The opinion of the court was delivered by: Samuel Der-yeghiayan, District Judge
This matter is before the court on the parties' request for the court to construe certain disputed claims in United States Patent Number 6,457,969 ("'969 Patent"). We construe the pertinent claims in accordance with the findings below.
Plaintiff United States Can Company, Inc. ("U.S. Can") is the assignee of the '969 Patent, which covers candle holders, specifically "a candle tin having a removable cover which further acts as a base for the candle tin." ('969 Patent Col 1, Ln. 11-12). U.S. Can alleges that in September 2004, it sent a letter to Defendant Bath & Body Works, Inc. D/B/A/ The White Barn Candle Co., "informing defendants of their infringing actions." (Compl. Par. 16). According to U.S. Can, Defendants Limited Brands, Inc., Bath & Body Works, Inc., Henri Bendel, Inc., and Bath & Body Works, Inc. D/B/A/ The White Barn Candle Co. ("Limited") did not cease their infringement of the '969 Patent after their receipt of the letter. U.S. Can brought the instant action claiming that Limited has wilfully and deliberately infringed the '969 Patent by selling candle tins under the trade name "Henri Bendel Home." The parties have requested the court to construe certain disputed terms in the claims without holding any oral arguments.
Claim construction is a matter of law to be determined by the court. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The Federal Circuit has stated that "[w]hen interpreting claims, [a court should] inquire into how a person of ordinary skill in the art would have understood claim terms at the time of the invention." Pfizer, Inc. v. Teva Pharmaceuticals, USA, Inc., 429 F.3d 1364, 1372-73 (Fed. Cir. 2005)(citing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir. 2005)). In applying this standard, "the person of ordinary skill in the art is deemed to read the 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" and the prosecution history. Id.; Phillips, 415 F.3d at 1313-14. In addition, "[i]n some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent . . ., and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words [in which case] general purpose dictionaries may be helpful." Id. at 1314 (internal citations omitted).
The parties in the instant action dispute three terms contained in independent Claims 1 and 5 of the '969 Patent. Specifically, the parties dispute the meaning of the terms "protrusions formed," "seat," and "cup-shaped."
I. The Term "Protrusions Formed"
Claims 1 and 5 of the '969 patent both require "protrusions formed on the closed end of the holder and extending therefrom . . . ." ('969 Patent Col 5, Ln. 54-55); ('969 Patent Col 6, Ln. 27-28). U.S. Can argues that the term "protrusions formed" should be construed to include those either "formed to be one piece or to be secured to the holder bottom." (P Mem. 12). In support of this contention, U.S. Can argues that the specification does not expressly limit the protrusions to those that are formed from the same piece as the holder and that "[t]he term 'formed' has the customary and ordinary meaning of 'bring together parts or combine to create (something) . . . .'" (P Mem. 11)(quoting Oxford Dictionary of English). Limited argues that "[a] person of ordinary skill it [sic] the art would understand that the candle tin is a stamp-formed can with protrusions or recesses formed in the one piece of sheet metal." (D Resp. 12). The '969 Patent does not discuss in any way the attachment of external protruding feet to the bottom of the candle holder. Therefore, we agree with Limited that the term "protrusions formed" in Claims 1 and 5 means protrusions actually formed from the same piece of sheet metal as the holder, and does not mean protrusions that are attached to the holder. See Wang Lab., Inc. v. America Online, Inc., 197 F.3d 1377, 1383 (Fed. Cir. 1999)(holding that because "[t]he only embodiment described in the [patent at issue's] specification is the character-based protocol, and the claims were correctly interpreted as limited thereto").
Both Claim 1 and Claim 5 of the '969 Patent require "protrusions resting upon the closed end of the cover to seat the holder on the cover." ('969 Patent Col 5, Ln. 54-56); ('969 Patent Col 6, Ln. 27-29). U.S. Can argues that the term "seat" should not be construed so that it necessarily means "to fit within a recess." (P Mem. 13). Instead, U.S. Can contends that the term "seat" should also be construed to mean "to rest on." (P Mem. 14). Limited contends that the term "seat" necessarily requires "some level of engagement or fit -- in this case between the holder and the cover," rather than also meaning to rest. (D Mem. 9).
The Federal Circuit has stated that "it is axiomatic that a claim construction that excludes a preferred embodiment . . . 'is rarely, if ever correct and would require highly persuasive evidentiary support.'" Anchor Wall Systems, Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003)(quoting Vitronics, 90 F.3d at 1583). In the '969 Patent, the embodiment shown in Figures 1B and 1C clearly show the holder's protruding feet merely resting on the cover, as opposed to Figure 5B, in which the protruding feet are fit into the cover. Limited argues that "[v]irtually all of the Figures show the candle tin seated on the cover such that there is some engagement . . . ." (D Mem. 9). However, virtually all is not the same as all of the embodiment figures. Accordingly, Limited's argument further supports U.S. Can's construction of the term "seat."
In addition, "the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Phillips, 415 F.3d at 1315. In the '969 Patent, Claim 2, which is a dependant claim, states that "the closed end of the cover has a recess formed therein for seating the protrusions . . . ." ('969 Patent Col 5, Ln. 57-58). The reference to a recess in which the protrusions can be seated is not present in independent Claims 1 and 5 and, therefore, the requirement that the term "seat" necessarily involves engagement between the holder and the cover should ...