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
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
3. Briefs on Nilssen's reconsideration motion
will be cited "N. Rec. Mem.," "M. Rec. Mem." and
"N. Rec. R. Mem."
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
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"