Tmi Products Inc v. Rosen Entertainment Systems , 610 F. App'x 968 ( 2015 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
TMI PRODUCTS, INC.,
Plaintiff-Appellant
v.
ROSEN ENTERTAINMENT SYSTEMS, L.P.,
Defendant-Appellee
______________________
2014-1553
______________________
Appeal from the United States District Court for the
Central District of California in No. 5:12-cv-02263-RGK-
SP, Judge R. Gary Klausner.
______________________
Decided: April 2, 2015
______________________
REYNALDO C. BARCELO, Barcelo, Harrison & Walker,
LLP, Newport Beach, CA, argued for plaintiff-appellant.
Also represented by DAVID BRYANT WALKER, JOSHUA
CHARLES HARRISON, GUADALUPE M. GARCIA.
DAVID PAUL COOPER, Kolisch Hartwell, P.C., Portland,
OR, argued for defendant-appellee. Also represented by
OWEN W. DUKELOW, DESMOND JOHN KIDNEY, II.
______________________
Before LOURIE, BRYSON, and CHEN, Circuit Judges.
2 TMI PRODUCTS, INC. v. ROSEN ENTERTAINMENT SYSTEMS
LOURIE, Circuit Judge.
TMI Products, Inc. (“TMI”) appeals from the deci-
sion of the United States District Court for the Central
District of California granting summary judgment that
Rosen Entertainment Systems, L.P. (“Rosen”) does not
infringe claim 1 of U.S. Patent 7,597,393 (the “’393 pa-
tent”). See TMI Prods., Inc. v. Rosen Elecs., L.P., No. 12-
02263-RGK (C.D. Cal. Apr. 30, 2014) (“Decision”). Be-
cause we conclude that the district court did not err in
construing claim 1, we affirm the grant of summary
judgment of noninfringement.
BACKGROUND
TMI owns the ’393 patent relating to automotive
headrest entertainment systems. The claimed invention
is directed to a head restraint for vehicle seats having an
integrated entertainment system that includes a video
screen and a media player. ’393 patent col. 2 ll. 17–29.
Independent claim 1 of the ’393 patent reads as follows:
1. A media assembly adapted to be installed into a
seat back of a vehicle, the assembly comprising:
a mounting structure that is coupled to
the seat back of the vehicle wherein the
seat back defines a first outer surface visi-
ble to a viewer sitting in a back seat of the
vehicle;
a display that displays media to a viewer
sitting within the vehicle;
a media player having an input opening
into which a user can position a media
storage device wherein the media player
provides signals to the display to thereby
induce the display to visually display the
contents of the media storage device;
TMI PRODUCTS, INC. v. ROSEN ENTERTAINMENT SYSTEMS 3
a housing defining a recess having a first
opening that receives both the display and
the media player such that the display is
positioned proximate the first opening of
the recess with the media player posi-
tioned inward in the recess from the first
opening such that the media player does
not impede visual access to the display
wherein the housing is structured to per-
mit selective access to the input opening of
the media player to permit user positioning
of the media storage device within the
player and
wherein the housing is adapted to be cou-
pled to the mounting structure within the
seat back of the vehicle to thereby retain
the housing within the seat back such that
the display is positioned adjacent the out-
er surface of the seat back;
wherein the housing defines a second
opening and the media player is posi-
tioned within the recess such that the in-
put opening of the media player is
accessible through the second opening of
the housing.
Id. col. 17 l. 59–col. 18 l. 21 (emphasis added).
The patent discloses two exemplary families of embod-
iments of a media assembly adapted to be installed into
the seat back of a vehicle. Figure 9A discloses one embod-
iment: “a video system 300 for a vehicle seat or seat back
302 having a head restraint 304 with an integrated video
display or monitor 306 and a side-loading media player
308 . . . .” Id. col. 10 ll. 61–64; see also id. col 12 l. 60–
col. 13 l. 9 (Figure 10 disclosing a head restraint with a
top-loading media player.).
4 TMI PRODUCTS, INC. v. ROSEN ENTERTAINMENT SYSTEMS
Figures 11A–12B disclose an alternative embodiment:
“a video system 370 for the vehicle seat 302 having the
head restraint 304 with the panel display 306 and media
player 308 pivotally attached thereto.” Id. col. 13 ll. 22–25
(emphasis added). Exemplary figures of both families of
embodiments are depicted below:
Id. figs. 9A, 11B.
According to TMI, in the patent application that
would later issue as the ’393 patent as originally filed at
the U.S. Patent and Trademark Office (“PTO”), then-
pending dependent claims 3–5 were directed to the em-
bodiments disclosed in figures 9A–10. Dependent claims
6–10 were directed to the “pivotally-mounted” embodi-
ments disclosed in figures 11A–12B.
During prosecution, the Examiner issued a restriction
requirement, distinguishing between product claims
directed to “a media assembly for a headrest” and method
claims for “mounting an entertainment system to a head
restraint.” J.A. 689. The Examiner also identified three
patentably distinct species subgroups: figure 9A, figure
9B, and figures 11A–C. J.A. 690. The Examiner required
that the applicant elect a subgroup “to which the claims
TMI PRODUCTS, INC. v. ROSEN ENTERTAINMENT SYSTEMS 5
shall be restricted if no generic claim is finally held to be
allowable.” J.A. 690. In response, the applicant elected
the product claims directed to “a media assembly for a
headrest” and the subgroup containing figures 11A–12B.
J.A. 695. The Examiner then withdrew claims 3–5 “from
further consideration . . . as being drawn to a nonelected
species, there being no allowable generic or linking
claim.” J.A. 705.
The Examiner also rejected claim 1 as being antici-
pated by the prior art. J.A. 707–08. The Examiner found,
“[w]ith respect to claim 1, [that the prior art] discloses a
media assembly (10) adapted to be installed into a seat
back (50) of a vehicle . . . wherein the housing is struc-
tured to permit selective access, because it pivots in and
out of carrier member (17).” J.A. 708 (emphasis added).
The applicant eventually overcame that rejection by
establishing prior invention, and the application issued as
the ’393 patent containing claim 1.
TMI subsequently brought suit against Rosen, a
competitor of TMI, alleging that the Rosen AV7900 and
the Rosen CS9000 products directly infringe claim 1 of the
’393 patent. TMI and Rosen filed cross-motions for sum-
mary judgment of infringement and noninfringement,
respectively.
The district court construed claim 1 of the ’393 patent
and, based on that construction, granted Rosen’s motion
for summary judgment of noninfringement. The court
construed the phrase “the housing is structured to permit
selective access to the input opening” to require that “the
housing is structured to be capable of moving between an
accessible and an inaccessible orientation.” Decision at 7.
The court found that TMI’s proposed construction of “to
permit selective access” as “to allow choice for entry”
created at least two redundancies in the claim language.
Id. at 5–6. First, according to the court, if “to permit
selective access” referenced a user’s choice to either access
6 TMI PRODUCTS, INC. v. ROSEN ENTERTAINMENT SYSTEMS
the device or not, “the word ‘selective’ could be omitted
entirely without doing any violence to the limitation’s
meaning.” Id. at 5. Second, the court found that TMI’s
construction would render the term “the housing is struc-
tured to permit selective access to the input opening of the
media player” unnecessary in light of the final limitation
of claim 1, which requires that “the media player is posi-
tioned within the recess such that the input opening of
the media player is accessible through the second opening
of the housing.” Id.
The court found that any evidence of a disclaimer in
the prosecution history was inconclusive; however, the
court noted that the Examiner’s interpretation of the
claim language was consistent with Rosen’s proposed
construction. Id. at 6. The court found, with respect to
the prior art, that the Examiner “understood ‘structured
to permit selective access’ to mean capable of being made
accessible or inaccessible by, for instance, pivoting in the
recess.” Id.
Having construed claim 1, the court examined Rosen’s
products in camera and concluded that “[t]he accused
products’ housing sits within the recess of the headrest,
and cannot be manipulated to expose the input opening,
which is always accessible from the top of the headrest.”
Id. at 8. Thus, based on the court’s construction of the
claim and its findings regarding the accused products, the
court granted Rosen’s motion for summary judgment of
noninfringement. Id.
TMI timely appealed to this court. We have jurisdic-
tion pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review the grant of summary judgment under the
law of the regional circuit in which the district court sits,
here, the Ninth Circuit. Lexion Med., LLC v. Northgate
Techs., Inc., 641 F.3d 1352, 1358 (Fed. Cir. 2011). Apply-
TMI PRODUCTS, INC. v. ROSEN ENTERTAINMENT SYSTEMS 7
ing the law of the Ninth Circuit, we review the grant of
summary judgment de novo. Humane Soc’y of the U.S. v.
Locke, 626 F.3d 1040, 1047 (9th Cir. 2010). Summary
judgment is appropriate when, drawing all justifiable
inferences in the nonmovant’s favor, “there is no genuine
dispute as to any material fact and the movant is entitled
to judgment as a matter of law.” Fed. R. Civ. P. 56(a);
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
In this case, we review the district court’s claim con-
struction de novo because the intrinsic record fully deter-
mines the proper construction, and the district court’s
construction was not based on extrinsic evidence. See
Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. __, 135 S.
Ct. 831, 841 (2015). A patent is a fully integrated written
instrument and the claims must be read in view of the
specification of which they are a part. Phillips v. AWH
Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc). A
court should also consult the patent’s prosecution history,
which, like the specification, provides evidence of how the
PTO and the inventor understood the claimed invention.
Id.TMI argues that the district court erred in construing
“to permit selective access,” and that, when using the
plain and ordinary meaning of the claim language, the
phrase should be construed as “to allow choice for entry.”
Appellant’s Br. 28. According to TMI, dependent claims
3–5, as originally filed, were drawn to figures 9A–10.
TMI contends that claim 1 must have been at least as
broad or broader in scope than then-pending claims 3–5,
and the withdrawal of claims 3–5 did not alter the scope
of claim 1. Thus, TMI asserts that the meaning of “to
permit selective access” must not exclude the embodiment
shown in figures 9A–10.
Rosen responds that the court correctly construed “to
permit selective access.” According to Rosen, the plain
and ordinary meaning of “to permit selective access” is
8 TMI PRODUCTS, INC. v. ROSEN ENTERTAINMENT SYSTEMS
switching between having and not having access. Rosen
further argues that TMI disavowed coverage of figures
9A–10 by electing the embodiments of figures 11A–12B in
response to the restriction requirement.
We agree with Rosen that the district court correctly
construed “the housing is structured to permit selective
access to the input opening” to require that “the housing
is structured to be capable of moving between an accessi-
ble and inaccessible orientation.” That construction gives
meaning to the word “selective.” When considering mul-
tiple possible claim constructions, “[a] claim construction
that gives meaning to all the terms of the claims is pre-
ferred over one that does not do so.” Merck & Co., Inc. v.
Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir.
2005). Read in the context of the specification, the district
court’s construction of “to permit selective access” gives
meaning to all of the terms of the claim. In the descrip-
tion of figures 11A–12B, the housing limits access to the
input opening of the media player using a pivot member:
[T]he pivot member 386 allows for the video sys-
tem 370 to be pivoted outward from the recess 384
so that a user can readily access the media player
308, and, in addition, the pivot member 386 also
allows for the video system 370 to be pivoted to-
wards the recess 384 so as to engage the recess
384 in the retracted orientation 382 . . . .
’393 patent col. 14 ll. 11–16 (emphases added). Thus, the
housing permits access to the input opening of the media
player, and that access is selective because the housing is
structured to be capable of moving between an accessible
orientation and a retracted, inaccessible orientation. The
court correctly stated that the scope of claim 1 is not
necessarily limited to the pivotally attached embodiment.
In contrast, TMI’s proposed construction creates re-
dundancies in the claim language. Under TMI’s construc-
tion of “to permit selective access” as “to allow choice for
TMI PRODUCTS, INC. v. ROSEN ENTERTAINMENT SYSTEMS 9
entry,” the term “selective” becomes unnecessary. As the
district court found, by definition, one with access to the
input opening may choose whether to make use of it, and
as a result, TMI’s proposed construction renders the term
“selective” unnecessary. TMI argues that “selective” is
necessary because it distinguishes “selective access” from
“visual access,” as recited earlier in claim 1, but we find
that distinction unavailing. But there is no need to
distinguish “visual access,” as it applies in the context of a
display, from “access,” as it applies in the context of the
input opening of the media player.
TMI’s proposed construction also creates a redundan-
cy between the “selective access” limitation and the final
limitation of claim 1, which provides: “wherein the hous-
ing defines a second opening and the media player is
positioned within the recess such that the input opening
of the media player is accessible through the second
opening of the housing.” Id. col. 18 ll. 18–21. As so con-
strued, the narrower final limitation would render the
“selective access” limitation redundant because the final
limitation would require that the housing permit access to
the input opening of the media player as well as further
define the structure of the housing. Thus, the broader
“selective access” limitation would be unnecessary.
TMI’s additional argument that dependent claims 3–
5, as originally filed, were drawn to figures 9A–10, and
thus that independent claim 1 must not exclude the
embodiment shown in figures 9A–10, is also unavailing.
TMI’s argument focuses on the drafter’s intent with
respect to the drafting of the original claims, but intent
alone, without further evidence, does not inform the
construction of claim 1. See Howmedica Osteonics Corp.
v. Wright Med. Tech., Inc., 540 F.3d 1337, 1347 (Fed. Cir.
2008) (“We hold that inventor testimony as to the inven-
tor’s subjective intent is irrelevant to the issue of claim
construction.”). Although originally-filed dependent
claims 3–5 may have been intended to cover figures 9A–
10 TMI PRODUCTS, INC. v. ROSEN ENTERTAINMENT SYSTEMS
10, and claim 1 may have initially been intended as a
generic independent claim, it does not follow from the
“selective access” language that claim 1 covers the embod-
iments in figures 9A–10. As drafted and issued, claim 1
never did cover those embodiments.
Finally, both parties argue that the prosecution histo-
ry affects the construction of claim 1. “Absent a clear
disavowal or contrary definition in the specification or the
prosecution history, the patentee is entitled to the full
scope of its claim language.” Home Diagnostics, Inc. v.
LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004). We
conclude that none of the statements in the prosecution
history rise to the level of a clear disavowal or otherwise
support a departure from the claim language and the
written description. Thus, the district court correctly
construed “the housing is structured to permit selective
access to the input opening” to require that “the housing
is structured to be capable of moving between an accessi-
ble and inaccessible orientation.” We have considered the
parties’ remaining arguments and conclude that they are
without merit.
CONCLUSION
TMI does not contend that Rosen infringes under the
district court’s construction. Thus, because the district
court correctly construed the language of claim 1 of the
’393 patent, the decision of the court granting Rosen’s
motion for summary judgment of noninfringement is
affirmed.
AFFIRMED