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CAO Group Inc. v. Magpie Tech Corp.

United States District Court, D. Utah, Central Division

January 30, 2017

CAO GROUP, INC., Plaintiff,


          DALE A. KIMBALL United States District Judge.

         Plaintiff CAO Group, Inc. filed this action against Magpie Tech Corp., claiming that Magpie Tech has infringed several of CAO Group's United States patents relating to LED dental curing lights. The patents at issue are U.S. Patent Nos. 6, 755, 648 (“the ‘648 Patent”), 6, 783, 362 (“the ‘362 Patent”), 6, 926, 524 (“the ‘524 Patent”), 6, 971, 875 (“the ‘875 Patent”), and 7, 294, 364 (“the ‘364 Patent”). On December 1, 2016, the court held a hearing pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), aff'd, 517 U.S. 370, 134 L.Ed.2d 577, 116 S.Ct 1384 (1996). The court has carefully considered the parties' written submissions on these matters, as well as the arguments made at the hearing, and issues the following Memorandum Decision and Order construing the disputed claims in the Patents-in-Suit.

         I. BACKGROUND

         CAO invented a semiconductor laser or light-emitting diode (“LED”) dental curing light that is portable, lightweight, inexpensive, and that minimizes heat generation to eliminate a cooling system and complicated circuitry. CAO filed its first application encompassing its first generation dental curing light on September 24, 1999. LED lights became widely accepted and used in the dental industry during the early 2000s.

         Since 1999, CAO has filed thirty six continuation-in-part applications, claiming priority to its original application. Five of CAO's many patents covering LED curing lights are at issue in this case. CAO has successfully enforced and licensed the patents at issue. CAO has licensed the patents to prominent companies in the industry, such as 3M, Ultradent, Discus Dental, Dentsply, Kerr, and others. Magpie is the initial United States distributor of products for Taiwan-based Bonart Co. Ltd. which include LED dental curing lights.

         CAO brought this lawsuit to stop Magpie from allegedly infringing its patents. The parties met and conferred to agree upon the claim terms and phrases to submit to the court for construction. The parties dispute the construction of nine terms or phrases in the Patents-in-Suit. As required by the Local Patent Rules, the parties have submitted a Joint Appendix of exhibits and Joint Claim Construction Chart. Several of the patent claims include variations of similar phrases, which are presented in groups as single phrases for construction. The parties have agreed that it is appropriate for the court to treat these various groups of similar phrases as having the same respective constructions. In addition, the parties agree that each term may be considered dispositive to the infringement action.


         Cross Motions for Claim Construction

         A. Claim Construction Standard

         The court construes patent claims as a matter of law. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). When performing claim construction, the court will first “look to the intrinsic evidence of the record, i.e., the patent itself, including the claims, the specification, and if in evidence, the prosecution history.” CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1152 (Fed. Cir. 1997) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561 (Fed. Cir. 1991) (“To ascertain the meaning of claims, [courts] consider three sources: the claims, the specification, and the prosecution history.”). The context of a term in the claim as a whole is critical. Such intrinsic evidence is the most significant source of the meaning of disputed claim language. Vitronics, 90 F.3d at 1582. Extrinsic evidence, such as expert testimony, inventor testimony, dictionaries, and technical treatises, should not be relied upon unless an analysis of the intrinsic evidence alone will not resolve all the ambiguity in a disputed claim term. Id. at 1583-84.

         The claim construction analysis begins with the words of the claims. Vitronics, 90 F.3d at 1582. In most cases, the ordinary and customary meaning-i.e. the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention-should be used to construe the disputed claim terms. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).

         In addition, the specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Vitronics, 90 F.3d at 1582. This is particularly true where the ordinary meaning is not readily apparent. But the Federal Circuit has repeatedly warned against confining the claims to those embodiments disclosed in the specification. Phillips, 415 F.3d at 1323.

         Furthermore, “an invention is construed not only in light of the claims, but also with reference to the file wrapper or prosecution history in the Patent Office.” Graham v. John Deere Co., 383 U.S. 1, 33 (1966). A person of ordinary skill in the art looks to the prosecution history of a patent to understand how the patent applicant and the USPTO understood the claim terms. Phillips, 415 F.3d at 1313. Argument and amendments made during patent prosecution may limit the interpretation of claim terms to exclude interpretations that were disclaimed to obtain allowance of a claim. Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995). Thus, “claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent.” Graham, 383 U.S. at 33. “The doctrine of prosecution disclaimer is well established in the Supreme Court precedent, precluding patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003).

         With these claim construction guidelines in mind, the court now turns to the construction of the disputed issues and terms in the Patents-in-Suit.

         B. Disputed Claim Terms

         (1) Claim Term 1: “Wand”

         The first disputed term is “wand” in claims 8 and 9 of the ‘648 Patent and claim 1 of the ‘524 Patent. CAO contends that the court should construe the term “wand” as an “elongated structure that is designed to be grasped or held by hand.” Whereas Magpie contends that the court should define the term as a “slender, straight handheld device.”

         In several of the specification embodiments, the term “wand” is equated with the term “handpiece.” Also, in the language of claim 9, the term “wand” is equated with the term “handle.” The specification and claims do not delineate any special shape or configuration of the “wand, ” although all embodiments shown include a wand/handle/handpiece that is generally elongated to be grasped or held by a hand. In addition, the prosecution histories of the patents do not suggest any special or narrow meaning for “wand.”

         In the ‘524 Patent, it refers to “a wand adapted to be grasped by a human hand.” In the ‘648 Patent, claim 8 refers to a ‘wand with a proximal end and a distal end, said wand having a longitudinal axis defined between said proximal end and said distal end.” The ‘684 Patent also refers to the wand in claim 9 as “a handle with a proximal end and a distal end, said wand having a longitudinal axis defined between said proximal end and said distal end.”

         Magpie argues that a person of ordinary skill in the art, having read the ‘648 Patent and the ‘524 Patent, would understand “wand” to mean “a slender, straight handheld device.” However, the claim language does not clearly delineate any special shape of the wand. A longitudinal axis between a proximal end and a distal end does not necessarily mean the wand must be slender or straight. Moreover, the claim language makes clear that the term wand is not used to refer to the whole device, rather it is a part of the device.

         The ‘648 Patent claim language refers to the wand interchangeably as a handle. In the specification of the ‘648 Patent, it refers to wand interchangeably as a “handpiece or wand.” Magpie contends that the embodiments in the patent specifications show slender, straight handheld devices, but the ‘648 Patent shows an embodiment that is neither straight nor slender. The “506 handle” looks like the handle of a pistol. This embodiment would be consistent with the claim's use of the words wand and handle interchangeably.

         The ‘648 Patent and ‘524 Patent specifications describe six different embodiments using different terms to describe different device shapes. Magpie argues that “when an applicant uses different terms in a claim, it is permissible to infer that he intended his choice of different terms to reflect a differentiation in the meaning of those terms.” Innova/Pure Water v. Safari Water Filtration, 381 F.3d 1111, 1119 (Fed. Cir. 204). Magpie claims that the specifications of the ‘648 Patent and the ‘524 Patent use “housing” for each embodiment as a general descriptor of the enclosure, while casing, handpiece, and wand are used as subsets of the housing category, each with its own connotation and only “casing” and “handpiece” apply to the pistol grip design that is similar to Magpie's product.

         However, the claim language does not appear to make such a differentiation in this case. Magpie imports overly narrow limitations into the claim from the specifications and extrinsic dictionary definitions. One embodiment described as having a handle is very similar to Magpie's accused device, and the patents and specifications interchangeably use wand and handpiece and wand and handle. Magpie's construction is overly narrow because it is based on selected embodiments to the exclusion of other embodiments that are similar to Magpie's accused device. The court does not believe that there is a basis for concluding that the claim term “wand” does not apply to embodiments referred to as a “handle, ” such as “handle 506, ” when the claim interchangeably refers to handle and wand in the same sentence.

         Magpie contends that CAO's construction impermissibly extends to the term and its equivalents whereas Magpie's construction is based on the actual specifications in the patent. But Magpie's construction limits the term “wand” more narrowly than the exemplary embodiments. There is no disclaimer or special meaning in the prosecution history, and the court concludes that there is no ambiguity to resolve as a result of the intrinsic evidence. Thus, the court finds it is not necessary or appropriate to move beyond the intrinsic evidence to define the term properly. The court, therefore, concludes that CAO's proposed construction captures the appropriate breadth and meaning of the term “wand” as it is used in the claims as a whole. The court, therefore, adopts CAO's proposed construction and defines the term “wand” as an “elongated structure that is designed to be grasped or held by a hand.”

         (2) Claim Term 2: various language regarding angles “in the ...

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