District Judge Laura Taylor Swain resolved claim term disputes regarding five of Plaintiff Harvey H. Jay’s patents directed to techniques of temporary hair removal utilizing light directed at hair (“Jay method”). The court provided the following constructions:

  1. “Projecting hair (fibers)” and “protruding hair (fibers)” both mean “hair fibers which extend above the exterior surface of the skin,” a construction that is consistent with the lack of evidence in the patent history of any usage of the term “projecting” in connection with hairs below the surface of the skin.
  2. “Temporarily” means “lasting for a limited period of time,” a construction that is consistent with an objective definition of the term.
  3. “Removal of hair from” or “retardation of hair growth along” means “elimination of hair from or reduction in the rate of hair growth along.”
  4. “Removal of projecting hair fibers from skin surface” has its ordinary meaning.
  5. “Sever or destroy hair fibers below a skin surface” has its ordinary meaning.
  6. “Retard” or “slow” or “diminish rate of” or “diminution of” has its ordinary meaning.
  7. “Delay appearance of hair on a skin surface” means “cause appearance of hair on a skin surface to occur later than it otherwise would.”
  8. “Previously treated hair” means “hair from a follicle from which hair was previously removed, severed, destroyed, damaged, and/or prevented from reappearing, and/or whose growth and/or appearance was previously prevented, retarded, and/or delayed.”

Defendants sought a narrow construction of claim terms referring to hair removal or growth retardation through absorption of light that would “exclude any application of light that inflicts damage, whether intentional or collateral, on the hair follicle.” The court found that including such a disclaimer was not only unwarranted by, but also “facially inconsistent” with the prosecution history, in which Jay proposed and the examiner approved “patent claims that include a disclaimer of follicle destruction, and patent claims that do not, at the same time.”

Defendants also sought a narrow construction of “retarding,” “slowing,” or “delaying” that would exclude the possibility that treatment with the Jay method would lead some hairs to go dormant at some points. After reviewing the cited patent, prosecution history, and dictionary definitions, the court declined to construe the disputed claim terms to include the limitation “while permitting the hair to continue to grow.”

Case: Jay v. Spectrum Brands Holdings, Inc., No. 13-CV-08137 (LTS) (DCF), 2015 BL 1040648 (S.D.N.Y. May. 12, 2015)