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Amax, Inc. v. Acco Brands Corp.

United States District Court, D. Massachusetts

October 13, 2017

AMAX, INC. AND WORKTOOLS, INC., Plaintiffs,
v.
ACCO BRANDS CORP., Defendant.

          MEMORANDUM & ORDER

          Nathaniel M. Gorton, United States District Judge.

         Plaintiffs Amax, Inc. (“Amax”) and Worktools, Inc. (“Worktools” and, collectively with Amax, “plaintiffs”) allege that defendant ACCO Brands Corp. (“ACCO” or “defendant”) has infringed their patents and trademark which relate to spring-enabled staplers.

         The Court held a Markman hearing on October 5, 2017, during which the defendant presented a tutorial on the subject technology and the parties disputed the meaning of 13 terms that are included in 24 claims of the patents-in-suit.

         I. Overview of the Patented Technology

         The plaintiffs and defendant sell competing desktop staplers. Worktools is the assignee of U.S. Patent Nos. 7, 178, 709 (“the ‘709 patent”) and 7, 748, 589 (“the ‘589 patent”) as to which Amax holds an exclusive license. Amax is also the assignee of U.S. Trademark Registration No. 3, 377, 921 for “Long Reach” (“the Long Reach trademark”). Defendant manufactures and sells the Swingline Quick Touch Full Strip and Quick Touch Compact staplers. Plaintiffs allege that defendant's staplers infringe claims 4 and 5 of the ‘709 patent and claims 1-10, 12-19 and 21-24 of the ‘589 patent. The parties dispute the meaning of 13 claim terms which they agree can be sorted into 7 groups.

         II. Analysis

         A. Principals of Claim Construction

         In analyzing a patent infringement action, a court must 1) determine the meaning and scope of the patent claims asserted to be infringed and 2) compare the properly construed claims to the infringing device. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). The first step, known as claim construction, is an issue of law for the court to decide. Id. at 979. The second step is determined by the finder of fact. Id.

         The Court's responsibility in construing claims is to determine the meaning of claim terms as they would be understood by persons of ordinary skill in the relevant art. Bell Atl. Network Servs., Inc. v. Covad Commc'ns Grp., Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The meanings of the terms are initially discerned from three sources of intrinsic evidence: 1) the claims themselves, 2) the patent specification and 3) the prosecution history of the patent. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996).

         The claims themselves define the scope of the patented invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Claim terms are generally given their “ordinary and customary meaning, ” which is the meaning that a person skilled in the art would attribute to the claim term. See id. at 1312-13. Even if a particular term has an ordinary and customary meaning, however, a court may need to examine the patent as a whole to determine if that meaning controls. Id. at 1313 (“[A] person of ordinary skill in the art is deemed to read the claim term . . . in the context of the entire patent . . . .”); see also Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (noting that a court cannot construe the ordinary meaning of a term “in a vacuum”).

         Ultimately, the correct construction will be one that

stays true to the claim language and most naturally aligns with the patent's description of the invention.

Phillips, 415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).

         The patent specification is “the single best guide to the meaning of a disputed term” because it

may reveal a special definition given to a claim term . . . that differs from the meaning it would otherwise possess . . . [such as] an intentional disclaimer, or disavowal, of claim scope by the inventor.

Id. at 1316, 1321.

         The Court should also consult the prosecution history to see how the inventor and PTO understood the patent and to ensure the patentee does not argue in favor of an interpretation it has disclaimed. Id. at 1317.

         In the rare event that analysis of the intrinsic evidence does not resolve an ambiguity in a disputed claim term, the Court may turn to extrinsic evidence, such as inventor and expert testimony, treatises and technical writings. Id. at 1317. Although extrinsic evidence may be helpful in construing claims, the intrinsic evidence is afforded the greatest weight in determining what a person of ordinary skill would have understood a claim to mean. V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1310-11 (Fed. Cir. 2005).

         B. The ‘589 and ‘709 Patents

         i. The Technology

         The ‘709 patent issued in February, 2007. The ‘589 patent is a continuation of the ‘709 patent and issued in July, 2010. The patents relate to spring-enabled desktop staplers. The spring present in the stapler is linked to a striker and, when the striker is raised and released, the stored energy of the spring drives the staple through a “stack of papers”. When compared with a conventional desktop stapler, the spring-enabled desktop stapler has a lower operating force which makes it easier to use with an extended hand on a desk.

         ii. Disputed Claim Terms

         1. “a body” (All Claims); “a base” (All Claims); “a handle” (All Claims)

         Defendant contends that the terms “body, ” “base” and “handle” should be construed as structures separate from both each other and any other claimed component of the stapler. In support of its contention, defendant avers that the intrinsic evidence shows that 1) the “body”, “base” and “handle” are listed as separate elements in every disputed claim, 2) the components must be separate structures so they can connect with each other as is claimed and 3) each visual embodiment shows the three components as separate structures.

         Furthermore, defendant submits that plaintiffs are estopped from contending that the “handle” and “body” are anything but separate because of the position adopted by plaintiffs in Accentra, Inc. and WorkTools, Inc. v. Staples, Inc., No. 07-5862, 2013 WL 12113238 (C.D. Cal. June 5, 2013) [hereinafter “the Accentra case”]. Although Amax was not a party to that case, WorkTools was a party. Defendant suggests that Amax is also bound by issue preclusion because it acquired the assets of Accentra in 2012, thereby establishing privity with Accentra.

         Plaintiffs dispute defendant's contention that the three terms should be construed as structures separate from each other. Instead, plaintiffs assert that the Court should adopt the plain and ordinary meaning of the terms “base” and “handle”. Plaintiffs submit that the “body” is a multi-part structure that houses components. They contest defendant's constructions which add the limitation “separate” to each component and maintain that there is nothing in the intrinsic evidence requiring separateness of each component.

         Plaintiffs also reject ACCO's contention that they are estopped from presenting their proposed constructions because they were not a party to the Accentra case and that litigation did not involve the ‘589 patent. Defendant rejoins that because the Accentra case involved the ‘709 patent which is a continuation of the ‘589 patent, estoppel applies in this case.

         The claim language does not, as defendant contends, require a reading that the connected components are distinct from one another. Defendant's proposed construction imports the limitation “separate” to the terms. The ordinary ...


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