Judge Chen “Backs” Construction of Garment Claims, Albeit with Alterations | Patterson Belknap Webb & Tyler LLP
On July 15, 2022, United States District Court Judge Pamela K. Chen (S.D.N.Y.) issued a Memorandum and Order setting forth the construction of two disputed terms relating to garments in Shaf International v. First Manufacturing Co. Inc.—those terms being “back portion” and “substantially outermost extent.” Judge Chen adopted constructions proposed by the Plaintiff, albeit with modifications, as discussed below.
The Dispute
The parties—Plaintiff Shaf International (“Shaf”) and Defendant First Manufacturing Co. Inc. (“First Manufacturing”)—manufacture and sell leather goods, including jackets and vests. The instant dispute involves the lining for those products, and more specifically, a liner that grants access to the garment’s outer layer, as depicted below:
Claim Construction
The parties disputed the construction of two terms appearing in Plaintiff’s U.S. Patent No. 10,433,598—“back portion” and “substantially outermost extent.”
Back Portion. As to the first term, Plaintiff proposed that the Court construe it to mean “portion of the outer layer that rests on the wearer’s back and below.” Defendant First Manufacturing argued that the term should be construed as “the part of the outer layer which rests solely on the wearer’s back.” In sum, the parties sought “to define the claim term in relation to the body of the person wearing the garment” and were simply “in disagreement whether the back portion of the garment extend[ed] below the wearer’s waistline.” Shaf Intl., Inc. v. First Mfg. Co. Inc., 20-cv-1242PKCST, 2022 WL 2791999, at *6 (E.D.N.Y. July 15, 2022).
The Court sided with Plaintiff, noting that the Patent’s specification and drawing—in addition to the prosecution history—all supported the interpretation that the term “‘back portion’ refers to the garment’s entire back panel, from top to bottom, and that the invention includes garments that extend below a wearer’s waistline.” Id. at *7. Indeed, the specification language specifically referred to the entirety of the back liner.
Judge Chen went on to note that confining “back portion” to a particular segment of the back made little sense given that a wearer’s torso length could vary considerably—thus, changing which portions of the garment fell below a particular waistline. All considered, the Court modified the Plaintiff’s proposed definition to eliminate any reference to the wearer’s body and adopted the construction: “portion of the outer layer that covers the entire back panel of the garment.” Id. at *8.
Substantially Outermost Extent. As to the second disputed term, Defendant submitted that the word “substantially” was indefinite and incapable of construction. The Court was not persuaded.
Judge Chen reasoned that the term—although not defined in the Patent—was not indefinite because it was not “‘presented in a vacuum’ and can be construed based on definitional parameters or functional limitations set forth in the claims and specification.” Id. at *9 (citing Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001)). On that score, the claim language explicitly tied the term “substantially” to the “coupling of the liner and the garment.” Shaf, 2022 WL 2791999, at *9.
As to the term’s construction, the parties once against sought to construe it by reference to the wearer’s back but, again, disputed whether the garment extended past the waistline.[1] The Court agreed with Plaintiff that the term should be construed to refer to the boundaries of the garment. Judge Chen explained, however, that Plaintiff’s proposed construction—“at or near the boundary of the portion of the outer layer that rests on the wearer’s back and below”—was superfluous given that the claim language already referred to the “substantially outermost extent of the back portion” making Plaintiff’s “proposed definition plainly … redundant and confusing.” Id. (emphasis added).
In the end, and taken together, the Court construed the term “substantially outermost extent of the back portion” to read: “at or near the boundaries of the portion of the outer layer that covers the entire back panel of the garment.”
The case is Shaf Intl., Inc. v. First Mfg. Co. Inc., 20-cv-1242PKCST (E.D.N.Y.).
[1] Plaintiff urged the Court to construe the term to mean “at or near the boundary of the portion of the outer layer that rests on the wearer’s back and below.” Defendant recommended that the Court construe it to mean “the furthest extent of the part of the liner which solely touches the wearer’s back. Id. at *10.
