Araujo v. E. Mishan & Sons, Inc.

Background

William Araujo brought a patent-infringement action concerning U.S. Patent No. 9,446,276, titled “Exercise Apparatus for Strengthening Abdominal Muscles.” The patent describes an exercise device with a flat portion supporting the user’s buttocks, a back-supporting portion, hinges, and springs. Araujo alleged that E. Mishan & Sons, Inc. and Forgot My Souvenirs LLC were involved with products called the “Ab Rocket” and “Ab Rocket Twister,” which he alleged infringed the patent.

The case concerns Claim 1 of the patent. Claim 1 states that the device consists of four elements: a first member, a second member, at least one hinge, and at least one removable and replaceable spring. The parties asked the court to interpret “first member” and “comprises.” The court held a claim-construction hearing, known as a Markman hearing, on February 16, 2022.

Earlier Procedural History

Before this opinion, the court ruled on the defendants’ motion to dismiss. In that earlier ruling, the court allowed Araujo’s direct-infringement claims to proceed but granted the motion as to his claims for inducing infringement. This opinion addressed claim construction rather than that motion or the ultimate infringement question.

Construction of “First Member”

Araujo proposed a generic definition describing a “member” as a subpart of an apparatus. The defendants proposed “a flat board.” The court adopted a more complete construction: “a board that lays flat on the floor.”

The court relied primarily on Claim 1’s descriptions of the first member. Those descriptions require top and bottom surfaces with approximately equal lengths and widths, edge surfaces of equal height, parallel top and bottom surfaces, and an essentially planar bottom surface. The court concluded that these features describe a board that lays flat on the floor.

The patent’s written description and drawings also supported that interpretation. The patent repeatedly described the invention as using a flat padded part or board that lies flat on the ground. The court also relied on the patent’s prosecution history—the record of proceedings before the patent office. In responding to an earlier rejection, Araujo described the first member as a board with essentially parallel surfaces and a flat bottom. The court concluded that these statements limited the meaning of the term in Claim 1.

The court stated that “board” is not limited to wood; the first member could be made of plastic, wood, or metal. The court rejected Araujo’s arguments based on his subjective intent and concluded that no outside evidence was needed to interpret “first member.”

Construction of “Comprises”

Araujo argued that “comprises” allowed the first member to include additional elements beyond those listed in Claim 1. The defendants argued that the term should receive its meaning under patent law and the Manual of Patent Examining Procedure.

The court distinguished between the claim’s transitional language and the use of “comprises” inside the description of a claim element. Claim 1 uses “consisting of” to introduce its four elements. The court explained that “consisting of” is closed language that excludes elements not specified in the claim. Within the first-member element, “comprises” describes the surfaces and edges that make up that element; it is not the claim’s transitional term.

Relying on Federal Circuit precedent, the court construed “comprises” in Claim 1 to mean “have” but not “have at least.” The court therefore declined to interpret the term as expanding Claim 1 to include additional limitations that the claim does not enumerate.

Disposition and Effect

Judge John P. Cronan construed both disputed terms as described above. The order did not enter a judgment on infringement or decide the patent’s validity. The case remained referred to Judge Sarah Netburn for general pretrial supervision, and the order set a deadline for any party seeking to file a summary-judgment motion to submit a pre-motion letter.