The opinion of the court was delivered by: James F. Holderman Chief Judge, United States District Court
MEMORANDUM OPINION AND ORDER
JAMES F. HOLDERMAN, Chief Judge
On December 12, 2008, Tanita Corporation ("Tanita") filed a complaint against Homedics-U.S.A., Inc., and Taylor Precision Products, Inc. (collectively "Homedics") claiming that Homedics infringed three of Tanita's patents: U.S. Patent Nos. 6,590,166 ("'166 Patent"), RE37,954 ("'954 Patent"), and 6,532,385 ("'385 Patent"). (Dkt. No. 1, Compl. ¶¶ 15, 19, 23.) Tanita later withdrew its allegations of infringement with respect to the '166 and '954 Patents. (See Dkt. No. 39, 3d Am. Compl. ¶¶ 13-15.) On February 1, 2010, Homedics filed an answer and counterclaims, requesting a declaratory judgment of non-infringement and invalidity of the '385 Patent and asserting a breach of contract claim against Tanita. (Dkt. No. 41, Homedics's Answer 8-9.)
The parties initially requested that this court construe one claim term in the '385 Patent: "doughnut shape." In its Responsive Claim Construction Brief, however, Tanita identified a second claim term for the court's construction: "living body measuring apparatus with a built-in weight meter." (Dkt. No. 61 ("Tanita's Resp.") at 1.) On October 8, 2010, this court held a Markman hearing where the parties' counsel presented oral arguments on their proposed claim constructions. Having considered all the evidence, both intrinsic and extrinsic, along with counsels' arguments, the relevant legal authority, and the parties' submissions, the court rules as stated below as to the meaning of the two disputed claim terms to a person of ordinary skill in the art at the time of the application for the '385 Patent.
On March 11, 2003, the U.S. Patent and Trademark Office ("PTO") issued the '385 Patent, titled "Living Body Measuring Apparatus with Built-In Weight Meter." ('385 Patent.) The '385 Patent, which was filed on February 6, 2001, lists Takashi Serizawa and Takeshi Iijima from Tokyo, Japan, as the named inventors and Tanita as the assignee. (Id.) On September 25, 2007, the PTO issued a reexamination certificate for the '385 Patent ("'385 Patent Reexamination Certificate"), which introduced several new claims and reaffirmed the patentability of claims 1 through 3 and 5 through 9. (Id.) Tanita has asserted claims 1 and 2 from the '385 Patent and claims 5, 12, 13, 14, and 16 from the '385 Patent Reexamination Certificate against Homedics. (Tanita's Resp. 10.)
The Abstract for the '385 Patent provides the following description of the invention:
[A] living body measuring apparatus with a built-in weight meter, comprising: a measuring platform; and electrodes, whereby said measuring platform being constructed in two-layered configuration having inner and outer boards, said electrodes being arranged on said outer board to measure a living body impedance, and said outer board of the measuring platform being formed from a transparent plate. Therefore a paper bearing the caution notice or the description of operation can be affixed to the lower surface of the outer board because they are still visible through the transparent outer board. This obviates the tendency for a person to be measured to inevitably tread the paper with his soles for measurement. Furthermore, if the person mounts the outer board with his feet as wetted after taking a bath, there is no possibility to wet the paper, thereby preventing the paper from peeling off.
The Field of the Invention of the '385 Patent describes the invention as a living body measuring apparatus for measuring a living body impedance and for providing a body fat rate or other information useful for health care. More particularly the present invention relates to a living body measuring apparatus with a built-in weight meter that comprises a transparent measuring platform.
According to the '385 Patent, the claimed invention introduces a number of advances over the prior art, including: 1) allowing the manufacturer to affix important notices to the apparatus without the risk of the notices later peeling off by an individual's feet and without requiring an individual to turn the apparatus upside down to read the notices; 2) allowing an individual to easily locate the electrodes and correctly mount the apparatus to avoid errors in measurement; 3) providing a visible display unit; and 4) allowing an individual to discover minor faults without completely disassembling the apparatus. (Id. at col. 2:16-28.)
The first disputed claim term, "doughnut shape," appears in dependent claim 2, which states: "A living body measuring apparatus with a built-in weight meter according to claim 1 in which said inner board has a doughnut shape." (Id. at col. 6:55-57.) The second disputed claim term, "a living body measuring apparatus with a built-in weight ...