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May 4, 2004.

ANOTO AB, Plaintiff

The opinion of the court was delivered by: JAMES HOLDERMAN, District Judge


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 thereof.
  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 structure. Id.

  "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 claim limitations.
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 It 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 issue.*fn5

  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 prosecution history.

  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."

  II. Coding Means

  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 ...

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