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Banhazl v. The American Ceramic Society

United States District Court, D. Massachusetts

July 26, 2019

TERRIE BANHAZL, doing business as HEIRLOOM CERAMICS, Plaintiff and Counter-Defendant,
v.
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.

         Inventor 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”).[1] [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 ¶ 2].

         The 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.

         I. APPLICABLE LAW

         Claim 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. 2001).

         The 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. 2004)).

         The 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.

         II. CLAIM CONSTRUCTION

         The 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 claims:

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 surface;
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.

         A. 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.

         The 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 adds that:

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.

         B. "Permanently"

Banhazl's Proposed Construction
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.

         The 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)).

         In 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).

         As an 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.

         Plaintiff 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 ...


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