The opinion
IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
UNICORN GLOBAL INC., et al., §
§
Plaintiffs, §
§
v. § Civil Action No. 3:19-CV-0754-N
§
GOLABS, INC., et al., §
§
Defendants. §
MEMORANDUM OPINION AND ORDER
This Order addresses the construction of several disputed claim terms pursuant to
Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517
U.S. 370 (1996). Plaintiffs Unicorn Global, Inc., Hangzhou Chic Intelligent Technology
Co., and Shenzhen Uni-Sun Electronic Co. (collectively, “Unicorn”) brought suit against
Defendant Golabs Inc. and other defendants (collectively, “Golabs”) for infringement of
two United States utility patents: US Patent No. 9,376,155 (the “’155 Patent) and US Patent
No. 9,452,802 (the “’802 Patent”). Having reviewed the relevant intrinsic evidence in the
record, and such extrinsic evidence as necessary, the Court construes the disputed terms
and phrases as provided below.
I. BACKGROUND OF THE INVENTIONS
The invention relates to a personal transportation device commonly called a
hoverboard. Such devices generally consist of a platform to stand on with two wheels at
either end. In this version, the platform is divided in the middle, permitting each foot to
rotate relative to the other foot.
II. CLAIM CONSTRUCTION STANDARDS
A. Basics
Claim construction is a question of law for the Court, see Markman, 517 U.S. at
391, although it may involve subsidiary factual questions. See Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 836-39 (2015). In construing the claims of a patent, the
words comprising the claims “are generally given their ordinary and customary meaning”
as understood by “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)
(citations and internal quotation marks omitted). Accordingly, courts must determine the
meaning of claim terms in light of the resources that a person with such skill would review
to understand the patented technology. See id. at 1313 (citing Multiform Desiccants, Inc.
v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)). First, “the person of ordinary
skill in the art is deemed to read the claim term . . . in the context of the entire patent,
including the specification.” Id. If the specification “reveal[s] a special definition given
to a claim term by the patentee that differs from the meaning it would otherwise possess
. . ., the inventor’s lexicography governs.” Id. at 1316. Likewise, if “the specification
. . . reveal[s] an intentional disclaimer, or disavowal, of claim scope by the inventor . . .[,]
the inventor’s intention, as expressed in the specification, is regarded as dispositive.” Id.
(citation omitted). While the claims themselves provide significant guidance as to the
meaning of a claim term, the specification is generally dispositive as “it is the single best
guide to the meaning of a disputed term.” Id. at 1314-15 (internal quotation marks omitted).
In addition to the specification, courts must examine the patent’s prosecution history
– that is, the “complete record of the proceedings before the PTO and includ[ing] the prior
art cited during the examination of the patent.” Id. at 1317 (citation omitted). “Like the
specification, the prosecution history provides evidence of how the PTO and the inventor
understood the patent.” Id. (citation omitted). In particular, courts must look to the
prosecution history to determine “whether the inventor limited the invention in the course
of prosecution, making the claim scope narrower than it would otherwise be.” Id.
(citations omitted). “[W]here 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.” Omega
Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003).
Finally, in addition to evidence intrinsic to the patent at issue and its prosecution
history, courts may look to “extrinsic evidence, which ‘consists of all evidence external to
the patent and prosecution history, including expert and inventor testimony, dictionaries,
and learned treatises.’” Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980).
In general, extrinsic evidence is “less reliable than the patent and its prosecution history in
determining how to read claim terms.” Id. at 1318.
When the intrinsic evidence, that is the patent specification and prosecution history,
unambiguously describes the scope of a patented invention, reliance on extrinsic evidence,
which is everything outside the specification and prosecution history, is improper. See
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). While the
Court may consult extrinsic evidence to educate itself about the invention and relevant
technology, it may not rely upon extrinsic evidence to reach a claim construction that is
clearly at odds with a construction mandated by the intrinsic evidence. See Key Pharm.
v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998).
B. “Nonce” Words and Means Plus Function
Courts have held that certain terms are simply placeholders and invoke means plus
function construction. The Court will address the terms below, but will preface that with
an overview of the applicable legal principles.1
Three recent Federal Circuit decisions guide this inquiry. In Williamson v. Citrix
Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc),2 the Federal Circuit considered
the force of the presumption that use of the word “means” is necessary to invoke means-
plus-function under 35 U.S.C. § 112, ¶ 6.3 The Court held that the presumption is not
strong. Id. at 1349. It further held that use of the term “module” invoked means-plus-
1This discussion is taken from SecurityProfiling, LLC v. Trend Micro America, Inc.,
2018 WL 4585279, at*1-2 (N.D. Tex. Sep. 25, 2018).
2Only Part II.C.1 of the opinion is en banc. See id. at 1347 n.3.
3After the prosecution of the Patents-in-Suit, this paragraph was recodified as 35
U.S.C. § 112(f).
function. Id. at 1350. Following the district court, it understood that “module” is simply
a generic description for software or hardware that performs a specified function. Id.
Generic terms such as “mechanism,” “element,” “device,” and other nonce
words that reflect nothing more than verbal constructs may be used in a claim
in a manner that is tantamount to using the word “means” because they
typically do not connote sufficiently definite structure and therefore may
invoke § 112, para. 6.
Id. (quotation omitted). The Court also found it unavailing that one skilled in the art could
have programmed a computer to perform that function. “[T]he fact that one of skill in the
art could program a computer to perform the recited functions cannot create structure where
none otherwise is disclosed.” Id. at 1351. “The standard is whether the words of the
claim are understood by persons of ordinary skill in the art to have a sufficiently definite
meaning as the name for structure.” Id. at 1349. “When a claim term lacks the word
‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger
demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites
‘function without reciting sufficient structure for performing that function.’” Id. (quoting
Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
In Zeroclick, LLC v. Apple, Inc., 891 F.3d 1003 (Fed. Cir. 2018), a panel of the
Court reversed a district court holding that “program” and “user interface code” were nonce
terms under Williamson. The Circuit identified three errors in the district court’s
approach. “First, the mere fact that the disputed limitations incorporate functional
language does not automatically convert the words into means for performing such
functions.” Id. at 1008 (citing Greenberg v. Ethicon EndoSurgery, Inc., 91 F.3d 1580,
1583 (Fed. Cir. 1996)). Second, the district court wrongly removed the terms from their
context. Id. For example, “user interface code” was not a generic black box, but a
reference to a conventional program existing in prior art at the time of the inventions. Id.
Third, the district court failed to make pertinent fact findings that the terms it identified
were used as a substitute for “means.” Id. at 1009.
Most recently, in Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291 (Fed.
Cir. 2018), the Circuit reversed a ruling by the International Trade Commission. The case
dealt with the phrase “checque standby unit,” which is a component of an automatic teller
machine (“ATM”). The checque standby unit was described as an “escrow” where the
ATM could hold a deposit after a customer physically placed items to be deposited into the
ATM but before the customer had confirmed the transaction, to allow for the return of the
deposit items if the customer cancelled the transaction. The Court held that “Diebold has
shown that the term ‘cheque standby unit,’ as understood by one of ordinary skill in the
art, both fails to recite sufficiently definite structure and recites a function without reciting
sufficient structure for performing that function.” Id. at 1298. In reaching that holding,
it noted that Diebold was not required to offer extrinsic evidence, but could meet its burden
by relying only on intrinsic evidence. Id. at 1299-1300. The Court also held that the
patent owner’s expert’s testimony did not show that “checque standby unit” had a
reasonably well understood meaning in the art, and simply described the phrase in terms
of its function. Id. at 1300-01. The Circuit thus found that § 112, ¶ 6 applied, and then
held that the specification did not disclose sufficient structure corresponding to the claimed
function so the claims with those terms were indefinite. Id. at 1302-03.
III. DISPUTED TERMS
A. “DISPOSED SYMMETRICALLY”
Unicorn’s Proposal
arranged or positioned symmetrically
not indefinite
Golabs’ Proposal
arranged such that there is correspondence in size, shape, and relative position of parts on
opposite sides of a dividing line -- or indefinite.
Analysis
The patent refers to various pairs of things that are “disposed symmetrically.” The
primary point of dispute is whether the things themselves must be symmetric, i.e., mirror
images in shape. Unicorn makes two primary arguments. First, it makes a grammatical
argument. The second word of the disputed term is “symmetrically,” which is the
adverbial form of “symmetric.” The verb it modifies is “disposed,” or placed. Thus,
“disposed symmetrically” refers to where the objects are placed, not the shape of the
objects.
Second, Unicorn relies on two district court cases construing similar terms. First
is Cryovac Inc v. Pechiney Plastic Packaging, Inc., 2006 WL 956599 (D. Del. April 13,
2006). Plaintiff Cryovac accused Defendant Pechiney of infringing a patent for a
multilayered film used for, e.g., packing perishable food. Id. at *1. One of the disputed
terms referred to layers of film “arranged symmetrically.” Id. at *2-3. Cryovac argued
that this meant the order of the layers had to be symmetric: a/b/c/d/c/b/a. Pechiney argued
that the layers had to be the same thickness and chemical composition. Id. at *4-5.
Relying on the grammatical argument that Unicorn makes here, as well as the fact that
other claims addressed the chemical composition of the layers, the court held that “arranged
symmetrically” referred only to the sequence of layers, not to their thickness or
composition. Id. at *5-6.
Unicorn also relies on the court’s opinion in American Honda Motor Co. v. Coast
Distrib. Sys., Inc., 609 F. Supp. 2d 1032 (N.D. Cal. 2009). The dispute there was
regarding a patent for an improvement to an internal combustion engine. One of the
claims referred to cam followers “symmetrically disposed” around the cam shaft. As here,
Plaintiff Honda argued the term referred to placement and Defendant Coast argued it
referred to shape. Id. at 1041. Relying on the same grammatical argument, as well as the
dictionary and other uses of the phrase in the specification, the Court agreed that
symmetrically disposed referred to position, not shape. Id. at 1041-42.
Relying on the grammatical argument, as well as Cryovac and American Honda, the
Court agrees with Unicorn and holds that disposed symmetrically refers only to location
and not to shape. The Court must then address Golabs’ argument that this construction
renders the claim indefinite.
Golabs argues that the specification indicates that the various covers that are
disposed symmetrically are “basically the same.” This, Golabs argues, must be construed
as “functionally identical,” or else the claims are indefinite because a person of ordinary
skill in the art (“POSITA”) would not know how much variation is permitted. This
argument is a nonstarter because the Court has not construed “disposed symmetrically” to
require that the things disposed be basically the same shape. Accordingly, the Court does
not find “disposed symmetrically” to be fatally indefinite.
B. “INNER COVER”
Unicorn’s Proposal
plain and ordinary meaning
Alternatively, a cover that is not part of a top/bottom cover
Golabs’ Proposal
internal framework that provides firmness to the entire structure of the vehicle, protection
of internal electronic elements and support for fixing internal components
Analysis
Golabs’ proposed construction loads up a relatively simple term with a variety of
baggage from the specification. The Court declines that invitation. See, e.g, Electro
Med. Sys. S.A. v. Cooper Life Scis., 34 F.3d 1048, 1054 (Fed. Cir. 1994). The term at issue
is part of a larger phrase: “an inner cover fixed between the top and bottom cover.” While
Unicorn takes the position that no construction is required, it also states: “it is unnecessary
to redefine the term ‘inner cover,’ except to make clear that the inner cover is a separate
structural element that is fixed between the top cover and the bottom cover, and not a part
of the top cover or the bottom cover.” Unicorn Opening Br. at 19 [112].
The Court will adopt that construction of “inner cover”: a separate structural
element that is not a part of the top cover or the bottom cover. With that construction, the
Court finds no need to further construe the longer phrase.
C. “ROTATING MECHANISM”
Unicorn’s Proposal
plain and ordinary meaning
Golabs’ Proposal
Rotating mechanism fixed between the first inner cover and second inner cover. The
rotating mechanism having two bearings, a shaft sleeve, and two snap springs, the two
bearings fixed to the first inner cover and the second inner cover respectively, and the shaft
sleeve fixed inside the two bearings and fixed to the inner cover via the two snap springs.
Analysis
The parties disagree over whether “rotating mechanism” is a means plus function
term or describes structure. Because it does not use the term “means,” it is presumptively
not means plus function. See supra Part II.B. The issue is whether to a POSITA, the
term would connote a particular structure or class of structures. Golabs’ expert, Dr.
Singhose, opines it would not. See Singhose Decl. ¶ 81 [114-1]. Unicorn’s expert, Dr.
Maslen, opines it would. See Maslen Decl. 10 [90].
Based on my review of the claims, including these examples, it is my opinion
that the term “rotating mechanism” is not a means-plus-function limitation
and should not be limited to the embodiment described in the specification.
For example, the rotating mechanism limitation recited in dependent Claim
5 of the ’155 Patent is basically the same as the embodiment described in the
’155 Patent specification. Because Claim 1 of the ’155 Patent uses the term
“rotating mechanism” and is not so limited, a POSITA would understand that
the term “rotating mechanism” refers to a physical structure but is not limited
to the exemplary embodiment described in the specification.
That point is further illustrated by the various claims in the ’036 Patent,
which shares the same specification and includes claims directed to various
embodiments, including variations with either one cylindrical barrel,
bearing, and shaft, or two cylindrical barrels, bearings, and shafts—all with
no mention of the snap springs. A POSITA would understand that various
configurations of the “rotating mechanism” were possible based on design
preferences.
I understand that means-plus-function treatment should not apply if a
POSITA reading the specification would understand the term used to be the
name for the structure that performs the function, even if the term covers a
broad class of structures and even if the term identifies structures by their
function. In reading the term “rotating mechanism” as used in the patents, I
would understand it to refer to a specific type of structural element that could
be configured in a variety of ways, similar to the term “locking mechanism.”
Finally, the prior art ’278 Chen Patent, which is part of the prosecution
history, acknowledges at column 3, lines 42-45, that “[p]ivoting or rotating
shaft arrangements are known in the art, and others may be used without
deviating from the present invention as long as the foot placement sections
may move independently.” To a POSITA, it should be clear that the term
“rotating mechanism” here refers to a configuration of mechanical structures
arranged to permit rotation of the first and second halves of the inner covers
relative to one another (which may include but is not limited to a shaft sleeve
with at least one bearing and a barrel, or a shaft sleeve with two bearings and
two snap springs)—as the ’278 Chen Patent affirms that a POSITA readily
understands that there are numerous different rotating arrangements that
could be used as a “rotating mechanism.” In fact, Dr. Singhose agrees with
the ’278 Chen Patent acknowledgement that different rotating arrangements
are known in the art. See Singhose Declaration, Appendix B at 7; Singhose
Deposition at 33:23-34:14.
Id. Both experts are impressively qualified. On this point, however, the Court finds Dr.
Maslen more persuasive. The Court thus adopts the statement of Dr. Maslen quoted above
regarding a POSITA as the Court’s fact findings on that point.
Additionally, as Dr. Maslen alludes, the doctrine of claim differentiation supports
that conclusion. Claim 5 adds the very language Golabs purports to import into claim 1.
That suggests that it should not be part of claim 1. See, e.g., TEK Glob., S.R.L. v. Sealant
Sys. Int’l Inc., 920 F.3d 777, 786 (Fed. Cir. 2019).4 Moreover, other courts have held that
“mechanism” is not a nonce word that invokes means plus function. See Integrity
Worldwide LLC v. Rapid-EPS Ltd., 2018 WL 3609430, at *4-5 (N.D. Tex. May 29, 2018)
(locking mechanism); Nanology Alpha LLC v. WITecWissen. Instr. & Tech. GmbH, 2017
WL 5905272, at *9-11 (E.D. Tex. Nov. 30 2017) (movement mechanism); Accuhale LLC
v. AstraZeneca LP, 2013 WL 4045904, at *8 (E.D. Tex. Aug. 7 2013) (rotation
mechanism).
Accordingly, the Court holds that Golabs has failed to overcome the presumption
that “rotating mechanism” is not means plus function. The Court, however, has a little
difficulty with Unicorn’s proposition that no construction is necessary. The Maslen
Declaration stablishes that the term would be understood by a POSITA, but not necessarily
by a lay juror. The Court will therefore adopt the construction from the Maslen
Declaration: a “rotating mechanism” is a configuration of mechanical structures, known
4 The Court acknowledges that claim differentiation is a doctrine, not an ironclad rule.
See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991).
to a POSITA at the time, arranged to permit rotation of the first and second halves of the
inner covers relative to one another (which may include but is not limited to a shaft sleeve
with at least one bearing and a barrel, or a shaft sleeve with two bearings and two snap
springs).
D. “BEARING”
Unicorn’s Proposal
plain and ordinary meaning
alternatively, a machine part in which another part turns or slides
Golabs’ Proposal
First: a machine element that constrains relative motion to only the desired motion and
reduces friction between a rotating part and its housing
Second: a machine element that constrains relative motion to rotation and reduces friction
between a rotating part and its housing
Analysis
The principal point of dispute is whether the general term “bearing” should be
limited to one specific type of bearing, i.e., a rotary bearing. Golabs’ expert, Dr. Singhose,
states: “The ordinary meaning of a bearing is a machine element that constrains relative
motion to only the desired motion and reduces friction between a moving part and its
housing.” Singhose Decl. ¶ 90. Yet Golabs seeks to limit the ordinary meaning to one
type of bearing because only that type is shown in the specification. That violates the
cardinal rule against importing limits in an embodiment into the claims. See Electro Med.
Sys., supra. The Court will adopt the ordinary meaning, as proposed by Dr. Singhose: a
machine element that constrains relative motion to only the desired motion and reduces
friction between a moving part and its housing.
E. “LIMITING SHAFT”
Unicorn’s Proposal
plain and ordinary meaning
Golabs’ Proposal
Indefinite
Analysis
The Court acknowledges that this sounds like a structural element. Because the
word “means” is not used, the Court presumes that this is not a means plus function term.
However, Unicorn points to no evidence, intrinsic or extrinsic, that describes such a
structure, or the plain and ordinary meaning of the phrase to a POSITA at the time. The
Court concludes that Golabs has rebutted the presumption, and that this is a means plus
function term. The function is reasonably clear: a shaft that limits the relative rotation of
the two objects connected by the shaft. Because no structure is identified, the Court holds
that this term is indefinite.
F. “AN INNER COVER FIXED BETWEEN THE TOP COVER AND BOTTOM COVER”
Unicorn’s Proposal
plain and ordinary meaning, incorporating the definitions for the terms “inner cover” and
“fixed”
Golabs’ Proposal
an inner cover (as defined) fixed (as defined) inside the top cover and bottom covers so
that it is not exposed
Analysis
See Part III.B, above. No further construction is necessary.
CONCLUSION
The Court orders that the various patent terms are construed as indicated. The
Court has attempted to address all of the terms the parties believe require construction, but
acknowledges that it may have missed something. If there are additional terms requiring
construction that are not adequately addressed by this Order, the parties may request
clarification. The Court will by separate order establish a schedule for resolution of the
remaining issues in the case.
Signed May 26, 2020.
David €. Godbey
United States District Judge
ORDER — PAGE 15