NY Patent Decisions Blog

Judge Daniels Settles an “Over the Top” Dispute Finding “Upper” Means “Above”

On June 12, 2019, Judge George B. Daniels (S.D.N.Y.) ruled on claim construction disputes in an action brought by Plaintiff The Topps Company, Inc. (“Topps”) against Koko’s Confectionery & Novelty (“Koko”). Topps alleged infringement of U.S. Patent No. 6,660,316 (“the ’316 patent”), which relates to a candy product comprising a housing with separate chambers.

The parties disputed three claim terms: “a housing defining an upper chamber and a lower chamber,” “a candy holder for supporting a piece of candy and including a handle at its lower end,” and “a nipple extending through the upper end of said housing.” With respect to the first claim term, Topps proposed that one compartment is above the other in at least one orientation of the housing. Koko proposed that one chamber is physically situated above the other chamber. The Court reviewed the specification and noted that the patent “frequently uses directional language to specify the orientation of the product’s housing compartments.” Each chamber had specific functions that were position-dependent. For example, the lower chamber had “the ‘bottom’ opening for the candy holder” and the upper chamber had “the mounted juice bottle ‘above shelf.’” The Court also noted that adopting Topps’ construction would give the word “upper” two different meanings in two different claims. As such, the Court construed the word “upper” as “top”, and construed the claim term “a housing defining an upper chamber and a lower chamber” to mean “a housing with two compartments, where one compartment is above the other.”

The “upper” analysis impacted the construction of another claim element: “a nipple extending through the upper end of said housing.” Koko construed “upper end” to mean “top,” while Topps sought the plain and ordinary meaning of the claim. The Court agreed with Koko and construed the term to mean “a nipple extending through the top of the housing.” The Court noted that by construing the “upper chamber” language in claim 1 to mean the chamber “above,” that construction informs the construction of “upper” in this claim element. Topps’ broader interpretation was rejected by the Court.

Lastly, Topps  wanted to construe “a candy holder for supporting a piece of candy and including a handle at its lower end,” while Koko also wanted to construe a larger phrase that included “said candy being receivable within said lower chamber to close the chamber.” The Court noted that the parties again disagreed as to whether the candy holder’s spatial position was fixed. In looking at the specification, the Court again found that the position of the holder was important. For example, the specification “describes the candy holder as ‘the bottom of shell is open and receives a candy holder comprising a handle and two upstanding prongs.’” (internal citations omitted). As such, the Court construed “a candy holder for supporting a piece of candy and including a handle at its lower end” to mean “a structure with a handle at its bottom that holds a piece of candy.” In construing this term, the Court rejected the expert testimony of Mr. Wadalawala, who argued that the spatial positioning of the patent product is not fixed. The Court found that it was improper to sacrifice the intrinsic evidence in favor of this extrinsic evidence.

Case: Topps Co. v. Koko’s Confectionery & Novelty, 16 Civ. 5954 (GBD) (S.D.N.Y. June 12, 2019)