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G.I. Sportz INC. v. Valken Inc.

United States District Court, D. New Jersey

June 30, 2019

G.I. SPORTZ, INC. and GI SPORTZ DIRECT, LLC, Plaintiffs,
v.
VALKEN, INC., Defendant.

          RYAN W. O'DONNELL VOLPE & KOENIG, P.C. On behalf of Plaintiffs

          ANTHONY J. DIMARINO, III EMMETT STEPHAN COLLAZO A.J. DIMARINO, III, PC On behalf of Defendant

          MARKMAN OPINION

          NOEL L. HILLMAN, U.S.D.J.

         Plaintiffs, G.I. Sportz Inc. and G.I. Sportz Direct LLC, own by assignment two patents for pneumatic assemblies for recreational compressed gas operated paintball guns: U.S. Patent No. 6, 644, 295 (the “‘295 Patent”), titled “Pneumatic Assembly for a Paintball Gun, ” issued on November 11, 2003, by the United States Patent and Trademark Office (“USPTO”), and U.S. Patent No. 6, 901, 923 (the “‘923 Patent”), titled “Pneumatic Assembly for a Paintball Gun, ” issued by the USPTO on June 7, 2005.

         (Image Omitted)

         (Docket No. 1-1 at 2; Docket No. 1-2 at 2.)

         Plaintiffs claim that Defendant, Valken, Inc., with full knowledge of the two Patents, is making, using, selling, and offering to sell pneumatic assemblies for recreational compressed gas operated guns that are covered by one or more claims of the two Patents, including but not limited to the V12 Valken Airsoft Engine (“V12 Engine”) and compressed gas guns using the V12 Engine.[1] Defendant explains that the Valken V12 device is used in the competitive team sport of airsoft, and it disputes infringement because, among other reasons, its products are not pneumatic: Defendant uses springs but the Patents require air pressure forces, and Defendant's products do not conform to the numerous “chamber” and “housing” configurations required in the two Patents.[2]

         The parties dispute whether the preamble and nine terms in the Patents needs to be construed by the Court or given their plain and ordinary meaning, and the parties differ on the construction of four terms.[3] A claim construction hearing was held on March 6, 2019. This Opinion memorializes the Court's findings as to its construction of claims at issue pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).

         I. LAW OF CLAIM CONSTRUCTION

         The ultimate question of the proper construction of a claim in a patent is a question of law for the court to determine.

         Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-91 (1996)) (further explaining, “While we held in Markman that the ultimate issue of the proper construction of a claim should be treated as a question of law, we also recognized that in patent construction, subsidiary factfinding is sometimes necessary.”). A patent claim is that “‘portion of the patent document that defines the scope of the patentee's rights.'” Id. (quoting Markman, 517 U.S. at 372).

         The Federal Circuit has set forth a “familiar approach to claim construction.” In re Papst Licensing Digital Camera Patent Litigation, 778 F.3d 1255, 1261 (Fed. Cir. 2015). In construing a patent claim, which should be considered in the mindset of a person having ordinary skill in the art (“POSA”):

(1) a court should give words of a claim their ordinary meaning in the context of the claim and the whole patent document;
(2) the specification particularly, but also the prosecution history, informs the determination of claim meaning in context, including by resolving ambiguities;
(3) even if the meaning is plain on the face of the claim language, the patentee can, by acting with sufficient clarity, disclaim such a plain meaning or prescribe a special definition; and
(4) the court should apply the principle that “[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.”

In re Papst, 778 F.3d at 1261.

         II. DISPUTED TERMS

         The Court has thoroughly considered the parties' positions on their proposed construction of the disputed terms[4] as the Markman hearing. The Court finds the following:

         1. Whether the term “paintball gun” in the preamble requires construction

Claim Term

G.I. Sportz Construction

Valken Construction

The term “paintball gun” in the preamble

Plain and ordinary meaning

an “air cannon for deploying paintballs”

         Court's construction: “paintball gun” - “a device for deploying a paintball”

         Plaintiffs argue that because a structurally complete invention is described in the body of the claims of the '295 and '923 Patents and the term “paintball gun” does not give life, meaning, or vitality to the claims, the term “paintball gun” is not a limitation and does not need to be construed. Plaintiffs further argue that the term “paintball gun” as it appears in the claims of the '295 and '923 Patent merely describes the “use or purpose” of the invention, and the term “paintball gun” is not essential to understanding limitations or terms in the claim body.

         Defendant contends that Plaintiffs' argument concerns whether “paintball gun” is an element that must be met for an infringement determination - i.e., whether “paintball gun” in the preamble is a limitation - and not an actual dispute over the term's construction. Defendant argues that the term should presented in their comprehensive briefs and at oral argument at be first construed and then the issue of whether it is a limitation assessed.

         From the Court's review of the Patents, it is evident that meaning of the term “paintball gun” must be construed before it can be determined, as Plaintiffs argue, that the term is not a limitation. Both Patents are titled “Pneumatic Assembly for a Paintball Gun, ” and both Patents refer to “paintball gun” numerous times. For example, the '295 Patent provides:

SUMMARY OF THE INVENTION
One aspect of the present invention is to provide an in-line pneumatic assembly capable of providing the primary operating components of a paintball gun in a single chamber of the paintball gun.
Another aspect of the present invention is to provide a paintball gun that is smaller and lighter than conventional markers.
Yet another aspect of the present invention is to provide a paintball gun that has a smaller profile than conventional paintball guns.
Still another aspect of this invention is to enable a paintball gun having reduced size and weight that fires from a closed-bolt position.
(Docket No. 1-1 at 8.)
The '923 Patent provides:
BACKGROUND OF THE INVENTION
This invention relates generally to pneumatic launching devices. More specifically, however, this invention relates primarily to pneumatic paintball guns (or "markers") for use in the sport of paintball.
In the sport of paintball, it is generally desirable to have a gun that is as light and maneuverable as possible. Players need increased mobility to move from bunker to bunker quickly to avoid being hit. Furthermore, in the sport of paintball, the marker is treated as an extension of the body such that a hit to the marker counts as a hit to the player. It is desirable, therefore, to have a paintball gun with as small a profile as possible.

(Docket No. 1-2 at 8.)

         The claims for '295 Patent all begin with “An electro-pneumatic paintball gun . . . . ” (Docket No. 1-1 at 10-11.) The claims for the '923 Patent all begin with “An in-line pneumatic assembly for a paintball gun . . . .” (Docket No. 1-2 at 10-11.)

         Thus, “paintball gun” must be construed because it is included in every claim, and it appears that the term may indeed be essential to understanding limitations or terms in the claim body. If the Court or other factfinder were to find that “paintball gun” was essential to that understanding, a construction of that term would be necessary to construe other parts of the Patents.[5] See O2 Micro Intern. Ltd. v. Beyond Innovation Technology Co., Ltd., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction' or has the ‘plain and ordinary meaning' may be inadequate when a term has more than one ‘ordinary' meaning or when reliance on a term's ‘ordinary' meaning does not resolve the parties' dispute.”); ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1375-76 (Fed. Cir. 2009) (quoting Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005)) (“‘[It is] entirely proper to consider the functions of an invention in seeking to determine the meaning of particular claim language.'”); Medrad, 401 F.3d at 1319 (citations omitted) (“We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history.”).

         Defendant's construction that “paintball gun” is an “air cannon for deploying paintballs” interjects a limiting descriptor - “air cannon” - not present in the preamble or the claims of either Patent. The issue of Plaintiffs focusing on a limitation is the very argument Defendant advances as why the term must be construed over Plaintiffs' objections. The Court agrees that the claim must be construed, but the Court does not accept Defendant's construction. The Court finds that the term “paintball gun” simply means “a device for deploying a paintball.”[6]

         2.Housing, ” “Substantially Contiguous Assembly Housing, ” “Gas Storage Area Housing”

Claim Term

G.I. Sportz Construction

Valken Construction

“housing”

'295 Pat.: claims 1, 2, 4, 8

Plain and ordinary meaning

“body containing pneumatic assembly elements”

Claim Term

G.I. Sportz Construction

Valken Construction

“substantially contiguous assembly housing”

'295 Pat.: claim 8 '923 Pat.: claim 5

Plain and ordinary meaning

“body that includes pneumatic assembly components fitted end to end”

Claim Term

G.I. Sportz Construction

Valken Construction

“gas storage area housing”

'923 Pat.: claim 5

Plain and ordinary meaning

“container separate from housing that holds compressed gas”

         Court's construction:

“housing” - “a body containing [certain components]”
“substantially contiguous assembly housing” -
“a body containing components that are connected together in-line”
“gas storage area housing” - “a body containing the gas storage area”

         Plaintiffs argue that “housing” is a commonplace word that does not need a special construction, and the plain and ordinary meaning of this term should be adopted by the Court. Plaintiffs argue that Defendant's proposal includes arbitrary word replacements, adds unnecessary limitations, is inconsistent with its proposed construction of other claim terms that include the word “housing, ” and it adds confusion. Plaintiffs also argue that because the claims clearly recite that the ...


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