reply memo summary judgment noninfringement and invalidity

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
Mich & Mich TGR, Inc.,
Plaintiff,
v.
Brazabra Corporation,
Defendant.
Civil Action No. 1:14-cv-5758-KAM-GRB
Judge Kiyo A. Matsumoto
Magistrate Judge Gary R. Brown
REPLY MEMORANDUM IN SUPPORT OF DEFENDANT BRAZABRA
CORPORATION’S MOTION FOR SUMMARY JUDGMENT OF
NONINFRINGEMENT AND INVALIDITY

TABLE OF CONTENTS
I.
The Brazabra clip is missing four claim limitations:
each results in summary judgment of noninfringement. ...........................................................1

A.
Plaintiff concedes that the Brazabra clip is missing the third limitation, “each
of said end portions [of the elongate main portion] includes a pair of prongs.” .................2

B.
Plaintiff’s argument on the remaining missing
limitations relies upon overruled Texas Digital. .................................................................2

1.
Brazabra’s clip is missing “prongs.” ................................................................................3

2.
Brazabra’s clip is missing “an elongate main portion.” ...................................................4

3.
Brazabra’s clip is missing prongs with an outer portion
“essentially disposed parallel” to an elongate main portion.............................................5

II.
Plaintiff failed to meet its burden of proof and its lawyer argument for
equivalents impermissibly encompasses admittedly “crowded prior art.”................................6

A.
Fildan anticipates the claims as applied by
Plaintiff and is encompassed by Plaintiff’s equivalents......................................................7

B.
Wyeth anticipates the claims as applied by
Plaintiff and is encompassed by Plaintiff’s equivalents......................................................8

III.
When the patent office compared the asserted patent to even the broadest
reasonable interpretation of a circular clip, it found the two to be different.............................9

CONCLUSION .............................................................................................................................10

TABLE OF AUTHORITIES
Cases

Am. Calcar, Inc. v. Am. Honda Motor Co.,
768 F.3d 1185 (Fed. Cir. 2014) .................................................................................................10
AquaTex Indus., Inc. v. Techniche Solutions,
479 F.3d 1320 (Fed. Cir. 2007) ...................................................................................................7
Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc.,
262 F.3d 1258 (Fed. Cir. 2001) ...................................................................................................3
Edwards Lifesciences LLC v. Cook Inc.,
582 F.3d 1322 (Fed. Cir. 2009) ...................................................................................................5
Gemalto S.A. v. HTC Corp.,
754 F.3d 1364 (Fed. Cir. 2014) ...................................................................................................7
Ineos USA LLC v. Berry Plastics Corp.,
No. 3:13-CV-00017, 2014 WL 1493852 (S.D. Tex. Apr. 15, 2014) ..........................................9
Lincoln, In re,
119 F.2d 433 (C.C.P.A. 1941).....................................................................................................8
Miken Composites, L.L.C. v. Wilson Sporting Goods Co.,
515 F.3d 1331 (Fed. Cir. 2008) ...................................................................................................4
Nystrom v. TREX Co.,
424 F.3d 1136 (Fed. Cir. 2005) ...................................................................................................4
Phillips v. AWH Corp.,
415 F.3d 1303 (Fed.Cir.2005) .............................................................................................2, 3, 4
Rasmusson v. SmithKline Beecham Corp.,
413 F.3d 1318 (Fed. Cir. 2005) ...................................................................................................8
Schoenwald,
964 F.2d 1122 (Fed. Cir. 1992) ...................................................................................................8
Texas Digital Systems v. Telegenix,
308 F.3d 1193 (Fed. Cir. 2002) ..........................................................................................passim

Defendant Brazabra Corporation, in further support of its motion for summary judgment
of noninfringement and invalidity, replies to Plaintiff’s 40-page opposition1
spread across three
documents: a “Memorandum of Law in Opposition to Defendant Brazabra Corporation’s Motion
for Summary Judgment of Noninfringement and Invalidity,” a “Claim Construction” filled with
infringement charts, and a “Statement of Facts” replete with additional legal argument2
.
Circular clips for securing bra straps, such as Brazabra’s, are common and old. The
asserted patent claims a bar with prongs on each end, yet Plaintiff reads them on Brazabra’s
circular clip. This overreaching: a) relies on overruled law in Texas Digital that divorces claim
terms from their context, b) ignores controlling law, and c) recruits red herrings. Also, Plaintiff
admits its reading of the claim term “essentially disposed parallel” is disclosed in prior art,
confirming that the claims are invalid. Even the Patent Office, which reads claims more broadly
than courts do, found that circular clips are not obvious over Plaintiff’s patent, thus the
differences between the shapes are not equivalent. Summary judgment should be granted.
I. The Brazabra clip is missing four claim limitations:
each results in summary judgment of noninfringement.
Both noninfringement and invalidity, the subjects of this summary judgment motion,
require that claim limitations be construed and those construed claims be compared to,
respectively, the accused device and the prior art. There is no infringement when any limitation
or its equivalent is missing. (Def. Br. 6–8.) Brazabra has identified four claim limitations that are
missing in the accused device: “prongs,” “an elongate main portion,” “each of said end portions
[of the elongate main portion] includes a pair of prongs,” and prongs with an outer portion
“essentially disposed parallel” to an elongate main portion. (Def. Br. 9–14.) Any attempt to
stretch these limitations to read on Brazabra’s clip invalidates the claims.
1
Individual Rules of Practice, Section IV.C.2, limits opposition papers to “30 pages.”
2
Local Civil Rule 56.1(b) states that opposition papers can provide a “short and concise
statement of additional material facts” — not expansive legal arguments.

2
A. Plaintiff concedes that the Brazabra clip is missing the third limitation, “each of
said end portions [of the elongate main portion] includes a pair of prongs.”
Plaintiff fails to challenge Defendant’s argument that the third limitation — “each of said
end portions [of the elongate main portion] includes a pair of prongs” — is missing. As Brazabra
explained, the admitted “split” creates two, inward-facing end portions without prongs. (Def. Br.
12–13.) This alone is reason enough to grant summary judgment of noninfringement.
B. Plaintiff’s argument on the remaining missing
limitations relies upon overruled Texas Digital.
Plaintiff does not dispute that under Defendant’s claim constructions there is no literal
infringement. Plaintiff argues that Defendant “incorrectly limits the definition of” the limitations
“prongs,” “elongated main portion,” and “essentially [disposed] parallel.” (Pl. Br. IV.A to C.)
But, Plaintiff’s arguments rely upon the methodology in Texas Digital Systems v.
Telegenix, 308 F.3d 1193 (Fed. Cir. 2002) that divorces claim terms from their context, an
approach not unlike Humpty Dumpty’s:
“When I use a word,” Humpty Dumpty said, in rather a scornful tone, “it means
just what I choose it to mean—neither more nor less.”
“The question is,” said Alice, “whether you can make words mean so many
different things.”
(Lewis Carroll, Through the Looking Glass.) Answering Alice, the en banc Federal Circuit
explicitly overruled Texas Digital and required that claims be read in their proper context, the
specification. Phillips v. AWH Corp., 415 F.3d 1303, 1320–21 (Fed. Cir.2005) (en banc)
(explaining that “the methodology [Texas Digital] adopted placed too much reliance on extrinsic
sources such as dictionaries, treatises, and encyclopedias and too little on intrinsic sources, in
particular the specification and prosecution history.”) Impermissibly, “the Texas Digital
approach limits the role of the specification in claim construction to serving as a check on the
dictionary meaning of a claim term if the specification requires the court to conclude that fewer
than all the dictionary definitions apply, or if the specification contains a sufficiently specific

3
alternative definition or disavowal.” Id. The errors created by improper reliance on Texas Digital
are explained below with respect to each of the remaining missing claim terms.
1. Brazabra’s clip is missing “prongs.”
On the construction of “prong,”3
Brazabra explained that “‘prong’ as used in the patent
. . . has ‘a slender pointed or projecting part’ like ‘a tine on a fork’.” (Def. Br. 10.) In every
description and illustration of the specification, the term “prong” is used “in a manner consistent
with only a single meaning,” a short pointed part like a tine on a fork. See Novatek, Inc. v.
Sollami Co., 559 F.App’x 1011, 1020 (Fed. Cir. 2014) (citing Bell Atl. Network Servs., Inc. v.
Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1271 (Fed. Cir. 2001)). The specification describes
the “present invention,” with prongs 14–17 of Figure 2, which, just as tines on a fork, have a
short pointed or projecting part — they have ends. (’766 Reissue Patent, D.I. 1, Exh. A at 3:29–
30.) Brazabra’s circular portion has no ends, no prongs. As the accused clip is circular, the
limitation cannot be met. As Plaintiff concedes: “[i]t is, of course, hard to imagine the segments
of a circle as being part of a fork.” (Pl. Br. 6.)
Plaintiff follows Humpty Dumpty and uses its own definition divorced from the
specification, adopting from Brazabra’s construction “a slender projecting part” while removing
the remaining words: “pointed . . . part” and “like a tine on a fork.” While the result is unclear,
Plaintiff seems to argue that the claimed prong does not need to have an end. Plaintiff, unlike
Brazabra, fails to cite to anything in the specification for its position, much less anything that
would “provide explicit or implicit notice to the public — i.e., those of ordinary skill in the art —
that the inventor intended [prongs] to cover more than” a short pointed or projecting part like a
tine on a fork. Miken Composites, L.L.C. v. Wilson Sporting Goods Co., 515 F.3d 1331, 1338
3
In claim 12, “strap-retaining members” are “prongs.” This is not “just because the ‘prongs’
term appears in other claims or the specification” (Pl. Br. 5), but because prongs are the only
disclosure for “strap-retaining members,” a term never used in the specification. (Def. Br. fn 5)
Terms can certainly be — as they are here — “interchangeable.” See infra, n4.

4
(Fed. Cir. 2008) (quoting Nystrom v. TREX Co., 424 F.3d 1136, 1145–46 (Fed. Cir. 2005),
following Phillips). Certainly there’s no notice that a prong can be a circle. Plaintiff begs for a
jury to decide the scope of a prong. (Pl. Br. 7.) But the dispute as to the scope of a prong is a
legal one and Plaintiff’s legal position relies on the overruled law of Texas Digital, divorcing a
term from the specification. As such Plaintiff fails to “identify genuine issues that preclude
summary judgment.” Novatek, 559 F.App’x at 1022.
2. Brazabra’s clip is missing “an elongate main portion.”
Just as with the term “prongs,” Plaintiff concedes that under Brazabra’s construction of
“an elongate main portion” — one contiguous main portion — there is no literal infringement:
the accused device has “a split main portion.” (Pl. Br. 8.) And, as the case with prongs, the
specification describes “elongate main portion” in a manner consistent with only a single
meaning; as Plaintiff admits, the disclosures “show only a unitary main portion.” (Pl. Br. 8.)
Thus, again, rather than citing anything in the specification as the law requires, Plaintiff
resorts to Humpty Dumpty’s argument “divorced from . . . the specification,” by imagining that
“other embodiments which divide the elongated main portion are certainly possible, as shown by
the accused product of Brazabra.” (Id. (italics added)) That something is possible does nothing to
“provide explicit or implicit notice to the public — i.e., those of ordinary skill in the art — that
the inventor intended [elongate main portion] to cover more than” a unitary main portion: only
disclosures in the specification — absent here — could provide such notice. Miken, 515 F.3d at
1338. Defendant’s construction does not, as Plaintiff implies, impermissibly read a single
embodiment into the claim. To the contrary, it captures all that was described and was noticed to
the public. As Plaintiff’s only challenge here is premised on the overruled Texas Digital
methodology, no infringement exists for this additional reason.

5
3. Brazabra’s clip is missing prongs with an outer portion
“essentially disposed parallel” to an elongate main portion.
With regard to the fourth limitation, prongs with an outer portion “essentially disposed
parallel” to an elongate main portion, Plaintiff does what it accuses Defendant of doing,
rendering a term superfluous. And in so doing, Plaintiff admits that under its construction, the
prior art Wyeth patent meets this limitation. (Pl. Statement of Facts 6, 8.)
As explained in Brazabra’s moving brief, Plaintiff attempts to read the limitation
“essentially disposed parallel” onto an imaginary tangent line that is not part of the accused
Brazabra clip. (Def. Br. 13–14.) This limitation was added to overcome the Patent Office’s
rejection based on the Wyeth patent. (Id.) Plaintiff argues that Brazabra ignores the word
“essentially” and, thus, renders the term superfluous.4
Brazabra’s construction does not need, as
Plaintiff says, “a complete parallel arrangement” (e.g., that the entire prong be parallel), but it
does require giving meaning to “parallel,” which Plaintiff ignores.
Plaintiff, without citation to the specification (Texas Digital, overruled), argues that
“essentially parallel is used to describe the curved portions of the prongs . . .” (Pl. Br. 8.) No
such disclosure exists in the specification. The only disclosure in the specification is that the
“present invention” “in FIGS. 1 through 3” illustrates that “[e]ach of the prongs 14 through 17
has an outer portion which is essentially disposed parallel to the elongate main portion 11 . . .”
(’766 Reissue Patent, D.I. 1, Exh. A at 3:26–30, 42, 56–58; Def. Br. 2.) As the specification’s
only description of an “outer portion” of prongs being essentially disposed parallel is the end
4
Specifically, Plaintiff argues that “another important rule of claim construction is that no term
in a claim is superfluous.” (Pl. Br. 3) No such wooden rule exists. The Federal Circuit has time
and again held that the meaning of a claim phrase depends on its context, not on how many
words are used. See e.g., Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1328 (Fed. Cir.
2009) (holding that “[e]ach of the terms ‘graft,’ ‘graft structure,’ ‘bifurcated base structure,’ and
‘bifurcated base graft structure,’ is used interchangeably in the specification and the claims . . .”)

6
portion of each prong, it is that end portion and not Plaintiff’s undisclosed, imaginary tangent of
a curved portion that must be essentially disposed parallel.
Plaintiff complains that Defendant’s construction must be wrong because claims with
limitations to an elastomeric main portion, as illustrated in Figure 4, also have the limitation that
the outer portion of the prongs be “essentially disposed parallel” and the outer portion of Figure
4’s prongs (items 14A to 17A) would not meet Brazabra’s claim construction. (Pl. Facts 9–10.)
Again Plaintiff’s argument ignores the specification. Nowhere does the specification describe
those prongs as essentially disposed parallel. Instead, the specification explains that the
elastomeric main portion of Figure 4 can use the prongs of Figures 1 to 3 that are described as
having an outer portion essentially disposed parallel. (’766 Reissue Patent, at 4:33–36.)
By amending the claims to overcome Wyeth, the applicant gave up prongs with outer
portions not “essentially disposed parallel.” (Def. Br. 2–3.) Wyeth’s prongs, unlike the claimed
prongs, never fully straighten out at their ends wherein the end portion of each prong becomes
essentially disposed parallel with the elongate main portion; instead, they remain continuously
curving outward from the elongate main portion. (See e.g., Def. Br. 2, 15.) That this difference
may seem small is understandable: the ’766 Reissue Patent warned that its invention lives among
“crowded prior art.” (Def. Br. 14, citing ’766 Reissue Patent at 1:27.)
Plaintiff’s Texas Digital style of construing “essentially disposed parallel” to read on an
imaginary tangent line to a circle — and to Wyeth — renders the term “parallel” meaningless
and should be rejected. (Def. Br. 13–14.) This claim term, in proper context, is missing in
Brazabra’s circular clip: thus, again, there is no infringement.
II. Plaintiff failed to meet its burden of proof and its lawyer argument for
equivalents impermissibly encompasses admittedly “crowded prior art.”
As said the egghead by Lewis Carroll (“it means just what I choose it to mean”), Plaintiff
says the missing words don’t matter since the circular shape of Brazabra’s clip is “equivalent”:

7
The art of bra accessories has long recognized such reversal of parts are
equivalent forms to provide the function (holding a bra strap) in the same way (by
providing a gap between an elongate member and a curved member extending
away) to get the same result (a bra strap held firmly in a secured position).
(Pl. Claim Construction 9.) Firstly, Plaintiff’s “lawyer argument,” without testimony, points to
patents to show general equivalents but falls short of the Federal Circuit “requirement for
testimony”: “that evidence be presented to the jury or other fact-finder through the particularized
testimony of a person of ordinary skill in the art, typically a qualified expert, who (on a limitation
-by-limitation basis) describes the claim limitations and establishes that those skilled in the art
would recognize the equivalents.” AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320,
1328–29 (Fed. Cir. 2007)(italics added). “[D]ifferent forms of evidence” without that testimony,
as Plaintiff used, will not survive summary judgment of no infringement by equivalents. Id.
Secondly, when equivalents would encompass the prior art they are barred. (Def. Br. 7);
accord, Gemalto S.A. v. HTC Corp., 754 F.3d 1364, 1374 (Fed. Cir. 2014) (granting summary
judgment of no infringement because “the doctrine of equivalents cannot be applied to
encompass the prior art…”). Plaintiff’s idea of an equivalent even encompasses, for example, a
paperclip (Spencer Decl. Exh. L), and certainly encompasses prior art by Fildan and Wyeth.
A. Fildan anticipates the claims as applied by
Plaintiff and is encompassed by Plaintiff’s equivalents.
Plaintiff’s equivalents above impermissibly encompass Fildan, which can hold a bra strap
in its gap between its split, inward-facing members and its outer, curved portion in a way that
results in a bra strap being held firmly in a secured position. (Def. Br. 7–8, 16) Plaintiff’s attempt
to dodge Fildan by contending that, unlike claims for securing two bra straps, Fildan may be
smaller and “adapted to secure only a single bra strap” (Pl. Br. 15)5
ignores Fildan’s disclosures.
5
When describing Fildan as focused on one bra strap, Plaintiff cites other patents that allegedly
disclose clips using a single bra strap. (Pl. Facts 10–11) Had the Patent Office applied Plaintiff’s
contemporaneous constructions, it may well have rejected the claims based on this art too.

8
It is uncontested that Fildan discloses Brazabra’s clip shape (Def. Br. 6) and Plaintiff’s
purported “actual size”6
of that shape is of no relevance because the asserted claims are not
limited to any specific dimensions and it is capable of holding two straps since it discloses
multiple lengths of bra strap wound through its clip (see e.g., Spencer Exh. D at Figures 10–12,
bra straps 40, 41, 70, 71, 93, 97, 99.) Indeed, “[n]othing precludes the wearer from using [Fildan]
for both shoulder straps as desired and as claimed,” explained the Patent Office during
prosecution of another later patent, invented by Arrington, to a circular clip for securing two bra
straps, the figures for which are shown in Section III below. (Spencer Decl. Exh. K, September
4, 2009 Non-Final Rejection at 4.) After recognizing Fildan’s disclosures, the Patent Office
rejected Arrington’s claims to a circular clip for securing two bra straps as anticipated by Fildan.
(Id.) The applicant had to add limitations to overcome Fildan. (Id. at January 4, 2010
Amendments and Argument.) Again, it is of no difference whether Fildan was actually used to
secure two bra straps: if the shape is disclosed, it anticipates regardless of its use. (Def. Br. 15–
16, citing Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1326 (Fed. Cir. 2005); In re
Schoenwald, 964 F.2d 1122, 1124 (Fed. Cir. 1992).)7
Thus, any attempt to read Plaintiff’s claims
onto Brazabra’s clip must read them onto Fildan and, thus, anticipate Plaintiff’s asserted claims.
B. Wyeth anticipates the claims as applied by
Plaintiff and is encompassed by Plaintiff’s equivalents.
Wyeth anticipates too and is certainly encompassed by Plaintiff’s equivalents. As
explained, the Patent Office rejected Plaintiff’s claims over Wyeth. (Def. Br. Section II.A.) In
6
Plaintiff’s purports to show an “actual size” image of “a standard bra-strap ‘slider’,” that is the
“subject of [Fildan],” but that slider is clearly not the clip in Fildan with a split cited by Brazabra.
7
As explained in Brazabra’s opening brief, the asserted “method” claims merely set out the use
of the claimed bra strap retainer (putting it on) and, as such, cannot be distinguished from the
anticipating art. In re Lincoln, 119 F.2d 433, 434 (C.C.P.A. 1941) (holding that the “method
claims . . . merely set out the use of the claimed product, so that if the product claims are held to
be unpatentable the same holding must apply to the method claims.”).

9
response, the claims were amended to add the “essentially disposed parallel” limitation. (Id.)
Now, under its construction, Plaintiff admits that Wyeth actually meets the “essentially disposed
parallel” limitation. (Pl. Statement of Facts 8.) To escape anticipation now, Plaintiff cites the
italicized part of the essentially disposed parallel clause:
wherein each of said prongs has an outer portion which is essentially disposed
parallel to said elongate main portion, said prongs and said elongate main portion
being adapted to retain the straps of the bra therebetween with the straps being
would [sic] through said slots between said prongs and said elongate main portion.
(Id. (emphasis added).) According to Plaintiff, the above-italicized language makes a difference.
But, here, Plaintiff repeats the same legal errors as it did with Fildan. Specifically, the question
of anticipation goes not to the use of the device, but its shape. (Def. Br. 8, citing Federal Circuit.)
Plaintiff’s argument that Wyeth cannot anticipate when it also discloses a rubber band for
wrapping around the bra straps is flawed because “[p]rior art that includes an extra component
anticipates a patent that claims the same elements but excludes the extra component.” Ineos USA
LLC v. Berry Plastics Corp., No. 3:13-CV-00017, 2014 WL 1493852, at *7 (S.D. Tex. Apr. 15,
2014). Indeed, the italicized language above cited by Plaintiff confirms that, to anticipate, Wyeth
need only be “adapted to,” i.e., capable of, holding two straps. Wyeth, having the same shape, is
equally adapted to retain the straps of the bra therebetween with the straps being wound through
said slots between said prongs and said elongate main portion. Wyeth anticipates the claims.
III.When the patent office compared the asserted patent to even the broadest
reasonable interpretation of a circular clip, it found the two to be different.
Further support that the missing limitations have no equivalents in a circular clip can be
found in the file history of another, later patent. The following circular shape for a bra clip (like
Brazabra’s) was claimed in Arrington’s U.S. Patent 7,753,758 (Spencer Decl. Exh. K, Figs. 5–6):

10
32 32
30
22
FIG. 4
28
24
44
32 32
38 30
FIG. 5
10

I
I
IJ
I

'
........ ---.......
_,, '----- 16
FIG. 6
'I
I
I
I
,
I
The Patent Office, before issuing Arrington’s patent, cited Plaintiff’s patent as prior art but did
not use it to reject the claims. (See id.) This ruling is telling because an obviousness rejection
(similar to equivalents) is much more likely under the broadest reasonable interpretation standard
used by the Patent Office than the narrower standard courts must apply. Am. Calcar, Inc. v. Am.
Honda Motor Co., 768 F.3d 1185, 1189 (Fed. Cir. 2014). Thus, when the skilled artisan did not
find the above shape obvious over Plaintiff’s patent, she would not on the same day consider the
differences equivalent. Plaintiff’s Humpty Dumpty style wordplay falls short of Federal Circuit
law: this isn’t the world created by Lewis Carroll.
CONCLUSION
For the foregoing reasons, this Court should grant defendant Brazabra’s motion for
summary judgment of noninfringement and invalidity.
Dated: December 10, 2014
New York, New York
Respectfully submitted,

reply memo summary judgment noninfringement and invalidity

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