United States District Court, D. Massachusetts
AMAX, INC. AND WORKTOOLS, INC., Plaintiffs,
ACCO BRANDS CORP., Defendant.
MEMORANDUM & ORDER
Nathaniel M. Gorton, United States District Judge.
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
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.
Overview of the Patented Technology
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.
Principals of Claim Construction
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.
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).
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”).
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)).
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.
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.
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.
The ‘589 and ‘709 Patents
‘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.
Disputed Claim Terms
“a body” (All Claims); “a base” (All
Claims); “a handle” (All Claims)
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
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
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.
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.
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