Free Brief - District Court of California - California

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THOMAS F. FITZPATRICK GOODWIN PROCTER LLP 135 Commonwealth Drive Menlo Park, California 94025 Telephone: 650-752-3100 Facsimile: 650-853-1038 E-Mail: [email protected] Attorneys For Defendants CONAIR CORPORATION and RITE AID HDQTRS. CORP.

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION THE TONYTAIL COMPANY, INC., Plaintiff, v. CONAIR CORPORATION, SCUNCI INT'L, LTD., RITE AID HDQTRS. CORP., L&N SALES & MARKETING, INC., and DOES, 1 ­ 10, inclusive, Defendants. Case No. 3:07-cv-05895-WHA

DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP.'S OPENING CLAIM CONSTRUCTION BRIEF Date: Time: Dept: Judge: May 28, 2008 1:30 p.m. Courtroom , 19th Floor Hon. William H. Alsup

DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 III. C. 5. 6. 4. 3. B. I. II.

TABLE OF CONTENTS Page INTRODUCTION ...........................................................................................................................1 ARGUMENT ..................................................................................................................................5 A. THE LAW OF CLAIM CONSTRUCTION .......................................................................5 1. 2. 3. Claim Terms Must Be Read in Context ..................................................................5 Claims Are Properly Limited to the Description of the Invention as Set Forth in the Specification..............................................................................5 The Prosecution Disclaimer Doctrine .....................................................................7 a. b. The "Reasonable Competitor" Doctrine......................................................8 PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359 (Fed. Cir. 2007)............................................................................................................9

APPLYING THE LAW OF CLAIM CONSTRUCTION TO THE `884 PATENT............................................................................................................................11 1. 2. Summary................................................................................................................11 The term "an elastic band having a pair of elastic band ends" means an elastic cord whose two ends are not joined to one another. ..................................................................................................................12 The term "synthetic hair fibers having an appearance similar to the ponytail and having a pair of synthetic hair fiber ends" means synthetic hair fibers whose two ends are not joined to one another. ..................................................................................................................14 The term "the synthetic hair fiber ends joined to the elastic band ends" is limited to a device "where one of the elastic band ends is permanently joined with one of the synthetic hair fiber ends, and the other of the elastic band ends is permanently joined with the other of the synthetic hair fiber ends." ..................................................................15 The claim term "to form a closed loop" means "to form a single, unbroken ring."......................................................................................................18 The claim term "covering the elastic band with the synthetic hair fibers so that the outward appearance of the device is formed solely by the synthetic hair fibers" means adjusting the ring so that the outward appearance of the ring is formed only by synthetic hair fibers. ..............................................................................................20

THE LAW OF CLAIM CONSTRUCTION AS APPLIED TO THE `239 PATENT............................................................................................................................21

CONCLUSION .............................................................................................................................22

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TABLE OF AUTHORITIES

Aguayo v. Universal Instruments Corp., 356 F. Supp. 2d 699 (S.D. Tex. 2005)................................................................................................. 6 Astrazeneca AB v. Mutual Pharm. Co., 384 F.3d 1333 (Fed. Cir. 2004) ....................................................................................................... 5, 6 Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573 (Fed. Cir. 1996) ........................................................................................................... 10 Bell Atl. Network Servs. v. Covad Commc'ns Group, Inc., 262 F.3d 1258 (Fed. Cir. 2001) ........................................................................................................... 5 Biodex Corp. v. Loredan Biomedical, Inc., 946 F.2d 850 (Fed. Cir. 1991) ............................................................................................................. 7 C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004) ............................................................................................................. 6 Contessa Food Products v. Conagra, 282 F.3d 1370 (Fed. Cir. 2002) ......................................................................................................... 21 CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146 (Fed. Cir. 1997) ........................................................................................................... 7 Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) ........................................................................................................... 9 Elmer v. ICC Fabricating, 67 F.3d 1571 (Fed. Cir. 1995) ........................................................................................................... 21 Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951 (Fed. Cir. 2000) ............................................................................................................. 8 Honeywell Int'l., Inc. v. ITT Indus. Inc., 452 F.3d 1312 (Fed. Cir. 2006) ........................................................................................................... 6 In re Abbott Labs. Norvir Anti-Trust Litig., 442 F. Supp. 2d 800 (N.D. Cal. 2006)............................................................................................... 20 InPro II Licensing v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006) ........................................................................................................... 6 Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369 (Fed. Cir. 2004) ......................................................................................................... 21 Microsoft Corp. v. Multi-Tech. Sys. Inc., 357 F.3d 1340 (Fed. Cir. 2004) ........................................................................................................... 6 Multiform Dessicants Inc. v. Medzam, Ltd., 133 F.3d 1473 (Fed. Cir. 1998) ......................................................................................................... 18
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Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) ........................................................................................................... 7 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ........................................................................................................... 6 PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359 (Fed. Cir. 2007) ............................................................................... 4, 9, 10, 15, 16, 17 Rexnord Corp. v. Laitram Corp., 274 F.3d 1336 (Fed. Cir. 2001) .......................................................................................................... 8 SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 2001) ..................................................................................................... 5, 14 Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir. 1995) ......................................................................................................... 4, 7 Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377 (Fed. Cir. 1999) ..................................................................................................... 6, 13 Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322 (Fed. Cir. 2006) ......................................................................................................... 18

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I.

INTRODUCTION Pursuant to Patent Local Rule 4-5, Defendants Conair

Corporation and Rite Aid HDQTRS. Corp. ("Conair and Rite Aid" or "Defendants") hereby submit their Opening Claim Construction Brief in support of their constructions of the jointly proposed claim terms of claim 4 of U.S. Patent No. 6,263,884 ("the `884 Patent").1 The "technology" in this case is straightforward; the three patents-in-suit are each directed to ponytail holders. The ponytail, of course, is one of the most universal of all hairstyles. Devices have been used to create ponytails for centuries. See, e.g., U.S. Patent Nos. 541,125 (issued 1895); 2,567,119 (issued 1948); D338,551 (issued 1993). Typically, one creates a ponytail by grasping the hair at the rear of the head, pulling it together, and then twisting an elastic band around it. In the last few decades the so-called "wrapped ponytail" style has become popular. In the example of a "wrapped ponytail" pictured above, a section of hair is wrapped around an elastic band to hide it. Many devices have been designed over the years to help a wearer create this "wrapped ponytail" look. See U.S. Patent Nos. 5,465,741 to Dvorak and 5,899,211 to Brown ("the Brown `211 Patent").2 The Brown `211 Patent, for example, was the first to disclose a ponytail holder (shown left) that combines both an elastic band for binding a wearer's hair, and synthetic hair fibers attached to the elastic band to be wrapped around the elastic

See Exhibit A to the Declaration of Thomas F. Fitzpatrick in Support of Conair Corporation's and Rite Aid HDQTRS. Corp.'s Claim Construction Brief ("Fitzpatrick Decl."). Tonytail has also asserted two design patents: U.S. Patent Nos. D453,239 and D413,693. To the extent the Court is willing to construe the claim of U.S. Patent No. D453,239 ("the `239 Patent," Fitzpatrick Decl., Exhibit B), Defendants include their proposed construction of that claim.
2

1

See Fitzpatrick Decl., Exhibit C.

1
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band to create a "wrapped ponytail." A few years after the Brown `211 Patent was filed, the patentee in the present case filed the application that would mature into the `884 Patent currently at issue.3 Like the Brown `211 Patent, the `884 Patent discloses a ponytail holder used to create a "wrapped ponytail," using synthetic rather than real hair. See Fig. 1 of the `884 Patent (reproduced below, ref. num. omitted, text added). Generally speaking, claims 4 and 5 of the `884 Patent claim a method of making a ponytail using a device like the one shown. While claim construction begins with the words of the claims, the written description and the prosecution history play an important role in understanding the scope of the claimed inventions and the meaning of claim terms. This Court must consider what the patentee has said about the invention as a whole when construing claim language. Indeed, where the patentee specifically disavowed claim scope in distinguishing its invention from the prior art, the words of the claims cannot be construed so broadly as to encompass such disavowed subject matter. As discussed herein, the patentee in this case made two significant statements in the specification and prosecution history that limit the scope of claims 4 and 5 of the `884 Patent. First, the patentee explicitly disavowed the apparatus disclosed in the Brown `211 Patent discussed above, namely, "a device which employs an elastic loop which can secure around a ponytail, and a length of hair which is attached to the elastic loop at one end, but is free at its opposite end," by stating in the `884 Patent's specification that "[while the Brown `211 devices] may be suitable for the particular purpose employed, or for general use, they would not be as suitable for the purposes of the present invention. . . ." (the `884 Patent, Col. 1, lines 31 ­ 35) (emphasis added). In other words, the `884 Patent's specification expressly distinguished the invention claimed therein from the prior art

3

As mentioned above, Plaintiff's `239 Patent is also addressed infra.

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(the Brown `211 Patent) that disclosed an elastic band permanently attached to only one end of a length of synthetic hair. Accordingly, claims 4 and 5 of the `884 Patent cannot, as a matter of law, be construed to cover a ponytail binding device like the one disclosed in the Brown `211 Patent having an elastic band permanently attached to only one end of a length of synthetic hair. Like the devices disclosed in the Brown `211 Patent, the ponytail devices manufactured and sold by Conair and Rite Aid (hereinafter, "the Accused Products") have an elastic band permanently attached to only one end of a length of synthetic hair (pictured below). Indeed, not only are the accused products nearly identical to those disclosed in the prior art Brown `211 Patent ­ the accused products are in fact manufactured under a license to the Brown `211 Patent. Fitzpatrick Decl. at ¶ 5. Second, during prosecution, the patentee amended its claims to overcome an obviousness rejection over U.S. Patent No. 2,567,119 to Naidor,4 ("the Naidor `119 Patent") in light of the Brown `211 Patent. Specifically, the patentee amended the

claim term "wherein each of the elastic band ends is permanently joined with one of the synthetic hair fiber ends" of independent claim 1 to recite that "one of elastic band ends is permanently joined with one of the synthetic hair fiber ends, and the other of the elastic band ends is permanently joined with the other the synthetic fiber ends. . . ." See Patentee's Response to Office Action dated Oct. 17, 2000 (attached as Fitzpatrick Decl., Exhibit E) (emphasis added). This amendment was necessary to ­ in the patentee's words ­ "help clarify the claims and ensure they do not inadvertently read upon Naidor," id. Essentially, the patentee amended independent claim 1 (an apparatus claim) to overcome the rejection by limiting the claimed ponytail holder to a device where both ends of an elastic band are permanently joined to corresponding synthetic hair fiber ends.

4

See Fitzpatrick Decl., Exhibit D.

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Even though the patentee did not amend the same claim term in independent claim 4 of the `884 Patent during prosecution (a method claim for using an apparatus), this claim term must likewise be limited to a method of using a hair binding device where both of the elastic band ends are permanently joined to corresponding synthetic hair fiber ends. The same terms appearing in different portions of the claims should be given the same meaning absent a clear indication otherwise in the specification and the prosecution history. See PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1366 (Fed. Cir. 2007). As the Federal Circuit stated just one year ago, "[c]lear assertions made during prosecution in support of patentability, whether or not actually required to secure allowance of [any one] claim, may also create an estoppel," because "[t]he relevant inquiry is whether a competitor would reasonably believe that the applicant had surrendered the relevant subject matter." Id., at 1368, citing Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir. 1995) (alterations in original). Accordingly, claims 4 and 5 must be limited to a method for using a hair binding device where both elastic band ends are each permanently joined to corresponding synthetic hair fiber ends. Despite the limiting statements in the specification, and the clear disavowal in the specification and prosecution history, Plaintiff alleges that the Accused Products, which include a ponytail holder having an elastic band permanently attached to only one end of a length of synthetic hair, fall within the scope of claims 4 and 5 of the `884 Patent. That is, Plaintiff urges a claim construction that would broaden the scope of the patent to a method for using a ponytail holder with an elastic band and synthetic hair to cover the invention disclosed in the prior art `211 Brown Patent. According to the doctrines of prosecution disclaimer and specification disavowal, Plaintiff's proposed construction must be summarily rejected.

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II.

ARGUMENT A. THE LAW OF CLAIM CONSTRUCTION

This Court already knows the rules governing claim construction, so Defendants will not repeat them here. But it is worth discussing three claim construction principles that bear directly on the issues that this case presents: first, claims terms must be read in the context of the invention's purpose; second, claim terms should be interpreted in light of the description of the invention as set forth in the specification; and third, claim terms should be interpreted in light of the prosecution history so as to exclude any interpretation that was disclaimed during prosecution. 1. Claim Terms Must Be Read in Context

The claims must be construed in light of the purpose of the invention and the problems the invention was trying to solve. In the specification of the `884 Patent, the patentee states that the Brown `211 Patent "would not be suitable for the purposes of the present invention," Col. 1, lines 36 ­ 39. When the specification purports to distinguish other devices because they have features different from those of the device that is the subject of the patent, claims must be interpreted to exclude those features: Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question. SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001) (emphasis added). 2. Claims Are Properly Limited to the Description of the Invention as Set Forth in the Specification A term may be defined by the patentee in the specification without an explicit statement of the form "I define ____ to mean ____." Astrazeneca AB v. Mutual Pharm. Co., 384 F.3d 1333, 1339 (Fed. Cir. 2004). A patentee may define a term "by implication" when the patent uses a term throughout the entire patent specification in a manner consistent with only a single meaning. Bell Atl. Network Servs. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1271, 1277 (Fed. Cir. 2001). Statements in the Abstract, Background and Summary of the Invention, although not determinative, can signal that the claim term is limited because they are more likely than a preferred embodiment to -5DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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describe the invention as a whole. C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864, 865 (Fed. Cir. 2004). Clear disavowal of a meaning does not require an explicit statement in the form "my invention does not include _____." Astrazeneca, 384 F.3d at 1340. Similarly, when the specification only describes and enables one embodiment, the claims are correctly limited to that embodiment. Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377, 1383 (Fed. Cir. 1999). Sitting en banc, the Federal Circuit held that the specification often is the best source for understanding the claims. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) ("the specification `is always highly relevant to the claim construction analysis. Usually, it is

dispositive; it is the single best guide to the meaning of a disputed term'")(citation omitted). Since the Phillips decision, the Federal Circuit has had occasion to rely on the specification and prosecution history of a patent to limit the scope of the patent claims, even though the language of the claims, read without reference to specification, might be more broadly construed. In InPro II Licensing v. TMobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006), the court noted that the specification disclosed only one mechanism for carrying out the invention, and emphasized its importance in solving the problems with the prior art. Id. at 1354-1355. The Federal Circuit also limited the claims to that one

mechanism because the specification characterized it as a "very important feature." Id. at 450 F.3d at 1355. The Federal Circuit limited Honeywell's "fuel injection system component" to a "fuel filter" because the written description used language that led them to conclude that a fuel filter was the only fuel injection system component that the claims covered. Honeywell Int'l., Inc. v. ITT Indus. Inc., 452 F.3d 1312 (Fed. Cir. 2006). Honeywell's patent specification repeatedly stated that "the invention is. . ." or "this invention relates to a fuel filter," and the court held: "[t]he public is entitled to take the patentee at his word and the word was that the invention is a fuel filter." Honeywell, 452 F.3d, at 1318. The Southern District of Texas has held similarly in Aguayo v. Universal Instruments Corp., 356 F.Supp.2d 699, 727 (S.D. Tex. 2005) ("If the specification calls an embodiment `the invention' or the `present invention,' it is appropriate to limit the claims to that embodiment," citing Microsoft Corp. v. Multi-Tech. Sys. Inc., 357 F.3d 1340, 1348 (Fed. Cir. 2004). Thus, the Federal Circuit has limited claims after its en banc Phillips decision to the only embodiments adequately described, and -6DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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where the patent specification uses limiting language, such as "the invention is," "the present invention is," and "a very important feature", etc. 3. The Prosecution Disclaimer Doctrine

A patentee's statements during prosecution may serve to narrow otherwise broad claims, particularly where a patentee's statement is made to distinguish the patentee's invention from the prior art. This is known as the "doctrine of prosecution disclaimer," which operates to narrow the ordinary meaning of claim terms by excluding specific claim term interpretations that were disclaimed during prosecution. See Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003). While prosecution history estoppel is a limit on expansion of patent claim protection under the doctrine of equivalents, "prosecution disclaimer" is a limit on literal patent claim protection through claim construction. Biodex Corp. v. Loredan Biomedical, Inc., 946 F.2d 850, 862-63 (Fed. Cir. 1991) (acknowledging the "clear line of distinction"). In this case, Plaintiff has expressly declined to assert infringement of any claim under the doctrine of equivalents. See Plaintiff's Disclosure of Asserted Claims and Infringement Contentions, at 12 (stating: "[e]ach limitation of each asserted claims, U.S. Patent No. 431,693, Claim 1, U.S. Patent No. D453,239 S, Claim 1 and US Patent No. 6,263,884, Claims 4 and 5 are literally present and are not alleged to be present under the doctrine of equivalents," emphasis added)(submitted herewith as Exhibit F to the Fitzpatrick Decl.). Defendants have relied upon this statement in preparing their case. In Southwall Technologies, the Federal Circuit expressed both the concept and the underlying rationale of the prosecution disclaimer doctrine: "[t]he prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution. . . . Claims may not be construed one way in order to obtain their allowance and in a different way against accused infringers." 54 F.3d at 1576; see also CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed. Cir. 1997) (finding the patentee could not turn its back on the meaning of "elasticity" embraced during prosecution). The patent in issue in Southwall Technologies related to a heated mirror that passes visible light, but reflects infrared light. 54 F.3d at 1573. The invention involved sputter-deposited transparent metal layers separated by discrete dielectric layers. Id. The accused sputtering process for forming a titanium oxide layer was a two-step process, while the accused -7DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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sputtering process for forming a zinc oxide layer was a one-step process. Id. at 1574. The claim language in issue was "sputter-deposited dielectric." Id. at 1575. If the "sputter-deposited dielectric" must be formed by a one-step sputtering process, then the accused titanium oxide layer would not be a "sputter-deposited dielectric." Id. at 1575-76. In an office action, the examiner interpreted sputter depositing as a two-step process. Id. at 1576. In response, Southwall amended the claims to recite that the dielectric layer can be laid down "directly" and "directly" converted to the oxide by the presence of a suitable gaseous reactant. Id. Southwall thereby disclaimed a two-step sputtering process for forming a dielectric layer and emphasized its one-step reactive sputtering process. Id. The Federal Circuit held that where an applicant argues that a claim possesses a feature that the prior art does not possess in order to overcome a prior art rejection, the argument may serve to narrow the scope of otherwise broad claim language. Thus, the Federal Circuit found that the prosecution history limited the ordinary meaning of "sputter-deposited dielectric" to exclude any dielectric layer formed by a two-step process. Id. a. The "Reasonable Competitor" Doctrine

While claims are read from the standpoint of one of ordinary skill in the art, Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001), the prosecution history is read from the standpoint of a "reasonable competitor" ­ since it is the competitor seeking to avoid infringement who must take its cue from the public record of the patent. The Federal Circuit has held that the

prosecution history constitutes a public record of the patentee's representations concerning the scope and meaning of the claims, and thus, competitors are entitled to rely on those representations to guide their behavior. In Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 957 (Fed. Cir. 2000), the Federal Circuit examined the disclaimer issue in the context of a patent related to outer footwear. Id. at 952. The invention involved a heel having a central groove and a double fin. Id. at 952-53. During prosecution, the inventor canceled the original claims and replaced them with three new independent claims reciting a "central longitudinal groove." Id. at 953. The inventor also submitted drawings comparing the features of the claimed invention to a hypothetical prior art combination. Id. at 953, 956. The inventor then distinguished the prior art by arguing the claimed invention provided a -8DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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"much narrower groove" for the "totally different purpose" of involving as much of the underneath footwear surface as possible in a cushioning and supporting function. Id. at 954, 956. One of the distinguished prior art references taught a shoe with a groove width greater than the combined width of the two fins. Id. at 956. The Federal Circuit upheld the district court's decision holding that the inventor necessarily defined the "central longitudinal groove" as requiring a width that must be less than the combined width of the two fins. Id. The Court declined the patentee's invitation to erase the inventor's disavowal from the prosecution history, emphasizing the importance of a public record upon which reasonable competitors form their business strategies. Id. A "reasonable competitor" vantage point was also employed in Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998). The patent in issue related to pumps used for dispensing volumes of liquid onto semiconductor wafers. Id. at 1451. The initial claim language was a "second pumping means." Id. at 1458. The accused product was a dual stage pump. Id. at 1452. In order to overcome a prior art rejection, the inventors characterized the prior art as providing a container separate from a conveying pump. Id. at 1458. The inventors emphasized the separateness of the container, both physically and functionally, as compared to the claimed invention. Id. The Cybor Court framed the question as "whether a competitor would reasonably believe that the applicant had surrendered the relevant subject matter." Id. at 1457. b. PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359 (Fed. Cir. 2007).

Just one year ago, in a case nearly identical to the one at bar, the Federal Circuit held that "[c]lear assertions made during prosecution in support of patentability, whether or not actually required to secure allowance of [any one] claim, may also create an estoppel," because "[t]he relevant inquiry is whether a competitor would reasonably believe that the applicant had surrendered the relevant subject matter." PODS, 484 F.3d 1359 (citation omitted) (alterations in original).

Accordingly, the Federal Circuit held that a prosecution disclaimer as to one claim may be applicable to another claim not specifically addressed by the patentee during prosecution. The asserted patent in PODS was directed to an apparatus and method for lifting a storage container from the ground onto a transport vehicle. During prosecution, the patentee amended at least two apparatus claims to require a four-sided rectangular "carrier frame." The patentee did not, -9DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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however, expressly amend a method claim that contained similar "carrier frame" claim terms. Porta Stor's accused apparatus for lifting storage containers was a three-sided structure with an open end that forms a U-shaped apparatus (and thus, the Porta Stor apparatus did not literally infringe the apparatus claims). Nevertheless, the district court found that because the "carrier frame" language in the method claim was not amended during prosecution, it was not limited to a four-sided rectangularshaped frame. The district court thus found that this method claim was literally infringed (and the other apparatus claims to be infringed under the doctrine of equivalents). On appeal, the Federal Circuit reversed the district court's claim construction, holding that the same terms in different claims should be given the same meaning unless the specification and prosecution history make expressly clear that the terms have different meanings. Id. In PODS, the Federal Circuit found no evidence in the specification or prosecution history that the common claim term "carrier frame" had different meanings in the apparatus claim as compared to the method claim. Indeed, the only embodiment disclosed in the specification had four sides, and during prosecution a reference was distinguished on the grounds that the patent claimed a rectangular-shaped frame. Thus, the Federal Circuit determined that the claim term "carrier frame" required a four-sided structure in all the claims ­ even though the patentee only expressly amended the apparatus claims during prosecution. Applying the "reasonable competitor" standard discussed above, the Federal Circuit found that a competitor would reasonably believe that PODS had surrendered any claim to a frame that was not rectangular or four-sided in shape, such as Porta Stor's three-sided, u-shaped device. Id.5 Accordingly, a patentee's statements during prosecution are properly applied to limit the ordinary meaning of the claims.

See generally, Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573 (Fed. Cir. 1996) (stating if two alternative interpretations are equally plausible, the court will choose the narrower one in order to avoid unfair surprise to the public).

5

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6

B.

APPLYING THE LAW OF CLAIM CONSTRUCTION TO THE `884 PATENT 1. Summary

Conair and Rite Aid believe that Tonytail is asserting claims 4 and 5 of the `884 Patent. For convenience, claim 4 is reproduced below (the claim terms jointly selected by the parties for construction pursuant to the Court's Case Management Order are underscored):6 4. A hair binding method, for use by a person having a ponytail having a ponytail end, for securing said ponytail, using a device comprising an elastic band having a pair of elastic band ends, synthetic hair fibers having an appearance similar to the ponytail and having a pair of synthetic hair fiber ends, the synthetic hair fiber ends joined to the elastic band ends to form a closed loop, comprising the steps of: encircling the ponytail with the device by inserting the ponytail end through the closed loop of said device; tensioning the device around the ponytail by doubling up the device; and covering the elastic band with the synthetic hair fibers so that the outward appearance of the device is formed solely by the synthetic hair fibers.

The description of the invention in the `884 Patent could hardly be more clear. Nevertheless, the Plaintiff proposes an unsupportable construction in a misguided attempt to broaden the claim scope of the `884 Patent to cover the device described by the Brown `211 Patent, and by extension, the Accused Products. While a Court should not use the Accused Products to construe the claims, the Court should not be kept ignorant of the import of the claim construction disputes to the final resolution of the case. Specifically, Plaintiff alleges that the Accused Products, which include a ponytail holder having an elastic band permanently attached to only one end of a length of synthetic hair, fall within the scope of claim 4 of the `884 Patent. Plaintiff's position must be summarily rejected for at least two fundamental reasons. First, the patentee explicitly disavowed the subject matter disclosed in the Brown `211 Patent, and thus, the claims cannot be construed to cover the invention disclosed in Brown `211. The Accused Products are nearly identical to the devices disclosed in the Brown `211

The Defendants believe that the claim of U.S. Patent No. D453,239 should also be construed.

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Patent. Second, the patentee's own admissions during prosecution confirmed its intent that the '884 Patent not cover the subject matter disclosed in the Brown `211 Patent. In particular, the patentee amended its claims to not cover a ponytail holder having an elastic band permanently attached to only one end of a length of synthetic hair. See Fitzpatrick Decl., Exhibit E. According to the doctrines of prosecution disclaimer and specification disavowal, Plaintiff's proposed construction must be rejected. 2. The term "an elastic band having a pair of elastic band ends" means an elastic cord whose two ends are not joined to one another. Even though a person of ordinary skill in the art of hair accessories may comprehend the ordinary meaning of the claim term "an elastic band having a pair of band ends," this term should be construed under the doctrines of claim scope disavowal and prosecution disclaimer to have limited claim scope because of statements made by the patentee in the specification and during prosecution. As discussed herein, the claim term "an elastic band having a pair of elastic band ends" should be limited to "an elastic cord whose two ends are not joined to one another." First, the `884 Patent's specification only describes a single embodiment of a hair binding device used to perform the method of independent claim 4. Indeed, the written description in the specification detailing the method is only three paragraphs long, and explicitly states: "Fig. 3 illustrates [shown above] the binding device 10 in use binding the hair of a person...," Col. 2, lines 57 ­ 58 (emphasis added). The hair binding device of reference numeral 10 (shown left) has an elastic cord 12 whose two ends 12E are not joined to one another, but rather, "a pair of connectors 14E are used to permanently join each one of the elastic band ends 12E to one of the hair fiber ends 14E. Accordingly, the synthetic hair fibers 14 and elastic band 12 together form a closed loop," Col. 2, lines 31 ­ 32. As a result, this claim term cannot be construed to cover a hair binding device having - 12 DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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an elastic band whose ends are joined to one another because, according to the specification's teaching, the ends must be joined to the synthetic hair fiber ends. Second, there is simply no disclosure in the specification for a hair binding device having an elastic band or cord whose ends are joined to one another. Plaintiff's proposed construction: "...an elastic strip whose two ends serve to join together and encircle..." finds no support in the specification and is flatly contrary to the one embodiment of the device described in the specification. When, as here, the specification only describes and enables one embodiment, the claims are correctly limited to that embodiment. Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d at 1383. Moreover, practically speaking, Plaintiff's proposed construction is illogical. The elastic band ends of the device cannot simultaneously "join together," "encircle," and later, form a "closed loop" with the synthetic hair fiber ends as required later in the claim. Third, the specification and prosecution history also disparaged prior art by distinguishing the `884 patent claims from the Brown `211 Patent that disclosed an elastic band having ends joined to one another (see Brown `211, Fig. 1, ref. 15, right). The patentee explicitly disavowed the apparatus disclosed in the Brown `211 Patent by stating in the `884 Patent's specification that "[while the Brown `211 devices] may be suitable for the particular purpose employed, or for general use, they would not be suitable for the purposes of the present invention..." (the `884 Patent, Col. 1, lines 31 ­ 35)(emphasis added). In other words, the `884 Patent's

specification expressly distinguished the invention claimed therein from prior art (the Brown `211 Patent) that disclosed an elastic band whose band ends are joined to one another. When, as here, the specification purports to distinguish other devices because they have features different from those of the device that is the subject of the patent, claims must be interpreted to exclude those features: Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to - 13 DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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encompass the feature in question. SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d at 1341 (emphasis added). Accordingly, the expression "pair of elastic band ends" therefore excludes from its scope elastic band ends joined to one another. 3. The term "synthetic hair fibers having an appearance similar to the ponytail and having a pair of synthetic hair fiber ends" means synthetic hair fibers whose two ends are not joined to one another. Like the "elastic band..." claim term discussed above, a person of ordinary skill in the art may comprehend the ordinary meaning of the claim term "synthetic hair fibers having an appearance similar to the ponytail and having a pair of synthetic hair fiber ends." However, this term should be construed to have limited claim scope under the doctrines of claim scope disavowal and prosecution disclaimer because of statements made by the patentee in the specification and during prosecution. Specifically, the term should be limited to "synthetic hair fibers [having an appearance similar to the ponytail] whose two ends are not joined to one another." As a result, this claim term cannot be construed to cover a hair binding device having synthetic hair ends joined to one another. As discussed above, the specification only describes a single embodiment of the hair binding device used in the method at issue. The specification defines the hair binding device as having synthetic hair fibers, where "the synthetic hair fibers 14 are all of substantially the same length, and collectively have a pair of synthetic hair fiber ends 14E," Col. 2, lines 25 ­ 27. As shown in Fig. 1, reproduced above, the hair fiber ends are not joined to one another, but rather, "connectors are used to permanently join each one of the elastic band ends to one of the hair fiber ends...together form[ing] a closed loop," Col. 2, lines 31 ­ 32. Accordingly, both the specification and the claim itself require a device having synthetic hair fiber ends joined to elastic band ends ­ not to one another. Additionally, the specification and prosecution history also disparaged prior art by distinguishing the `884 patent claims from the Brown `211 Patent that disclosed a length of synthetic hair whose ends could be joined to one another by jaws or a pin (See Brown `211 Patent, Col. 5, lines 5 ­ 8, stating "the user secures end 22 in place, wound around elastic 12, by opening jaws of hair pin 24, inserting the outer jaws into, through or around the wrapped length of [synthetic] hair,") (emphasis

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added). The expression "pair of synthetic hair fiber ends" therefore excludes from its scope synthetic hair fiber ends joined to one another. 4. The term "the synthetic hair fiber ends joined to the elastic band ends" is limited to a device "where one of the elastic band ends is permanently joined with one of the synthetic hair fiber ends, and the other of the elastic band ends is permanently joined with the other of the synthetic hair fiber ends." This proposed construction quotes verbatim the patentee's own description of the device used in the claimed method. As noted above, the patentee amended its claims during prosecution to overcome an obviousness rejection over the Naidor `119 patent in light of the Brown `211 Patent. Specifically, the patentee amended the claim term "wherein each of the elastic band ends is permanently joined with one of the synthetic hair fiber ends" of independent claim 1 to specify that "one of elastic band ends is permanently joined with one of the synthetic hair fiber ends, and the other of the elastic band ends is permanently joined with the other the synthetic fiber ends...," (see Fitzpatrick Decl., Exhibit E) (emphasis added). This amendment was necessary to ­ in the patentee's own words ­ "help clarify the claims and ensure they do not inadvertently read upon Naidor," id. Essentially, the patentee amended independent claim 1 (an apparatus claim) to overcome the rejection by limiting the claimed ponytail holder to a device where both ends of an elastic band are permanently joined to synthetic hair fiber ends. Even though the patentee did not amend independent claim 4 of the `884 Patent (a method claim for using the apparatus) during prosecution, Federal Circuit precedent instructs that this claim term must likewise be limited to a device where both of the elastic band ends are permanently joined to corresponding synthetic hair fiber ends. The Federal Circuit has repeatedly stated that the same terms appearing in different portions of a claimset should be given the same meaning absent a clear indication otherwise in the specification and the prosecution history. See PODS, 484 F.3d 1359. As the Federal Circuit stated just one year ago in PODS, "[c]lear assertions made during prosecution in support of patentability, whether or not actually required to secure allowance of [any one] claim, may also create an estoppel," because "[t]he relevant inquiry is whether a competitor would reasonably believe that the applicant had surrendered the relevant subject matter." PODS, 484 F.3d 1359 (citation omitted) (emphasis added) (alterations in - 15 DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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original). Accordingly, claims 4 and 5 must be limited to a method for using a hair binding device according to claim 1 (and the specification) where ­ in the patentee's own words ­ both of the elastic bands ends are joined to corresponding synthetic hair fiber ends. The Federal Circuit's decision in PODS is particularly instructive in this case. As discussed above, PODS and Porta Star were competing storage and moving companies. PODS sued Porta Stor for patent infringement based on its patent directed to a method and apparatus for moving a storage container in and out of a truck. The claim term at issue was "carrier frame." That term was used in both claim 1 (an independent apparatus claim) and claim 29 (an independent method claim). During prosecution, the patentee amended claim 1 to overcome a prior art rejection by explicitly limiting the "carrier frame" claim term to a carrier frame with four sides. Claim 29 proceeded to issue reciting only "a carrier frame." The lower court applied diverging meanings to the claim term in claim 1 and claim 29 on the basis that the patentee had amended the term in claim 1 during prosecution, but not the term in claim 29. The Federal Circuit reversed, holding that claim construction should not vary from the traditional presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims. Id. (emphasis added). This presumption serves the public notice function of the prosecution history ­ particularly with respect to competitors. Moreover, the patentee failed to point to evidence in the specification or the prosecution history that the term "carrier frame" in claim 29 has any meaning other than the more limited meaning in claim 1. Additionally, because "the only embodiments [of the carrier frame] disclosed in the specification [were] four-sided," the Federal Circuit held that the claim 1 definition should prevail throughout the claimset. Id. Here, like in PODS, the claim term referring to elastic band ends joined to synthetic hair fiber ends appears in two independent claims: claim 1 (an apparatus claim) and claim 4 (a method claim). Like the patentee in PODS, the patentee here amended the apparatus claim (claim 1) to explicitly limit the shared claim term to overcome the prior art, but did not amend the corresponding claim term in the method claim (claim 4). Specifically, during prosecution, the patentee distinguished the Naidor `119 and Brown `211 prior art patents on the ground that the amendment to the "elastic band ends joined to - 16 DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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synthetic hair fiber ends" claim term limited the claimed invention to a device where each of the elastic band ends is permanently joined with a corresponding synthetic hair fiber end. See Fitzpatrick Decl., Exhibit E. Accordingly, the amendment of the term in claim 1, like the amendment made by the patentee in PODS, unmistakably shows that the patentee limited its claims to a device where both of the elastic band ends are permanently joined with synthetic hair fiber ends. Thus, the patentee surrendered any claim to a device having a single elastic band end joined to a single synthetic hair end. Additionally, the specification permits an even cleaner resolution of the question in this instance. As discussed above, like the patent-in-suit in PODS, the specification here describes only a single embodiment of the hair binding device used in the method at issue. According to the

specification, the device uses "connectors [to] permanently join each one of the elastic band ends to one of the hair fiber ends...together form[ing] a closed loop," Col. 2, lines 31 ­ 32. The patentee chose the phrase "each one of the elastic band ends" to indicate to the public that both elastic band ends are joined to the synthetic hair fiber ends. Simply speaking, no other configuration is described or even contemplated in the `884 Patent. Moreover, the specification and prosecution history also disparaged prior art by distinguishing the `884 patent claims from the Brown `211 Patent that disclosed a length of synthetic hair that was attached at only one end to the elastic band. The patentee explicitly disavowed the apparatus

disclosed in the Brown `211 Patent. The patentee expressly characterized the Brown `211 Patent as teaching "a device which employs an elastic loop which can secure around a ponytail, and a length of hair which is attached to the elastic loop at one end, but is free at the opposite end," Id. (emphasis added). The Plaintiff's proposed construction of this claim term omits the requirement that the elastic band ends be permanently joined to the synthetic hair ends. This construction cannot be adopted in light of the patentee's express statements disparaging the Brown `211 Patent. If, as the Plaintiff suggests, the claim term covers a device where both elastic band ends are selectively or not permanently joined to the synthetic hair fiber ends, the claim would necessarily and impermissibly cover a device like that described in Brown, where a length of synthetic hair is attached to the elastic band at one end but free at the opposite end. - 17 DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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At the very least, this claim term and the other claim terms at issue must exclude the device shown and described in the Brown `211 Patent. Notably, the Accused Products, like the device of the Brown `211 Patent, do not have a pair of elastic band ends joined to corresponding synthetic hair fiber ends to form a closed loop. The Plaintiff proposes an unsupportable construction in a misguided attempt to broaden the claim scope of the `884 Patent to cover the device described by the Brown `211 Patent, and by extension, the Accused Products. The Federal Circuit has emphasized the importance of understanding the context of the claim construction arguments. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1326-27 (Fed. Cir. 2006). "While a trial court should certainly not prejudge the ultimate infringement analysis by construing claims with an aim to include or exclude an accused product or process, knowledge of that product or process provides meaningful context for the first step of the infringement analysis, claim construction." Id. In reciting this approach, the Federal Circuit positively cited its prior decision in Multiform Dessicants Inc. v. Medzam, Ltd., 133 F.3d 1473, 1476-78 (Fed. Cir. 1998), as an example. In Multiform Dessicants, the court considered the construction of the term "degradable" when the accused product burst open rather than dissolving. Rather than provide an affirmative construction of the full scope of the term

"degradable," the Federal Circuit affirmed the district court's construction that "degradable" did not include the different mode of action of the accused product ­ bursting open. Id. Applying this approach here, this Court need not provide a construction that sets forth the metes and bounds of the `884 patent ­ rather, to be in a position to resolve the question of infringement, the Court can merely conclude that the `884 Patent does not include "a length of hair which is attached to the elastic loop at one end, but is free at its opposite end," Col. 1, lines 34 ­ 35. Since claims 4 and 5 of the `884 Patent cannot, as a matter of law, be construed to cover a ponytail binding device like the one disclosed in the Brown `211 Patent having elastic band attached to only one end of a length of synthetic hair, Plaintiff's proposed construction must be rejected. 5. The claim term "to form a closed loop" means "to form a single, unbroken ring." The claim term "to form a closed loop" is not a term of art in the field of the invention, nor is it explicitly defined in the specification. Nevertheless, as discussed above, the specification describes - 18 DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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a single embodiment of the hair binding device used in the method at issue, and thus, this embodiment is instructive with respect to claim construction. With respect to the "closed" portion of the claim term, the patentee uses the terms "closed" and "continuous" interchangeably in the specification. See Col. 3, lines 8 ­ 10 ("since the elastic band portion forms a continuous loop with the less stretchable synthetic hair fibers...," emphasis added). Thus, the term "closed" should be construed as equivalent to "continuous." At the time the application that matured into the `884 Patent was filed, the definition of "continuous" was "uninterrupted in extent; without a break," The American Heritage® Dictionary of the English Language, Fourth Edition, Houghton Mifflin Company (2000). See Fitzpatrick Decl., Exhibit G. Accordingly, the "closed" portion of the claim term should be construed as "unbroken." The term "loop" is also not explicitly defined in the specification. However, according to the embodiment described in the specification and figures of the `884 Patent, the elastic band and synthetic hair fibers are shown as arranged in a "ring" formation, i.e., "a circular object, form, line, or arrangement with a vacant circular center," id. Notably, the specification describes prior art devices as having "elastic bands...generally in the shape of a ring which is stretched over the hair grouping, and released to hold the ponytail in place," Col. 1, lines 22 ­ 25 (emphasis added). The claim term "closed loop" should thus be construed as "unbroken ring." This construction is supported by the specification. Simply speaking, the disclosed embodiment does not contemplate a device having a "separable," "interrupted," or an otherwise "broken" ring. Indeed, a broken ring would either: (1) render the device inoperable for use in the claimed method; or (2) cover the prior art device described in the Brown `211 Patent. Neither alternative can be accepted. In every description and figure of the `884 Patent, the invention is consistently shown and described as a single, unbroken ring. The specification describes the elastic band as having "a pair" of band ends joined to a corresponding pair of synthetic hair ends. Logically, the device can only be arranged in a single ring (since additional rings would require joining additional band ends and synthetic hair ends). Additionally, the patentee expressly amended claim 1 during prosecution to recite a device where "one of the elastic band ends is permanently joined with one of the synthetic hair fiber ends, and the other of the elastic band ends is permanently joined with the other of the - 19 DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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synthetic fiber ends so that the elastic bands and synthetic hair fibers together form a closed loop." Fitzpatrick Decl., Exhibit E. Accordingly, the expression "to form a closed loop" excludes from its scope a device having more than one loop and a "broken" loop, and thus, should be construed as "a single, unbroken ring." 6. The claim term "covering the elastic band with the synthetic hair fibers so that the outward appearance of the device is formed solely by the synthetic hair fibers" means "adjusting the ring so that the outward appearance of the ring is formed only by synthetic hair fibers." As discussed above, the specification is limited to a single embodiment of the claimed method. The specification states: Since the elastic band portion forms a continuous loop with the less stretchable synthetic hair fibers, the tensioned elastic band acts to pull the synthetic hair fibers tightly around the ponytail 52. Referring now to FIG. 4, once the binding device 10 has been looped or wrapped around the ponytail 52 numerous times, some of the loops consist of the elastic band, and several of which should consist entirely of the synthetic hair fibers 14. Accordingly, the synthetic hair fibers 14 may be pulled over the elastic band to conceal the elastic band and the connectors, so that the outward appearance of the binding device 10 is provided solely by the synthetic hair fibers, as seen in FIG. 4. Col. 3, lines 9 ­ 18 (emphasis added). Fig. 4 is reproduced below. In the context of the claim and the description provided in the specification quoted above, the device ­ the ring formed by permanently joining the elastic band ends to the synthetic hair fiber ends ­ is twisted around the ponytail numerous times, and thereafter, the synthetic hair fibers are arranged to cover the elastic band. Plaintiff's proposed construction appears to divorce the synthetic hair fibers from the "closed loop" structure. This construction is unsupportable. This Court has held that the context in which a term is used in the asserted claim can be highly instructive. In re Abbott Labs. Norvir Anti-Trust Litig., 442 F. Supp. 2d 800, 808-809 (N.D. Cal. 2006). There exist - 20 DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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numerous similar examples in which the use of a term within the claim provides a firm basis for construing the term. See, e.g., Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1374 (Fed. Cir. 2004) (claim term "ingredients" construed in light of the use of the term "mixture" in the same claim phrase). Accordingly, the claimed step of "covering the elastic band with the synthetic hair fibers so that the outward appearance of the device is formed solely by the synthetic hair fibers" cannot be construed as separate and apart from the limitations set forth in the earlier portion of the claim, in particular, "synthetic hair fibers joined to elastic band ends to form a closed loop." Since the earlier portion of the claim refers to the "closed loop" (construed above to be a "single, unbroken ring"), the step of "covering the elastic band with synthetic hair fibers" should be construed as "adjusting the ring so that the outward appearance of the ring is formed only by synthetic hair fibers." C. THE LAW OF CLAIM CONSTRUCTION AS APPLIED TO THE `239 PATENT

To the extent the Court is willing to construe the design patents, the Defendants believe that in the interests of judicial economy, such attention by the Court may be dispositive. In particular, a claim construction issued by the Court at this stage may permit the parties to readily dispose of this action on summary judgment. Defendants most respectfully note that the Federal Circuit has determined that claim construction is a requirement of design patent litigation. See Elmer v. ICC Fabricating, 67 F.3d 1571 (Fed. Cir. 1995). Accordingly, Conair and Rite Aid request the Court prepare a written description of the "visual impression" created by the drawings in the `239 design patent pursuant to Contessa Food Products v. Conagra, 282 F.3d 1370, 1377 (Fed. Cir. 2002) (holding that he scope of the claim of a patented design "encompasses `its visual appearance as a whole,' and in particular `the visual impression it creates.'")(citation omitted). Conair and Rite Aid propose the following description of the "visual impression" created by the figures of the `239 Patent: "A ponytail holder in the shape of a single oval having a top (or upper) half, a bottom (or lower) half, and two small, identical - 21 DEFENDANTS CONAIR CORPORATION'S AND RITE AID HDQTRS. CORP'S OPENING CLAIM CONSTRUCTION BRIEF Case No. 3:07-cv-05895-WHA

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