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NILSSEN v. MOTOROLA

April 7, 2000

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



The opinion of the court was delivered by: Milton I. Shadur, United States District Judge:

MEMORANDUM OPINION AND ORDER

This opinion both modifies and supplements this Court's January 7, 2000 Markman ruling (in the "Opinion," 80 F. Supp.2d 921 (N.D. Ill. 2000)*fn1) by disposing of two final matters that complete the task of claim construction undertaken in the Opinion. As the first of those unresolved matters, although this Court did rule in Opinion at 929 that the term "source means" in United States Patent No. 4,819,146*fn2 was in means-plus-function form under 35 U.S.C. § 112, § ("Paragraph 6"), the record was then undeveloped as to exactly what structure in the specification corresponds with the claimed function. Opinion at 929 had therefore contemplated a brief hearing on that issue, but the parties have since agreed that their paper submissions would suffice instead. Accordingly that question is now fully briefed and ready for decision. As for the second area that requires current attention, Nilssen has filed a motion for reconsideration contending that this Court erred in its construction of four claim elements, and Motorola has responded by asking for reconsideration of a fifth claim.

Because the Opinion included an exhaustive treatment of the background and law related to this case, this opinion can avoid useless repetition on that score. Instead this Court turns directly to the matters at hand.

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

Claim 19 of the `146 Patent includes as an element:

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

Because this Court determined that the element is in means-plus-function form, it is "limited to the structure set forth in the corresponding structure and its equivalents" (Opinion at 928-29). Corresponding structure is "the structure [that] is clearly linked by the specification or the prosecution history to the function recited in the claim" (Unidynamics Corp. v. Automatic Prods. Int'l. Ltd., 157 P.3d 1311, 1319 (Fed. Cir. 1998)). As Micro Chem. Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999) teaches:

[Paragraph 6] requires both identification of the claimed function and identification of the structure in the written description necessary to perform that function. The statute does not permit limitation of a means-plus-function claim by adopting a function different from that explicitly recited in the claim.

Here the function is that of providing AC voltage to the AC terminals. But the parties dispute what structure in the specification is "clearly linked" to that function. While N. Source Mem. 2*fn3 says that the source means "corresponds to an inverter, or in the alternative, a half-bridge inverter," M. Source Mem. 2 says that it must be "a self-oscillating inverter, because that is the only structure disclosed in the `146 patent

1. Consistently with Opinion at 924 n.3, the then-filed-memoranda will continue to be cited "Mem." and "Resp."
2. Briefs on the "source means" issue — simultaneously filed originals and simultaneous responses — will be cited "Source Mem." and "Source Resp."
3. Briefs on Nilssen's reconsideration motion will be cited "N. Rec. Mem.," "M. Rec. Mem." and "N. Rec. R. Mem."

specification."*fn4

As for the specification itself, the preferred embodiment states that the "inverter-type power supply" comprises in part (`146 Patent, col. 1, 11. 48-49, 56-58):

a half-bridge inverter connected with the DC terminals and operative to provide a squarewave output voltage at a pair of inverter terminals. . . .

That language refers to the claimed function, a point that M. Source Mem. 3-4 concedes.*fn5 But another part of the preferred embodiment also describes the inverter as being "of a self-oscillating type" (`146 Patent, col. 2, 1. 20). Moreover, the specification's Details of Operation and Additional Comments use both terms — half-bridge and self-oscillating — in referring to the inverter.*fn6

More importantly, though, the recitations in the specification make it plain that the half-bridge and self-oscillating features of the inverter are mutually exclusive as to the functions they perform. Nilssen uses that point as a key factor in his syllogistic argument:

1. paragraph 6 "does not `permit incorporation of structure from the written description beyond that necessary to perform the claimed function . . . [and] proscribes "adopting a function different from that explicitly recited in the claim'" (N. Source Mem. 6, quoting Micro Chem., 194 F.3d at 1258)
2. Self-oscillation "allows for the control of the inverter's frequency (a different function), not for the provision of AC voltage at AC terminals (the function at issue here)" (N. Source Mem. 6, emphasis in original).
3. Because the function at issue is that of providing an AC voltage to the AC terminals, and because the self-oscillating characteristic does not lend itself to that function, the source means element cannot be limited to a self-oscillating inverter (N. Source Mem. 8).

Only one possible difficulty may detract from the persuasiveness of that syllogism — the need to reconcile its first proposition with the proposition that "[a] means-plus-function claim encompasses all structure in the specification corresponding to that element and equivalent structures" (Micro Chem., 194 F.3d at 1258 (emphasis added)). Both of those propositions stand for the principle that "corresponding structure" under ...


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