The opinion of the court was delivered by: HAROLD BAER, JR., District Judge
On September 16, 2004, the United States Patent and Trademark
Office (PTO) issued United States patent 6,619,816 ("the '816
patent), entitled" "Illuminated Novelty Confection," to Richard
Johnson. The '816 patent relates to a "light up" lollipop.
Plaintiff, Yanova, Inc, a Delaware corporation, and Yanova, Ltd.
(collectively, "Yanova"), a corporation organized under the laws
of Hong Kong, brought this action against defendants, Richard
Johnson ("Johnson"), president of Lite-Pop, Lite-Pop, a
California LLC, Candy Manufacturer, a corporation organized under
the laws of Hong Kong, and Five Star Brands, a California
corporation (collectively, "Defendants") for (1) declaratory
judgment of non-infringement; (2) declaratory judgment of patent
invalidity; (3) declaratory judgment of patent unenforceability;
(4) declaratory judgment of patent mismarking; and, (5) tortious
interference with prospective business relationships; (6) unfair
competition; (7) state intent to deceive; and, (8) state
deceptive acts and practices.
The parties dispute the meaning of certain terms in the claims.
A Markman hearing was held on December 2, 2004 to discuss the
meaning of these terms. See Markman v. Westview Instruments,
Inc., 517 U.S. 370 (1996). The Court construes the terms in the
context of the asserted claims as follows.
I. GENERAL CLAIM CONSTRUCTION STANDARDS
Claim construction is a matter of law. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en
banc), aff'd 517 U.S. 370 (1996). The process begins with the
language of the claims itself, which is to be read and understood
as it would be by a person of ordinary skill in the art. Dow
Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1372 (Fed.
Cir. 2001); Hockerson-Halberstadt, Inc. v. Avia Group Internat'l,
Inc., 222 F.3d 951, 955 (Fed. Cir. 2000); see also Markman,
52 F.3d at 986 ("[T]he focus [in construing disputed terms in claim
language] is on the objective test of what one of ordinary skill
in the art at the time of the invention would have understood the
term[s] to mean."). In construing the claims, the Court may
examine both intrinsic evidence (e.g., the patent, its claims,
the specification and file history) and, if necessary, extrinsic
evidence (e.g., expert reports, testimony, and anything else).
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1309 (Fed. Cir. 1999). In interpreting the disputed terms, it is
well settled that a court should look first to the intrinsic
evidence. Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (Fed. Cir. 1996). Extrinsic evidence is considered
only where the intrinsic evidence does not provide a sufficient
description to resolve ambiguities in the scope of the claim.
See Vitronics, 90 F.3d at 1583; Johnson Worldwide Assoc.,
Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999). The
definition of a claim term may be altered from its ordinary and
accustomed meaning if "clearly and deliberately" set forth in the
intrinsic evidence, such as the written description and
prosecution history. K-2 Corp., 191 F.3d at 1363. For instance,
arguments made during the prosecution of a patent application to
distinguish the claimed invention over the prior art may limit
the scope of construction of the claim term, and should be given
the same weight as claim amendments. Elkay Mfg. Co. v. Ebco
Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999); Southwall
Techns., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed.
The parties here seek claim construction of the term: (a)
"light device," (b) "a light transmission element attached to the
light device," and (c) "reflective inner coating," which are
terms that appear throughout the '816 patent. Claims 2 through 5
are dependent upon Claim 1,*fn1 and Claims 7 through 10 are
dependent upon Claim 6.*fn2 The first two terms, "light
device" and "a light transmission element attached to the light device,"
appear in both independent claims 1 and 6, while the third term,
"reflective inner coating," appears only in independent Claim 1
and dependent Claim 10.
Yanova contends, pursuant to the prosecution history, the
ordinary meaning of the term, and text of the Claim itself,
"Light Device" should be defined narrowly:
[A] fully operative and self-contained equipment for
generating light (e.g., as a flashlights or pen light)
and not just a light source such as a bulb or LED.
Yanova's Memorandum in Support of Motion for Proposed Claim
Construction ("Yanova Memo") at 15. Defendants argue that Yanova
places multiple impermissible limitations on the ordinary meaning
of the term when a broad construction of the term is necessary.
According to Defendants, the term should be construed as:
[A] piece of equipment or mechanism that is a source
of light perceptible to the human eye.
Defendants Memorandum In Opposition to Plaintiff and Counterclaim
Defendants' Motion for Proposed Claim Construction ("Def's Memo")
The term "light device" is not limited to certain, specifically
enumerated, devices such as flashlights or light bulbs or a
switch and battery. The term consists of two parts, (i) light and
(ii) device. First, Merriam Webster's Dictionary defines "light"
as "[s]omething that makes vision possible; the sensation aroused
by stimulation of the visual receptors; an electromagnetic
radiation in the wavelength range including infrared, visible,
ultraviolet, and X rays and traveling in a vacuum with a speed of
about 186,281 miles (300,000 kilometers)." Merriam Webster's
Dictionary at http://www.m-w.com/cgi-bin/dictionary (last
visited at 12/02/2004). Similarly, the American Heritage
Dictionary, Fourth Edition (2000), defines "light" as
"electromagnetic radiation that has a wavelength in the range
from about 3,900 to about 700 angstroms and that may be perceived
by the unaided, normal human eye." Second, the term, "device," as defines by Webster's II New
Riverside University Dictionary (1994), means "[s]omething
constructed or devised for a particular purpose, esp. a machine
used to perform one or more relatively simple tasks." The America
Heritage Dictionary (2000) similarly defines "device" as "a
contrivance or an invention serving a particular purpose,
especially a machine used to perform one or more relatively
simple tasks." In addition, the McGraw-Hill Dictionary of
Scientific and Technical Terms, Sixth Edition (2003), defines
"device" as "[a] mechanism, tool or other piece of equipment
designed for specific uses.
With the plain meaning of the terms "light" and "device" as
guides, the term "light device" in the asserted claims of the
patents-at-issue is construed to mean:
A piece of equipment or mechanism that is a source of
light perceptible to the human eye."
(Taffert, Tr. 14:17 15:2). The definition is consistent with
the claim language, which never disavows the nature or type of
equipment or mechanism employed, or the means by which the device
acts as a source of light.
B. "A light transmission element attached to the light
According to Yanova, pursuant to the prosecution history and
the ordinary meaning of the phrase, "a light transmission element
attached to the light device" should be construed as:
[A]n element that transmits the light from the light
device outside the periphery of a confection to a
point interior to the periphery of the confection,
that element being attached to the light device at
one end and the edible confection at the other end.
Yanova Memo at 15. Conversely, Defendants contend that Yanova's
definition impermissibly limits the ordinary meaning of the
phrase and should be construed as:
[A] part of a composite entity that allows light to
pass or be conveyed to the "light device."
Def's Memo at 13.
The term "a light transmission element attached to the light
device," consists of three additional terms, (i) ...