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D. Mass. Patent Litigation Update

This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.


In Cozy, Inc. v. Dorel Juvenile Group, Inc., No. 1:21-cv-10134, Magistrate Judge Dein construed fifteen terms across four patents that share a common ancestor ( “the ’749 patent”), which expired due to non-payment of maintenance fees. Selected terms are addressed here.

Selected Terms in the Patents

1. “Prefilled” and “Being Filled”

The parties agreed that “prefilled” and “being filled,” as used in the patents, should have the same meaning.

Plaintiff contended that the Court should give these terms their plain and ordinary meaning, and defendant proposed to construe both “prefilled” and “being filled” to mean “having been filled in advance.”

Specifically, defendant argued that “‘[p]refilled’ … indicates that an action has taken place, i.e., the airbag has been filled by someone or something.” Plaintiff disagreed, contending that “[t]he asserted claims are all apparatus or system claims” and “[i]t is improper to use claim construction to add action to such claims, which instead is typically reserved for method claims.”

The Court recognized that the Federal Circuit had held that a claim is indefinite where it recites “both an apparatus and a method of using that apparatus.” But the Court found defendant’s construction did not recite a method of using the system or apparatus described in the asserted claims; rather, it merely indicated that the act of filling the airbag took place at an earlier time. Therefore, the Court found defendant’s proposed construction of “prefilled” and “being filled” consistent with the plain and ordinary meaning of the terms and adopted the construction.

2. “Airbag”

There were four issues regarding the term “airbag.”

1. Plaintiff’s Request to Amend its Proposed Construction of “Airbag”

The parties initially agreed that the airbag is a type of “chamber.” After the Markman hearing, plaintiff sought to add the original application that led to the ’749 patent to the record and asked the Court to substitute the word “cushion” for the word “chamber.”

The Court denied plaintiff’s requests. First, the Court acknowledged that the original application was only part of the prosecution history of the ’749 patent and provided only a snapshot from the prosecution file. Because the Court did not need to review the ’749 patent prosecution history at this time, it would not be appropriate to consider the original application outside the context of the complete file. Therefore, plaintiff’s request to consider the original application was denied.

Second, the Court also denied plaintiff’s request to substitute the word “cushion” for the word “chamber” in its proposed claim construction. The Court found that the request was untimely because it was filed two days after the Markman hearing. Additionally, it explained that the use of “cushion” rather than “chamber” would not resolve the construction issue where the patents used different terms, including “airbag,” “sacrificial chamber,” and “air cushion,” to describe the same functions of the claimed airbags.

2. Whether the Airbag is Vented

Plaintiff asked the Court to construe the term “airbag” as a “vented deflatable chamber,” whereas defendant contended that the term should be construed as “a single chamber that retains a determinable volume of air,” and objected to a definition that includes the word “vented.”

The Court recognized that the specifications did not mention vents in the preferred embodiments, and observed that the Federal Circuit has held that “[a] claim construction that excludes a preferred embodiment is rarely, if ever correct and would require highly persuasive evidentiary support.” Although the Court observed that vented airbags were not described in the preferred embodiments, it found the venting feature in one of the alternative embodiments and more importantly, it found that each of the claims at issue expressly describes the airbag as vented.

Accordingly, the Court concluded that an “airbag” must be vented.

3. Number of Chambers

The parties also disputed whether the airbag must consist of a single chamber or whether it may consist of multiple chambers. The Court found that the language in the dependent claims suggested that the claimed airbag constituted a single chamber because a dependent claim recited that the airbag of claim 1 “act[s] as a sacrificial chamber.”

The Court also observed that during prosecution of one asserted patent, the applicant distinguished the invention from prior art that disclosed a single airbag with two chambers, explaining that the invention claimed “a distinct and separate sacrificial chamber and one or more micro air cushions connected together by fluid paths.” Because the argument during prosecution disclaimed an airbag having multiple chambers, the Court concluded that the “airbag” must consist of a single chamber.

4. Whether the Chamber is Deflatable or Retains a Determinable Volume of Air

Plaintiff proposed that the airbag must be “deflatable,” whereas defendant contended that the airbag “retains a determinable volume of air.” The Court found that the claims’ use of the airbag as a “sacrificial chamber” supported the conclusion that the airbag is deflatable, and nothing in the patent claims addressed the retention of air or required the airbag to maintain a volume of air that is “determinable.”

Accordingly, the Court held the “airbag” shall mean “a single, vented, deflatable chamber.”

3. “Elongate Fluid Path”

Plaintiff defined the term “elongate fluid path” as a “route for fluid to flow over a distance,” while defendant defined it as “a defined path for fluid having a distance that is longer than the path is wide.”

The Court observed that during prosecution, the applicant added the word “elongated” to “fluid path” to distinguish a prior art which disclosed “the air from a lower chamber would migrate into a second chamber through vents.” Also, the Court looked to the dictionary definitions of “elongate,” and found it to mean “to extend the length of,” “to grow in length,” “stretched out” or “being much greater in length than in width.”

Thus, the Court construed the term as: a defined path for fluid having a distance that is longer than the path is wide.

4. “Enable Adjustment of Compression Characteristics During Impact”

Defendant argued that the phrase was indefinite because “compression characteristics” do not change “during impact.” The Court, however, agreed with plaintiff’s expert that the compression characteristics can be modified in advance and, as a result, [the airbags] will perform differently during impact. For example, as plaintiff’s expert witness discussed, the compression characteristics of the airbags were controlled by the content of the bags and by the vents. And the content of the airbags and the existence of the vents are adjustable before the actual impact, as disclosed in the patents.

The Court also rejected plaintiff’s proposed alternative construction “permit(ting) the (first) airbag to compress by the controlled release of air under impact.” The Court reasoned that the alternative construction is an oversimplification of what is being claimed in the asserted patents.

Finally, the Court construed the phrase to have its plain and ordinary meaning, which is “enabling adjustment of the compression characteristics of the airbag so as to affect how it will respond under impact.”

5. “Enabled to Cushion an Occupant Ahead of Impact to the Vehicle”

Plaintiff maintained that this phrase required no construction and that its plain and ordinary meaning “describes cushioning an occupant’s head before impact with the vehicle, i.e., before the person’s head impacts with the hard frame of the vehicle, it will be cushioned.” Defendant, on the other hand, argued that the phrase should be construed to mean “enabled to anticipate impact to the vehicle and cushion the occupant in advance,” because the patents disclosed a system that “anticipates impact and deploys the airbag(s) ahead of time to protect the occupant.”

The Court found that both parties improperly attempted to introduce limitations to the claims. First, the Court rejected Defendant’s proposed construction that the airbag is enabled “to anticipate impact to the vehicle” for lack of support by the claims. It reasoned that nothing in that claim disclosed the use of sensors or other mechanisms that could anticipate an impact to the vehicle. Further, the Court rejected defendant’s reliance on certain embodiments from the specification to limit the claim to mean the airbag must anticipate an impact to a vehicle.

Then, the Court explained that plaintiff’s proposed alternative construction was inconsistent with the plain and ordinary meaning. In particular, the Court took issue with plaintiff’s characterization of the phrase as describing the “cushioning [of] an occupant’s head,” reasoning that nothing in the patents suggests that the airbag must be located in the vicinity of the occupant’s head. Further, it pointed out that the patents contained no wording to suggest that the “impact” relates to the impact of an occupant’s head, or any other portion of an occupant, against the frame of the vehicle.

Accordingly, the Court construed the phrase “enabled to cushion an occupant ahead of impact to the vehicle” to have its plain and ordinary meaning.

In Milliman, Inc. et al v. Gradient A.I. Corp. et al, No. 1:21-cv-10865, Magistrate Judge Kelley allowed in part and denied in part two motions to compel submitted by Milliman.

Milliman sued “for, inter alia, misappropriation of trade secrets and patent infringement.” After prior discovery disputes, the Court stayed certain discovery unrelated to the trade secret claims, pending supplemental trade secret disclosures from Milliman, who has since supplemented twice. Thereafter, defendants moved for summary judgment on the trade secret claims, which motion is pending before the Court but not subject of this summary

Having served supplemental trade secret disclosures, Milliman moved to compel and thus restart discovery, seeking discovery responses, technical documents, and source code that was previously stayed. As part of the Gradient’s technical production pursuant to L.R. 16.6(d)(4)(A), Milliman also sought unredacted copies of certain contracts on which the Court’s order does not elaborate.

Defendants argued that discovery should continue only after resolution of its motion for summary judgment on the trade secret claims, as it allegedly made “no sense” to compel defendants “to undertake the enormously expensive task of reviewing and producing sprawling trade secret discovery that may prove irrelevant.” (internal quotation marks omitted.)

The Court found the prior reason for staying discovery pending disclosure of the trade secrets at issue no longer applied but found good cause to stay trade-secret-related discovery of the supplemental trade secret disclosure pending resolution of defendants’ summary judgment motion. At the same time, the Court ordered defendants to “review and produce patent claims discovery they must review and produce no matter the outcome on their pending summary judgment motion.” The Court further explained that discovery related to patent claims “should be provided now,” even if it may also relate to trade secret claims.

With respect to source code, “for the limited purpose of ordering discovery” the Court rejected defendants’ argument that source code is irrelevant and necessary, observing that the parties had negotiated – and the Court had entered – a protective order that “extensively covers the inspection and production of source code.”

Accordingly, the Court ordered the production of source code, but denied without prejudice Milliman’s request for specific contracts as unnecessary to the satisfaction of L.R. 16.6(d)(4)(A) governing the accused infringers production of technical documents.

Accordingly, the Court granted Milliman’s motions to compel in part.

In SynKloud Technologies, LLC v. Nuance Communications, Inc., No. 1:20-cv-10564, Judge Saris denied SynKloud’s motion “for reconsideration of two sentences in the Memorandum and Order on Claim Construction.” Those sentences state:

Without support in the patent, SynKloud seeks to define the term “voice model” or user’s voice model files to include enrollment entries. To reiterate, SynKloud again improperly seeks to conflate enrollment entries with the voice model[.]

First, the Court denied the motion as untimely for being filed 16 months after the Court issued its claim construction order.

Second, the Court noted that striking the two sentences at issue “would not save the day for SynKloud,” observing that the patent uses the terms “enrollment entries” and “Voice Model” separately, and that if “the Court was wrong when it indicated that enrollment entries are distinct from a voice model,” the “term ‘enrollment entries,’ which is not explained in the specification, is imprecise, confusing and indefinite….”

Accordingly, the Court denied SynKloud’s motion for reconsideration.


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This article was originally posted by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.

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