Seiko Epson Corporation v. Inkjetmadness.com, Inc.
3:08-cv-00452
D. Or.Dec 16, 2011Background
- This matter is in the U.S. District Court for the District of Oregon (Portland Division) involving Seiko Epson Corp., Epson America, Inc., and Epson Portland, Inc. against Inkjet Madness.com, Ninestar entities, and Dataproducts USA LLC.
- The court held a Supplemental Markman Hearing on December 7, 2011 to construe the term “being compressingly contained” in Claim 83 and dependent Claims 72–74 of the ‘377 Patent.
- Standards for claim construction apply the ordinary and customary meaning, with intrinsic evidence (specification, file history) generally controlling and extrinsic evidence used for supplementary light.
- Intrinsic evidence, especially the specification, is highly relevant and often dispositive for claim construction.
- The court rejected Ninestar’s proposed construction and part of Seiko Epson’s proposed construction, and adopted a construction: the term means “being contained in at least a partially compressed state.”
- The decision construes the term to address capillary action and compression described in the patent specification without importing continuous compression or spontaneous recovery constraints.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| How should the term be construed? | Ninestar: continuous compression; sponge returns to shape after removal. | Seiko Epson: compressing forces are present during installation and may not be continuous. | Term construed as partially compressed state. |
| Should Ninestar’s or Seiko Epson’s construction be adopted? | Ninestar argues broader continuous compression; not in claim. | Seiko Epson argues for compacted/partially compressed state. | Ninestar’s construction rejected; Epson’s partial compression accepted in part; final: partially compressed state. |
| Is the construct compatible with dependent claims and capillary action described? | Agree with Epson that initial compression creates capillary action. | Ninestar contends ongoing compression and shape recovery affect operation. | Court aligns with Epson on capillary action arising from initial compression; rejects ongoing compression requirement. |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (intrinsic evidence guides claim construction; specification dispositive)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (extrinsic evidence is less significant than intrinsic for legally operative meaning)
- MBO Lab., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323 (Fed. Cir. 2007) (extrinsic evidence may aid but not override intrinsic)