer comprising glass fibers”
`
`“both portions, lengthwise, closer to the
`respective extremities than to the center”
`
`1.
`
`“substrate” (’758 patent, claims 1, 4, 12, 13, 17, 18, 23; ’646 patent,
`claim 14)
`
`Cricut Proposed
`Construction
`“a supportive component”
`
`Staff and HTVRONT Proposed Construction
`
`“a structural support component distinct from the handle”
`
`The primary dispute regarding the term “substrate” is whether it must be a component
`
`distinct from the handle, as HTVRONT and Staff agree, or whether the same component can be
`4
`
`

`

`both handle and substrate, as Cricut proposes. The plain language of the claims, the specification,
`
`and the prosecution history all support HTVRONT and Staff’s construction and demonstrate that
`
`the same structural element cannot be both handle and substrate. Cricut’s proposal, on the other
`
`hand, is an impermissible attempt to broaden claim scope beyond that which the patentee was
`
`permitted to obtain. The CALJ should adopt HTVRONT and Staff’s construction.
`
`The plain language of the claims demonstrates that the substrate is a distinct component
`
`that provides structural support to the handle but that is something more than just the claimed
`
`handle. Importantly, the independent claims of both patents differentiate between “handle” and
`
`“substrate,” claiming them as separate and distinct elements. JXM-1, ’758 patent at cl. 1 (“the
`
`handle including a substrate…and an insulation portion in direct contact with the substrate”), cl.
`
`13 (“a handle including a substrate…the substrate in direct contact with the insulation portion”),
`
`cl. 18 (“a substrate located within the handle”); JXM-2, ’646 patent at cl. 14 (“a substrate located
`
`within the handle … wherein ends of the substrate are fastened to the insulation portion”). The
`
`dependent claims are in accord, as they require the substrate, and not the handle, to be “in
`
`[direct] contact with” the electrical circuit or with particular layers of insulation. JXM-1, ’758
`
`patent at cls. 4 (“an electrical circuit located in contact with the substrate”), 12, 23 (“a first layer
`
`[of insulation] in direct contact with the substrate”).
`
`The specification confirms that the substrate is a distinct structural component that
`
`provides support to the handle. As the specification explains,
`
`In some examples, the heat press 10 includes a metal substrate 20
`located within the handle 16. In order to keep the heat press’s 10
`weight at a minimum, a majority of its components are made of
`plastic or thermoplastic. The metal substrate 20 provides the
`handle 16 support in order to withstand forces from the user.
`
`JXM-1, ’758 patent at 4:52-57. As an initial matter, the sole description of the substrate in the
`
`specification explains that it serves an important purpose: it “provides the handle 16 support in
`5
`
`

`

`order to withstand forces from the user.” Id. at 4:55-57. In addition, it makes clear that the
`
`substrate must be a distinct component from the handle because it explains that while the
`
`majority of the heat press’s components are made from plastic or thermoplastic, the substrate can
`
`be made of something different. Id. All depictions of the substrate in the figures are consistent,
`
`demonstrating that the substrate must be something other than just the part of the heat press that
`
`the user grasps to operate the product. Id. at FIG. 4 (distinguishing handle 16 and substrate 20);
`
`FIGS. 5, 8B (same). Moreover, the patent discloses embodiments where the heat press includes a
`
`handle and a substrate, and other embodiments where the heat press includes only the handle. Id.
`
`at 4:52-53 (“In some examples, the heat press 10 includes a metal substrate 20 located within the
`
`handle.”); see also JXM-2, ’646 patent, cl. 9 (independent claim that requires a handle but does
`
`not require a substrate). That the handle can exist without the substrate demonstrates that the
`
`patentee intended that they be distinct components.
`
`The prosecution history supports a construction that requires the handle and substrate to
`
`be distinguishable components. Importantly, Cricut distinguished its claims over the prior art
`
`based on attributes of the substrate, underscoring that it viewed the substrate as a unique
`
`component. JXM-4, ’758 File History at CRI00004306 to CRI00004309. First, in distinguishing
`
`over U.S. Pat. No. 4,347,428 (“Conrad”) and DE Pat. No. 2921062 (“Goerlich”), Cricut argued
`
`that neither of these included “an insulation portion in direct contact with the substrate.” Id. at
`
`CRI00004307 to CRI00004308. Similarly, in distinguishing U.S. Pat. No. 5,252,171
`
`(“Anderson”), Cricut conceded that Anderson disclosed a handle 22, but distinguished the
`
`reference on the basis that “the cantilever arm 26 (which Examiner correlates to the claimed
`
`‘substrate’)” was not “located within a handle.” Id. at CRI00004309. Cricut should be held to its
`
`representations that the claimed “substrate” must be something more than the claimed “handle.”
`
`6
`
`

`

`See Ajinomoto Co. v. Int’l Trade Comm’n, 932 F.3d 1342, 1351 (Fed. Cir. 2019) (“A patentee
`
`must be held to what he declares during the prosecution of his patent, because a contrary rule
`
`would undermine the public notice function of a patent.”) (internal quotation marks omitted).
`
`Cricut is expected to argue that the claim term “including” permits the substrate and the
`
`handle to be one and the same. That argument ignores the teachings of the specification and
`
`prosecution history, which demonstrate that, while the substrate can be enclosed by the handle, it
`
`must be a distinct component. That understanding comports with the plain meaning of the word
`
`“including,” particularly as it is used in the context of the intrinsic record in this case. RXM-3,
`
`Merriam Webster, “Include” (“1. to take in or comprise as part of a whole or group; 2. to contain
`
`between or within; 3. to shut up: enclose”). Indeed, the Federal Circuit has “warned against using
`
`terms such as ‘comprising’ or ‘including’ as “weasel word[s] with which to abrogate claim
`
`limitations.” Liberty Ammunition, Inc. v. U.S., 835 F.3d 1388, 1399 (Fed. Cir. 2016) (alteration
`
`original, internal quotation marks omitted). Here, as in Liberty Ammunition, substrate must be
`
`construed in a way that “gives proper meaning to a structural element that is claimed[.]” Id. at
`
`1400 (construing “said body further including an interface portion disposed intermediate
`
`opposite ends of said body” and limiting “intermediate opposite ends” to mean “the interface is
`
`positioned between the front end and the rear end of the projectile body such that the interface
`
`does not extend all of the way to the front end or to the rear end of the projectile”). HTVRONT
`
`and Staff’s construction properly gives meaning to the term “substrate” as it is used in the
`
`asserted patents, whereas Cricut’s construction would abrogate “substrate” as a separate
`
`limitation, allowing the same component to be both handle and substrate. The CALJ should
`
`reject Cricut’s attempt to broaden the claims and should adopt HTVRONT and Staff’s proposed
`
`construction.
`
`7
`
`

`

`2.
`
`“located within” (’758 patent, claim 18; ’646 patent, claims 5, 14)
`
`Cricut and Staff Proposed Construction
`
`“located inside”
`
`HTVRONT Proposed
`Construction
`“fully enclosed by”
`
`The dispute over “located within” is whether the referenced component must be fully
`
`enclosed by the handle, as HTVRONT proposes, or merely inside the handle, as Cricut and Staff
`
`allege. The difference is subtle but important because Cricut and Staff’s proposal would permit
`
`Cricut to expand the scope of its claims to recapture that which it disclaimed in prosecution.
`
`HTVRONT’s proposal ensures that the term remains limited by Cricut’s prosecution disclaimer,
`
`and the CALJ should therefore adopt it.
`
`During prosecution of the ’758 patent, Cricut amended what is now claim 18 by replacing
`
`the claim term “the handle including a substrate at least partially enclosed by a shell” with “a
`
`substrate located within the handle.” JXM-4, ’758 File History at CRI00004304. Cricut
`
`explained that the amendment distinguished the claim over the Anderson prior art because
`
`Anderson lacked a substrate “being located within the handle.” Id. at CRI00004309 (emphasis
`
`in original). In making this amendment, Cricut disclaimed the prior “at least partially enclosed”
`
`claim scope. See SpeedTrack, Inc. v. Amazon.com, 998 F.3d 1373, 1379-80 (Fed. Cir. 2021)
`
`(patentee disclaimed claim scope when it amended claims to overcome prior art); see also
`
`Ajinomoto, 932 F.3d at 1351 (“[W]hen a word is changed during prosecution, the change tends to
`
`suggest that the new word differs in meaning in some way from the original word.”). Cricut’s
`
`disclaimer applies not only to the ’758 patent but also to the later continuation ’646 patent, which
`
`uses identical “located within” language in several claims and includes nothing in its prosecution
`
`history suggesting it should carry any different meaning. See Omega Engineering, Inc. v. Raytek
`
`Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (applying prosecution disclaimer from parent patent
`
`8
`
`

`

`to child patent); see also JXM-2, ’646 patent at cl. 5 (“an electrical circuit located within the
`
`handle”), cl. 14 (“a substrate located within the handle”).
`
`Cricut’s remarks regarding the claim amendment support its disclaimer. Specifically,
`
`Cricut explained that the component the examiner identified as the substrate, i.e. cantilever arm
`
`26, was not “located within the handle” for two reasons: (1) because “the handle 22 moves
`
`relative to the cantilever arm 26”; and (2) because “while Anderson's cantilever arm 26 is
`
`enclosed by the cover 50, Anderson's handle 22 is exposed from the cover 50 so that the operator
`
`can freely grasp the handle 22 for moving the platens[.]” JXM-4, ’758 File History at
`
`CRI00004309. In other words, the substrate is not “located within the handle” because the
`
`substrate is enclosed by the cover but the handle is not. By way of analogy, water may be inside
`
`a glass, but one would not refer to it as “fully enclosed by” the glass the same way one may say
`
`that water is fully enclosed by a water bottle.
`
`Beyond Cricut’s prosecution disclaimer, other intrinsic evidence supports HTVRONT’s
`
`construction. Importantly, Cricut still has patent claims that include the “at least partially
`
`enclosed” language, further demonstrating that the two terms must have different meaning.
`
`Compare JXM-1, ’758 patent at cl. 1 (“the handle including a substrate at least partially enclosed
`
`by a shell”) with JXM-1, ’758 patent at cl. 18 (“a substrate located within the handle”). “When
`
`different words are used in separate claims, they are presumed to have different meanings.”
`
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (ascribing
`
`different meaning when two independent claims “use[d] different terms in parallel settings”).
`
`And here, as discussed, the prosecution confirms that “located within” refers to an enclosed
`
`component rather than one that can be partially external.
`
`9
`
`

`

`The specification also confirms that “located within” refers to an enclosed component.
`
`The term appears twice in the specification, once referencing an electrical circuit and once
`
`referencing the substrate:
`
`In some examples, the heat press 10 has an electrical circuit 15
`located within the control compartment 14 and another located
`with the handle 16.
`
`In some examples, the heat press 10 includes a metal substrate 20
`located within the handle 16.
`
`JXM-1, ’758 patent at 4:32-33, 4:52-53. Both of these instances relate to the embodiment
`
`depicted in Figure 4, where “the heat press 10 is shown without its cover 12.” Id. at 4:25-26.
`
`Figure 4 depicts both the electrical circuit 15
`
`and the metal substrate 20 as enclosed
`
`components of the heat press. See annotated
`
`image to right. Moreover, the specification’s
`
`use of parallel language for the substrate and
`
`the electrical circuit confirms that “located
`
`within” means the same thing regardless of
`
`whether it describes the electrical circuit (see
`
`JXM-2, ’646 patent, cl. 5) or the substrate (see
`
`JXM-1, ’758 patent, cl. 18; JXM-2, ’646
`
`patent, cl. 14). The use of the exemplary “[i]n
`
`some examples” (JXM-1, ’758 patent at 4:32-
`
`33) likewise comports with the claims and confirms “located within” must mean something other
`
`than “partially enclosed by”—in the specification, as in the claims, sometimes components are
`
`10
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`

`

`“located within,” but at other times they may be only “partially enclosed.” Compare JXM-1,
`
`’758 patent at cl. 1 with id. at cl. 18.
`
`Cricut’s construction is wrong because it seeks to permit components that are not fully
`
`enclosed by the handle to be identified as the claimed substrate. For
`
`example, under Circuit’s construction, an exterior piece that forms
`
`the inner circumference of a handle could be the claimed substrate
`
`“within the handle[.]” See annotated image to right. That result
`
`would permit Cricut to recapture disclaimed claim scope, and the
`
`CALJ should reject it.
`
`B.
`
`The ’758 Patent
`
`1.
`
`“the shell” (’758 patent, claims 19, 20)
`
`Staff and HTVRONT Proposed Construction
`
`Indefinite, no antecedent basis.
`
`Cricut Proposed
`Construction
`The lack of antecedent basis
`does not render the term
`indefinite. “The shell” is “a
`portion of the cover that at
`least partially encloses the
`substrate.”
`
`The term “the shell” lacks antecedent basis in claims 19 and 20 of the ’758 patent, as
`
`there is no mention of any “shell” in independent claim 18, from which claims 19 and 20 depend.
`
`Because the lack of antecedent basis renders the claim scope uncertain, the term is indefinite.
`
`Cricut’s attempt to save the validity of these dependent claims is contrary to the specification
`
`because it equates “shell” and “cover,” and the CALJ should reject it.
`
`As discussed in Section VI.A.1. above, Cricut amended what became claim 18 of the
`
`’758 patent to replace “the handle including a substrate at least partially enclosed by a shell” with
`
`“a substrate located within the handle.” JXM-4, ’758 File History at CRI00004304. In other
`
`11
`
`

`

`words, Cricut amended the claim to remove reference to “a shell.” Although it did not amend the
`
`dependent claims, their reference to “the shell” is no longer clear in the context of the intrinsic
`
`evidence. Thus, claims 19 and 20 are invalid as indefinite. See Bushnell Hawthorne, LLC v.
`
`Cisco Sys., Inc., 813 F. App’x 522, 526-27 (Fed. Cir. 2020) (finding claims invalid for
`
`indefiniteness when a term lacks antecedent basis and does not have a reasonably certain scope
`
`in context).
`
`The patent specification says little about the claimed “shell” and does not add sufficient
`
`clarity to avoid a finding of indefiniteness. See Collabo Innovations, Inc. v. OmniVision Tech.,
`
`Inc., No. 16-197, 2017 WL 3670661, at *9 (D. Del., Aug. 25, 2017) (“Construing ‘the first active
`
`region’ in a manner consistent with Collabo’s proposed construction would require the court to
`
`ignore portions of the claims and define the term in a manner inconsistent with both its ordinary
`
`meaning and the intrinsic record.”). Indeed, the specification mentions the shell only once:
`
`In some examples, the cover is made of a thermoplastic and the
`handle includes a metal substrate at least partially enclosed by a
`plastic shell. The plastic shell forms a cavity for housing an
`electrical circuit at least indirectly electrically coupled to the heat
`plate and the control compartment.
`
`JXM-1, ’758 patent, 2:4-8. None of the figures of the ’758 patent shed additional light on what
`
`the shell might be or what it might look like. Moreover, the specification does not describe what
`
`role the shell plays in the embodiment where the substrate is “located within the handle,” which,
`
`as discussed, is a meaningfully different embodiment than that where the substrate “is at least
`
`partially enclosed by a plastic shell.” See Section VI.A.1., supra. In view of minimal guidance in
`
`the specification, it is not clear what component of the claimed device is “the shell” in the
`
`embodiment to which claim 18 is directed—and claims 19 and 20 are indefinite as a result.
`
`Cricut’s request that the CALJ correct the claims contradicts the specification and the
`
`prosecution history. Importantly, Cricut’s proposed construction is contrary to its prosecution
`12
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`

`

`disclaimer, as it seeks to have “shell” refer to “a portion of the cover that at least partially
`
`encloses the substrate.” That is the precise language that Cricut removed in prosecution and
`
`replaced with “the substrate within the handle.” JXM-4, ’758 File History at CRI00004304.
`
`Cricut cannot erase its disclaimer by judicial amendment of its dependent claims. Novo Indus.,
`
`L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003) (holding that a district court
`
`may not correct an error unless “the correction is not subject to reasonable debate”). Moreover,
`
`the specification distinguishes between the “shell” and the “cover,” and does not indicate that the
`
`former is a portion of the latter. JXM-1, ’758 patent, 2:4-6 (“the cover is made of a thermoplastic
`
`and the handle includes a metal substrate at least partially enclosed by a plastic shell”). Indeed,
`
`Cricut’s proposed construction reads out the specification’s only embodiment of the shell, where
`
`the shell is a component of the claimed handle, not the claimed cover. Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding an interpretation that excludes
`
`the only embodiment “is rarely, if ever, correct”).
`
`In short, the intrinsic record fails to provide an implicit antecedent basis for “the shell,”
`
`and a POSITA is left to guess whether “the shell” refers to “a shell,” or, as Cricut contends, “a
`
`portion of the cover that at least partially encloses the substrate,” or something else. The CALJ
`
`should find that the term is indefinite. See Nautilus, 572 U.S. at 910.
`
`A.
`
`The ’646 Patent
`
`1.
`
`“planar” (’646 patent, claims 9, 11, 13, 16)
`
`Cricut Proposed
`