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totes Isotoner Corp. v. Panther Vision

January 4, 2010

TOTES ISOTONER CORPORATION, AND EDWARD HANLEY, PLAINTIFFS,
v.
PANTHER VISION, LLC, DEFENDANT.



The opinion of the court was delivered by: Rebecca R. Pallmeyer United States District Judge

Judge Rebecca R. Pallmeyer

MEMORANDUM OPINION AND ORDER

Plaintiff Edward Hanley is the inventor and owner of United States Patent No. 7,234,831 ("the '831 patent"), entitled "Headgear with Forward Illumination." Hanley's invention is headgear equipped with powered light emitting diodes ("LEDs") inside the brim that can be turned on to illuminate the wearer's line of vision. Plaintiff totes Isotoner Corp. ("totes"), is an exclusive licensee under the '831 patent. Plaintiffs accuse Defendant Panther Vision LLC ("Panther Vision") of infringing the patent. The parties have presented competing interpretations for several terms in the claims of the '831 patent. The court's construction of those terms follows.

BACKGROUND

A. The Patented Invention

The patented invention is headgear-depicted in the '831 patent embodiments as including ball caps, helmets, brimmed hats, headbands, and diving masks-with an array of LEDs mounted inside the brim or front of the headgear. ('831 patent, Fig. 9-18.) When turned on, the LEDs direct a beam of light ahead of the wearer to illuminate the wearer's line of vison.

The patented invention is not the first to affix a light source to headgear. As the background of the '831 patent acknowledged, the prior art included "a wide variety of illuminated headgear and illumination sources that can be mounted on headgear worn by the user." ('831 patent, Col. 1, ll. 19-12.) According to the patent, however, those prior art devices are bulky, lack the general aesthetics of normal headgear, use filament bulbs that required replacement, and have detachable light sources that can be inadvertently left behind. ('831 patent, Col 1, ll. 62-67.) The invention and method set forth in the '831 patent purport to improve upon the prior art by providing a lightweight, visually inconspicuous, durable and reliable mounted light source that does not alter the functionality or aesthetics of traditional headgear and does not require replacement of filament bulbs. ('831 patent, Col 2. ll. 6-11.)

B. The Disputed Claims of the '831 Patent

The '831 patent sets forth 16 claims. The disputed terms, emphasized below, are found in independent claims 1 and 12, and dependent claims 2, 3, 4, 11, 13, and 15:

1. An illumination headgear for viewing objects comprising: a crown having a lower edge; a brim disposed on said crown proximate to said lower edge, said brim having a rim disposed along the perimeter of said brim distal from said lower edge; and an array of light emitting diodes integral within said brim and proximate to said rim, said array of light emitting diodes focused to form a contiguous beam.

2. The illumination of headgear of claim 1, wherein said light emitting diodes are coupled to a power source through a switch, said power source coupled to said crown.

3. The illumination headgear of claim 1, wherein said array of light emitting diodes is disposed within a void of a main panel of said brim.

4. The illumination headgear of claim 1, wherein said brim includes a main panel and a top covering disposed over an upper surface thereof and a lower covering disposed over a lower surface thereof and said array of light emitting diodes is disposed between said lower covering and said main panel at said rim. . . .

11. The illumination headgear of claim 1, wherein a first light emitting diode of said array of light emitting diodes is adjacent a second light emitting diode of said array of light emitting diodes.

12. A method of using an illumination headgear comprising: disposing the illumination headgear upon a wearer's head, the illumination headgear comprising a crown having a lower edge, a brim disposed on said crown proximate to said lower edge, said brim having a rim disposed along the perimeter of said brim distal from said lower edge, and an array of light emitting diodes integral within said brim and proximate to said rim, said array of light emitting diodes configured to form a contiguous beam of light; activating at least one light emitting diode of said array of light emitting diodes; and directing said beam of light towards an object.

13. The method of claim 12, wherein said at least one light emitting diodes is coupled to a power source through a switch, said power source coupled to said crown. . . .

15. The method of claim 12, wherein said beam of light from said at least one light emitting diode is selected from the group consisting of white light, red light, blue light, green light, yellow light, infrared light and ultraviolet light.

C. Prosecution History

The '831 patent is related to two earlier Hanley patents, U.S. Patent Nos. 6,733,150 and 7,086,749. Both prior related patents are in the record. ('150 Patent, Apx. 5; '749 Patent, Apx. 3.) Like the '831 patent, those patents describe lighted headgear that consists of a crown, a brim, an array of LEDs, a switch, and a power source. (Office Action Summary, Apx. 2, 076-77.) In April 2006, Hanley filed an application for the '831 patent as a continuation of his two previous patents. The '831 application included 30 proposed claims. The Patent Office initially rejected all but eight as either duplicative or obvious in light of the prior Hanley patents. (Id.) In the patent examiner's view, the duplicative terms constituted improper "double patenting," violating the doctrine that patent holders may not extend protection for their inventions by obtaining later redundant patents.

The Patent Office also rejected aspects of the '831 patent as unpatentable over U.S. Patent No. 5,510,961 (Peng 1996), which discloses a cap equipped with warning lights to alert others to the wearer's presence, and U.S. Patent No. 6,056,413 (Urso 2000), which details the use of a power source coupled to the crown of a cap. (Id. at 078-79.) The patent examiner also found that the '831 patent's claim and design to illuminate objects for viewing had been anticipated by U.S. Patent 5,741,060 (Johnson 1998). (Id. at 081-82.) The Johnson patent discloses a cap with two lamp sockets affixed to a visor above the wearer's eyes. (Id.) The patent examiner also noted that U.S. Patent 6,390,640 (Wong et al. 2002) uses a mounted "essentially contiguous placement" of multiple LEDs to emit and project a light ahead of the wearer. (Id.)

Hanley responded by withdrawing 13 of the rejected claims and submitting a disclaimer that addressed the patent office's concern about "double patenting." (Response, Apx. 2, 100). Hanley also distinguished the prior art in general terms, asserting that it "comprise[d] general information that [did] not render the present application anticipated or obvious." (Id. at 8.) The patent office accepted Hanley's modified application in April 2007. (Notice of Allowability, Apx. 2, 111.) Explaining the reason for allowance, the patent examiner distinguished the '831 patent from the prior art on the basis that "the prior art(s) taken as a whole does not show nor suggest the details of headgear with an array of LEDS integral within the brim to form a contiguous beam. . ." (Id. at 113.)*fn1

DISCUSSION

A. Legal Standards Governing Claim Construction

Because an invention is defined by the claims of the patent, claim construction-the process of giving meaning to the claim language-defines the scope of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1311-12 (Fed. Cir. 2005) (en banc) (citing 35 U.S.C. § 112). Claim construction is a matter of law for the court to determine. Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996). As the Federal Circuit clarified in Phillips, the court begins the claim construction analysis with the words of the claims themselves, giving those words their ordinary and customary meaning, that is, the "meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips, 415 F.3d at 1312-13. And that person is assumed to read the claim terms "in the context of the entire patent, including the specification." Id.

In addition to reading the claim terms in the context of the specification, the court may also consider the record of the patent's prosecution, as the record is evidence of how both the inventor and the Patent and Trademark Office understood the patent. Id. at 1317. The court must, however, be mindful that the prosecution history represents an "ongoing negotiation," so it "often lacks the clarity of the specification and thus is less useful for claim construction purposes." Id. Finally, in some cases, the court must go beyond the claim, the specification, and the prosecution history-the so-called intrinsic evidence-to consider extrinsic evidence such as technical dictionaries, treatises, and expert ...


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