Searching over 5,500,000 cases.

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Jay v. Spectrum Brands Holdings, Inc.

United States District Court, S.D. New York

May 12, 2015

HARVEY H. JAY, Plaintiff,



In this patent infringement case, Plaintiff Harvey H. Jay, M.D., ("Plaintiff" or "Jay"), alleges that defendants Spectrum Brands Holdings, Inc., Spectrum Brands, Inc., and Shaser, Inc. ("Defendants" or "Spectrum"), employed hair removal techniques that infringe upon five U.S. Patents: numbers 6, 824, 542 (the "542 Patent"), 6, 916, 316 (the "316 Patent"), 7, 175, 617 (the "617 Patent"), 7, 553, 308 (the "308 Patent"), and 8, 393, 330 (the "330 Patent" and together, the "Jay Patents").

On October 22, 2014, the Court held a Markman hearing regarding the construction of thirty terms used in the claims of the Jay Patents. Each of the disputed terms appears in one or more of the claims in one or more of the Jay Patents. (See Docket Entry ("DE") Nos. 39, 61.) The Court has considered thoroughly all of the parties' written submissions and their argumentation at the hearing concerning the disputed claim construction issues. For the reasons set forth below, and those stated on the record of the hearing, the Court resolves the claim term disputes as set forth below.


The Jay Patents are directed to techniques of temporary hair removal primarily utilizing light directed at the hair.

After reviewing the parties' pre-hearing submissions concerning the disputed claim terms (the "DCTs"), the Court issued an order setting forth proposed constructions of certain of the DCTs. (DE No. 54.) At the hearing, the parties agreed that certain of the DCTs are to be construed in accordance with the Court's proposed construction, another agreed construction, or their ordinary meaning (i.e., no construction), as follows:

DCT Text Location(s) in Asserted Construction, if Any No. Patent Claims 2 "Predetermined" '542 Patent - claim 1; "selected prior to the relevant '617 Patent - claims 1, 35 action" (Tr. 35-36; DE No. and 36; 54.) '316 Patent - claims 1, 9, 25, 29 and 39; '308 Patent - claim 1; '330 Patent - claims 1, 2, 3, 5 and 7. 3 "Total Energy" '542 Patent - claims 1, 5 and "total amount of energy 6; transmitted" (Tr. 36; DE No. '617 Patent - claims 1, 3, 8, 54.) 35 and 36; '316 Patent - claims 1, 3, 8, 9, 25, 27, 29, 32 and 39; '308 Patent - claim 1; '330 Patent - claims 1, 3, 5 and 7. 5 "Protruding Hair '330 Patent - claims 1, 3, 4, "hair (fibers) which extend (Fibers)" 5, 6 and 7. from a hair follicle above the exterior surface of the skin" (Tr. 40-41; DE No. 49, at 53 of 63.)

DCT Text Location(s) in Asserted Construction, if Any No. Patent Claims 6 "Growth of Hair" or '542 Patent - claim 1; "growth of hair [through or "Hair Growth" '617 Patent - claims 1, 35 along or at] a [the] skin ("through" or "along" and 36; surface" (Tr. 41; DE No. 49, or "at" a "a skin '316 Patent - claims 1, 9, 29 at 53 of 63.) surface") and 39; '308 Patent - claim 1; '330 Patent - claims 1, 3 and 5. 12 ("Direct Light Pulses '542 Patent - claim 1; Ordinary meaning (Tr. 60-61.) Toward" or "Apply '617 Patent - claims 1, 35 Light Pulses To" or and 36; "Irradiate") "a Skin '316 Patent - claims 1, 25, Surface" 29, 30 and 39; '308 Patent - claim 1; '330 Patent - claims 1, 2, 3 and 5. 13 "Hair Removal '330 Patent - claims 7 and 8 Ordinary meaning (Tr. 61.) Treatment" 20 "Generating a '542 Patent - claim 1; "Generating a pre-selected Predetermined '617 Patent - claims 1, 35 number of pulses of light" Number of Pulses of and 36; (Tr. 62-63; DE No. 54.) Light" '316 Patent - claim 1; '308 Patent - claim 1; '330 Patent - claim 1. 21 "Said Pulses Having '542 Patent - claim 1; "The total amount of energy... a Total Energy all '617 Patent - claims 1, 35 transmitted through the Predetermined" and 36; pulses having been '316 Patent - claims 1, 9, 25, determined in advance" (Tr. 29 and 39; 63; DE No. 54.) '308 Patent - claim 1; '330 Patent - claims 1, 3, 5 and 7. 22 "Directing said Pulses '542 Patent - claim 1; Ordinary meaning (Tr. 63.) of Light Towards a '617 Patent - claims 1 and Skin Surface" 36; '316 Patent - claims 1 and 39.

DCT Text Location(s) in Asserted Construction, if Any No. Patent Claims 23 "Applying said Pulses '617 Patent - claim 35; Ordinary meaning (Tr. 63.) of Light to a Skin '316 Patent - claims 25 and Surface" 29; '308 Patent - claim 1.

The parties agreed that DCT 19 does not appear in any of the asserted claims and therefore need not be construed. (Tr. 62.) The parties further agreed that DCT 28 will be construed as follows[1]:

DCT Text Location(s) in Asserted Construction, if Any No. Patent Claims 28 "By Virtue of... '617 Patent - claims 35 and "Retention of light resulting, Absorption of Light 36. at one or more portions of... by Hair Fibers hair fibers situated beneath Below a Skin the exterior of a skin surface, Surfce" ("at Least in (impairment for a limited Temporarily period of time of the rate of Retarding Hair hair growth' or severance or Growth" or "Severing damage of the hair fibers')" or (Tr.73-74; DE No. 54.) Damaging the Hair Fibers")

The parties' remaining claim construction disputes focus principally upon whether there is any difference in the meaning of the terms "projecting hair" and "protruding hair" as used in the asserted claim terms (the "Projecting/Protruding Dispute"), whether certain claim terms should be defined by reference to the ultimate intention of the user of the claimed methods or merely the effect of the methods (the "Intentionality Dispute"), whether Plaintiff has limited his claims to methods in which light affects only hair fibers and not any surrounding anatomical elements such as hair follicles (the "Collateral Damage Dispute"), whether Plaintiff's claims should be construed to exclude any method in which the growth of any given shaft of hair is stopped, rather than merely slowed (the "Non-Stop Dispute"), and characterization of the operation of the Plaintiff's methods in connection with the construction of other claim terms (the "Treatment Definition Dispute").


Claim construction is a matter of law to be determined by the court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). In interpreting the meaning of claim terms, "words of a claim are generally given their ordinary and customary meaning" as understood by "a person of ordinary skill in the art at the time of invention, i.e., as of the effective filing date of the patent application." Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (citations and internal quotation marks omitted). The court construes a claim term "not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id. at 1313.

There are two exceptions to this general rule: "1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution." Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).

When construing claim terms, courts must first look to the intrinsic evidence, i.e., the words of the claim themselves, the written description in the patent's specification, and the history of the patent prosecution before the U.S. Patent and Trademark Office (the "PTO"). Phillips, 415 F.3d at 1314-17. The specification "acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.... [I]t is the single best guide to the meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The specification's written description of the invention or method is relevant to construction of claims, because it is a "statutory requirement that the specification describe the claimed invention in full, clear, concise, and exact terms.'" Phillips, 415 F.3d at 1316 (quoting 35 U.S.C. ยง 112). Therefore, claim terms must be interpreted in a manner consistent with the specification of which they are a part. Phillips, 415 F.3d at 1316 (citation omitted).

The court may also use the prosecution history of a patent as an aid to the construction of claim terms. The prosecution history "can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Phillips, 415 F.3d at 1317 (citations omitted). However, "because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes." Id.

A court may stray from the plain meaning of a claim term only where the "patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term... by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope." SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005); Voda v. Cordis Corp., 536 F.3d 1311, 1321 (Fed. Cir. 2008) ("[I]n order to disavow claim scope during prosecution a patent applicant must clearly and unambiguously express surrender of subject matter.'"). "Accordingly, where the patentee has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim congruent with the scope of the surrender.'" Chimie v. PPG Indus. Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (quoting Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003)).

Finally, courts may resort to "extrinsic" evidence such as dictionaries, treatises, and expert testimony, which may serve as a source of "accepted meanings of terms used in various fields of science and technology" or provide "background on the technology at issue." Phillips, 415 F.3d at 1317-18. However, such extrinsic evidence is "less significant than the intrinsic record in determining the legally operative meaning of claim language, " and must be considered in the context of the intrinsic evidence. Id. at 1317-19 (citations and quotation marks omitted). Accordingly, where analysis of the intrinsic evidence alone ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.