3:07-cv-00896
D. Or.Dec 16, 2011Background
- The court held a supplemental Markman hearing on December 7, 2011 to construe the term “being compressingly contained” in claim 83 and dependent claims 72-73 of the ‘377 patent owned by Seiko Epson.
- Plaintiffs Seiko Epson Corp., Epson America, Inc., and Epson Portland seek a construction of the disputed term in the context of ink-supply tanks and ink-absorbing members.
- Defendants Ninestar Technology Co. Ltd. and related entities proposed a construction based on continuous compression and return to original shape after removal.
- The court employs intrinsic (specification, file history) and extrinsic evidence to interpret the disputed term under standard Markman analysis.
- The court rejects Ninestar’s proposed construction as importing two unclaimed features and rejects a full automatic return-to-original-shape limitation, adopting a narrower reading consistent with the claim language and specification.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Ninestar’s construction should be adopted | Ninestar contends continuous compression and recovery. | Ninestar argues ongoing distortion and spontaneous recovery are inherent. | Rejected; no ongoing compression or recovery requirement in claim. |
| Whether Seiko Epson’s construction should be adopted | Ink-absorbing member is at least partially compacted when installed. | Compression state is not to import ‘compacted’ as distinct from ‘compressed’. | Rejected in part; avoid importing ‘compacted’ beyond ‘compressed’. |
| What is the proper construction of 'being compressingly contained' | The term describes a state where the absorbing member is (partially) compacted by the tank. | The term should reflect a state of partial compression at installation, not ongoing force. | Construction adopted: being contained in at least a partially compressed state. |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (intrinsic evidence governs claim construction; specification is highly relevant)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (extrinsic evidence is less significant than intrinsic in determining meaning)
- MBO Lab., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323 (Fed. Cir. 2007) (external evidence must be weighed with intrinsic evidence for claim terms)