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NILSSEN v. MOTOROLA

January 7, 2000

OLE K. NILSSEN, PLAINTIFF,
V.
MOTOROLA, INC., ET AL., DEFENDANTS.



The opinion of the court was delivered by: Shadur, Senior District Judge.

  MEMORANDUM OPINION AND ORDER

In September 1996 Ole Nilssen ("Nilssen") brought this multipatent infringement action against Motorola, Inc. and its subsidiary Motorola Lighting, Inc. (collectively "Motorola").*fn1 Because Nilssen's Complaint alleged that Motorola had infringed 14 of his patents involving a host of claims, the parties agreed (and this Court confirmed that agreement by an appropriate order) to reduce those claims to a representative sample for the purposes of discovery and trial.

Two "short" years later the parties reached an agreement on that score, and this Court approved their stipulation on June 11, 1999. Nine United States patents serve as the sample: Nos. B1 4,677,345; 4,819,146; 5,013,974; 5,047,690; 5,189,342; 5,214,356; 5,341,067; 5,416,386; and 5,432,409 (collectively the "patents in suit").*fn2 All of the patents in suit relate to electronic ballasts, with a total of 13 claim elements in dispute.

Nilssen and Motorola have aligned themselves in typical patent litigation fashion: Nilssen asserts willful infringement, while Motorola claims that Nilssen's patents are invalid and that there was no infringement. This opinion takes the first step in the two-step analysis required to determine whether a patent claim has been infringed: construing the claims to determine their scope and meaning (see Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), aff'g 52 F.3d 967 (Fed.Cir. 1995) (en banc)). To that end the parties have exchanged claim charts and each side has submitted a full set of claim construction memoranda.*fn3

This Court is thus ready to determine the meaning and scope of each of the 13 sample claim elements as a matter of law.*fn4 But first a brief overview of the relevant technology is necessary to set the stage for the skirmish that follows. Also, because the parties proffer many of the same arguments in support of their respective positions, a review of claim construction principles (though extensive in nature) will obviate the need for needless repetition in the discussion that follows.*fn5

Electronic Ballasts

Electronic ballasts are a means of starting and powering fluorescent lights. Conventional 60 hertz ("Hz") alternating current ("AC") powers an electronic ballast that comprises three parts that stand between the power supply and the fluorescent lamp: a rectifier, an inverter and an output stage. Current flows to the rectifier, which converts the AC voltage into direct current ("DC") voltage. That voltage is then "inverted" (reconverted to AC voltage) at the high frequency of 30,000 Hz. Then at the output stage the voltage is "conditioned" and raised to the level necessary to ignite the fluorescent lamps. Because more power is needed to ignite the lamps than for continued operation, the electronic ballast reduces and stabilizes the voltage once the lamps are ignited.

At issue here are a whole set of claims from the patents in suit, all involving the inverter stage. Three types of inverters are relevant to those claims: the full-bridge inverter, the half-bridge inverter and the push-pull inverter. As Judge Kennelly explains in Nilssen v. Magnetek, 1999 WL 982966, at *1 (N.D.Ill. 1999):

A "full bridge" inverter includes four transistors connected together in two parallel circuits, each of the parallel circuits including two transistors connected in series. A "half bridge" inverter includes two transistors connected in series. A "push-pull" inverter includes two transistors in parallel circuits.

Claim Interpretation

Because a major purpose of patent law is to provide notice of what has been removed from the public domain for the life of the patent, the interpretive process is essentially limited to intrinsic evidence: the claim, the specification and the prosecution history (see, e.g., Burke, Inc. v. Bruno Independent Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.Cir. 1999)). While "it is improper to rely on extrinsic evidence" such as expert testimony (Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed.Cir. 1996)), a judge "may also rely on dictionary definitions when construing claim terms, so long as that definition does not contradict any definition found in or ascertained by a reading of the patent documents" (id. at 1584 n. 6). Vitronics, id. at 1582 also teaches that courts should construe claim language from the point of view of a person of ordinary skill in the field at the time of the invention.

Here the parties engage in a semantic tug of war: Motorola insists that the specification defines and limits the disputed terms, while Nilssen insists that the claim language alone should be given its commonly understood meaning. Resolving that debate hinges on distinguishing a limitation drawn from the specification from a definition of the claim language by itself. In that respect Vitronics, 90 F.3d at 1582 explains that the words of a claim should first be considered to assess the text's "ordinary and customary meaning." If a "patentee . . . choose[s] to be his own lexicographer and use terms in a manner other than their ordinary meaning, [he may do so] as long as the special definition of the term is clearly stated in the patent specification or file history" (id.) (emphasis added). Thus the specification should be reviewed "to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning" (id.)*fn6 In other words, "[t]he specification acts as a dictionary when it expressly defines terms or when it defines terms by implication" (id.). Finally, because "[t]he specification contains a written description of the invention which must be clear and complete enough to enable those of ordinary skill in the art to make and use it, . . . the specification is highly relevant to the claim construction analysis. . . . [U]sually, it is . . . the single best guide to the meaning of a disputed term" (id.).

So when the claim language has a commonly understood meaning and the specification is not acting as a dictionary, the reader should go no further than the claim language.*fn7 That is so even if the claim language is broader than the relevant specification. Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1053 (Fed.Cir. 1989) (emphasis in original), in part quoting E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed.Cir. 1988), explains:

[T]his court has consistently adhered to the proposition that courts cannot alter what the patentee has chosen to claim as his invention, that limitations appearing in the specification will not be read into claims, and that interpreting what is meant by a word in a claim "is not to be confused with adding an extraneous limitation appearing in the specification, which is improper."*fn8

Thus the specification is not relevant to claim construction if it "in no way sheds light on either the meaning of the term to the inventor, or the common meaning of the term to one of skill in the art" (Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed.Cir. 1998)).*fn9

Throughout its memoranda Motorola asserts that various specifications "define" less specific claim language. But as the above discussion demonstrates, specifications do not always limit a claim's terms — instead they are employed as a reference only when they explicitly or implicitly "define" a term or when the claim language is unclear. Of course, to the extent that Nilssen's position prevails to give rise to a broader reading of a claim, Motorola's charge of invalidity may become easier to establish.*fn10

Means-Plus-Function Limitations

Another central issue as to 9 of the 13 claim elements is whether they are governed by Paragraph 6:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

"Means-plus-function" claims thus define an invention's scope by function rather than by structure. WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339, 1347 (Fed.Cir. 1999) (quotation marks and citations omitted) explains the consequences of a claim element being governed by Paragraph 6:

We have stated that for a means-plus-function limitation to read literally on an accused device, the accused device must employ means identical to or the equivalent of the structures, material, or acts described in the patent specification. The accused device must also perform the identical function as specified in the claims.

Consequently whether Paragraph 6 applies is often dispositive of a patent infringement action. Motorola argues that 9 of the 13 sample claims are in means-plus-function form, while Nilssen disputes that contention.

Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1318 (Fed.Cir. 1999) prescribes, for purposes of Paragraph 6 coverage or noncoverage, that "if the word `means' appears in a claim element in combination with a function, it is presumed to be a means-plus-function element. . . ." And that presumption follows because (in an almost tautological sense from the "means-plus-function" formulation) "[t]he word `means' is `part of the classic template for functional claim elements'" (Rodime PLC v. Seagate Technology, Inc., 174 F.3d 1294, 1302 (Fed.Cir. 1999), quoting Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427 (Fed.Cir. 1997)). That presumption is overcome (1) if the "claim element that uses the word `means' . . . recites no function corresponding to the means" or (2) if the "claim element . . . recites sufficient structure or material for performing" the claimed function (Rodime, 174 F.3d at 1302). Conversely, as Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1257 (Fed.Cir. 1999) (citations omitted) teaches, a claim element without the word "means" is presumed to fall outside of Paragraph 6 unless the element "nonetheless relies on functional terms rather than structure or material to describe performance of the claimed function."

As that formulation suggests, a key element in the analysis is the ascertainment of what structure is necessary to perform the function specified in the claim element under consideration. Personalized Media Communications, L.L.C. v. International Trade Comm'n, 161 F.3d 696, 704 (Fed. Cir. 1998) dictates that "[i]n deciding whether either presumption has been rebutted, the focus remains on whether the claim as properly construed recites sufficient definite structure to avoid the ambit of § 112, ¶ 6."

For example, in dealing with a claim without the word "means," Personalized Media, 161 F.3d at 704-05 (citation and footnotes omitted) held as to the claim limitation "digital detector":

[T]he term "detector" is a sufficient recitation of structure. "Detector" is not a generic structural term such as "means," "element," or "device"; nor is it a coined term lacking a clear meaning, such as "widget" or "ram-a-fram." Instead, . . . "detector" had a well-known meaning to those of skill in the electrical arts connotative of structure, including a rectifier or demodulator. . . . Moreover, neither the fact that a "detector" is defined in terms of its function, nor the fact that the term "detector" does not connote a precise physical structure in the minds of those of skill in the art detracts from the definiteness of structure. Even though the term "detector" does not specifically evoke a particular structure, it does convey to one knowledgeable in the art a variety of structures known as "detectors."

Similarly, Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed.Cir. 1996) determined that the claim language "detent mechanism defining the conjoint rotation of said shafts . . ." did not trigger Paragraph 6. Though "detent" was functionally derived, Greenberg, 91 F.3d at 1583 observed that the term:

denotes a type of device with a generally understood meaning in the mechanical arts, even though the definitions are expressed in functional terms. It is true that "detent" does not call to mind a single well-defined structure, but the same could be said of other commonplace structural terms such as "clamp" or "container."

When a claim element does use the term "means," Paragraph 6's reference to whether it does so "without the recital of structure . . . in support thereof" still calls for focusing on what if anything is said in that claim element about structure. Thus Sage Prods., 126 F.3d at 1427-28 says that to rebut the presumption that Paragraph 6 applies, enough of a statement of "structure, material, or acts within the claim itself [is required] to perform entirely the recited function."*fn11 For instance, Cole v. Kimberly-Clark Corp., 102 F.3d 524, 530-32 (Fed.Cir. 1996) held that a claim element that began with "perforation means"*fn12 fell outside of the strictures of Paragraph 6, in part because the element had "such a detailed recitation of structure" (id. at 531). Also, Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1536 (Fed.Cir. 1991) (emphasis in original) construed a claim element incorporating the word "means" as coming within the bounds of Paragraph 6 because the "recited structure tells only what the [means] does, not what it is structurally."*fn13

One final note on this subject: From its very nature the term "structure" ordinarily refers to something physical. In the realm of electronics, of course, what is being transported in the figurative sense — electrical current — is without tangible dimension. It is consequently necessary to be wary when citing cases that deal with tangible structures (Personalized Media, Greenberg, Cole and the like) as authorities whose formulations of the operative rules should apply here. With the foregoing total background, this opinion now turns to the claim elements at issue.

"Source Means" in the '146 Patent's Claim 19

Claim 19 of the '146 Patent includes this language:

[a] source means having AC terminals and being operative to provide an AC voltage thereat.

Because the word "means" is present, the presumption is that the claim is in means-plus-function form. Here the claim is in purely functional language ("being operative to provide . . ."), except possibly for the use of the word "source."

In that respect Nilssen contends that "source" is a structural term denoting a device that is a source of power. Even so, "source of power" alone is hardly a sufficient structural recitation to remove the claim from the presumed ambit of Paragraph 6. Cole, 102 F.3d at 531 is not to the contrary, because the presumption in that case was overcome by the claim element's "precise structural character." There is no way that, as N. Mem. 18-19 attempts to argue, the word "source" amounts to a detailed recitation of structure that overcomes the claim element's functional language. Indeed, the definition offered by N. Mem. 18 — "[a]ny device that produces electrical energy" — is purely functional and denotes no structure whatever.*fn14 Nor does the claim's added description of the "source means" as "having AC terminals" serve to convert the imprecision of the term "source means" into a term of "precise structural character."

Hence this Court concludes that the "source means" element of claim 19 in the '146 Patent is in means-plus-function form.*fn15 As such, claim 19 is limited to the structure set forth in the corresponding specification and its equivalents.

But Unidynamics, 157 F.3d at 1319 warns that the "[s]tructure disclosed in the specification . . . is only `corresponding' structure to the claimed means under § 112, ¶ 6 if the structure is clearly linked by the specification or the prosecution history to the function recited in the claim." Because the parties to this action dispute whether that function is clearly linked to a particular structure in the specification (see N. Resp. 20-21 and M. Mem. 9-10), and because the record is not fully developed on this point, a brief hearing is needed to decide exactly what portion of the specification corresponds with the claim.*fn16

"Circuit Means" in the '690 Patent's Claim 17

Round two of this 13-round bout involves claim 17 of the '690 Patent:

A circuit means connected between the inverter output terminals and the lamp terminals, thereby to provide lamp operating voltage to the lamp terminals; the circuit means having a pair of auxiliary output terminals at which is provided a cathode heating voltage.

In this instance the stated function is "to provide lamp operating voltage to the lamp terminals." Again the issue is whether enough structure is cited to perform that function to overcome the presumption of Paragraph 6 applicability.

To negate that presumption Nilssen points to CellNet Data Sys., Inc. v. Itron, Inc., 17 F. Supp.2d 1100, 1107 (N.D.Cal. 1998) and its finding "that those skilled in the art would understand the term `circuit means' as a structural rather than a means-plus-function element." That conclusion rests on the dictionary definition of "circuit" as connoting the generic structure of "the combination of a number of electrical devices and conductors that, when connected together to form a conducting path, fulfill a desired function such as amplification, filtering, or oscillation" (id. at 1111, quoting Penguin Dictionary of Electronics (hereafter "Penguin") (2d ed. 1988)). In addition, the court noted that the location of the "circuit means" was specified in the claim (17 F. Supp.2d at 1111, citing Cole, 102 F.3d at 531). Claim 17 also specifies the location of the circuit means: "connected between the inverter output terminals and the lamp terminals."

Motorola seeks to counter with Relume Corp. v. Dialight Corp., 63 F. Supp.2d 788, 802 (E.D.Mich. 1999), which decided that the claim language "adaptive clamp circuit means" was in means-plus-function form. But because the Relume plaintiff did not dispute that construction, the court was deprived of an opposing viewpoint that might perhaps have highlighted terms of art in the claim that could communicate sufficient structure to overcome the presumption.

Nonetheless this Court would be wholly unpersuaded by CellNet (and hence by Nilssen) if "circuit means" were the only relevant language in the claim element. Although its own days as a highly trained technician (and in one instance as the author of a modest invention) during the formative — nay, primitive — days of airborne radar have so faded into the dim past as to render any possible claim by this Court to being even moderately "skilled in the art" a serious Rule 10b-5 violation, it takes no electronic sophistication at all to understand that electrical circuits are virtually infinite in number. It is not that "circuit" is nongeneric — it is rather that it is so generic that by itself it conveys no sense of structure at all. To say simply that an electrical circuit will be inserted into another circuit to accomplish a stated function is to afford the skilled reader no sense whatever of the structure of that insertion.


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