The opinion of the court was delivered by: Milton I. Shadur, United States District Judge:
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
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
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):
That language refers to the claimed function, a point that M. Source
Mem. 3-4 concedes.
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.
, 819 (Fed. Cir. 1990)
has reemphasized, quoting from Jonsson v. IVAC Corp.,
(Fed. Cir. 1989) (emphasis in original)
Because a generic inverter does not "cut back" on the structure that
could perform the claimed function, and in fact does not even correspond
with any structural details in the specification,
broad contention must be rejected.
Nilssen fares better with his alternative proposal of a half-bridge
inverter, which is the only structure listed in the specification for
providing an AC voltage to AC terminals. In that respect Motorola does not
dispute Nilssen's second proposition that the self-oscillating feature
has no relationship to providing AC voltage to the AC terminals (see M.
Source Resp. 3). Instead Motorola simply asks for the total inclusion of
all structure attributed to the inverter by the specification. As
purported support for that position, M. Source Resp. 3-4 cites three cases
for the claimed principle that "[w]here, as here, a patent specification
discloses a single embodiment (a self-oscillating inverter), the scope of
a means-plus-function limitation is restricted to that embodiment."
By way of analogy, if a two-pronged electrical plug has a third prong for
grounding, that third prong may fairly be characterized as structure
— but it does not relate to the function of receiving voltage from
an outlet. If however the function at issue were that of "grounding
means," then the grounding prong (and any other structure used to perform
that function) would be relevant.
In sum, just as a generic inverter is not corresponding structure
because it does not satisfy Paragraph 6's limiting effects, so
attributing the self-oscillating feature to "source means" would add an
unnecessary component not at all relevant to the claim. And that is
buttressed by the language of the portion of the specification describing
the claimed function, which merely says "half-bridge inverter." For those
reasons this Court finds that "source means" corresponds to a half-bridge
inverter — that is the only structure in the specification clearly
linked to the claimed function.*fn8
Caisse Nationale de Credit Agricole v. CBI Indus., Inc., 90 F.3d 1264,
1269 (7th Cir. 1996) quotes from an earlier opinion by this Court that
our Court of Appeals had then adopted:
Such motions are thus "not an appropriate forum for rehashing previously
rejected arguments or arguing matters that could have been heard during
the pendency of the previous motion" (id. at 1270). But as Pickett v.
Prince, Nos. 99-2770 and 99-2843, 2000 WL 273993, at *5 (7th Cir. March
14) (citation omitted) observes:
What follows is faithful to both of those teachings.
"Inverter-Type Power Supply" in the `342 patent's Claims 3 and 5
Nilssen first urges, quite correctly, that this Court looked at the
wrong portion of his Responsive Memorandum for an answer to Motorola's
otherwise persuasive argument that the prosecution history limited the
actual claim language. Until it reviewed that prosecution history at
Motorola's invitation, this Court was prepared to construe "inverter-type
power supply" as encompassing "more than one kind of inverter, rather than
being limited by a single example in the specification" (Opinion at
932). But because of what this Court then mistakenly understood to be
unrebutted prosecution history, Opinion at 933 felt compelled to limit
the claims to "a full-bridge inverter." Now a review of Nilseen's actual
response calls for a different conclusion.
M. Mem. 23 (emphasis in original) originally argued that the
prosecution history reveals that "the only type of inverter disclosed in
the `342 Patent is a full-bridge inverter." That contention was supported
by (1) Nilssen's statement in the context of an earlier application*fn9
that his invention was "concisely described" by a claim consisting of an
"inverter means" with the structure of a full-bridge inverter (M. Mem.
23) and (2) Nilssen's statement in the context of a later patent that
"[t]o a person having ordinary skill in the particular art to which the
claimed invention pertains, it would be clear that the relevant
frequencies would be those associated with the full-bridge inverter" (M.
Mem. 24). But Nilssen has directed this Court's attention to explanations
that materially blunt the force originally ascribed to those statements.
Thus it turns out that Nilssen's first statement was made in response
to the examiner's challenge that he demonstrate that his claim language
was "supported by disclosures in the specification, as required by
paragraph 1 of 35 U.S.C. § 112" (N. Resp. 13). In other words, at that
point Nilssen was merely highlighting the structure of the full-bridge
inverter in the specification to demonstrate that sufficient disclosure
existed there to support his claim.
As for the second statement, N. Resp. 13 points out that it was made in
connection with a later patent, "a year-and-a-half after the `342 patent
issued." Further, that later patent involved the term "substantially
higher frequency" — a term that appears nowhere in the `342 Patent.
Because the PTO viewed that term as indefinite, Nilssen responded with
the words that Motorola quotes. In short, Nilssen says that the later
patent involved an issue totally irrelevant to the claims presently at
Motorola does not suggest anything to undercut those representations by
Nilssen, and its memoranda offer nothing to rebut Nilssen's consequent
arguments. Instead M. Rec. Mem. 7 seeks to fall back on "the reasons
explained" in its original memorandum. But as already indicated, those
reasons have been undercut by Nilssen's explanations, so that the cited
prosecution history has been shown to be non-relevant.
In light of the arguments that were originally presented by Nilssen but
were overlooked by this Court in the parties' paper blizzard,
reconsideration is granted in that respect. This Court now holds that the
phrase "inverter-type power supply" in the `342 Patent's claims 3 and 5 is
not limited by the specification. Instead the phrase is given its
well-known meaning in the relevant art as described in Opinion at 932.
"Inverter Circuit" in the `409 Patent's Claims 9 and 37
Motorola says that if "inverter-type power supply" is given the meaning
that this Court has just ascribed to it in the `342 Patent, then this Court
is compelled to "reverse itself" and construe claims 9 and 37 in the `409
Patent in accordance with the patent's specification as being limited to a
"full-bridge inverter circuit." As M. Rec. Mem. 7 says:
Nilssen did not address Motorola's prosecution history
arguments regarding the "inverter circuit" of the `409
patent and the Court therefore credited Nilssen with
something he did not deserve — a ruling adopting
Nilssen's construction of the `409 patent's "inverter
In other words, Motorola believes it must prevail because its prosecution
history argument (which this Court had found persuasive when it was
mistakenly perceived as unrebutted) was the same for both sets of
claims,*fn10 and because this Court had found Nilssen's response
unpersuasive as to claims 9 and 37.
But that argument boils down to asking this Court to reach opposite
conclusions on what is essentially the same issue, merely because of a
poorly organized brief. Though Nilssen's response in the context of the
`409 Patent's claim elements is still puzzling, Motorola's prosecution
history argument remains the same — and it has effectively been
negated by the previously-overlooked portion of Nilssen's original
memorandum. Moreover, the written description in the `409 Patent, unlike
that in the `342 Patent, specifically belies any notion that the inverter
is limited to a full-bridge inverter by declaring that the inverter
circuit has "at least two periodically conducting transistors" (see
Opinion at 936-37). In sum, this Court will not revisit or recast its
original construction of the term "inverter circuit."
"Inductor Means" in the `409 Patent's Claims 9, 16 and 37
N. Rec. Mem. 8 next objects to Motorola's "sandbagging tactic" of
making a prosecution history argument in its original responsive
memorandum that, by reason of the simultaneous briefing schedule, was
left unrebutted. M. Resp. 18-19 indeed raised that argument for the first
time, and Opinion at 936 n.29 did say that but for the prosecution
history it would have sided with Nilssen's construction. Hence this Court
will entertain Nilssen's current response in his motion for
At issue in that respect is how broadly or narrowly the term "inductor
means" should be construed. Nilssen had argued that the claim language
should be given its more general meaning as known by those skilled in the
art (N. Mem. 26). But Opinion at 936 accepted Motorola's position that
relevant prosecution history called for "inductor means" to be construed
more narrowly, as "providing substantially constant current due to the
internal impedance in the inductor's windings" (M. Resp. 18).
Two of the three statements cited by Motorola were made by Nilssen in
the context of earlier patent applications that eventually spawned the
`409 Patent.*fn12 First, Motorola says that during the prosecution of
the `409 Patent, "to overcome a rejection by the PTO, Nilssen contended
that the `inductor means' does not have a single, well-known and
definitive structure" (M. Resp. 18). More specifically, to distinguish
his "inductor means" from other inductors in the prior art, Nilssen said
that the "Examiner should observe the direction of the inductor coils in
[the prior art] arrangement. . .is exactly the opposite of the way the
two coils are arranged in the claimed invention" (M. Resp. Ex. 2, at 3).
So, the argument goes, Nilssen should not be able to claim now that
"inductor means" includes any and all inductors. Based on that unrebutted
argument, this Court accepted Motorola's proposal that the "`inductor
means' must provide a total inductance large enough to keep the current
flowing from the DC source into the inverter substantially constant" (M.
Mem. 27-28, emphasis in original).
N. Rec. Mem. 9 (emphasis omitted) retorts in part that the quoted
language "involved different claims in a different application" (the `795
Application). Nilssen, id. goes on to argue that the claim language in the
`795 Application "is by its terms expressly drawn to inductors that cause
the current to behave in the particular way advanced by Motorola."*fn13
Because that more specific claim language was disavowed during subsequent
prosecution, N. Rec. Mem. 10 says it "has no applicability whatsoever to
the `inductor means' at issue here. . . ."
Next, M. Resp. 18 had stressed that during prosecution of the `381
Application Nilssen, discussing claim language identical to that
ultimately included in the `409 Patent, directed "the PTO — and
hence the public — to the portions of the specification of the `409
Patent necessary to identify the particular structure for his `inductor
means.'" Nilssen told the PTO that "[t]he `inductor means' is
represented" in the specification by an inductor that supplies a
substantially constant current (M. Resp. 18-19). By way of response, N.
Rec. Mem. 11 (emphasis in original) asserts that those statements were
answers to "the examiner's contention that Nilssen's claims were not
supported or described in the specification, as required by 35 U.S.C.
To be sure, if such supporting statements automatically sufficed to
narrow the claim language itself, claims would almost always be as narrow
as their referents in the specification. But Motorola has not had to take
such an extreme position. Instead, both because Nilssen's efforts to
explain away the two statements just discussed are not entirely
convincing*fn14 and because he fares even more poorly as to the third
statement discussed next, Motorola has effectively torpedoed Nilssen's
contention by cutting through Nilssen's verbiage to expose its basic flaw
(M. Rec. Mem. 6):
Nilssen does not — and cannot—deny that he
told the PTO and the public to use the specification
to determine the meaning of "inductor means."
Instead, Nilssen spends six pages of his
reconsideration brief arguing that he should not be
bound by his prosecution history admission.
As for that third statement, M. Mem. 19 has cited this passage by the
examiner in an office action regarding the application that became the
`409 Patent (M. Resp. Ex. 4 at 4):
Based on the specification, it is construed that. . .
inductor means (IM) has an inductance large enough to
cause the current through its windings to be
N. Rec. Mem. 12 (emphasis in original) unconvincingly attempts to counter
that by arguing that the statement "does not refer to the claims [but]
[i]nstead. . . to the operation of the ballast circuit as detailed in the
specification." And N. Rec. Mem. 13 goes on to urge that the examiner's
statement must refer to the specification and not the claim because
another term ("saturable transformer means") construed by the examiner in
the same document "does not appear anywhere in the claims."
That last effort on Nilssen's part is particularly empty, for the term
"saturable transformer means" appears nowhere in the specification
either! With nothing having been said to support Nilssen's claimed
inference,*fn15 the earlier-quoted examiner's language remains to haunt
Nilssen. And contrary to his argument on that score, both the language
used by the examiner and the context of the office action strongly
indicate that the application's claims were under discussion. That being
so, they reflect the examiner's view of the specification as defining the
claim language instead of merely supporting the claim.
In sum, Nilssen's rebuttal argument may or may not suggest some partial
flaws in the examples cited by Motorola in its prosecution history
argument. But even those instances evidence Nilssen's successful efforts
to get the benefit of patent protection by proffering to the PTO his
narrowing constructions of the potentially broader claim language. What
Opinion at 936 said remains true:
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.
Nilssen also asks for reconsideration of "inverter circuit" in the `356
Patent's claim 5 and "power conditioning circuit" in the `067 Patent's
claim 32. In those areas Nilssen's respective contentions are that this
Court "overlooked Nilssen's [original] arguments" (N. Rec. Mem. 13) and
that it committed "a manifest error of fact" (N. Rec. Mem. 15).
Both of those contentions are flat-out wrong: This Court did not
overlook Nilssen's argument, and the factual issue had no bearing on the
outcome. Instead Nilssen really recycles his earlier unsuccessful
arguments in hopes that this time he will prevail (something like
watching a movie for the second time to see if the ending comes out
differently).*fn16 Because those
arguments have already been dealt with, and because Nilssen's other
points are groundless, they will not be exhumed for reconsideration.
With all claim construction matters now laid to rest, the next step in
this litigation is expected to depart from what is normally the next
phase of a patent case: a jury determination on the issues of infringement
and invalidity. Motorola's counsel has announced an intention to file a
prompt motion for partial summary judgment to narrow the issues somewhat
further before trial takes place. This Court will therefore await
Motorola's motion to discuss the necessary scheduling toward that end as
soon as the parties have had the opportunity to digest this opinion.