Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 1 of 16 Page ID #:538
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. EDCV 20-859-GW-SHKx
`Title
`Richard Shane v. Newell Brands, Inc., et al.
`
`Date May 14, 2021
`
`Present: The Honorable GEORGE H. WU, UNITED STATES DISTRICT JUDGE
`Javier Gonzalez
`None Present
`Tape No.
`Deputy Clerk
`Court Reporter / Recorder
`Attorneys Present for Plaintiffs:
`Attorneys Present for Defendants:
`None Present
`None Present
`PROCEEDINGS:
`IN CHAMBERS - FINAL CLAIM CONSTRUCTION ORDER
`
`Attached hereto is the Court’s Final Claim Construction Order.
`
`The Court has received and reviewed the parties' Joint Rule 26(f) Report (Docket No. 38) and sets the
`following schedule for the remainder of this case:
`
`MATTER
`Production Related to Reliance Upon Advice of Counsel (N.D.
`Patent L.R. 3- 7(a)-(c).)
`Fact Discovery Cut-Off
`Last Day to Serve Initial Expert Reports on issues where party
`has the initial burden of proof (unrelated to claim construction)
`Last Day to Serve Rebuttal Expert Reports (unrelated to claim
`construction)
`Last Day to Conduct Settlement Proceedings
`Post-mediation status conference
`Expert Discovery Cut-Off
`Last Day to hear any Motions except motions-in-limine which
`are heard at the pre-trial conference
`
`DEADLINE
`June 15, 2021
`
`November 5, 2021
`November 19, 2021
`
`Dececember 17, 2021
`
`January 7, 2022
`January 13, 2022 at 8:30 a.m.
`January 21, 2022
`February 17, 2022
`
`Initials of Preparer
`
`JG
`
`:
`
`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
`
`Page 1 of 2
`
`Patent Owner’s Ex. 2013, Page 1 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 2 of 16 Page ID #:539
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`Case No. EDCV 20-859-GW-SHKx
`Title
`Richard Shane v. Newell Brands, Inc., et al.
`
`Date May 14, 2021
`
`Final Pre-Trial Conference
`Jury Trial
`
`March 10, 2022 at 8:30 a.m.
`March 22, 2022 at 9:00 a.m.
`
`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
`
`Page 2 of 2
`
`Initials of Preparer
`
`JG
`
`:
`
`Patent Owner’s Ex. 2013, Page 2 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 3 of 16 Page ID #:540
`
`Richard Shane v. Newell Brands Inc., Case No. 5:20-cv-00859-GW-(SHKx)
`Final Claim Construction Order
`
`I.
`
`II.
`
`INTRODUCTION
`In this patent infringement action, Plaintiff Richard Shane (“Plaintiff”) accuses Defendant
`Newell Brands Inc. (“Newell”) and Defendant Graco Childrens Products, Inc. (“Graco”)
`(collectively, “Defendants”) of infringing U.S. Patent Nos. 8,776,285 (“the ’285 Patent”) and
`9,883,752 (“the ’752 Patent”) (collectively, “the Asserted Patents”). Complaint, Docket No. 1.
`Defendants each filed an answer. Newell Answer, Docket No. 21; Graco Answer, Docket No. 24.
`The parties filed a joint Claim Construction and Prehearing Statement on February 19, 2021.
`Docket No. 43. On April 5, 2021, Plaintiff filed its opening brief. Docket No. 44 (Plaintiff’s
`Opening Brief). On April 19, 2021, Defendants filed their responsive brief. Docket No. 45
`(Defendants’ Responsive Brief). On April 26, 2021 Plaintiff filed its reply brief. Docket No. 46
`(Plaintiff’s Reply Brief). The Court held a claim construction hearing on May 10, 2021.
`The Court construes the disputed terms as stated herein.
`BACKGROUND
`A. The ’285 Patent
`The ’285 Patent, entitled “Infant Soothing Device Having an Actuator,” issued on July 15,
`2014. Plaintiff alleges that Defendants infringe Claims 1, 2, 3, 6, 7, and 8 of the ’285 Patent.
`Docket 1, ¶¶ 22-29. Claim 1 of the ’285 Patent recites:
`A device for soothing an infant, comprising:
`a frame;
`an infant resting member coupled to the frame that retains an infant in an
`adjustable position including a position in which the infant’s feet are
`substantially below its head; and
`a mechanism that moves the infant resting member in a vertical motion to
`soothe the infant, the mechanism further comprises an actuator that
`automatically moves the frame and the infant resting member.
`’285 Patent, Claim 1 (emphasis added). The remaining claims of the ’285 Patent depend directly
`or indirectly from Claim 1. Relevant here, Claim 6 adds the limitation that the actuator “moves
`the frame and infant resting member in a selectable motion.” ’285 Patent, Claim 6 (emphasis
`added).
`For purposes of their claim construction disputes, the parties request construction of three
`
`
`
`1
`
`Patent Owner’s Ex. 2013, Page 3 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 4 of 16 Page ID #:541
`
`terms in the ’285 Patent, which are emphasized in the quoted claim language above.
`B. The ’752 Patent
`The ’752 Patent, entitled “Infant Soothing Device and Method for Soothing an Infant,”
`issued on February 6, 2018. Plaintiff alleges that Defendants infringe at least Claims 2, 3, and 4
`of the ’752 Patent. Docket No. 1, ¶¶ 30-32. Claim 2 of the ’752 Patent recites:
`A method for soothing an infant using a mechanical motion, comprising:
`providing a frame, an infant resting member coupled to the frame and an actuator
`that automatically moves the frame and the infant resting member;
`securing an infant in an adjustable position including a position in which the
`infant’s feet are substantially below its head;
`imparting, using the actuator, a substantially vertical motion to the infant
`resting member and the infant to soothe the infant by moving the frame
`and the infant resting member; and
`moving the infant resting member and the infant in one or more different motion
`amplitudes.
`’752 Patent, Claim 2 (emphasis added). The ’752 Patent includes one other independent claim,
`Claim 1. The remaining claims of the ’752 Patent depend directly or indirectly from Claim 2.
`The parties present four claim construction-related disputes concerning terms in the ’752
`Patent, with the relevant terms emphasized above.
`III. LEGAL STANDARD
`A. Claim Construction
`Claim construction is an interpretive issue “exclusively within the province of the court.”
`Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). It is “a question of law in the
`way that we treat document construction as a question of law,” with subsidiary fact-finding
`reviewed for clear error pursuant to Fed. R. Civ. P. 52(a)(6). Teva Pharms. USA, Inc. v. Sandoz,
`Inc., 574 U.S. 318, 325–29 (2015). The claim language itself is the best guide to the meaning of
`a claim term. See Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014). This is
`because the claims define the scope of the claimed invention. Phillips v. AWH Corp., 415 F.3d
`1303, 1312 (Fed. Cir. 2005). But a “person of ordinary skill in the art is deemed to read the claim
`term not only in the context of the particular claim in which the disputed term appears, but in the
`context of the entire patent.” Id. at 1313. Thus, claims “must be read in view of the specification,”
`which is “always highly relevant to the claim construction analysis.” Id. at 1315 (internal
`quotations omitted).
`
`
`
`2
`
`Patent Owner’s Ex. 2013, Page 4 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 5 of 16 Page ID #:542
`
`Although claims are read in light of the specification, limitations from the specification
`must not be imported into the claims. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir.
`2009). “[T]he line between construing terms and importing limitations can be discerned with
`reasonable certainty and predictability if the court’s focus remains on understanding how a person
`of ordinary skill in the art would understand the claim terms.” Phillips, 415 F.3d at 1323.
`The prosecution history may lack the clarity of the specification, but it is “another
`established source of intrinsic evidence.” Vederi, 744 F.3d at 1382. “Like the specification, the
`prosecution history provides evidence of how the PTO and the inventor understood the patent.”
`Phillips, 415 F.3d at 1317 (citations omitted). “Furthermore, like the specification, the prosecution
`history was created by the patentee in attempting to explain and obtain the patent.” Id. “Yet
`because the prosecution history represents an ongoing negotiation between the PTO and the
`applicant, rather than the final product of that negotiation, it often lacks the clarity of the
`specification and thus is less useful for claim construction purposes.” Id.
`Claim construction usually involves resolving disputes about the “ordinary and customary
`meaning” that the words of the claim would have had “to a person of ordinary skill in the art in
`question at the time of the invention.” Id. at 1312–13 (internal quotations and citations omitted).
`But in some cases, claim terms will not be given their ordinary meaning because the specification
`defines the term to mean something else. “[A] claim term may be clearly redefined without an
`explicit statement of redefinition,” so long as a person of skill in the art can ascertain the definition
`by reading the patent documents. Id. at 1320; see also Trustees of Columbia Univ. in City of New
`York v. Symantec Corp., 811 F.3d 1359, 1364 (Fed. Cir. 2016).
`Where the patent itself does not make clear the meaning of a claim term, courts may look
`to “those sources available to the public that show what a person of skill in the art would have
`understood disputed claim language to mean,” including the prosecution history and “extrinsic
`evidence concerning relevant scientific principles, the meaning of technical terms, and the state of
`the art.” Phillips, 415 F.3d at 1314 (internal quotations omitted). Sometimes, the use of “technical
`words or phrases not commonly understood” may give rise to a factual dispute, the determination
`of which will precede the ultimate legal question of the significance of the facts to the construction
`“in the context of the specific patent claim under review.” Teva, 574 U.S. at 332. “In some cases,
`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
`
`
`
`3
`
`Patent Owner’s Ex. 2013, Page 5 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 6 of 16 Page ID #:543
`
`Patent Owner’s Ex. 2013, Page 6 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 7 of 16 Page ID #:544
`
`Patent Owner’s Ex. 2013, Page 7 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 8 of 16 Page ID #:545
`
`standard” to demonstrate indefiniteness. Docket No. 46 at 3.
`The Federal Circuit has explained “‘that relative terms such as “substantially” do not render
`patent claims so unclear as to prevent a person of skill in the art from ascertaining the scope of the
`claim.’” Tinnus Enterprises, LLC v. Telebrands Corp., 733 F. App’x 1011, 1018 (Fed. Cir. 2018)
`(nonprecedential) (quoting Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1359 (Fed. Cir. 2012)).
`“Rather, ‘as long as claim terms satisfy the Nautilus test, relative terms and words of degree do
`not render patent claims invalid.’” Tinnus, 733 F. App’x at 1018 (brackets omitted) (quoting One-
`E-Way, Inc. v. Int’l Trade Comm’n, 859 F.3d 1059, 1063 (Fed. Cir. 2017)). Indeed, “[o]ther
`Federal Circuit cases have also held that the term ‘substantially’ does not require a strict numerical
`boundary.” Apple, Inc. v. Samsung Elec. Co., Ltd., 932 F. Supp. 2d 1076, 1081 (N.D. Cal. 2013);
`see also Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001) (“We note that
`like the term ‘about,’ the term ‘substantially’ is a descriptive term commonly used in patent claims
`to ‘avoid a strict numerical boundary to the specified parameter.’”) (quoting Pall Corp. v. Micron
`Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995)).
`Here, the use of “substantially” in the claim term, “the infant’s feet are substantially below
`its head,” does not render the patent claims “so unclear as to prevent a person of skill in the art
`from ascertaining the scope of the claim.” Tinnus, 733 F. App’x at 1018. First, Defendants
`seemingly have not attempted to present clear and convincing evidence that a POSITA would not
`understand the patent claims with reasonable certainty, as they are required to do. See Nautilus I,
`572 U.S. at 910; Nautilus II, 783 F.3d at 1377. Defendants’ conclusory arguments do not come
`close to meeting this standard. Second, Defendants admit that they understand the claim term. As
`Defendants note, the specification “discloses the infant oriented in a vertical, or close to vertical,
`position.” Docket No. 45 at 7. Plaintiff agrees that that “the Asserted Patents illustrate an infant
`in a substantially upright, but not necessarily strictly vertical, position.” Docket No. 44 at 18.
`Because both parties agree that the Asserted Patents teach a “close to vertical” or “substantially
`upright” position, Defendants have failed to prove with clear and convincing evidence that a
`POSITA would not understand the patent claims with reasonable certainty. Having found that
`Defendants failed to meet their evidentiary burden and that a POSITA would be reasonably certain
`of the scope of the invention, the Court turns to the parties’ dispute over construction of the term.
`Turning to the parties’ proposed constructions, Defendants argue that “position in which
`the infant’s feet are substantially below its head” should be construed to mean “position mimicking
`
`
`
`6
`
`Patent Owner’s Ex. 2013, Page 8 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 9 of 16 Page ID #:546
`
`a caregiver hold with a vertical back and hanging feet of an infant.” Docket No. 45 at 8-14.
`Defendants contend that this construction is supported by (1) the specification, which teaches that
`the infant is in a vertical position and criticizes prior art that was fixed at a 30-degree or 45-degree
`angle, id. at 9, 12-14; (2) the dependent claims, which disclose being adjustable to a horizontal
`position from the claimed vertical position, id. at 10; (3) the dictionary definition of
`“substantially,” id. at 11; (4) Plaintiff’s apparent concession that “the disputed claim language
`requires a ‘substantially vertical’ position of the infant,” id. at 12 (emphasis added); and (5) the
`fact that the applicant, during patent prosecution, “distinguished his invention from that disclosed
`in Bloemer, arguing that in Bloemer [] ‘the infant is not in position with its feet substantially below
`its head.1’” Id. at 16-17.
`Plaintiff argues that, “‘position in which the infant’s feet are substantially below its head’
`is unambiguous on its face,” and “[e]ven a layperson would understand that when an infant’s feet
`are ‘substantially below its head,’ the infant’s feet are below, rather than near (or above), the height
`of the infant’s head.” Docket No. 44 at 9. Plaintiff asserts that nothing in the “plain language of
`this term implies or requires any further limitations about ‘mimicking a caregiver’ or ‘hanging
`feet.’” Id. Plaintiff argues that (1) the PTAB did not find that the patent applicant had acted as his
`own lexicographer to redefine the term, id. at 10; (2) the dependent claims’ use of “vertical
`position” triggers a presumption that the independent claims are not limited to a vertical position,
`id.; (3) the specification describes the term clearly and consistently, id. at 11; (4) the PTAB
`“concluded that this term means the infant’s feet are considerably below its head rather than near
`the height of the infant’s head,” which does not require a caregiver’s hold, id. at 11-12 (internal
`quotations omitted); and (5) Defendants’ construction improperly limits the claims to a preferred
`embodiment and adds unsupported phrases to the limitations. Id. at 12; Docket No. 46 at 8.
`Plaintiff further argues that, by “reference to these figures and the accompanying descriptions, one
`of ordinary skill in the art would recognize that ‘substantially vertical’ means a ‘position in which
`the infant’s feet are substantially below its head’ i.e., the infant’s feet are considerably below its
`head rather than near the height of the infant’s head, as found by the PTAB.” Docket No. 44 at
`
`
`1 Defendants argue that the patent applicant’s emails to potential users also disclosed that the invention placed
`an infant in a vertical orientation. Docket No. 45 at 18-19. In reply, Plaintiff argues that this type of evidence is the
`least relevant, and discloses a product, which is just one embodiment of the claimed invention. Docket No. 46 at 10-
`11. The Court agrees with Plaintiff that the inventor’s intent has little relevance to claim construction. See Phillips,
`415 F.3d at 1318-19.
`
`
`
`7
`
`Patent Owner’s Ex. 2013, Page 9 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 10 of 16 Page ID #:547
`
`18. Plaintiff argues that the patent applicant distinguished Bloemer because Bloemer could not be
`adjusted to a “position in which the infant’s feet are substantially below its head.” Docket No. 46
`at 10. Finally, Plaintiff argues that, if the Court construes this term, the construction, “considerably
`below its head rather than near the height of the infant’s head,” should be adopted because that is
`the meaning the PTAB gave the term.2 Docket No. 44 at 9, 12.
`The Court begins with the plain language of the claims. Claim 1 of the ’285 Patent recites,
`in relevant part: “an infant resting member coupled to the frame that retains an infant in an
`adjustable position including a position in which the infant’s feet are substantially below its
`head.” ’285 Patent, Claim 1 (emphasis added). Claim 2 of the ’752 Patent recites, in relevant
`part: “securing an infant in an adjustable position including a position in which the infant’s feet
`are substantially below its head.” ’752 Patent, Claim 2 (emphasis added).
`The Court finds that the plain and ordinary meaning of “position in which the infant’s feet
`are substantially below its head” applies. In the context of this claim language, when read in light
`of the specification, the term means “a position with the infant in a mainly vertical orientation.”
`The Court declines to adopt Plaintiff’s proposed construction, “the infant’s feet are
`considerably below its head rather than near the height of the infant’s head,” because this could
`broaden and confuse the plain and ordinary meaning to encompass more than the claims
`contemplate. This is particularly true where Plaintiff has apparently conceded that “one of
`ordinary skill in the art would recognize that ‘substantially vertical’ means a ‘position in which
`the infant’s feet are substantially below its head.’” Docket No. 44 at 18 (emphasis added). Thus,
`according to Plaintiff, in the present context, “substantially vertical” and “mainly vertical” mean
`the same thing.
`Likewise, the Court declines to adopt Defendants’ proposed construction. Defendants
`attempt to narrow the claim term by requiring a “position mimicking a caregiver hold with a
`vertical back and hanging feet of an infant.” But these terms do not appear anywhere in the patent
`
`
`2 It is not the Court’s role to defer to the PTAB on claim construction. The PTAB applies different standards
`in determining patentability than a District Court construing claims. See, e.g., In re Morris, 127 F.3d 1048, 1054
`(Fed. Cir. 1997) (“It would be inconsistent with the role of the PTO to require it to interpret claims in the same manner
`as judges who, post issuance, operate under the assumption the patent is valid.”). The “PTO gives a disputed claim
`term its broadest reasonable interpretation during patent prosecution.” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir.
`2004). In contrast, the Court is required to construe claims de novo as a matter of law. SRAM Corp. v. AD-II Eng.,
`Inc., 465 F.3d 1351, 1359 (Fed. Cir. 2006). Thus, the PTAB’s claim interpretation does not govern the Court’s claim
`construction; although the Court may consider the PTAB’s construction, the Court does not simply defer to it.
`8
`
`
`
`Patent Owner’s Ex. 2013, Page 10 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 11 of 16 Page ID #:548
`
`and Defendants appear to concede that “close to vertical” is “consistent with [Defendants’]
`proposed construction.” Docket No. 45 at 12. Thus, the Court observes that the parties share the
`same basic interpretation – that is, the term discloses a “substantially vertical” or “mainly vertical”
`position. In adopting “mainly vertical orientation” as the plain and ordinary meaning of “position
`in which the infant’s feet are substantially below its head,” the Court finds that said construction
`is consistent with how one skilled in the art would understand the term.
`Neither of the independent claims uses the terms “vertical position” or “substantially
`vertical position.” Rather, these alternative terms appear in dependent Claim 3 of each patent. See
`’285 Patent, Claim 3; ’752 Patent, Claim 3. Generally, courts avoid construing a claim in a way
`that renders other claim language superfluous. See, e.g., Mformation Techs., Inc. v. Research in
`Motion Ltd., 764 F.3d 1392, 1399 (Fed. Cir. 2014) (declining to adopt construction that would
`render claim language superfluous); see also Aristocrat Techs. Aus. Pty Ltd. v. Int’l Game Tech.,
`709 F.3d 1348, 1356-57 (Fed. Cir. 2013) (same). But “claim differentiation requires that the
`limitations in a parent claim be construed to be different in scope from those in dependent claims,
`it does not necessarily mean that they are mutually exclusive.” See TecSec, Inc. v. Adobe Systems,
`Inc., 658 F. App’x 570, 577 (Fed. Cir. 2016) (non-precedential). Indeed, “[t]he only requirement
`is that the limitation in the parent [claim] be at least broad enough to encompass the limitation in
`the dependent claim.” Id.
`Here, each Claim 3 concerns the adjustability of the claimed device from a vertical position
`to a horizontal position. See ’285 Patent, Claim 3; ’752 Patent, Claim 3. And the independent
`claims require only inclusion of a “position in which the infant’s feet are substantially below its
`head.” See ’285 Patent Claim 1;’752 Patent, Claim 2. Thus, even though the Court finds that a
`“position in which the infant’s feet are substantially below its head” requires a “close to vertical
`position,” this does not render the dependent claim language superfluous.
`In contrast, Defendants’ proposed terms “caregiver’s hold,” “vertical back,” and “dangling
`feet” appear nowhere in the claims or specification. Nothing in the plain language of the claims
`requires these limitations. Indeed, “the claims do not exclude any particular angles of orientation
`. . . as long as the infant’s feet are substantially below its head.” See Docket No. 46 at 10.
`Moreover, the specification appears to counsel against these limitations. See ’285 Patent at 1:36-
`44 (distinguishing device that has a restricted angle and noting that angle adjustability is key to
`soothing more infants). Even if the embodiments described in the specification only disclose the
`
`
`
`9
`
`Patent Owner’s Ex. 2013, Page 11 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 12 of 16 Page ID #:549
`
`Patent Owner’s Ex. 2013, Page 12 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 13 of 16 Page ID #:550
`
`Patent Owner’s Ex. 2013, Page 13 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 14 of 16 Page ID #:551
`
`Patent Owner’s Ex. 2013, Page 14 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 15 of 16 Page ID #:552
`
`Patent Owner’s Ex. 2013, Page 15 of 16
`
`

`

`Case 5:20-cv-00859-GW-SHK Document 49 Filed 05/14/21 Page 16 of 16 Page ID #:553
`
`Patent Owner’s Ex. 2013, Page 16 of 16
`
`