United States District Court, S.D. New York
For Loftex USA LLC, Plaintiff, Counter Defendant: Paul Fields, William Robert Thornewell, II, Leason Ellis LLP, White Plains, NY.
For Trident Limited, formerly known as Abhishek Industries Limited, Defendant: Bruce Homer Sales, Jonathan Andrew David, Stephen M Lund, PRO HAC VICE, Lerner, David, Littenberg, Krumholz & Mentlik, LLP, Westfield, NJ; Charles Patrick Kennedy, Littenberg, Krumholz & Mentlik, LLP, Westfield, NJ.
For Trident Group Limited, Defendant, Counter Claimant: Charles Patrick Kennedy, Lerner, David, Littenberg, Krumholz & Mentlik, LLP, Westfield, NJ.
For Trident Limited, Counter Claimant: Bruce Homer Sales, Jonathan Andrew David, Stephen M Lund, PRO HAC VICE, Lerner, David, Littenberg, Krumholz & Mentlik, LLP, Westfield, NJ; Charles Patrick Kennedy, Littenberg, Krumholz & Mentlik, LLP, Westfield, NJ.
OPINION & ORDER
Paul A. Engelmayer, United States District Judge.
Loftex USA LLC (" Loftex" ) brings this action against Trident Limited and Trident Group Limited (collectively, " Trident" ), alleging that Trident has infringed and continues to infringe Loftex's U.S. Patent No. 7,810,308 (" the '308 Patent" ), in violation of
35 U.S.C. § § 271 et seq . Trident brings a counterclaim against Loftex, seeking, inter alia , a declaration that the '308 Patent is invalid and void.
In connection with these claims, the parties have asked this Court to construe disputed terms of the '308 Patent. The Court held a Markman hearing in this action on February 5, 2013. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The Court's constructions of the disputed terms are set forth below.
A. Factual Background
Loftex is a New York corporation that manufactures " low-twist" towels, which are characterized by high absorbency and soft texture. See Loftex CC Br. Ex. A (" U.S. Patent '308" ) at 2:17. The '308 Patent describes and claims a method of producing a low-twist towel. U.S. Patent '308. According to the FAC, Loftex is the owner by assignment of " all right, title and interest in and to the '308 Patent, including the right to sue for . . . infringement of the '308 Patent." FAC ¶ 8.
Trident Limited, of which Trident Group Limited is a shareholding company, see Dkt. 5, also manufactures towels. Loftex alleges that Trident " directly or through its subsidiaries, divisions, or groups," has infringed its '308 Patent by " making, using, selling and/or offering to sell, importing or allowing others to make, use, sell and/or offer for sale, or import . . . products, including at least Trident's towels, which are made in accordance with and within the scope of one or more of the claims of the '308 Patent." FAC ¶ 11.
B. Procedural History
On December 20, 2011, Loftex filed its original complaint against Trident Limited. Dkt. 1. On February 23, 2012, Trident Limited filed its answer and counterclaims against Loftex. Dkt. 6. On July 23, 2012, Loftex moved for leave to amend the complaint to add Trident Group Limited as an additional defendant, Dkt. 20, which this Court granted in an Opinion & Order dated November 20, 2012, Dkt. 30. See Loftex USA, LLC v. Trident Ltd., No. 11 Civ. 9349 (PAE), 2012 WL 5877427 (S.D.N.Y. Nov. 20, 2012).
C. Applicable Law
A claim of patent infringement requires a two-step process. First, as a matter of law, the Court must construe the disputed claim terms. Only then can a determination be made whether the allegedly infringing product in fact infringes the patent, as construed, and/or whether the patent itself is valid. Metabolite Labs., Inc. v. Lab. Corp. of Amer. Holdings , 370 F.3d 1354, 1360 (Fed. Cir. 2004); Brassica Prot. Prods. LLC v. Caudill Seed & Warehouse Co., 591 F.Supp.2d 389, 394 (S.D.N.Y. 2008); Joao v. Sleepy Hollow Bank , 418 F.Supp.2d 578, 580 (S.D.N.Y. 2006).
In construing a patent, " [i]t is a bedrock principle . . . that the claims of a patent define the invention to which the patentee is entitled the right to exclude."
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). When a court interprets a patent claim, it " should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The words of a claim should be interpreted according to their " ordinary and customary meaning" --that is, the " meaning that [they] would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips , 415 F.3d at 1312-13 (citations omitted). The claims, in turn, " must be read in view of the specification, of which they are a part. . . . [T]he 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. Finally, the prosecution history can be consulted to " determine whether or not there were any express representations made in obtaining the patent regarding the scope and meaning of the claims." DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1323 (Fed. Cir. 2001).
As compared with intrinsic evidence, which consists of the claims, specification, and prosecution history, extrinsic evidence includes " all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc), aff'd , 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Extrinsic evidence, however, is " less significant than the intrinsic record in determining the legally operative meaning of claim language," Phillips , 415 F.3d at 1317 (citation omitted); where " an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term . . . , it is improper to rely on extrinsic evidence." Vitronics , 90 F.3d at 1583.
II. Disputed Claims
A. "A method of producing a low twist towel"