The opinion of the court was delivered by: JAMES ZAGEL, District Judge
MEMORANDUM OPINION AND ORDER
Ford has moved for claim construction for the following four
additional terms of claim 2 of U.S. Patent No. 5,017,903 ("the
'903 patent"): (1) "a conical beam of light," (2) "opening," (3)
"directly impinging," and (4) "said side of said
"A Conical Beam of Light"
The "source of light" limitation of claim 2 reads: "a source of
light mounted within said housing for directing a conical beam of
light downwardly through said opening along said side of said
vehicle below said window so as to be visible from in front of
and from behind said vehicle." Ford argues that the term "a
conical beam of light" should be construed as "all light from the
source that passes through the housing opening."*fn2 Ford
claims that this construction is consistent with Krippelz's use of the term "beam of light" in the
'903 patent because the patent "teaches that all of the light
from the `source of light' is part of the `beam of light.'"
Unfortunately, I see no such limitation in the patent that all of
the light from the "source of light" is part of the "beam of
light." While the "source of light" does generate a "beam of
light," there is no provision explicitly teaching that the
"source of light" cannot produce any other light (i.e.,
non-beam light), and I should not impose negative limitations on
a claim that are not explicitly provided in the claim. See Omega
Eng'g., Inc. v. Raytek Corp., 334 F.3d 1314, 1322 (Fed. Cir.
2003) ("When construing the functional statement in a
means-plus-function limitation, we must take great care not to
impermissibly limit the function by adopting a function different
from that explicitly recited in the claim.") (quoting Generation
II Orthotics, Inc. v. Med. Tech., Inc., 263 F.3d 1356, 1364-65
(Fed. Cir. 2001)).
Furthermore, the description of the term "light beam" by the
Board of Patent Appeals and Interferences ("the Board") during
reexamination does not support Ford's proposed
construction.*fn3 The key phrase from the Board's
description is that light must have some "defined sweep range" in
order to be a beam, but there is no limitation in the patent that
the "source of light" may produce some additional light outside
of this "defined sweep range."
Moreover, I reject Ford's argument that Krippelz is estopped
from arguing that claim 2's "source of light" produces "non-beam
light" based on the Board's holding that Krippelz is estopped
from claiming that "a similar source, using an incandescent bulb,
or other light source generating light which is not a `beam,'
infringes the instant claimed invention." There is a difference between a light source that exclusively generates
non-beam light (one which Krippelz is estopped from arguing
infringes its patent) and a light source that generates both beam
and non-beam light (one which Krippelz may argue infringes its
Finally, I reject Ford's argument that adopting the distinction
between beam and nonbeam light would invalidate Krippelz's
patent. Ford claims that patent would be invalid because it would
fail to meet the statutory written description requirement of
35 U.S.C. § 112 because neither the claim specification nor the
prosecution history contains a "disclosure of how anyone would
determine which light rays are critical `beam light' and which
the irrelevant `non-beam light.'" (emphasis added). However, the
relevant inquiry under the written description requirement is
that the patent specification "must clearly allow persons of
ordinary skill in the art to recognize that [the inventor]
invented what is claimed." Gentry Gallery v. Berkline Corp.,
134 F.3d 1473, 1479 (Fed. Cir. 1998) (emphasis added). The claim
specification here does indeed allow a person of ordinary skill
in the art to determine the nature of the light generated by the
"source of light," although it does not explicitly disclose
precisely how one goes about doing so. As noted by the Board,
beam light must have some "defined sweep range," and by
inference, it must be possible to measure this "defined sweep
range" and thus distinguish between non-beam and beam light.
Accordingly, the term "a conical beam of light" will be
construed as "a conical light beam from the source of light that
actually passes through a lensless housing opening."*fn4 "Opening"
In my February 24, 2003 Memorandum Opinion and Order, I
provided a construction of the limitation "said housing having an
opening in the bottom thereof." I noted that "[n]o particular
type of housing opening is required" and that "this element is
not disputed so further discussion is unnecessary." Because there
was no particular significance to the term "opening" raised by
Krippelz's summary judgment motion, I did not discuss or analyze
the meaning of the term "opening" in the housing opening
limitation. Ford now asks that the term "opening" in claim 2 be
construed as "an unobstructed hole in the housing."
It is presumed that a claim term carries its ordinary meaning.
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
Cir. 2002). To determine the ordinary meaning of claim terms, I
may consult relevant dictionaries. Texas Digital Sys. v.
Telegenix, Inc., 308 F.3d 1193, 1202-03 (Fed. Cir. 2002). Ford
claims that the ordinary meaning of "opening" is "an open space
serving as a passage or gap;" "a breach or aperture." While
Exhibit Q does define "opening" as a "breach" or "aperture," I do
not see Ford's basis for "an open space serving as a passage or
gap." This must be an inadvertent mistake. I do see the following
definition: "something that is open."
Nonetheless, regardless of which definition one chooses, I see
no basis for using Ford's additional term "unobstructed." More
than merely adding an additional word, using the word
"unobstructed" adds the additional meaning that an opening must
be unobstructed in order to qualify as an opening under the
claim. Under such a construction, even a partial obstruction of
some type may prevent something from being considered an
"opening" within the meaning of the term. Such a limitation,
however, is not explicitly stated in the claim and, more
importantly, goes beyond the ordinary meaning which Ford concedes I should
use. Accordingly, the term "opening" will be construed as
"something that is open; breach; aperture."*fn5
Ford also seeks a construction of the claim term "directly
impinging" in the last clause of claim 2: "said opening and said
source of light being positioned to prevent said beam of light
from directly impinging on said side of said vehicle." I
construed the last clause of claim 2 in my February 24, 2003
Correctly construed, preventing the "beam of light"
from "directly impinging" means that no light
directly from the source strikes the vehicle.
Ford argues that the term "directly impinging" should now be
construed as "striking the vehicle without first reflecting off
anything else." Krippelz argues that I should stick with my first
The suggestions by Krippelz and Ford both have merit. Combining
the two suggestions, I construe the term "directly impinging" as
"Directly impinging" means that no beam light
directly from the source strikes the vehicle.
However, beam light from the source that strikes the
vehicle as a result of any intervening optical
elements that redirect the light does not fall within
As I noted in my February Order, the term "directly impinging" is
different from the term "impinging." This construction gives
appropriate meaning to the word "directly." One problem with Ford's analysis is that it infers that no
light coming out of the housing opening may "directly impinge" on
the side of the vehicle. However, as discussed above, there may
be both beam and non-beam light that comes out of the housing
opening, and if any nonbeam light strikes the vehicle this would
have no effect on the clause of claim 2 regarding "said opening
and said source of light being positioned to prevent ...