United States District Court, Northern District of Illinois, Eastern Division
January 7, 2000
OLE K. NILSSEN, PLAINTIFF,
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
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 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
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
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
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
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
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
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
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
Cole v. Kimberly-Clark Corp., 102 F.3d 524, 530-32 (Fed.Cir.
1996) held that a claim element that began with "perforation
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
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
"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
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
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
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
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.
Unsurprisingly, M. Mem. 16-18 (emphasis in original) states
that claim 17 should be limited by the specification because "the
only structure disclosed in the specification for providing
operating voltage to the lamp terminals . . . is an inductor .
. . with auxiliary windings. . . ." That contention is not at
odds with the admonition in Comark, 156 F.3d at 1186 that
"limitations from the specification are not to be read into the
claims," for that caveat applies to claims that fall on the other
side of the "fine line" described in Comark, id.
That argument by Motorola is a bit oversimplistic, because it
glosses over the operative language in the claim element that
cuts back the otherwise generic and uninformative scope of
"circuit means" somewhat by describing it as "having a pair of
auxiliary output terminals at which is provided a cathode heating
voltage." But unlike the situation in Cole, 102 F.3d at 531,
where the element at issue carried with it "such a detailed
recitation of its structure, as opposed to its function," here
the quoted partial description of the "circuit means" just does
not supply enough structure "to perform entirely the recited
function" (as is required by such cases as Sage Prods., 126
F.3d at 1427-28). In that respect the situation is much akin to
that described in the preceding section, where the reference to a
"source means" as "having AC terminals" was not enough to provide
a sufficient recitation of structure to take the claim out of
Paragraph 6's coverage.
This Court therefore holds that claim 17 of the '690 Patent is
also in means-plus-function form.*fn17 And unlike the claim
referred to in the preceding section, no further hearing is
required to fine-tune its meaning.
"Output Means" in the '409 Patent's Claim 36
Claim 36 of the '409 Patent includes an:
output means connected with the AC output terminals;
the output means having lamp output terminals adapted
to connect with a gas discharge lamp.
As N. Mem. 21 asserts, Paragraph 6 does not cover that claim
element because it describes only structure and not function.
M. Mem. 29 is unpersuasive in contending that the claim element
does describe a function of providing "output from the AC
terminals to a lamp." M. Resp. 15 pins its hopes on the word
"output," arguing that the word is sufficiently functional to
signal a means-plus-function element. But Motorola is at a loss
to elaborate on that supposed functionality without employing
words foreign to the claim element. Indeed, even if that
functionality appeared elsewhere in the patent, it would be
improper to import that function into the specific claim element
at issue (see Rodime, 174 F.3d at 1303).
Consequently, because it states no function, claim 17 of the
'409 Patent is not in means-plus-function form. Instead the claim
language is construed to mean exactly what it says: an output
means connected with the AC output terminals and having lamp
output terminals adapted to connect with a gas discharge
"Inverter Circuit" in the '356 Patent's Claim 5
None of the remaining claim elements for which Paragraph 6 is
at issue contains the word "means." Thus the presumption at work
as to those remaining claim elements is that, absent other
controlling factors, Paragraph 6 does not apply. This opinion
turns then to an analysis of whether any such other controlling
factors call for a different result in each situation.
Claim 5 of the '356 Patent involves:
an inverter circuit connected between the DC
terminals and the lamp terminals; the inverter
circuit being operable to supply an alternating lamp
voltage across the lamp terminals. . . .
One threshold issue is whether Nilssen is bound by his assertion
before the Patent and Trademark Office ("PTO") that the quoted
element is a means-plus-function limitation. And of course it
requires no citation to support the Federal Circuit's regular
repetition of the proposition that a patent's prosecution history
is relevant to claim construction.
In an effort to escape the impact of his own representations to
the PTO (quoted hereafter in this section of the opinion),
Nilssen says that those representations were made before In re
Donaldson Co., 16 F.3d 1189, 1193-94 (Fed.Cir. 1994) had
expressly overruled the earlier caselaw that had countenanced the
PTO's practice of not applying Paragraph 6 during its patent
examination process.*fn19 But that is a truly bizarre notion,
essentially amounting to:
Don't hold me to what I told the PTO in order to get
my patent issued over the examiner's prior rejection
of my claims. After all, if the PTO's perceived role
vis-a-vis Paragraph 6 had been different then (as the
Federal Circuit decided it to be nearly a decade
later), I might not have found it necessary to make
Patent prosecution is a serious business — an effort to obtain
what was a 17-year monopoly when the Nilssen representation was
made to the PTO. Little wonder that the courts early developed
the concept of "file wrapper estoppel": the principle that a
representation made by an inventor to induce the PTO to grant
such a monopoly binds the inventor later, when the construction
of the issued patent is in dispute (see, e.g., Cole, 102 F.3d
Here is what Nilssen (acting pro se, it may be noted) wrote in
a PTO Appeal Brief (M. Mem. Ex. 10, emphasis in original) in an
effort to overcome the examiner's 35 U.S.C. § 112 rejections:
Again using claim 1 as an example, it is clear that
the claimed invention is expressed in claim 1 as a
combination of two elements, both of which are
expressed in the well-accepted format of MEANS AND
The second element of claim 1 describes an "inverter
circuit" (a means) together with its function
(to provide a sinusoidal output voltage at a pair of
AC output terminals, etc.) and its connections (one
of its AC output terminals being connected with one
of the AC input terminals, etc.).
When interpreted in light of the specification, there
is no doubt in Applicant's mind but that claim 1 is
clearly understandable by a person having ordinary
skill in the art.
Trying to blunt the devastating impact of those statements, N.
Resp. 6 attacks "Motorola's use of the file history [as] highly
misleading" because of the later advent of Donaldson. That is
simply nonsense — what is material is that Nilssen himself
expressly labeled "inverter circuit" as a means in what he
himself acknowledged to be a means-plus-function claim element,
and that he expressly went on to urge the examiner to
"interpret [that claim] in light of the specification."
This Court will not permit Nilssen to disavow his own position
deliberately undertaken before the PTO just because he now
perceives it to his advantage to reverse that position — to frame
a metaphor in terms of the current dispute, to make an attempt to
shift from DC to AC.*fn20 It really makes no difference whether
conventional analysis might perhaps have produced a different
view: Nilssen has set his own terms in this respect, just as a
patentee may elect to be his or her own lexicographer, and he
will be held to that choice.
This Court construes claim 5 of the '356 Patent just as Nilssen
himself had urged — that is, in light of the corresponding
"Inverter-Type Power Supply" in the '342 Patent's Claims 3 and
Claims 3 and 5 of the '342 Patent include this language:
an inverter-type power supply that is connected with
the DC output terminals and operative to provide a
high-frequency AC voltage between a first inverter
output terminal and an inverter reference terminal.
Functionally that claim "provide[s] a high-frequency AC voltage.
. . ." Structurally that function is accomplished by "an
inverter-type power supply . . . connected with the DC output
terminals. . . ."
Though functionally derived, "inverter" has a well-understood
meaning in the art (expressed, e.g., in Standard Handbook for
Electrical Engineers (hereafter "Handbook") 22-105 (Donald G.
Fink & H. Wayne Beaty eds., 13th ed. 1993) as "a power converter
in which the normal direction of power flow is from a dc source
to an ac load"). In short, "inverter" is an industry term of art
that describes a structure (even though, to be sure, "inverter"
is a generic term — note the three types described at the outset
of this opinion — the term describes a particular kind of circuit
and is plainly not as devoid of substantive content (that is,
structure) as the term "circuit" alone).
Indeed, though it is entirely true that "inverter" alone does
not necessarily "call to mind a single well-defined structure"
(Greenberg, 91 F.3d at 1583 (emphasis added)), the very fact
that the claim uses the term "inverter-type" strongly suggests
that inventor Nilssen did not intend to limit himself to a single
species of inverter. Instead the claim's "inverter-type" locution
would normally appear to incorporate, quite deliberately, more
than one kind of inverter, rather than being limited by a single
example in the specification.
In those terms alone the text of claims 3 and 5 would seem to
fall outside the boundaries of Paragraph 6. And if that were so,
the M. Mem. 21 position that the specification limits the claim
language would fail for the reasons discussed earlier.
But M. Mem. 23-24 also contends that the prosecution history
reveals that Nilssen himself limited his claim to a "full-bridge
inverter." As stated earlier, Cole, 102 F.3d at 531 is
exemplary of many cases (see also, e.g., Digital Biometrics,
Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed.Cir. 1997))
teaching that Nilssen is to be "bound by [his] representations to
the PTO during the prosecution of" his patent. Yet N. Resp. 31
offers an extraordinarily puzzling response to Motorola's
argument, reproduced here in its entirety:
Motorola also cites the prosecution history in an
effort to prop up its proposed definition. This is
dealt with in a previous section at pp. 6-9, which
establishes that the term "inverter" is not limited
to a full-bridge inverter.
That cross-reference is to Nilssen's response to the prosecution
history issue regarding claim 5 of the '356 Patent, which has not
only been found wanting on that issue but is also quite
irrelevant in the present context (it is after all entirely
possible that an inventor may choose to use the same term in
different ways in two different patents).
As far as this Court is concerned, then, Nilssen has left
Motorola's prosecution history argument (M.Mem.23-24) wholly
unanswered in any substantive way. And the detailed nature and
bulk of both sides'
submissions refutes the notion that Nilssen's failure to provide
any real explanation stemmed from any lack of opportunity to do
so. This Court is therefore constrained to treat the claim
elements at issue (claims 3 and 5 of the '342 Patent) as limited
to a full-bridge inverter.
"Adjustment Input" in the '356 Patent's Claim 4
Claim 4 of the '356 Patent relates to an inverter circuit that:
has an adjustment input operable, in response to
receiving an adjustment action, to adjust the
magnitude of the lamp current by way of adjusting the
frequency of the alternating lamp voltage.
Although that claim element is clearly functional in tone,
Nilssen urges that it also recites sufficient structure — more
specifically an "adjustment input," where "input" is defined this
way (Penguin at 269):
(1) The signal or driving force applied to a
circuit. . . .
(2) The terminals at which this signal is
On Motorola's part, M. Mem. 14 asserts that the claim element
is in means-plus-function format because "a function is recited
without a structure to perform that function." To support that
position M. Mem. 14 relies on Mas-Hamilton Group, Inc. v.
LaGard, Inc., 156 F.3d 1206
, 1213 (Fed.Cir. 1998), which found a
claim was in that format because "even though the catch phrase
[`means'] is not used, the limitation's language does not provide
any structure." According to Motorola, the claim element at issue
here suffers from the same vice that was described in
The limitation is drafted as a function to be
performed rather than definite structure or
Is "adjustment input" such a "definite structure," as Nilssen
would have it? One clue to the answer lies in N. Mem. 24's
not-so-subtle shift in the meaning of that term:
An "adjustment input" is simply an input that is
adjustable. Accordingly, the "adjustment input"
limitation has a reasonably well known meaning in the
Not so — for the plain reading of the claim element that has been
quoted at the outset of this section adverts to an input that
adjusts the lamp current (a statement of the input's
function), rather than to the fact that the input itself is
"adjustable" in order to perform that function.*fn23
In plain meaning terms, then, the only possible candidate for a
"structure" referred to in the claim element is "input." And
although Nilssen is correct in stating that "input" is a common
term — "widely known in the art of electronics" (N. Mem.24) —
that does not at all suffice. Greenberg, 91 F.3d at 1583,
reconfirmed by Mas-Hamilton, 156 F.3d at 1213-14, requires that
the term under scrutiny must be widely known "as the name for a
structure." It can scarcely be gainsaid that "input" is
essentially as broadly generic in those terms as the term
"circuit" — neither of those terms qualifies as a "definite
structure" that satisfies the standard prescribed by the caselaw.
As with the other claim elements that have failed to avoid the
impact of Paragraph 6, the claim element now at issue "will be
construed to cover the corresponding structure . . . described in
the specification and equivalents thereof" (the statutory
prescription). N. Mem. 23-24 and N. Resp. 24-25 say nothing to
counter Motorola's characterization of the specification's
description, which therefore prevails.
"Adjustment Input Electrically Isolated" in the '356 Patent's
M. Mem. 14-15 asserts that the isolated adjustment input
structure for this claim element is limited to a rotary knob
because the "adjustment input" is to be "electrically isolated
from the power line terminals." That contention is based on
Nilssen's response to a PTO office action in which he limited the
claim element to a specification that recites "a manually
rotatable external knob" as the structure for electrically
isolating the adjustment input ('356 Patent col. 3, lines 50-56).
Because that language is not qualified or constrained in any
respect, Nilssen has expressly limited that element of his claim,
so that prosecutorial estoppel applies.*fn24 This Court
therefore construes the "adjustment input electrically isolated"
language of Claim 5 in the '356 Patent to mean "a manually
rotatable external knob."
"Power Conditioning Circuit" in the '067 Patent's Claim 32
Claim 32 of the '067 Patent includes (emphasis added):
a power conditioning circuit having (i) power input
terminals connected with the AC terminals, and (ii)
power output terminals connectable with the lamp
terminals; the power conditioning being functional,
as long as the lamp terminals are indeed connected
with the power output terminals, to properly power
the gas discharge lamp; the power conditioning
circuit being further characterized by:
(a) including a transistor having a pair of
transistor output terminals across which exists a
transistor output voltage whose magnitude varies in
accordance with a periodic waveform . . . and
(b) having a pair of DC terminals between which
exists a DC voltage whose absolute magnitude is
substantially constant and distinctly higher than the
peak absolute magnitude of the AC power line voltage.
M. Mem. 20 asserts that this is framed as a purely functional
claim — a "power conditioning circuit . . . being functional to .
. . properly power the gas discharge lamp. . . ." N. Mem. 14-15
responds by stating, and Motorola does not dispute (see M. Mem.
20-21 and M. Resp. 7-8), that the claim element's subparagraph
(a) describes the inverter and its subparagraph (b) describes the
rectifier, both of which are included in the circuit.
But the flaw in Nilssen's position is that those elements (well
known as they are to persons skilled in the art) do not form the
totality of the power conditioning circuit — as the claim
element itself states, that circuit includes those elements but
is not said to comprise only those elements. Not only is that
the normal reading of the word "include" rather than
"comprise,"*fn25 as well as the obvious fact that the entire
circuit must include more than those two elements, but the matter
is made doubly clear by Nilssen's use of "comprises" in the
corresponding specification when he says "[t]he power supply also
comprises a voltage doubler and rectifier . . ." (col. 3, lines
That being the case, it appears that the disclosed structural
elements — the inverter and rectifier alone — do not suffice "to
perform entirely the recited function" (Sage Prods., 126 F.3d
at 1428). And to repeat, as counseled in such cases as Cole,
102 F.3d at 531, "merely because an element does not include
the word `means' does not automatically prevent that element from
being construed as a means-plus-function element."
So this Court construes claim 32 of the '067 Patent to be in
means-plus-function form, without the factors that might take the
claim out of the purview of Paragraph 6. This Court therefore
claim in conjunction with the related specification.
"Rectifier Circuitry" in the '067 Patent's Claim 4
Another disputed claim from the '067 Patent is its claim 4,
which includes as an element:
rectifier circuitry connected with the AC terminals
and operative to provide a substantially constant DC
supply voltage across a pair of DC terminals.
Nilssen says (and Motorola does not quarrel with the proposition)
that "rectifier" has a well known meaning in the relevant art and
cites its definition in Penguin at 479: "[a] device that passes
current only in the forward direction and can therefore be used
as an a.c. to d.c. converter." That definition goes on to
elaborate on the typical structure of a rectifier. While Nilssen
uses the term "rectifier" not as a noun on its own but as an
adjectival noun modifying "circuitry," this Court finds
unpersuasive Motorola's extensive efforts (M.Resp.8-11) to
convert that difference in terminology into a difference in
Just as this opinion has indicated earlier that "inverter"
alone would qualify as a sufficient designation of "structure" to
satisfy the cases that rely on that factor to take a claim
element out of the constraints imposed by Paragraph 6, this Court
views "rectifier" alone as equally sufficient to that end. And
for that purpose "rectifier circuitry" is really synonymous with
"rectifier." Accordingly the use of "rectifier circuitry" in
claim 4 of the '067 Patent does not trigger means-plus-function
treatment, and that claim element limitation is not subject to
"Rectifying and Filtering Circuitry" in the '067 Patent's Claim
At long last, the final round of the means-plus-function battle
royale involves this language from claim 21 of the '067 Patent:
rectifying and filtering circuitry connected with the
AC terminals and operative to provide a substantially
constant DC supply voltage across a pair of DC
terminals; . . .
Here M. Mem. 16-17 and M. Resp. 11 advance essentially the same
conceptual arguments as to "rectifying and filtering circuitry"
that were found wanting as to "rectifier circuitry" in the
preceding section of this opinion. Those arguments are no more
convincing here, and the same result follows.
That means "rectifying and filtering circuitry" will be
construed consistently with the commonly understood meaning of
those terms. Once again Paragraph 6 does not come into play.
Remaining Claim Elements
That is not, however, "The End of the Affair."*fn26 Disputes
remain as to three claim elements that the parties have agreed do
not implicate Paragraph 6. Even so, the parties' respective claim
construction arguments tread upon already wellworn ground to a
"Inductor Means" in the '409 Patent's Claims 9, 16 and 37
Claims 9, 16 and 37 of the '409 Patent*fn27 pose the question
of how broadly or narrowly the phrase "inductor means" should be
construed.*fn28 N. Mem. 26 says that "inductor" has a commonly
understood meaning in the art and points to its dictionary
definition (Handbook 2-10):
An inductor is a circuit element whose behavior is
described by the fact that it stores electromagnetic
energy in its magnetic field.
In its most elementary form, an inductor is formed by
winding a coil of wire — often copper — around a form
that may or may not contain ferromagnetic materials.
Though that does fairly describe the universe of inductors as
such, it wholly ignores (just as Nilssen's arguments blithely
ignore — see both N. Mem. 27-28 and N. Resp. 27-28) Nilssen's
conduct before the PTO during the '409 Patent's prosecution. In
response to the PTO examiner's objection that the claim at issue
represented no patentable advance because it was obvious in light
of prior art that employed other types of inductors, Nilssen
argued that his "inductor means" was different — that "the
direction of the inductor coils in [the prior art] arrangement .
. . is exactly opposite of the way the two coils are arranged in
the claimed invention." And that latter reference was to the
description in the specification.
Thus Nilssen himself urged on the PTO (indeed, more than once)
the use of the specification to ascertain the meaning of
"inductor means" in his invention. That calls into play the
teaching of Vitronics, 90 F.3d at 1582 (emphasis added):
The specification acts as a dictionary when it
expressly defines terms used in the claims or when
it defines terms by implication.
And what Motorola now plumps for as the meaning of the term
"inductor means" draws directly on that Nilssen-dictated
"dictionary" — the specification — rather than one the more
Thus Nilssen's generalized attempt to fall back on the general
aversion to reading limitations from a specification into a claim
is out of place here. Motorola asks that Nilssen be taken at his
word, which he gave when it was in his interest to obtain the
benefit of the patent he now seeks to sue upon, and this Court
honors that request. "Inductor means" will be construed in the
manner contended for by Motorola.*fn29
"Inverter Circuit" in the '409 Patent's Claims 9 and 37
Both claims 9 and 37 of the '409 Patent call for an "inverter
circuit" that is characterized as "having a pair of transistors
series-connected between" the first terminal and the second
terminal. Here too N. Mem. 27-28 argues that the meaning of
"inverter circuit" is clear to a person skilled in the relevant
art, while M. Mem. 25-26 looks to the specification to limit that
reference to a "full-bridge inverter circuit." Motorola's
narrowing construction can prevail only if the specification
explicitly or implicitly defines "inverter circuit" as one of the
full-bridge variety (four transistors connected together in two
But the specification language that Motorola cites is not
definitional, either explicitly or implicitly. That language, in
the Details of Operation section of the '409 Patent, reads:
The operation of the full-bridge inverter circuit of
FIG. 1 may be explained as follows.
That section then goes on to call the Fig. 1 inverter circuit a
"full-bridge inverter" once again.
Those references, rather than defining the "inverter circuit"
term, simply describe the layout in one of Nilssen's
illustrations. Indeed, in the '409 Patent's Summary of the
Invention section (also part of the specification, which in most
contexts Motorola has stressed as narrowing the corresponding
claim elements), Nilssen states (emphasis added):
In its preferred embodiment, the present invention
includes an inverter circuit having a pair of DC
input terminals and at least two periodically
conducting transistors series-connected between an
auxiliary negative terminal and an auxiliary positive
This is an instance in which Motorola can't have it both ways —
if the earlier-quoted language really meant that the only
inverter circuit referred to in the claim required four
transistors (the full-bridge type), the Summary's reference to
"at least two . . . transistors" would be rendered meaningless.
M. Mem. 25 seeks help from a statement in Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir.
When the specification explains and defines a term
used in the claims, without ambiguity or
incompleteness, there is no need to search further
for the meaning of the term.
But as already indicated, the differing references to the number
of transistors within the same specification can scarcely be said
to define one of those references as controlling "without
ambiguity." And it is of course conventional wisdom that the
"preferred embodiment" of an invention (that is how Fig. 1, which
depicts a full-bridge inverter, is described) does not
conclusively define the invention's scope — as Gentry Gallery,
Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed.Cir. 1998) has
It is a truism that a claim need not be limited to a
In sum, the "inverter circuit" limitation in claims 9 and 37 of
the '409 Patent will be given the meaning ascribed to it by a
person skilled in the relevant art. That means it will not be
limited to a particular species of inverter, the full-bridge
"Frequency-Dependent Impedance Means" in the '345 Patent's Claim
Finally (deep sigh) this opinion turns to claim 24 of the '345
Patent. That claim includes:
[a] frequency-dependent impedance means connected in
circuit between the AC voltage output and an AC
current output operable to connect with the lamp;
the frequency-dependent impedance means including a
tank circuit having an inductor and a capacitor.
It is agreed that the "frequency-dependent impedance means" is a
tank circuit having a capacitor and an inductor. In dispute is
whether or not that tank capacitor-inductor combination is
connected directly to the lamp.*fn31
Although Nilssen contends that the language of the claim is
clear and does not expressly require a direct connection, that
view is produced by the somewhat wishful lens through which
Nilssen's counsel has examined the claim language. Instead this
Court's conclusion stems from the very absence of any clear
directive in the language of the claim — what causes Nilssen to
prevail is the fact that the claim is not precisely phrased on
that score, thus calling for a look at the specification.
In that respect, even a review of Motorola's argument reveals
that the specification does not at all show that language as
being limited to a direct connection. Three diagrams in the '345
Patent illustrate different methods of connecting the tank
capacitor-inductor combination to the lamp — and two of those
diagrams ('345 Patent Figs. 5 and 8) depict a circuit element
interposed between that combination and the lamp
simpliciter.*fn32 To escape the
obvious impact of those illustrations, M. Resp. 22 contends as to
Fig. 5 that the inductor is connected "directly" to the "load"
(which Motorola implicitly equates to the "lamp" without saying
so) and as to Fig. 8 that "the auxiliary windings of inductor 123
(denoted as 128, 129) are directly connected to the lamp's
cathodes (denoted as 126 and 127)."
But neither of those diagrams depicts the tank capacitor
(respectively 52 and 128 in Figs. 5 and 8) and inductor
(respectively 51 and 123) as directly connected to the element
labeled "lamp" (respectively 71 and 124).*fn33 Essentially
Motorola conflates the "load" with the lamp for Fig. 5 purposes
and treats the auxiliary windings as the inductor for Fig. 8
purposes (as the text accompanying Fig. 8 states).
But Motorola tellingly does not (as it indeed cannot) contest
the existence of the additional circuit elements, 74 and 52 in
Fig. 5, and perhaps 131 in Fig. 8. As to those additional
capacitors, Nilssen's specification states ('345 Patent col. 7,
line 306 and col. 8, lines 25-32) (emphasis supplied):
(1) The load 26' consists of a gas discharge lamp 71
having electrodes 72, 73 and connected in series with
a capacitor 74. The combination of lamp 71 and
capacitor 74 is connected in parallel with a
capacitor 52'. . . .
(2) The lamp 124 has a pair of cathodes 126, 127
connected across the capacitor 122 for supply of
operating voltage. . . . In addition, the inductor
123 comprises a pair of magnetically-coupled
auxiliary windings 128, 129 for electrically heating
the cathodes 126, 127, respectively. A small
capacitor 131 is connected in series with lamp 124.
In those terms the proposed M. Resp. 23 construction of "a tank
inductor and/or capacitor connected in circuit directly between
the inverter section of the ballast and the lamp" is a
non-starter because it is at odds with the just-quoted
specification. As for the depiction in Fig. 5, just as with the
col. 7 text quoted above, it plainly does not equate the "load"
(designated 26') with the "lamp" (designated 71) — instead the
"load" comprises both the "lamp" and the cited capacitors. And
although the inductor (designated 51') is indeed connected
directly to the load, whichever of the parallel circuit paths
from the inductor to the lamp is chosen has a capacitor (52' or
74) in between the two. As for Fig. 8, it might perhaps be argued
that the magnetic coupling (windings 128 and 129) could be viewed
as a direct circuit connection with the lamp (designated 124),
though that would seem an undue stretch of the concept of being
"connected in circuit directly" — instead the more normal reading
would appear to limit that direct connection to the one that
passes through the capacitor (designated 131).
But it is enough that the Fig. 5 depiction clearly negates the
reading advanced by Motorola. Because that embodiment is
inconsistent with Motorola's proposed interpretation, this Court
rejects that interpretation (see Vitronics, 90 F.3d at 1583 and
cases cited there).
This opinion has construed each of the representative claims as
a matter of law, with a single exception requiring a further
hearing for fine-tuning purposes. At this point the case is ready
for that hearing and then the second phase of a patent case: a
jury determination on the issues of infringement and invalidity.
For scheduling purposes a status hearing is set for 9 a.m.
January 13, 2000.