The opinion of the court was delivered by: JAMES HOLDERMAN, District Judge
MEMORANDUM OPINION AND ORDER
On July 8, 2003, plaintiff Anoto AB ("Anoto") filed a four-count
complaint against defendant Oral F. Sekendur ("Sekendur"), alleging
tortious interference with existing and prospective business
relationships in Count I and Lanham Act violations in Count II. Count III
requested a declaratory judgment that neither Anoto nor its licensed
manufacturer have either directly, contributorily, by inducement, or
otherwise, infringed on Sekendur's U.S. Patent No. 5, 852, 434 (`"434
patent") and that the `434 patent is invalid for failure to comply with
one or more federal laws or regulations. Finally, Count IV requested a
declaratory judgment that the `434 patent was invalid based on Sekendur's
misuse of the patent. Anoto's complaint also alleged that Sekendur's U.S.
Patent No. 5,677,012 ("`012 patent") had already expired by law.
Sekendur, proceeding pro se in all aspects of this litigation, responded
by filing counterclaims and amended counterclaims against Anoto, the most recent of which was filed on February 2, 2004.*fn1
Before this court is Anoto's proposed claim construction of the `434
patent. Generally, the ` 434 patent is a "digitizer and absolute position
determination device for indicating the instantaneous position and
movement of a stylus on a surface[,]" (`434 patent, Abstract) "such as
might be used for determining the position and/or movement of apen/pencil
on paper" (`434 patent, col.1, 11-13). A third patent relevant to
construing the claims of the `434 patent is U.S. Patent No. 5,051,736
("Bennett et al.").*fn2 After reviewing the memoranda submitted by both
parties, and having determined that a hearing is not necessary, this
court now rules on the issue of interpreting the disputed claim terms of
the `434 patent.
Claim construction is a matter of law for the court to determine.
Allen Eng' g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1344
(Fed. Cir. 2002) (citing Markman v. Westview Instruments. Inc.,
52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd 517 U.S. 370
(1996)). The first step in construing a claim is to look to the intrinsic
evidence concerning the patent, which includes the patent specification
and prosecution history, if in evidence. Id. It is improper to
rely on extrinsic evidence when evaluation of the intrinsic evidence
resolves the dispute regarding the construction of a claim.
Vitronics Corp. v. Conceptronic. Inc., 90 F.3d 1576, 1583 (Fed.
Cir. 1996). "The words of the claims themselves define the scope of the
invention, and are given their ordinary and customary meaning." Id. (citations omitted). Generally speaking,
there is a heavy presumption that a claim term carries its ordinary and
customary meaning. CCS Fitness Inc. V. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002).
The heavy presumption of plain meaning is rebutted, and a court may
limit the ordinary meaning of a claim, where: (1) the patentee acting as
his own lexicographer clearly established a definition of the term
different from its customary meaning in either the specification or
prosecution history, Vitronics Corp. v. Conceptronic. Inc.,
90 F.3d 1576, 1582 (Fed. Cir. 1996); (2) "the term `chosen by the patentee
so deprive[s] the claim of clarity' as to require resort to other
intrinsic evidence for a definite meaning, CCS Fitness, 288
F.3d at 1366 (citations omitted); (3) the doctrine of prosecution
disclaimer applies; and (4) the patentee phrases the claim in
means-plus-function format. See 35 U.S.C. § 112 ¶ 6;
Allen Eng'g, 299 F.3d at 1347-48.
These last two points require further explanation. First, "where the
patentee has unequivocally disavowed a certain meaning to obtain his
patent, the doctrine of prosecution disclaimer attaches and narrows the
ordinary meaning of the claim congruent with the scope of the surrender."
Omega Eng'g v. Raytek Corp., 334 F.3d 1314, 1323 (7th Cir.
2003). See also Spectrum Int'l. Inc. v. Sterlite Corp.,
164 F.3d 1372, 1378 (Fed. Cir. 1998) ("[E]xplicit statements made by a
patent applicant during prosecution to distinguish a claimed invention
over prior art may serve to narrow the scope of the claim."):
Southwall Tech., Inc. v. Cardinal IG. Co., 54 F.3d 1570, 1576
(Fed. Cir. 1995) (`The prosecution history limits the interpretation of
claim terms so as to exclude any interpretation that was disclaimed
during prosecution") Standard Oil Co. v. Am. Cyanamid Co.,
774 F.2d 448, 452 (Fed. Cir. 1985) ("[T]he prosecution history . . .
limits the interpretation of claims so as to exclude any interpretation
that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance."). The doctrine of prosecution
disclaimer is not applied where the "alleged disavowal of claim scope is
ambiguous." Omega Eng'g, 334 F.3d at 1324-25.
Second, claims may be written in means-plus-function form according to
35 U.S.C. § 112, ¶ 6, which reads as follows:
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
35 U.S.C. § 112, ¶ 6. "The use of the word `means' `triggers a
presumption that the inventor used this term advisedly to invoke the
statutory mandate for means-plus-function clauses." Allen Eng'g
299 F.3d at 1347 (citation omitted). This presumption may be overcome
when the claim language either recites no function corresponding to the
means or describes sufficient structure or material for performing the
"In construing a means-plus-function limitation, a court must identify
both the claimed function and the corresponding structure in the written
description for performing that function." Northrop Grumman Corp. v.
Intel Corp., 325 F.3d 1346, 1350 (Fed. Cir. 2003) (citation omitted).
When identifying the claimed function, "[i]t is improper to `import
functional limitations that are not recited in the claim, or structural
limitations from the written description that are unnecessary to perform
the claimed function.'" Donald S. Chisum, Chisum on Patents, §
18.03[d][d] (quoting Weneer Mf'g. Inc. v. Coating Machinery Systems.
Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001)). "It is equally improper
to broaden the scope of the claimed function by ignoring clear
limitations in the claim language." Cardiac Pacemakers, Inc. v. St.
Judge Medical. Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002) (citation
omitted). Furthermore, a court must take care to identify the proper
structure disclosed in the specification as "corresponding structure:"
[S]tructure disclosed in the specification is
`corresponding' structure `only if the
specification or the prosecution history clearly
links or associates that structure to the function
recited in the claim,' A court may not import into
the claim features that are unnecessary to perform
the claimed function. Features that do not perform
the recited function do not constitute
corresponding structure and thus do not serve as
Northrop Grumman, 352 F.3d at 1352 (citations omitted).
As a preliminary matter, this court must consider whether the
prosecution history ofthe' 012 patent may be used to construe the claims
of the `434 patent. The Joint Submission of Prosecution Histories ("Joint
Submission") was submitted to this court on December 15, 2003.*fn3
was entered on the docket as docket entry 30 ("Dkt. # 30") and it
contains both the `012 and the `434 patents' prosecution histories,
which this court will cite throughout this opinion.*fn4
Sekendur admits that the case law clearly allows a patent to be limited
by disclaimers made in the prosecution history of related patent
applications when the same terms are at issue. (Sekendur's Resp, at 9,
ll.) See also Elkay Mfg. Co. v. EBCO Mfg. Co., 192 F.3d 973,
980 (Fed. Cir. 1999) ("When multiple patents derive from the same initial
application, the prosecution history regarding a claim limitation in any patent that has issued applies
with equal force to subsequently issued patents that contain the same
claim limitation."); Jonsson v. The Stanley Works,
903 F.2d 812, 817-18 (Fed, Cir. 1990)
(holding that when two patents issued from continuation in part
applications from an original patent, the prosecution histories of
any of the patents and disclaimers therein are relevant for purposes
of construing claims shared by the patents). Sekendur also admits in
his counterclaim that the `434 patent is a continuation of the `012
patent; "The `434 patent is a continuation-in-part of [the] expired
['012] patent. . . ." (Sekendur's Amended Counterclaim entitled
"Counterclaim And Jury Demand" filed on November 3, 2003, Dkt. # 26,
¶ 16.) Sekendur's application for the `434 patent also makes
clear that it is a continuation in part of the `012 patent. (B0006,
B0007.) And "it is settled that prosecution disclaimer attaches to
progeny continuation in part applications where the same claim
limitation is at issue." Omega Eng'g. Inc. v. Raytek Corp.,
334 F.3d 1314, 1335 (Fed. Cir. 2003). Nevertheless, Sekendur
objects to the manner in which Anoto uses the prosecution history of the
`012 patent, arguing that in his "opinion," Anoto should only be allowed
to use the prosecution history of the `012 patent if the prosecution of
the `434 patent "didn't clarify the term." (Sekendur's Resp, at 11.)
Sekendur cites no law for this assertion, nor does Sekendur explain why
Anoto's use ofthe' 012 prosecution history is inconsistent with the
prevailing law. Furthermore, Sekendur extensively cites to the
prosecution history of both patents in his memoranda before this court.
This court rules that it is proper to look to the prosecution histories
of both the `012 and the `434 patents where the same claim terms are at
Turning to the claim terms for which definitions are requested: I. Data Surface
For the following reasons, this court construes the claim term "data
surface" in the `434 patent to mean:
The Data Surface comprises a writing surface such
as paper or other material upon which the stylus
can be used to form marks or to write a message
and from which an instant original hard copy can
be obtained without first requiring data
processing and printing.
Each of the independent claims 1, 10 and 16 recite the term "data
surface." Anoto initially argued that the term "data surface" is properly
interpreted to mean: "A writing surface containing a detectable, human
eye visible indicia." (Anoto's Claim Construction at 2.) However, in its
last filing before this court Anoto apparently abandons this definition
and it argues for the definition the court adopts above. (Anoto's Reply
at 22.) Sekendur argues that no revision should be made to the term "data
surface" because it is unambiguous. However, Sekendur also provided this
court with a chart reflecting each side's position on the disputed
language where Sekendur defines "data surface" as: "a data surface
. . . whereby said data surface comprises a writing surface."
(Sekendur's Resp, at 6.)
The definition this court adopts is the definition provided by Sekendur
to overcome an obviousness objection asserted by the United States Patent
and Trademark Office ("PTO"). (B0057.) This definition was also provided
in the prosecution history ofthe `012 patent to overcome a similar
objection from the PTO. (A0131)*fn6 Anoto argues that Jack Guttman.
Inc. y. Kopykake Enter., Inc., 302 F.3d 1352, 1360-61 (Fed. Cir. 2002) stands for the proposition
that a "district court err[s] in construing a claim term contrary to the
explicit definition provided by the applicant in the prosecution history
where nothing in the intrinsic evidence casts doubt on that definition."
(Anoto's Reply at 22.) This court agrees with Anoto's conclusion that
Sekendur has defined the claim term "data surface," but this case is not
as directly on point as Anoto would have this court believe.
In Jack Guttman, the Federal Circuit reversed the district
court for not giving effect to the definition provided by the patentee in
the specification. Id. at 1360 ("In this case, the
definition of photocopy machine provided in the specification does indeed
dispose of the claim construction dispute, and it was error for the
district court to overlook it."). A definition in the specification, as
opposed to Sekendur's alleged definition that is in the prosecution
history, may be more "explicit," and therefore provide a stronger basis
for holding the patentee to the definition. Nevertheless, case law relied
on by the court in Jack Guttman explains that "a patentee may
choose to be his own lexicographer and use terms in a manner other than
their ordinary meaning, as long as the special definition of the term is
clearly stated in the patent specification or file history."
Vitronics Corp. v. Conceptronic. Inc., 90 F.3d 1576.1582 (Fed.
Cir. 1996)): see also Markman, 52 F.3d at 979 ("For claim
construction purposes, the description [in the specification] may act as
a sort of dictionary, which explains the invention and may define terms
used in the claims.") (citation omitted). And at least one other Federal
Circuit opinion has not found it necessary to distinguish between the prosecution history and the specification when considering whether
a patentee has provided an explicit definition of a claim term.
Mycogen Plant Science v. Monsanto Co., 243 F.3d 1316, 1327 (Fed.
Cir. 2001) ("[A] patentee is free to be his own lexicographer, so long as
the special definition of a term is made explicit in the patent
specification or file history."). Therefore, this court rules that a
patentee is bound by the definition the patentee provided in the
Jack Guttman is also distinguishable because in that case the
patentee's attempt to define a word was much more explicit than what
Anoto alleges is Sekendur's attempt to define the term "data surface." In
Jack Guttman, the patentee explicitly signaled the use of a
definition by attaching to that definition the words "as that term is
used herein," Jack Guttman, 302 F.3d at 1360. Sekendur utilizes
no similar language in the portion of the prosecution history Anoto
alleges provides a definition of the term "data surface." Nevertheless,
the prosecution history makes clear that Sekendur was defining the term
in order to distinguish prior art, despite the absence of words clearly
signaling a definition such as "as that term is used herein." Scimed
Life Sysstems v. Advanced Cardiovascular, 242 F.3d 1337, 1343 (Fed.
Cir. 2001) (explaining that it is not necessary to use a "definitional
format" to define a claim term). Accordingly, this court rules that
Sekendur has defined the claim term "data surface."
For the following reasons, this court construes the claim term "coding
means" in the `434 patent to mean:
One of the three patterns disclosed in Figs, 1-5
of the `434 patent, and structural equivalents
thereof. Structural equivalents must 1) not have
any portion of a code defining an X-Y coordinate
used to define any other X-Y coordinate; 2) be
large enough so that stylus tilt is not a factor
in determining coordinates; 3) be large enough to
permit a sampling rate significantly less than the
rate of Bennett et al.; 4) be large enough to
allow for much less processing power than that of Bennet et al.;
and 5) be arranged so that the data making up each