The opinion of the court was delivered by: MATTHEW KENNELLY, District Judge
MEMORANDUM OPINION AND ORDER
One World Technologies, Ltd. and Ryobi Technologies, Inc.
(collectively, "One World") have sued the defendants for
infringement of two patents. One World asserts U.S. Patent No.
6,755,107 against Rexon Industrial Corp., Ltd. and Power Tool
Specialists, Inc. (collectively, "Rexon") and Porter-Cable Corp.,
Delta International Machinery Corp., and Pentair, Inc.
(collectively, "Porter-Cable"). One World also asserts U.S.
Patent No. 6,360,797 against Rexon. This case is before the Court
for construction of disputed claim language in the two patents-in-suit.
One World contends that the Rexon and Porter-Cable defendants'
miter saws infringe the '107 patent, entitled "Interrupted Laser
Line Patent." Miter saws are used to cut at precise angles workpieces made of wood and other materials. Prior to inventions
that improved the ease of alignment, the operator of the saw
would mark the location of the cut on the workpiece according to
precise measurements and would typically lower the saw head
assembly to the workpiece to determine if the blade was aligned
with the reference mark. If necessary, the operator would raise
the saw and move the workpiece until the proper alignment was achieved.
Inventors have proposed various solutions to improve the ease
of aligning the blade to the desired area to be cut on the
workpiece, including the use of lasers and louvered blade guards
that the operator can see through while cutting. One World built
upon the prior art by developing a laser beam alignment system
designed to align the saw blade and the workpiece while at the
same time protecting the operator from cutting the debris and
from having the laser beam directed into his eyes.
One World asserts claims 4-19 against Rexon and claims 4-10
against Porter-Cable. The parties contest twelve claim
limitations with respect to the '107 patent.
One World's "Portable Power Tool Assembly Patent," which is
covered by number 6,360,797, is a portable power tool assembly
for a woodworking implement and motor that may be used in a
variety of working conditions and locations without requiring
disassembly or modification. The assembly generally includes a
base, a handle, wheels, and retractable legs. When the
retractable legs are extended, the assembly may be used as a
stand-alone unit. Alternatively, the legs may be retracted,
allowing the base to be placed directly on a horizontal surface,
such as a workbench. The invention is said to have improved upon
the prior art assemblies, which normally included a housing
containing a power tool mounted to a separate stand or work
bench, by enabling the operator to conveniently transport larger
power tools without disassembling the unit.
One World asserts claims 1-13 against Rexon with respect to the
'797 patent. These parties dispute six limitations that they
contend are material to resolution of the case. In addition to
the briefs submitted, the parties were afforded the opportunity
to present oral argument on claim construction for both patents
during an April 22, 2005 hearing.
Construing the claims of the patent-in-suit is the first step
in any patent infringement case. See Mars, Inc. v. H.J. Heinz
Co., 377 F.3d 1369, 1373 (Fed. Cir. 2004). The construction of
the claims is a question of law to be determined by the Court.
See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78
(Fed. Cir. 1995). The Federal Circuit directs courts to begin the
claim construction analysis by examining the claim language
itself. See Hockerson-Halberstadt, Inc. v. Avia Group Intern,
Inc., 222 F.3d 951, 955 (Fed. Cir. 2000). Initially, the claim
term's ordinary and customary meaning, as understood by persons
skilled in the relevant technology, serves as the default
meaning. See id. The court may use dictionaries, encyclopedias,
and treatises to assist in determining the ordinary and customary
meaning of claim terms. Texas Digital Systems, Inc. v.
Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002).
The presumption of ordinary meaning may be rebutted if the
patentee acted as her own lexicographer by clearly setting forth
an explicit definition of the term different from its ordinary
meaning or if the patentee has disavowed the scope of claim
coverage by using words of manifest exclusion or restriction.
Id. at 1204. Thus, it is necessary to review the specification
and, if submitted into evidence, the prosecution history to
determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning.
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996). Courts may resort to extrinsic evidence only if the
analysis of intrinsic evidence proves insufficient to resolve
ambiguity in a disputed claim. Hockerson-Halberstadt, Inc.,
222 F.3d at 955.
The first two disputed limitations, "narrow beam of light" and
"adjacent the cutting disc" are found in nearly identical
passages of claims four and five of the '107 patent. Claim four
discloses "[a] cutting machine comprising: . . . a light source
mounted to the motor driven cutting assembly and arranged to emit
a narrow beam of light adjacent the cutting disc for providing
a visual indication of the alignment of the cutting disc with the
workpiece." A similar passage in claim five discloses "a miter
saw comprising. . . . a light source mounted to the motor driven
cutting assembly, the light source emitting a narrow beam of
light adjacent the circular saw blade for providing a visual
indication of the alignment of the circular saw blade with the
One World asserts that the phrase to "emit a narrow beam of
light" means to give off a thin ray of light. Porter-Cable's
proffered definition is a ray of light that appears narrow
regardless of the vantage point from which it is viewed and does
not cover a fan-shaped projection of light. In submitting this
interpretation, Porter-Cable urges the Court to define the term
so as to explicitly exclude a fan-shaped projection of light,
which is the type of laser beam emitted by the Porter-Cable
The ordinary meaning of "narrow" is "of slender width,"
Merriam-Webster's Collegiate Dictionary 772 (10th ed. 1999), or "of small or limited width,
especially in comparison with length." The American Heritage
Dictionary 1169 (4th ed. 2000). Merriam-Webster defines "beam" as
"a ray or shaft of light." Merriam-Webster's Collegiate
Dictionary 99 (10th ed. 1999). Thus, the ordinary meaning of
narrow beam of light is a ray or shaft of light of slender width.
Porter-Cable does not appear to disagree that this is the
ordinary meaning of the claim language. See Porter-Cable Resp.
at 11. It urges the Court, however, to additionally specify that
a fan-shaped projection of light does not fall within the bounds
of this definition of "narrow beam." Porter-Cable refers the
Court to the discussion of the Kelly Patent that appears in the
background section of the patent and in the prosecution history.
Porter-Cable argues that the Kelly Patent makes it clear that one
of ordinary skill in the relevant technology would not include a
fan-shaped beam within the definition of narrow beam. In essence,
Porter-Cable urges the Court to undertake an infringement
analysis, as all of Porter-Cable's products use light projectors
that project light in a fan shape. It is settled law, however,
that claims must not be construed with reference to an accused
product. See SRI Int'l v. Matsushita Elec. Corp.,
775 F.2d 1107, 1118 (Fed. Cir. 1985). "It is only after the claims have
been construed without reference to the accused device that the
claims, as so construed, are applied to the accused device to
determine infringement." Id. Thus, Porter-Cable's request that
the Court find that "narrow beam" does not encompass a fan-shaped
projection of light is premature.
Porter-Cable also submits the testimony of its expert, Paul
Hatch, as evidence that one of ordinary skill in the technology
would construe a claim limitation containing the term "narrow
beam" to mean narrow from any vantage point and that this
limitation excludes a fan-shaped beam. Though the Court was willing to entertain Hatch's testimony
during the claim construction hearing to educate itself about the
underlying technology, we will not rely on his expert testimony
in construing the claim. As mentioned above, courts should rely
on extrinsic evidence only if the meaning of a claim is ambiguous
from the intrinsic evidence. See Hockerson-Halberstadt, Inc.,
222 F.3d at 955. The parties have not suggested that the meaning
is ambiguous, nor does the Court find the language ambiguous.
Nothing in the claim language, specification, or prosecution
history suggests that the phrase narrow beam of light means
something different from its ordinary and customary meaning.
Moreover, the proposed expert testimony specifically relates to
whether or not a fan-shaped beam falls within the scope of the
claim limitation. The Court reiterates that it is premature to
make that determination at the claim construction juncture. In
sum, the Court construes "narrow beam of light" to mean a ray or
shaft of light of slender width.
b. Adjacent the cutting disc
The parties next dispute the meaning of "adjacent the cutting
disc" and "adjacent the circular saw blade" limitations found in
claims four and five. One World maintains that the claim language
unambiguously refers to the spatial relationship between the
cutting disc or saw blade and the end point of the light beam.
Porter-Cable contends that the phrase should be interpreted as
requiring that the emission of the narrow beam of light originate
at a location adjacent to the cutting disc or saw blade.
Porter-Cable asserts that the plain and ordinary meaning of these
limitations is ambiguous, as it is susceptible to both its own
and One World's interpretations. It urges the Court to adopt the
narrower meaning, which Porter-Cable avers is its own.
Porter-Cable also maintains that its construction is in accord
with the patent examiner's understanding as evidenced in the prosecution history.
The Court agrees with One World that the claim language
unambiguously refers to the spatial relationship between the end
point of the laser beam and the cutting disc/saw blade. As One
World points out in its reply, the surrounding claim language
makes it clear that the light source mounted to the cutting
assembly is arranged such that the narrow beam of light is
emitted adjacent the cutting disc/saw blade. See ACTV, Inc. v.
Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)
(instructing that the surrounding words of a term at issue in a
claim construction debate must be considered in determining the
ordinary meaning). Nothing in the claim language indicates that
the light source itself is adjacent the cutting disc. In fact,
the variation of the limitation found in claim five leaves even
less doubt that this is the intended meaning, as the first part
of the sentence describing the location of the light source, "a
light source mounted to the motor driven cutting assembly," is
separated by a comma from the next part of the sentence
describing the light beam it emits, "the light source emitting a
narrow beam of light adjacent the circular saw blade." Finally,
the Court does not find compelling Porter-Cable's argument that
the prosecution history indicates a contrary meaning for this
limitation. The Court sees nothing in the file history that
reflects that One World did anything to alter or disavow the
ordinary meaning of the claim term in context as we have read it.
Having determined that the claim limitation refers to the
spatial relationship between the end point of the light beam and
the cutting disc or saw blade, the Court must determine the
ordinary meaning of the terms. Porter-Cable does not appear to
contest One World's definitions of these terms, as it provides no
alternative definitions of its own. One World submits that the
ordinary meaning of "adjacent" is "not distant: nearby" and the
ordinary meaning of "emit" is "to throw or give off or out." Merriam-Webster's Collegiate
Dictionary 14, 378 (10th ed. 1999). In its entirety then, the
proper construction of the limitation at issue in claim four is a
light source arranged to give off a ray or shaft of light of
slender width near the cutting disc. Similarly, the Court
construes the limitation in claim five as requiring a light
source giving off a ray or shaft of light of slender width near
the circular saw blade.
c. Interrupted pattern of light
Claims four, five, six, eleven, and twelve use the language
"interrupted pattern of light" to describe the marking formed by
the laser beam on the workpiece when the lower guard is in the
closed position. One World construes these limitations as
requiring a repetitively segmented projection of light. Rexon's
proffered construction is a discontinuous line of light.
One World and Rexon submit similar definitions for "interrupt."
One World cites Webster's definition, which defines the term as
"to break the uniformity or continuity of." Merriam-Webster's
Collegiate Dictionary 612 (10th ed. 1999). One World, however,
does not explain how it derives "repetitively segmented" from
this definition. Instead of focusing on the term's ordinary
meaning, it cites for support language in other claims and the
prosecution history that describe a series of spaced segments in
the lower guard. Rexon's interpretation of the term as requiring
a discontinuous line is truer to the ordinary meaning of
"interrupted pattern of light." Moreover, nothing in the
specification or prosecution history indicates that the inventor
intended to use this term in a manner inconsistent with its
ordinary meaning. As such, the Court adopts Rexon's construction
of the limitation with respect to claims four, five, six, eleven,
d. Proximate the region of the cut
One World and Rexon contest the meaning of "proximate" as used
in claims four, five, and six. The pertinent section of claim four discloses:
[W]herein the lower guard is provided with a series
of spaced apart segments formed in a portion of the
guard interposed between the light source and the
workpiece to be cut such that when the lower guard is
in the closed position, the segments allow light to
pass there through to form an interrupted pattern of
light on the workpiece proximate the region of the
Claims five and six contain language sufficiently similar to
claim four that the following analysis applies equally to each.
According to One World, "proximate the region of the cut" means
at or very near the area of the cut. Rexon disagrees that the
ordinary and customary meaning of "proximate" includes "at the
area of the cut," and instead construes the claim language to
mean next to or very near, but not in the region of the cut.
Rexon additionally contends that "region of the cut," as used in
claims four and five, is unamenable to construction and is
therefore indefinite, rendering the claims invalid pursuant to
35 U.S.C. § 112(2).
The Court concurs with Rexon's interpretation of the term
"proximate." One World has failed to provide a single dictionary
definition of proximate that supports its contention that the
ordinary meaning of proximate includes the exact point of
reference. Merriam-Webster defines proximate as "very near:
immediately adjoining: CLOSE" and "nearly accurate or correct."
Webster's Third New International Dictionary of the English
Language 1828 (unabr. ed. 1993). Thus, the ordinary meaning of
proximate does not include the point of reference. Proximate
should therefore be given its ordinary meaning, unless the
specification or prosecution history indicates that the inventor
intended otherwise. The specification explains that to align the
workpiece, the laser beam should be "projected as close as
possible to the point at which the saw blade 12 will cut the
workpiece 18 so that markings corresponding to the desired
location of cut on the workpiece 18 can be closely aligned with the laser beam
48." U.S. Patent No. 6,755,107, col. 5, lines 28-31. This excerpt
from the specification supports the idea that the laser will be
projected "close" to the location of the cut. In short, One
World's interpretation of "proximate" is not supported by the
The inquiry does not end there, however, because Rexon contends
that regardless of how one defines proximate, the limitation is
unamenable to construction because one of ordinary skill would
not be able to determine the scope of the phrase "region of the
cut." Pursuant to 35 U.S.C. § 112 ¶ 2, a patent applicant is
required to conclude the specification by "particularly pointing
out and distinctly claiming the subject matter which the
applicant regards as his invention." The Federal Circuit has
construed this requirement to mean that a claim is indefinite if
the language, when read in light of the specification, does not
reasonably apprise one skilled in the relevant field of the scope
of the invention. See Amgen Inc. v. Hoechst Marion Roussel,
Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). But this standard is
a fairly difficult one to meet. A claim is not indefinite simply
because its scope is unascertainable from the claim language
itself. Rather, a claim is indefinite only if it is "insolubly
ambiguous, and no narrowing construction can properly be
adopted." Id. (quoting Exxon Research & Eng'g Co. v. United
States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)).
Though the phrase "region of the cut" is a less than stellar
example of claim drafting, it is not so vague that one in the
field would be unable to determine the scope of the claim, nor is
it ambiguous to the point that a fact finder would be unable to
logically determine whether an accused product infringes the
patent. "Region" is defined as "an area or division." The New
Oxford American Dictionary 1434 (2001). Thus, the ordinary
meaning of the contested limitation requires that the segments allow light to pass through
to form an interrupted pattern of light on the workpiece close to
or very near the area of the cut. The entire purpose of the
invention as described in the ...