Free Claim Construction Statement - 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. ANNE-LEITH W. MATLOCK, SBN 244351 MATLOCK LAW GROUP, PC 1485 Treat Blvd., Suite 200 Walnut Creek, CA 94597 Phone: (925) 944-7131 Fax: (925) 944-7138 e-mail: [email protected] Attorneys for Plaintiff, The Tonytail Company, Inc.

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

CORRECTED JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT Date: May 28, 2008 Time: 1:30P.M. Judge: William H. Alsup

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Plaintiff The Tonytail Company, Inc. ("Tonytail" or "Plaintiff") and Defendants Conair Corporation and Rite Aid HDQTRS. Corp. ("Conair and Rite Aid" or "Defendants") respectfully submit this Joint Claim Construction and Prehearing Statement pursuant to Northern District of California Patent Local Rule 4-3. This Statement provides agreed upon proposed terms and claim elements for construction relating to U.S. Patent Nos. 6,263,884 ("the `884 patent") and proposed terms and claim elements not agreed upon for U.S. Patent Nos. 6,263,884 ("the `884 patent") and Design Patents, D413,693 ("the `693 Patent") and D453,239 ("the `239 Patent"). The parties were unable to agree on the construction of any of the terms and phrases exchanged and construed under Local Rules 4-1 and 4-2. Attached hereto as Exhibit A is a table of the five terms that the parties have jointly selected for briefing and hearing at the claim construction hearing, along with each party's proposed construction. Attached hereto as Exhibit B is a table setting forth Tonytail's proposed construction of the disputed claim terms with identification of the intrinsic and extrinsic evidence on which it currently intends to rely either in support of its own proposed construction or in opposition to Conair and Rite Aid's proposed construction. Attached hereto as Exhibit C is a table setting forth Conair and Rite Aid's proposed construction of the disputed claim terms with identification of the intrinsic and extrinsic evidence on which it currently intends to rely either in support of its own proposed construction or in opposition to Tonytail's proposed construction. Attached hereto as Exhibit D is a statement from Plaintiff and Defendant regarding design patent issues and Defendant's proposed construction of Design Patents D413,693 and D453,239. Attached hereto as Exhibit E is a statement of Evidence in Support of Proposed Claim Constructions for Plaintiff and Defendants. The parties reserve the right to amend, correct, or supplement their claim construction positions and supporting evidence in response to any change of position of the other party or other good cause. The Plaintiff anticipates that the length of time necessary for the Claim Construction Hearing is two hours if the issues are limited to claims 4-5 of the `884 patent, four hours if either, all -1CORRECTED JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT Case No. 3:07-cv-05895-WHA

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of the claims of the `884 are included in the hearing or claims 4-5 of the `884 patent plus the design patents are included in the hearing, and eight hours if both design patents plus all of the claims in the `884 are included in the hearing. The Defendants Conair and Rite Aid estimate that the Claim Construction Hearing should require no more than two hours. The parties do not expect to present live testimony at the Claim Construction Hearing unless the Court requests testimony. Tonytail will present first, followed by Conair and Rite Aid, unless the Court request otherwise. The parties request a short, pre-hearing conference immediately prior to the Hearing.

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Dated: May 5, 2008

GOODWIN PROCTER LLP

By: __/s/ Thomas F. Fitzpatrick___ Thomas F. Fitzpatrick ATTORNEYS FOR DEFENDANTS CONAIR CORPORATION AND RITE AID HDQTRS. CORP.

Dated: May 5, 2008

MATLOCK LAW GROUP, PC

By: _/s/ Anne-Leith Matlock_____ Anne-Leith Matlock ATTORNEYS FOR PLAINTIFF THE TONYTAIL COMPANY, INC.

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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 4. "...to form a closed loop..." 5. "...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..." Claim Term or Element 1. "...an elastic band having a pair of elastic band ends..." 2. "...synthetic hair fibers having an appearance similar to the ponytail and having a pair of synthetic hair fiber ends..." 3. "...the synthetic hair fiber ends joined to the elastic band ends..."

EXHIBIT A FIVE CLAIM TERMS PROPOSED FOR CONSTRUCTION

Plaintiff's Construction an elastic band whose two ends serve to join together and encircle... synthetic hair fibers having an appearance similar to the ponytail and having a pair of synthetic hair fiber ends

Defendants' Construction ...an elastic cord whose two ends are not joined to one another... ...synthetic hair fibers whose two ends are not joined to one another...

the synthetic hair fiber ends ...wherein one of the elastic band ends joined to the elastic band is permanently joined with one of the ends synthetic hair fiber ends, and the other of the elastic band ends is permanently joined with the other of the synthetic hair fiber ends... to take on a closed loop ...to form a single unbroken ring... shape covering the elastic band ...adjusting the ring so that the outward with the synthetic hair appearance of the ring is formed only by fibers so that the outward synthetic hair fibers... appearance of the device is formed singly, to the exclusion of all else, by the synthetic hair fibers

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EXHIBIT B THE TONYTAIL COMPANY'S PROPOSED CONSTRUCTION OF DISPUTED CLAIM TERMS PRELIMINARY CLAIM CONSTRUCTION FOR U.S. PATENT NOS. 6,263,884 Plaintiff proposes that the following terms and claim elements found in claims 4 and 5 of U.S. Patent No. 6,263,884 should be construed by the Court as follows: CLAIM TERMS REQUESTED BY PLAINTIFF Claim Term or Element Proposed Construction Support for Proposed Construction "...an elastic band having a ...an elastic strip whose `884 Specification: Col. 2, lines 40 ­ 45 pair of elastic band ends..." two ends serve to join (defining an elastic band as made of together and encircle... stretchable material). Figs. 1 and 2, ref. 12E. Prosecution History: Amendment to Office Action dated October 17, 2000, p. 2 ­ 3 was not directed to this claim element and only addressed the question of permanent closed loop. Extrinsic: (1) Merriam-Webster's Online Dictionary, (2008), definitions of "elastic," "band," and "pair." "...synthetic hair fibers ...synthetic hair fibers `884 Specification: Col. 2, line 27; Col. having an appearance having an appearance 2, lines 29-31; Figs. 1 and 2, ref. 14E. similar to the ponytail and similar to the ponytail and Prosecution History: Amendment to having a pair of synthetic having a pair of synthetic Office Action dated October 17, 2000, hair fiber ends ..." hair fiber ends... p. 2 ­ 3 was not directed to this claim element and only addressed the question of permanent closed loop. Extrinsic: DICTIONARY DEFINITION: Merriam-Webster's Online Dictionary, (2008), ­ a "synthetic" hair fiber having an appearance similar to the ponytail is a hair fiber composition having an appearance similar to the ponytail. Webster's Dictionary ("pair: two corresponding things") ­ two similar or associated things. "...the synthetic hair fiber ...the synthetic hair fiber `884 Specification: Col. 2, lines 45 ­ ends joined to the elastic ends joined to the elastic 56; Col. 1, lines 31 ­ 40. band ends..." band ends... Prosecution History: Response to Office Action dated October 17, 2000, p. 2 ­ 3 was not directed to this claim element and only addressed the question -5CORRECTED JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT Case No. 3:07-cv-05895-WHA

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of permanent closed loop. Extrinsic: (1) Merriam-Webster's Online Dictionary, (2008), definition of "joined;" as a transitive verb ­ "to put or bring together". "...to form loop..." a closed ...to take on a closed loop shape... `884 Spec: Col. 1, lines 57 ­ 59 ("the ponytail is inserted into the closed loop"); Col. 3, lines 1 ­ 23 ("since the elastic band forms a continuous loop with the less stretchable synthetic hair fibers..."); Figs. 1 ­ 4. Prosecution History: Response to Office Action dated October 17, 2000, p. 2 ­ 3 did not amend this claim element in claims 4-5 of the `884 patent. Extrinsic: (1) Merriam-Webster's Online Dictionary, (2008), definition of "form;" as a transitive verb. `884 Spec: Col. 3, lines 11 ­ 23 ("some of the loops consist of the elastic band, and several of which should consist entirely of synthetic hair fibers. Accordingly, the synthetic hair fibers may be pulled over the elastic band to conceal the elastic band and the connectors..."). Prosecution History: Response to Office Action dated October 17, 2000, p. 2 ­ 3 did not amend this claim element in claims 4-5 of the `884 patent. Extrinsic: (1) Merriam-Webster's Online Dictionary, (2008), definition of "closed loop: a curving of a line to form a closed curve within itself;" (2) Merriam-Webster's Online Dictionary, (2008), definition of "solely: singly; without another; to the exclusion of all else" `884 Spec: Col. 1, lines 57 ­ 59 ("the ponytail is inserted into the closed loop"); Col. 2, lines 31 ­ 56 ("using two connectors completes the closed loop"); Col. 2, lines 56 ­ 63 ("the binding device has been placed over the ponytail by inserting the ponytail end through the closed loop of the binding device so that the binding device fully encircles

"...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..."

...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; so to the exclusion of all else except the synthetic hair fibers

"...encircling the ponytail with the device by inserting the ponytail through the closed loop of said device..."

...encircling the ponytail with the device by inserting the ponytail through the closed loop of said device ...

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the ponytail"); Col. 3, lines 1 ­ 23 ("since the elastic band forms a continuous loop with the less stretchable synthetic hair fibers..."; Figs. 1 ­ 4. Prosecution History: Response to Office Action dated October 17, 2000, p. 2 ­ 3 did not amend this claim element in claims 4-5 of the `884 patent. Extrinsic: (1) Merriam-Webster's Online Dictionary, (2008), definition of "closed loop: a curving of a line to form a closed curve within itself;"

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EXHIBIT C CONAIR AND RITE AID'S PROPOSED CONSTRUCTION OF DISPUTED CLAIM TERMS I. PRELIMINARY CLAIM CONSTRUCTION FOR U.S. PATENT NOS. 6,263,884 Defendants propose that the following terms and claim elements found in claims 4 and 5 of U.S. Patent No. 6,263,884 should be construed by the Court as follows: CLAIM TERMS REQUESTED BY DEFENDANTS Claim Term or Element Proposed Construction Support for Proposed Construction "...an elastic band having a ...an elastic cord whose `884 Specification: Col. 2, lines 40 ­ 45 pair of elastic band ends..." two ends are not joined to (defining an elastic band as made of one another... stretchable material). Figs. 1 and 2, ref. 12E. Col. 2, lines 29-31 (band ends joined to connectors or synthetic band ends directly). Prosecution History: Amendment to Office Action dated October 17, 2000, p. 2 ­ 3. Extrinsic: (1) The American Heritage® Dictionary of the English Language: Fourth Edition. 2000, definitions of "elastic," "band," "cord," and "pair." "...synthetic hair fibers ...synthetic hair fibers `884 Specification: Col. 2, line 27; Col. having an appearance whose two ends are not 2, lines 29-31; Figs. 1 and 2, ref. 14E. similar to the ponytail and joined to one another... Prosecution History: Response to having a pair of synthetic Office Action dated October 17, 2000, hair fiber ends..." p. 2 ­ 3 did not amend this claim element in claims 4-5 of the `884 patent. Extrinsic: Specification and figures of U.S. Patent Nos. 5,899,211 and 2,567,119. "...the synthetic hair fiber ...wherein one of the `884 Specification: Col. 2, lines 45 ­ ends joined to the elastic elastic band ends is 56; Col. 1, lines 31 ­ 40. band ends..." permanently joined with Prosecution History: Response to one of the synthetic hair Office Action dated October 17, 2000, fiber ends and the other of p. 2 ­ 3. the elastic band ends is Extrinsic: Specification and figures of permanently joined with U.S. Patent Nos. 5,899,211 and the other of the synthetic 2,567,119. hair fiber ends... "...to form a closed ...to form a single `884 Spec: Col. 1, lines 57 ­ 59 ("the loop..." unbroken ring... ponytail is inserted into the closed loop"); Col. 2, lines 31 ­ 56 ("using two connectors completes the closed loop"); Col. 2, lines 59 ­ 63 ("the binding -8CORRECTED JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT Case No. 3:07-cv-05895-WHA

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device has been placed over the ponytail by inserting the ponytail end through the closed loop of the binding device so that the binding device fully encircles the ponytail"); Col. 2, lines 64 ­ 67 ("in order to make the binding device fit tightly over the ponytail 52, the binding device is twisted to form a secondary loop..."); Col. 3, lines 1 ­ 23 ("since the elastic band forms a continuous loop with the less stretchable synthetic hair fibers..."; Figs. 1 ­ 4. Prosecution History: Response to Office Action dated October 17, 2000, p. 2 ­ 3. Extrinsic: (1) The Oxford English Dictionary, Second Edition (1989), definition of "closed loop;" The American Heritage® Dictionary of the English Language: Fourth Edition, (2000), definition of "closed curve" (2) Specification and figures of U.S. Patent Nos. 5,899,211 and 2,567,119.

CLAIM TERMS REQUESTED BY PLAINTIFF "...encircling the ponytail ...inserting the ponytail end `884 Spec: Col. 1, lines 57 ­ 59 ("the with the device by inserting through the ring so that the ponytail is inserted into the closed the ponytail through the ring encircles the loop"); Col. 2, lines 31 ­ 56 ("using two closed loop of said ponytail... connectors completes the closed loop"); device..." Col. 2, lines 56 ­ 63 ("the binding device has been placed over the ponytail by inserting the ponytail end through the closed loop of the binding device so that the binding device fully encircles the ponytail"); Col. 2, lines 64 ­ 67 ("in order to make the binding device fit tightly over the ponytail 52, the binding device is twisted to form a secondary loop..."); Col. 3, lines 1 ­ 23 ("since the elastic band forms a continuous loop with the less stretchable synthetic hair fibers..."; Figs. 1 ­ 4. Prosecution History: Response to Office Action dated October 17, 2000, p. 2 ­ 3. Extrinsic: (1) The Oxford English -9CORRECTED JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT Case No. 3:07-cv-05895-WHA

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"...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..."

...adjusting the ring so that the outward appearance of the ring is formed only by the synthetic hair fibers...

Dictionary, Second Edition (1989), definition of "closed loop;" The American Heritage® Dictionary of the English Language: Fourth Edition, (2000), definition of "closed curve" (2) Specification and figures of U.S. Patent Nos. 5,899,211 and 2,567,119 `884 Spec: Col. 3, lines 11 ­ 23 ("some of the loops consist of the elastic band, and several of which should consist entirely of synthetic hair fibers. Accordingly, the synthetic hair fibers may be pulled over the elastic band to conceal the elastic band and the connectors..."). Prosecution History: Response to Office Action dated October 17, 2000, p. 2 ­ 3. Extrinsic: (1) The Oxford English Dictionary, Second Edition (1989), definition of "closed loop;" The American Heritage® Dictionary of the English Language: Fourth Edition, (2000), definition of "closed curve" (2) Specification and figures of U.S. Patent Nos. 5,899,211 and 2,567,119

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EXHIBIT D PLAINTIFF AND DEFENDANTS ISSUES REGARDING DESIGN PATENTS The parties disagree over whether the `D693 and `D239 design patents should be construed during the claim construction hearing. Both parties cite leading cases to support their positions. See

Elmer v. ICC Fabricating, 67 F.3d 1571 (Fed. Cir. 1995) and See Egyptian Goddess Amicus Briefs and Questions Presented before the Court of Appeals for the Federal Circuit (2008). DEFENDANT'S PRELIMINARY CONSTRUCTION FOR U.S. PATENT NOS. D413,693 AND D453,239 Conair and Rite Aid propose the following construction for the `D693 and `D239 design patents: 1. The `693 Patent claims a hair band in the shape of a continuous ring. The hair band has multiple, textured ridges of varying heights. The ridges are formed by layering approximately ten generally oval shaped bands adjacent to one another.

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2. The `239 Patent claims a ponytail holder in the shape of a single, unbroken ring having a top (or upper) half, a bottom (or lower) half, and two small, identical cylinders connecting the top half of the ring to the bottom half of the ring. The top half of the ring is made up of multiple fibers. The fibers are collectively shaped into a semicircle. The bottom of the ring is

formed by a cord shaped into a reciprocal semi-circle. Each of the two cylinders connecting the top half of the ring to the bottom half of the ring has a top opening, a bottom opening, and a portion that generally tapers from the top opening towards the bottom opening. The fibers of the top half of the ring are collected together at either end of the semi-circle. The fibers at one end of the semi-circle are inserted into a top opening of one of the two cylinders. The fibers at the other end of the semi-circle are inserted into the top opening of the other of the two cylinders. Similarly, one end of the cord is inserted into a bottom opening of one of the two cylinders. The other end of the cord is inserted into the bottom opening of the other of the two cylinders.

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EXHIBIT E EVIDENCE IN SUPPORT OF PLAINTIFF'S AND DEFENDANTS' PROPOSED CLAIM CONSTRUCTIONS I. EVIDENCE IN SUPPORT OF TONYTAIL'S PROPOSED CLAIM CONSTRUCTIONS The Tonytail Company currently anticipates relying on the following forms of evidence to support its proposed claim construction: 1. 2. 3. 4. 5. 6. 7. The claim language itself; The specifications of the patents-in-suit; The file histories of the patents-in-suit; Documents produced by Tonytail during the course of discovery; Prior art cited in the file histories of the patents-in-suit and any prior art cited in any of the Tonytail's patents related to hair accessories; Statements by Tonytail and/or the inventor of the patents-in-suit in other patent prosecutions or lawsuits relating to hair accessories; Dictionaries and treatises including but not limited to: Merriam-Webster Online Dictionary (2008), The American Heritage® Dictionary of the English Language, Fourth Edition (Houghton Mifflin Company, 2000); Oxford English Dictionary, Second Edition (1989). Expert testimony, with such testimony to be disclosed pursuant to the agreed on case

8.

schedule. The expert, if necessary, will provide testimony in support of Tonytail's proposed construction of some or all of the claim terms referred to herein and will also provide testimony on the level of skill in the art and the knowledge of a person of ordinary skill in the art. 9. The Tonytail Company reserves the right to rely on additional evidence when and if

additional information becomes available (including, but not limited to, information obtained during the course of discovery).

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II.

EVIDENCE IN SUPPORT OF CONAIR'S AND RITE AID'S PROPOSED CLAIM CONSTRUCTIONS Conair and Rite Aid currently anticipate relying on the following forms of evidence to support

its proposed claim construction: 1. 2. 3. 4. 5. 6. 7. 8. The claim language itself; The specifications of the patents-in-suit; The file histories of the patents-in-suit; Documents produced by Tonytail during the course of discovery; Prior art cited in the file histories of the patents-in-suit and any prior art cited in any of the Tonytail's patents related to hair accessories; Prior art identified by Conair and Rite Aid in their Preliminary Invalidity Contentions including their file histories; Statements by Tonytail and/or the inventor of the patents-in-suit in other patent prosecutions or lawsuits relating to hair accessories; Dictionaries and treatises including but not limited to: The American Heritage® Dictionary of the English Language, Fourth Edition (Houghton Mifflin Company, 2000); Oxford English Dictionary, Second Edition (1989). Conair and Rite Aid reserve the right to rely on additional evidence when and if

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additional information becomes available (including, but not limited to, information obtained during the course of discovery). 20 21 22 23 24 25 26 27 28 - 14 CORRECTED JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT Case No. 3:07-cv-05895-WHA