UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON DC
`
`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
`
`COMPLAINANT’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`I. 
`II. 
`
`III. 
`
`
`INTRODUCTION .............................................................................................................. 1 
`DISPUTED TERMS ........................................................................................................... 1 
`A. 
`Terms from U.S. Patent Nos. 11,208,758 and 11,905,646 ..................................... 1 
`1.  “substrate” ......................................................................................................... 1 
`2.  “located within” .............................................................................................. 10 
`Terms from U.S. Patent No. 11,208,758............................................................... 16 
`1.  “the shell”........................................................................................................ 16 
`Terms from U.S. Patent No. 11,905,646............................................................... 17 
`1.  “planar” ........................................................................................................... 17 
`CONCLUSION ................................................................................................................. 19 
`
`
`B. 
`
`C. 
`
`i
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`

`

`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`3M Innovative Properties Co. v. Tredegar Corp.,
`725 F.3d 1315 (Fed. Cir. 2013)................................................................................................12
`
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`672 F.3d 1335 (Fed. Cir. 2012)................................................................................................15
`
`Avid Tech, Inc. v. Harmonic, Inc.,
`812 F.3d 1040 (Fed. Cir. 2016)................................................................................................11
`
`Certain Filament Light-Emitting Diodes and Products Containing Same
`(II), Inv. No. 337-TA-1220, Order No. 39 (U.S.I.T.C. June 15, 2021) .....................................2
`
`Certain Icemaking Machines & Components Thereof,
`Inv. No. 337-TA-1369, Order No. 10, 2024 WL 111113 (U.S.I.T.C. Jan. 4,
`2024) ................................................................................................................................ passim
`
`Gibbs v. Triumph Trap Co.,
`26 F.2d 312 (2d Cir. 1928).........................................................................................................4
`
`Intell. Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester,
`336 F.3d 1308 (Fed. Cir. 2003)..................................................................................................4
`
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003)................................................................................................14
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..................................................................................5
`
`Powell v. Home Depot U.S.A., Inc.,
`663 F.3d 1221 (Fed. Cir. 2011)..............................................................................................3, 4
`
`Wasica Fin. GmbH v. Schrader Int'l, Inc.,
`No. CV 13-1353-LPS, 2019 WL 1011321 (D. Del. Mar. 4, 2019) ...........................................4
`
`Wilson Sporting Goods Co. v. Hillerich & Bradsby Co.,
`442 F.3d 1322 (Fed. Cir. 2006)................................................................................................17
`
`
`
`
`
`ii
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`

`

`TABLE OF EXHIBITS
`
`Description
`
`U.S. Patent No. 11,208,758
`U.S. Patent No. 11,905,646
`Chart of Agreed and Disputed Constructions (as filed on Feb. 20, 2025)
`File History from U.S. Patent No. 11,208,758
`File History from U.S. Patent No. 11,905,646
`Redline comparison of U.S. Patent No. 11,208,758 to 11,905,646
`2/3/2025 HTVRONT Resp. to Interrog. 9 (responses to other interrogatories
`have been redacted)
`2/17/2025 email from H. Kiepura
`U.S. Patent No. 5,252,171 (“Anderson”)
`U.S. Patent No. 4,347,428 (“Conrad”)
`
`Complainant’s
`Exhibit No.
`JXM-001
`JXM-002
`JXM-003
`JXM-004
`JXM-005
`CXM-001
`CXM-002
`
`CXM-003
`CXM-004
`CXM-005
`
`
`
`Other than CXM-005, the remaining exhibits were filed with Complainant’s Opening Brief.
`
`iii
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`

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`I.
`
`INTRODUCTION
`
`Complainant Cricut, Inc. (“Cricut”) respectfully submits this responsive brief in support of
`
`its proposed constructions. Respondent’s Opening Brief (“Resp. Br.”) confirms that Respondent
`
`does not seek the plain and ordinary meaning for the patent terms, despite “a ‘heavy presumption’
`
`that the language in the claim carries its ordinary and customary meaning.” See, e.g., Certain
`
`Icemaking Machines & Components Thereof, Inv. No. 337-TA-1369, Order No. 10, 2024 WL
`
`111113, at *8 (U.S.I.T.C. Jan. 4, 2024) (Cheney, CJ). Rather, Respondent misapplies the prior art
`
`to argue for prosecution disclaimer for “substrate” and “located within,” and then treats the
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`construction of “planar” as an exercise in nesting together dictionary definitions to cobble together
`
`a construction. The disputed claim terms should be given their plain and ordinary meaning.
`
`II.
`
`DISPUTED TERMS
`A.
`
`Terms from U.S. Patent Nos. 11,208,758 and 11,905,646
`1.
`
`“substrate”
`
`Claims
`
`’758 Patent, claims 1,
`4, 12, 13, 17, 18, 23
`’646 Patent, claim 14
`
`Complainant’s
`Construction
`“a supportive
`component”
`
`Staff’s Construction Respondent’s
`Construction
`“structural support
`component distinct
`from the handle”
`
`Plain meaning, such as
`“structural support
`component distinct
`from the handle”
`
`Respondent asserts that the “substrate can be enclosed by the handle,” but then also asserts
`
`
`
`that the substrate “must be a distinct component.” Resp. Br. at 7. Similarly, Staff argues that the
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`substrate must be “inside, and therefore distinct from, the handle.” Staff Br. at 17. Respondent
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`has not explained what it means by “distinct,” and it is unclear how this dispute pertains to any
`
`products at issue in this case, as Respondent’s accused products do have a substrate that is a
`
`separate component located within the handle. Nevertheless, to the extent Respondent seeks this
`
`1
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`

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`construction as an advisory opinion for a future redesign, Respondent’s construction should be
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`rejected for several reasons.
`
`First, the plain and ordinary meaning of “substrate,” as confirmed by the claims themselves
`
`and even Respondent’s extrinsic evidence, does not require the substrate to be “distinct” from the
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`handle (e.g., as opposed to an integrated component of the handle). Second, Respondent and Staff
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`argue that “substrate” and “handle” are different claim limitations. But, just because a claim recites
`
`two limitations, that does not require the two limitations be satisfied by physically separate
`
`components. Third, while exemplary embodiments in the specification use a metal substrate and
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`plastic handle, there is no reason to read those embodiments into the claims. Fourth, there is no
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`prosecution disclaimer that would require deviating from the plain and ordinary meaning of
`
`“substrate.”
`
`a)
`
`Respondent’s and Staff’s Construction Is Not the Plain and
`Ordinary Meaning of the Term
`
`As presented in Complainant’s Opening Brief (“Compl. Br.”), the claim language
`
`explicitly recites that the substrate is “includ[ed]” in the handle, and is therefore not “distinct” from
`
`the handle. For example, these claims recite:
`
`“a handle configured to withstand forces from a user, the handle including a
`substrate at least partially enclosed by a shell.” JXM-001 (’758 Patent) at claim 1.
`
`“a handle including a substrate.” JXM-001 at claim 13.
`
`According to Respondent, the term “include” has three definitions, as follows:
`
`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”).
`
`Resp. Br. at 7 (quoting RXM-003) (emphasis added). Importantly, Respondent and Staff have
`
`not explained how the substrate can be “distinct” from the handle, yet also be “comprise[d] as part
`
`of” the handle (definition 1). See Certain Filament Light-Emitting Diodes and Products
`
`2
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`

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`Containing Same (II), Inv. No. 337-TA-1220, Order No. 39 at 12 (U.S.I.T.C. June 15, 2021)
`
`(Cheney, CALJ) (finding that a “transparent plate” can be part of a “lead frame” because the claim
`
`“explicitly recites ‘a lead frame including a transparent plate’); see also Compl. Br. at 4 (citing
`
`additional caselaw about “including”). The plain language of the claims is sufficient to reject
`
`Respondent’s and Staff’s constructions.
`
`b)
`
`The Substrate and Handle Need Not Be Physically Separate
`Structures
`
`Respondent protests that “Cricut’s construction would abrogate ‘substrate’ as a separate
`
`limitation, allowing the same component to be both handle and substrate.” Resp. Br. at 7.
`
`Similarly, Staff argues that the handle and substrate are “introduced as distinct elements” in the
`
`claim, so the “substrate” must be “separate and distinct from the “handle.’” Staff Br. at 12, 13.
`
`Respondent and Staff are incorrect.
`
`Just because a claim recites two claim limitations, that “does not suggest that the claim
`
`terms require separate structures.” Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231 (Fed.
`
`Cir. 2011). In Powell, the asserted claim recited “a radial arm saw assembly comprising … a
`
`cutting box disposed on top of the work surface . . . and said cutting box interior in fluid
`
`communication with dust collection structure for collecting sawdust.” Powell, 663 F.3d at 1229.
`
`Similar to Respondent and Staff here, the defendant argued “that the terms ‘cutting box’ and ‘dust
`
`collection structure’ are distinct terms that can only be infringed by a device that has separate
`
`structures corresponding to the distinct claim elements.” Id. at 1231 (emphasis added). They
`
`argued that because the “claim lists elements separately,” an accused device must “also contain
`
`separate elements corresponding to the claimed elements,” but that the accused device had an
`
`integrated “rear portion” that also served to collect dust. Id. The Federal Circuit rejected this
`
`argument. The court found that the specification “does not suggest that the claim terms require
`
`3
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`

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`separate structures,” and nothing in the claim language itself requires that the two claim limitations
`
`be “wholly separate structures.” Id. at 1232 (citing cases).1 As in Powell, nothing in the claim
`
`precludes the substrate from being an integrated component located within the handle. “[T]he
`
`same physical structure can satisfy multiple limitations.” Wasica Fin. GmbH v. Schrader Int’l, Inc.,
`
`No. CV 13-1353-LPS, 2019 WL 1011321, at *4 (D. Del. Mar. 4, 2019); accord Intell. Prop. Dev.,
`
`Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1320 n.9 (Fed. Cir. 2003)
`
`(holding in the context of a means-plus-function analysis of corresponding structure that there is
`
`“no reason why, as a matter of law, one claim limitation may not be responsive to another merely
`
`because they are located in the same physical structure”).
`
`c)
`
`There is No Lexicography to Read Embodiments from the
`Specification into the Claims
`
`Respondent and Staff rely on exemplary embodiments to argue that the substrate must be
`
`“made of something different” than the handle. Respondent relies on the following passage:
`
`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.
`
`Resp. Br. at 5 (quoting JXM-001 at 4:52-57) (emphasis added). Respondent then concludes from
`
`this passage that the “substrate must be a distinct component from the handle because [the patent]
`
`explains that while the majority of the heat press’s components are made from plastic or
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`thermoplastic, the substrate can be made of something different.” Resp. Br. at 6. The language in
`
`
`1 This principle is black-letter law, going back much earlier. “It is settled law, and it is good sense,
`that one does not escape infringement by combining into one element what a claim specifies as
`two, provided that the single element performs the function of both in the same way. . . . When a
`patentee prescribes two elements in a claim he means that each will contribute its share of the
`result, but their duality is not important. When the two are incorporated into a single physical
`element, it remains as much a means to the first result and a means to the second, as though it were
`in two parts. Were this not true, any ingenious mechanic might pick an inventor's brains at pleasure.”
`Gibbs v. Triumph Trap Co., 26 F.2d 312, 314 (2d Cir. 1928).
`
`4
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`

`

`the specification (“some examples”) is exemplary, and such statements in the specification do not
`
`rise to the level of lexicography. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)
`
`(en banc) (“although the specification often describes very specific embodiments of the invention,
`
`we have repeatedly warned against confining the claims to those embodiments”).
`
`Staff argues that “[i]n every instance the ‘substrate’ is mentioned in the written description,
`
`it is preceded by the word ‘metal.’” Staff Br. at 14. Staff then infers that “the ‘substrate,’ to
`
`provide structural support to the handle, is made from a different and more robust material than
`
`the thermoplastic handle (16).” Id. Notably, the claims of the ’758 Patent as originally filed did
`
`recite a metal substrate:
`
`14. A heat press (10), comprising . . . a handle (16) including a metal substrate (20) . . . .
`
`19. The heat press (10) of claim 18, wherein the handle (16) includes a metal
`substrate (20) at least partially enclosed by a plastic shell.
`
`JXM-004.20-.23 (11/19/2020, Original Claims). In a preliminary amendment, Applicant canceled
`
`these claims and replaced them with claims just reciting a “substrate,” without the “metal” modifier.
`
`21. (New) A heat press, comprising . . . a handle configured to withstand forces
`from a user, the handle including a substrate at least partially enclosed by a shell . . . .
`
`JXM-004.52 (11/19/2020 Preliminary Amendment). The issued claims of the ’758 Patent do not
`
`limit the “substrate” to being a “metal substrate.” See Phillips, 415 F.3d at 1314 (“To take a simple
`
`example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’
`
`does not inherently mean objects made of steel.”) And even if Staff were correct in its
`
`characterization of the embodiments of the substrate, that does not serve to limit the claims.
`
`“[E]ven in cases where every embodiment described in a specification depicts a particular structure,
`
`absent lexicography or disavowal it would be improper to import from the patent's written
`
`description limitations that are not found in the claims themselves.” Certain Icemaking Machines,
`
`2024 WL 111113, at *9.
`
`5
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`

`

`d)
`
`There Is No Prosecution Disclaimer
`
`There is no prosecution disclaimer that would require deviating from the plain and ordinary
`
`meaning of “substrate.” Respondent cites a response to an office action concerning Conrad and
`
`Goerlich:
`
`[I]n 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.” JXM-004.258–.259.
`
`Resp. Br. at 6. However, Respondent fails to consider the context. The examiner had rejected
`
`original claims 21-25 and 30-34 over Conrad. 2 JXM-004.141 (’758 Patent File History,
`
`11/19/2020 Office Action). In the office action, the examiner identified “circuit board 150” as the
`
`claimed substrate (annotated blue), “upper gripping structure 48” as the claimed handle (annotated
`
`red), and “shroud portion 30 and shell portion 40” as insulation (annotated green).
`
`
`
`
`2 These correspond to issued claims 1-6 and 10-15 of the ’758 Patent. JXM-004.467 (’758 Patent
`File History, Issue Classification). None of these claims are asserted against HTVRONT in this
`Investigation. See Compl. ¶¶4, 92.
`
`6
`
`

`

`CXM-005 (Conrad) at Fig. 1 (annotated), 3:14, 4:53; JXM-004.141-.142. The circuit board acted
`
`as a support structure for “integrated circuit 100,” upon which circuit 100 is “mounted.” CXM-
`
`005 at 4:53-55. Cricut did not dispute that item 48 could be a “handle,” or that a circuit board
`
`could be the claimed “substrate,” and did not even address whether the substrate is located within
`
`or otherwise distinct from the handle. Rather, Cricut distinguished the claims because “Conrad
`
`fails to disclose his circuit board [substrate] in direct contact with the upper shell 40 [insulation],”
`
`because the circuit board was located in a separate “leak proof cavity 120.” JXM-004.257
`
`(4/30/2021 Resp. to Office Action). The limitation being addressed, which is not present in claim
`
`18 of the ’758 Patent asserted against Respondent, was whether the prior art had “an insulation
`
`portion in direct contact with the substrate.”
`
`Respondent also fails to consider the context of Goerlich. The examiner had rejected
`
`Claims 21-25, 29, and 31 over Goerlich.3 JXM-004.142 (’758 Patent File History, 11/19/2020
`
`Office Action). In its office action, the Examiner identified “substrate 5 at least partially enclosed
`
`by a cavity in the shell 1,” and further including “handle 1.” Id.
`
`
`3 These correspond to issued claims 1-6, 9, and 11 of the ’758 Patent. JXM-004.467 (’758 Patent
`File History, Issue Classification). Again, none of those claims are asserted against HTVRONT
`in this Investigation. See Compl. ¶¶4, 92.
`
`7
`
`

`

`
`JXM-004.258 (annotated). Cricut again did not dispute that a “circuit board” can be the claimed
`
`substrate, or that it was distinct from the handle. Rather, Cricut argued based on the lack of direct
`
`contact between the substrate and insulation:
`
`Applicant respectfully submits that Goerlich fails to disclose an insulating portion
`in direct contact with a substrate of a handle, as recited by independent claims 21
`and 32. . . . While the Examiner asserts that Goerlich’s circuit board 5 corresponds
`to the claimed ‘substrate’ and the spacers 1a correspond to the claimed ‘insulating
`portion,’ Goerlich fails to disclose his spacers 1a being in direct [sic, in direct
`contact with] circuit board 5.
`
`Id. The discussion of Conrad has nothing to do with the claim-construction dispute over the
`
`meaning of “substrate,” and whether it is distinct from the handle.
`
`For both the Conrad and Goerlich references, the circuit board (substrate) was included
`
`within the handle. In both instances, the “more reasonable interpretation of the [cited] passage,
`
`however, … did not address” whether the substrate must be “distinct” from the handle. See Certain
`
`Icemaking Machines, 2024 WL 111113, at *10. There is no clear and unmistakable disclaimer to
`
`support Respondent’s and Staff’s construction.
`
`8
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`

`

`e)
`
`There Is No Reason to Add the “Structural” Modifier
`
`The specification never uses the words “structure” or “structural,” but Staff nevertheless
`
`contends that “to provide structural support to the handle, [the substrate] is made from a different
`
`and more robust material than the thermoplastic handle (16).” Staff Br. at 14. Staff’s construction
`
`for “structural” should be rejected for multiple reasons.
`
`First, nothing in the independent claims requires that the handle be thermoplastic or the
`
`substrate be metal. Rather, in “some examples, the cover is made of a thermoplastic and the
`
`handle includes a metal substrate . . . .” JXM-001 at 2:4–5. Embodiments such as this are not
`
`claim limitations.
`
`Second, as Staff points out, there are two limitations in the independent claims: a handle
`
`and a substrate. In Claims 1 and 18 of the ’758 Patent, it is the “handle”—not the substrate—that
`
`is the component “configured to withstand forces from a user.” Staff Br. at 12 (quoting claims 1
`
`and 18 of the ’758 Patent). This is reinforced by the claims of the ’646 Patent:
`
`1. A heat press comprising: a heat plate configured to engage ironable materials; a
`control compartment spaced away from and at least indirectly electrically coupled
`to the heat plate; and an insulation portion positioned between the control
`compartment and the heat plate, 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.
`
`5. The heat press of claim 1, further comprising: a handle configured to withstand
`forces from a user; and an electrical circuit located within the handle, wherein the
`electrical circuit extends to the control compartment.
`
`JXM-002 (emphasis added). As can be seen, a “substrate” is not recited in independent claim 1 or
`
`dependent claim 5, yet there is still “a handle configured to withstand forces from a user.” See
`
`also JXM-001 at 3:56-67 (discussing how a user “applies a downward force 4 onto the handle 16,”
`
`but not mentioning the substrate). There is no intrinsic support to require that the substrate be a
`
`“structural” component.
`
`9
`
`

`

`Third, in the prosecution history discussed above for the ’758 Patent, both the examiner
`
`and Applicant pointed to a “circuit board” in the prior art as fulfilling the claimed substrate. The
`
`substrate was a supportive component for the integrated circuits mounted upon it. See, e.g., CXM-
`
`005 at 4:53-55. The substrate is not required to provide “structural” support or to withstand user
`
`forces.
`
`Claims
`
`2.
`
`“located within”
`
`Complainant’s
`Construction
`“located inside”
`
`Staff’s Construction Respondent’s
`Construction
`“fully enclosed by”
`
`Plain meaning, such
`as “located inside.”
`
`’758 Patent, claim 18
`’646 Patent, claims 5, 14
`
`
`
`There does not appear to be any dispute as to the plain and ordinary meaning of “located
`
`within.” The term means “located inside.” As Respondent asserts: “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.” Resp. Br. at 9. Respondent is correct
`
`that “inside” (or “within”) is broader than “fully enclosed by,” but that is how the claims are written.
`
`The claims do not recite “fully enclosed by,” and there is no reason to limit them as such. To
`
`embellish upon Respondent’s analogy, clothes can be located within a clothes hamper (regardless
`
`of whether the lid is open), and pencils can be located within a pencil holder (even if the pencils
`
`extend beyond the top of the pencil holder). So too, a substrate is “located within the handle,”
`
`even if the substrate is not fully enclosed by the handle. “[T]here is a ‘heavy presumption’ that
`
`the language in the claim carries its ordinary and customary meaning.” See, e.g., Certain
`
`Icemaking Machines, 2024 WL 111113, at *8.
`
`Respondent admits that its construction of “fully enclosed by” is not the plain and ordinary
`
`meaning of “located within.” Instead, Respondent argues “that the term remains limited by
`
`Cricut’s prosecution disclaimer.” Resp. Br. at 8. But, the claims were amended to expressly recite
`
`10
`
`

`

`“located within,” and there is no basis in the prosecution history to further limit the claims beyond
`
`that express language. See Avid Tech, Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016)
`
`(“For prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions
`
`or statements made during prosecution be both clear and unmistakable.” (cleaned up)).
`
`a)
`
`There Is No Amendment-Based Disclaimer
`
`Respondent bases its prosecution disclaimer argument on a claim amendment made on
`
`April 30, 2021, as follows:
`
`
`JXM-004.255 (’758 Patent File History, 4/30/2021 Amendment) at CRI00004304. The claim
`
`originally recited “the handle including a substrate.” As Respondent states, the word “include” is
`
`a broad term that has at least three definitions of varying scope:
`
`[T]he 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”).
`
`Resp. Br. at 7. During prosecution, the claim was amended to recite “a substrate located within
`
`the handle.” Cricut chose to limit the claim to “located within” (similar to definition 2), but did
`
`not choose to limit the claim to “enclose” (definition 3). Yet, Respondent now seeks to narrow
`
`11
`
`

`

`the claim term even further, to “fully enclosed by,” but that is not warranted by the prosecution
`
`history. See 3M Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315, 1329–330 (Fed.
`
`Cir. 2013) (“[O]ur cases do not support prescribing a more particularized meaning unless a
`
`narrower construction is required by the specification or prosecution history . . . [I]t is unnecessary
`
`to limit the plain language based on unclear statements in the specification and prosecution
`
`history.”).
`
`b)
`
`There Is No Argument-Based Disclaimer
`
`The amendment changed “including” to “located within,” and its plain language does not
`
`require that the substrate be “located entirely within” the handle or that the substrate is “fully
`
`enclosed by” the handle. Nor was there any argument-based disclaimer. As described in
`
`Complainant’s Opening Brief, the amendment was made based on the Anderson reference,
`
`showing the features the examiner matched to the substrate (cantilever arm 26, blue) and handle
`
`(item 22, red):
`
`12
`
`

`

`
`CXM-004 (Anderson) at Figs. 1-2 (annotated). The most reasonable way to read the amendment,
`
`based on Anderson, is not whether “located within” should be further narrowed to “fully enclosed
`
`by.” Rather, the “substrate located within the handle” was differentiating prior art in which the
`
`13
`
`

`

`substrate was located fully outside of the handle with no overlap. No further narrowing of “located
`
`within” is appropriate.
`
`The CALJ has emphasized the importance of understanding the prosecution history in view
`
`of the actual prior art reference at issue. In Certain Icemaking Machines, the claim term recited
`
`“dimples projecting outwardly from the rear surface,” and the dispute was “whether the ‘rear
`
`surface’ in each of these claim terms must be flat.” 2024 WL 111113, at *8. There, Respondent
`
`argued that “the applicant ‘narrowed the scope of its purported invention’ during prosecution by
`
`arguing that a prior art reference [Yamaguchi] did not have flat rear surfaces.” Id. at *10. The
`
`CALJ looked to the prosecution history and found that a “more reasonable interpretation of the
`
`[cited] passage, however, … did not address whether the non-dimpled portion of the plate’s back
`
`must be flat or not.” Id. at *11. Here too, the most reasonable interpretation of the prosecution
`
`history is not whether “located within” should be further limited to “fully enclosed by,” as the
`
`amendment did not address that.
`
`c)
`
`There Is No Disclaimer for the ’646 Patent Either
`
`Respondent does not cite to any prosecution history from the ’646 Patent, but instead
`
`asserts that arguments and amendments from the parent ’758 Patent should propagate to the
`
`child ’646 Patent. Resp. Br. at 8 (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334
`
`(Fed. Cir. 2003)). The Omega Eng’g court provided several important caveats to applying the
`
`prosecution history from a parent to a child. First, prosecution disclaimer only applies when “[t]he
`
`patentee made a clear and unmistakable disclaimer of claim scope in its prosecution of the parent
`
`… patent.” Omega, 334 F.3d at 1334. As discussed above, there was no “clear and unmistakable”
`
`disclaimer in the ’758 Patent to further narrow the meaning of “located within.” Second,
`
`disclaimer propagates only when “the same claim limitation is at issue” between parent and child.
`
`Id. at 1333. The prosecution history of the ’758 Patent is related to the relationship between a
`
`14
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`

`

`substrate and handle, but Respondent seeks to apply prosecution disclaimer to Claim 5 of the ’646
`
`Patent, which recites “an electrical circuit located within the handle.” Thus, the same claim
`
`limitation is not at issue between the two patents.
`
`d)
`
`The Claim Language Does Not Support Respondent’s
`Construction
`
`Respondent argues that because some claim terms recite “at least partially enclosed” and
`
`others recite “located within,” that somehow supports that “located within” means “fully enclosed
`
`by.” Resp. Br. at 9 (comparing ’758 Patent cl. 1 to cl. 18). Respondent is wrong. The limitations
`
`they cite are as follows:
`
` “the handle including a substrate at least partially enclosed by a shell.” JXM-001
`(’758 Patent) at claim 1.
`
` “a substrate located within the handle.” JXM-001 at claim 18.
`
`Respondent seeks to “ascrib[e] different meaning when two independent claims ‘use[d] different
`
`terms in parallel settings.’” Resp. Br. at 9 (quoting Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`
`672 F.3d 1335, 1349 (Fed. Cir. 2012). Again, the settings are not parallel. One claim refers to the
`
`relationship between a substrate and shell, and the other claim refers to the relationship between
`
`the substrate and handle.
`
`e)
`
`The Specification Does Not Amount to Lexicography
`
`Respondent argues based on examples in the specification “that ‘located within’ refers to
`
`an enclosed component.” Resp. Br. at 10. Respondent points to two passages from the
`
`specification, each of which begins, “[i]n some examples.” Id. (quoting JXM-001, ’758 Patent at
`
`4:32-33, 4:52-53). This exemplary language does not rise to the level of lexicography, and does
`
`not re-define the term “located within” to the narrower “fully enclosed by.” These are expressly
`
`set forth as “examples” and, “[a]s a general rule, however, the particular examples or embodiments
`
`discussed in the specification are not to be read into the claims as limitations.” Certain Icemaking
`
`15
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`

`

`Machines, 2024 WL 111113, at *6. “[E]ven in cases where every embodiment described in a
`
`specification depicts a particular structure, absent lexicography or disavowal it would be improper
`
`to import from the patent's written description limitations that are not found in the claims
`
`themselves.” Id. at *9. Nothing in the intrinsic record rises to the level of lexicography or
`
`disclaimer to warrant deviating from the plain and ordinary meaning of “located within” to “fully
`
`enclosed by,” as Respondent proposes.
`
`B.
`
`Terms from U.S. Patent No. 11,208,758
`1.
`
`“the shell”
`
`Claims
`
`Complainant’s
`Construction
`’758 Patent, claims 19–20 The term is not indefinite.
`“The shell” is “a portion of
`the cover that at least
`partially encloses the
`substrate.”
`
`Staff’s
`Construction
`Indefinite, no
`antecedent basis.
`
`Respondent’s
`Construction
`Indefinite
`
`The term “the shell” is recited in two dependent claims. Respondent and Staff seek
`
`
`
`indefiniteness on account of a typographical error because the claims recite “the” shell, rather than
`
`“a” shell. As described in Complainant’s Opening Brief, the scope of the claims is reasonably
`
`understandable to a POSITA based on an examination of the claims, specification, and prosecution
`
`history.
`
`Nevertheless, among other streamlining efforts, Cricut is no longer asserting claims 19 and
`
`20 of the ’758 Patent in this Investigation. See Motion for Partial Termination of the Investigation
`
`as to Certain Asserted Claims (EDIS 844951). Respondent does not oppose that Motion for Partial
`
`Termination. Accordingly, should Complainant’s pending motion be granted, there will be no
`
`remaining dispute between the parties in this Investigation concerning the claim construction for
`
`“the shell.”
`
`16
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`

`

`C.
`
`Terms from U.S. Patent No. 11,905,646
`1.
`
`“planar”
`
`Claims