United States District Court, D. Massachusetts
TERRIE BANHAZL, doing business as HEIRLOOM CERAMICS, Plaintiff and Counter-Defendant,
THE AMERICAN CERAMIC SOCIETY, Defendant and Counter-Claimant. Banhazl's Proposed Construction ACS's Proposed Construction Banhazl's Proposed Construction ACS's Proposed Construction Banhazl's Proposed Construction ACS's Proposed Construction Banhazl's Proposed Construction ACS's Proposed Construction Banhazl's Proposed Construction ACS's Proposed Construction Banhazl's Proposed Construction ACS's Proposed Construction Banhazl's Proposed Construction ACS's Proposed Construction Banhazl's Proposed Construction ACS's Proposed Construction Disputed Claim Term Court's Adopted Construction
MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION
ALLISON D. BURROUGHS U.S. DISTRICT JUDGE.
Terrie Banhazl (“Plaintiff” or
“Banhazl”) brings this patent infringement action
against the American Ceramic Society (“Defendant”
or “ACS”) and alleges that Defendant's
dissemination of how-to tutorials, step-by-step instructions,
and instructional videos infringes all claims of U.S. Patent
No. 7, 622, 237 (“'237
Patent”). [ECF No. 1 ¶ 48]. The '237 Patent
is entitled “System, Apparatus, and Method for the
Permanent Transfer of Images onto Glossy Surfaces” and
claims a method for permanently transferring an image to a
ceramic or glass piece. [ECF No. 1-1 (“'237
Patent”)]. Plaintiff, through her business Heirloom
Ceramics, sells “multi-surface transfer paper with
detailed instructions to create custom ceramic, porcelain,
stoneware, and glass pieces using laser printer/photocopied
images” following her patented methodology as well as
books describing the patented methodology. [ECF No. 1 ¶
parties filed claim construction briefs concerning eight
disputed terms, and the Court conducted a hearing on December
12, 2017 at which the parties presented their proposed
constructions. See [ECF Nos. 30-31, 34-35, 44]. The
Court construes the terms as set forth below.
construction is the first stage of a patent infringement
analysis and requires the Court to determine “the scope
and meaning of the patent claims asserted.”
Clearstream Wastewater Sys., Inc. v. Hydro-Action,
Inc., 206 F.3d 1440, 1444 (Fed. Cir. 2000). Claim
construction is a question of law for the court, Markman
v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996),
to be resolved with an eye toward the fact that the
Court's adopted construction “becomes the basis of
the jury instructions, should the case go to trial” on
the issue of infringement, see AFG Industries, Inc. v.
Cardinal IG Co., 239 F.3d 1239, 1244, 1247 (Fed. Cir.
Federal Circuit has provided a framework governing claim
construction. In general, a court must give claim terms their
“ordinary and customary meaning, ” which the
Federal Circuit has deemed to be “the meaning that the
term would have to a person of ordinary skill in the art in
question at the time of the invention.” Phillips v.
AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en
banc). “[W]here the ordinary meaning of claim language
as understood by a person of skill in the art is not readily
apparent, ” courts generally consider a
“hierarchy of sources to aid in claim
construction.” Skyline Software Sys., Inc. v.
Keyhole, Inc., 421 F.Supp.2d 371, 375 (D. Mass. 2006).
These sources include intrinsic evidence-including “the
words of the claims themselves, the remainder of the
specification, [and] the prosecution history” of the
patent-and “extrinsic evidence concerning relevant
scientific principles, the meaning of technical terms, and
the state of the art.” Phillips, 415 at ¶
1314 (quoting Innova/Pure Water, Inc. v. Safari Water
Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir.
claim language itself is where claim construction “must
begin and remain centered” because “the claims of
a patent define the invention to which the patentee is
entitled the right to exclude.” Innova/Pure
Water, 381 F.3d at 1115-16. Second, the specification
“is always highly relevant to the claim construction
analysis” and “[u]sually . . . is
dispositive.” Phillips, 415 F.3d at 1315
(quoting Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996)). In the specification, a
patentee may define her own terms, act as her own
lexicographer, or disavow certain meanings. Id. at
1316. The Federal Circuit, however, has “warned against
importing limitations from the specification into the claims
absent a clear disclaimer of claim scope.” Andersen
Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1373
(Fed. Cir. 2007). Third, the prosecution history may provide
insight into how the inventor and the patent examiner
understood the claim terms. See Phillips, 415 F.3d
at 1317. Finally, courts may consider extrinsic evidence,
such as inventor testimony, dictionaries, or learned
treatises, but must “keep in mind the flaws inherent in
each type of [extrinsic] evidence and assess that evidence
accordingly.” Id. at 1317, 1319.
parties present eight disputed claim terms for construction:
(1) “permanently, ” (2) “glossy
surface/substrate having a glossy surface, ” (3)
“film covered transfer paper” or “transfer
paper, ” (4) “having the image printed” or
“image is printed, ” (5) “transferring the
film to the glossy surface” or “transferring the
film with the image onto the glossy surface, ” (6)
“evaporate, ” (7) “embed(s), ” and
(8) “laser printing device.” [ECF No. 43-1]. The
eight terms are emphasized in the following representative
1. A method of permanently transferring an image to
a substrate having a glossy surface, including:
providing a sheet of film-covered transfer paper having
the image printed on the film side of the transfer
paper, wherein the image is printed with an
iron-oxide based toner;
transferring the film to the glossy surface; and
heating the substrate with the film to a temperature
sufficient to evaporate the film and to
embed the image into the glossy surface.
8. A method of permanently transferring an image to
a substrate having a glossy surface, including:
printing the image onto the film side of a sheet of
transfer paper using a laser printing
device using an iron-oxide based toner;
transferring the film with the image onto the glossy
heating the substrate with the film to a temperature such
that the film evaporates and the image embeds into
the glossy surface.
'237 Patent, Claims 1, 8.
Person of Ordinary Skill in the Art
“[T]he words of a claim ‘are generally given
their ordinary and customary meaning.'”
Phillips, 415 F.3d at 1312-13 (quoting
Vitronics, 90 F.3d at 1582). The “ordinary and
customary meaning” is understood to be “the
meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention . .
. .” Id. at 1313.
parties agree that “the art” is ceramics but
disagree on who a person of ordinary skill is. See
[ECF No. 31 at 6; ECF No. 35 at 2-3]. Defendant defines a
person of ordinary skill in the art as “an individual
with a four-year college degree in the field of ceramics or
pottery, or alternatively . . . an individual with a two-year
associate's degree or its equivalent with at least one
apprenticeship or internship working intensively in the field
of ceramics.” [ECF No. 31 at 6]. Defendant's expert
Transferring an image to a ceramic piece requires working
knowledge about the different types of clay and glaze that
are being used. In order to transfer an image to a ceramic
piece correctly, it must be fired correctly. This requires
taking into account the type of clay used, the glaze
composition, the type of image, and decals.
[ECF No. 31-2 ¶ 14]. Plaintiff defines a person of
ordinary skill in the art as an individual "who has at
least two years of experience making ceramics, taken
approximately 2-3 preliminary courses - whether recreational
or through a high school or college - and has familiarity
with the tools and materials used in ceramics." [ECF No.
35 at 3]. Whereas Defendant's definition excludes
Plaintiff, who has been practicing ceramics for 50 years but
does not have a formal degree, Plaintiffs definition sets the
bar too low by including recreational hobbyists who may have
never fired their own work. See [id.; ECF
No. 35-1]. Based on the specification and the declarations
submitted by the parties, the Court finds that a person of
ordinary skill in the art covered by the '237 Patent is
someone who has at least five years of experience making
ceramics and has familiarity with the tools and materials
commonly used in ceramics, including clays, glazes, and the
use of a kiln.
ACS's Proposed Construction
In a way that lasts or remains unchanged
indefinitely. Not a separate limitation.
In a way that exists perpetually. This term has a
limiting effect on the claims.
word "permanently" appears in the preamble. As a
general rule, a preamble is limiting, meaning that it is
given the same import as a claim term, only if it is
"necessary to give life, meaning, and vitality to the
claims." Kropa v. Robie, 187 F.2d 150, 152
(CCPA 1951). The Federal Circuit has articulated several
guidelines for determining whether a preamble is limiting.
For example, "when the claim drafter chooses to use both
the preamble and the body to define the subject matter of the
claimed invention, the invention so defined, and not some
other, is the one the patent protects.” Eaton Corp.
v. Rockwell Intern. Corp., 323 F.3d 1332, 1339 (Fed.
Cir. 2003) (citations omitted). Similarly, “[w]hen
limitations in the body of the claim rely upon and derive
antecedent basis from the preamble, then the preamble may act
as a necessary component of the claimed invention.”
Id. By contrast, “if the body of the claim
sets out the complete invention, then the language of the
preamble may be superfluous.” Id. (quoting
Schumer v. Lab. Comp. Sys., Inc., 308 F.3d 1304,
1310 (Fed. Cir. 2002)).
addition, “where a patentee defines a structurally
complete invention in the claim body and uses the preamble
only to state a purpose or intended use for the invention,
the preamble is not a claim limitation.” Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). “The
determination of whether preamble recitations are structural
limitations or mere statements of purpose or use can be
resolved only on review of the entirety of the patent to gain
an understanding of what the inventors actually invented and
intended to encompass by the claim.” Id.
(quoting Corning Glass Works v. Sumnitomo Elec. U.S.A.,
Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1997)); see Am.
Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358
(Fed. Cir. 2010) (“Whether to treat a preamble term as
a claim limitation is ‘determined on the facts of each
case in light of the claim as a whole and the invention
described in the patent.'” (quoting Storage
Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed.
Cir. 2003))). The Federal Circuit has recognized, however,
that preambles of method claims typically employ the
following standard language pattern: “‘a method
for a purpose or intended use comprising,' followed by
the body of the claim, in which the claim limitations
describing the invention are recited.” TomTom, Inc.
v. Adolph, 790 F.3d 1315, 1323-24 (Fed. Cir. 2015).
initial matter, the parties do not dispute that the portions
of the preamble that provide antecedent basis for the claim
(i.e. the terms “an image, ” “a
substrate, ” and “a glossy surface”) are
limiting. Accordingly, the Court considers only whether the
term “permanently” is limiting.
contends that the preamble is not limiting. See [ECF
No. 30 at 7-8]. Based on case law holding that “[a]
preamble generally is not limiting if deletion of the
preamble phrase does not affect the structure or steps of the
claimed invention, ” Plaintiff argues that removing the
term “permanently” from the preamble does not
affect the structure or steps of the claimed invention.
[Id. at 8 (citing IMS Tech., Inc. v. Haas
Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir.
2000))]. Plaintiff further asserts that the preamble is
comprised of two distinct portions: (i) a general description
of the method (“a method of permanently
transferring”) and (ii) “what is being
transferred to where” (“an image to a