The opinion of the court was delivered by: MATTHEW KENNELLY, District Judge
MEMORANDUM OPINION AND ORDER
IP Innovation, L.L.C., Technology Licensing Corporation, New
Medium Technologies LLC, and AV Technologies LLC, (collectively,
"IPI") have sued Sony Electronics, Inc. for infringement of six
patents relating to video displays and signals. This case is
before the Court for construction of the disputed claim language.
Because of the large number of claim terms at issue, the Court
initially will address only the disputed claim language found in
the three patents-in-suit referred to as the '780 family. These
include U.S. Patent Nos. 5,424,780, 6,529,637, and 6,870,964.
Additionally, the Court is requesting that the parties supplement
and clarify their positions with respect to a few of the disputed
claim terms from these patents.
The '780 family of patents is directed to methods and
apparatuses for improving or enhancing the apparent image
resolution of a display by altering elements of the image through "scan modulation." IPI states that the benefit of the invention
is its ability to process images in standard definition or NTSC
television signals while taking advantage of the higher
resolution display technologies that are currently being used in
televisions and other consumer electronics devices. The result is
a more pleasing appearance, i.e., a perceived increase in
IPI asserts claims 15 and 146 against Sony with respect to the
'780 patent, entitled "Apparatus and Method for Spacial Scan
Modulation of a Video Display," claims 1, 107, 145, and 159 with
respect to the '637 patent, entitled "Spatial Scan Replication
Circuit," and claims 4 and 10 of the '964 patent, entitled
"Spatial Scan Replication Circuit." Both the '637 and '964
patents are based on an application which was filed as a
continuation-in-part of the application from which the '780
patent issued. In addition to the briefs submitted, the parties
presented oral argument and submitted additional material on
claim construction during a July 8, 2005 hearing.
Claim construction of the patent-in-suit, which entails
questions of law to be determined by the Court, see Markman v.
Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir.
1995), 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). In Phillips v. AWH Corp., Nos. 03-1269, 03-1286, 2005 WL
1620331 (Fed. Cir. July 12, 2005), the Federal Circuit recently
clarified the approach courts should use when analyzing claim
language. The Court criticized the methodology adopted in Texas
Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed.
Cir. 2002) a case to which district courts have routinely
turned for guidance in the claim construction process for its
over-reliance on extrinsic sources, such as dictionaries,
treatises, and encyclopedias, and the limited role it assigned to
the specification. See Phillips, 2005 WL 1620331, at *13.
Texas Digital had essentially instructed courts to begin the analysis by consulting
dictionaries or similar sources to determine the ordinary and
customary meaning of a term, and, only as a secondary step, to
examine the specification and prosecution history to ensure that
the patentee had not supplied an alternative definition or
disavowed the ordinary meaning of the term. See id. at *13-14.
Noting that "heavy reliance on the dictionary divorced from the
intrinsic evidence risks transforming the meaning of the claim
term to the artisan into the meaning of the term in the
abstract," the Federal Circuit directed federal courts instead to
focus at the outset on how the patentee used the claim term in
the claims, specification, and prosecution history. Id. at *14.
The claim term's ordinary and customary meaning, as understood
by persons who were skilled in the relevant technology at the
time the patent application was filed, continues to serve as the
baseline interpretation of the proper scope of the claim. The
inquiry into how a person of ordinary skill in the technology
would understand a claim term involves analyzing the term in the
context of the disputed claim itself, as well as in the context
of the patent as a whole.
For instance, the way a term is used within the particular
claim "provides a firm basis for construing the term." Id. at
*6. Similarly, other claims of the patent in question, both
asserted and unasserted, can be helpful in ascertaining the
appropriate scope of claim language. Id. at *7 ("Because claim
terms are normally used consistently throughout the patent, the
usage of a term in one claim can often illuminate the meaning of
the same term in other claims."). The Federal Circuit took pains
to emphasize that in addition to evaluating the claims of a
patent in dispute, the specification is the "single best guide to
the meaning of a disputed term." Id. (quoting Vitronics Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). If
the specification indicates that the patentee defined the term in
a manner that differs from its generally conceived meaning or disavowed the claim scope, the inventor's intention is
dispositive. Id. at *8. In short, claims must be construed
consistently with the specification.
Finally, courts should consider the patent's prosecution
history, if it is in evidence, as it provides evidence of how the
inventor and the Patent and Trademark Office understood the
claims. However, because this negotiation process frequently
contains more ambiguity than the specification, it is less useful
for claim construction purposes. Id. at *9. But if the inventor
unequivocally disavowed a particular meaning to obtain the patent
or otherwise limited the scope of the invention during the course
of the prosecution, "the doctrine of prosecution disclaimer
attaches and narrows the ordinary meaning of the claim congruent
with the scope of the surrender." Omega Eng'g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003).
Though the Federal Circuit emphasized the primary role
intrinsic evidence should play in discerning the proper scope of
claims, it did not preclude the use of extrinsic evidence
altogether. Judges remain free to consult dictionaries or
comparable sources to assist in understanding the meaning of
words and to gain a better understanding of the underlying
technology. Phillips, 2005 WL 16203331, at *15. Thus,
dictionaries, and particularly technical treatises, may continue
to inform claim construction, so long as courts do not adopt a
definition that contradicts the intrinsic evidence. Id. at *15.
Likewise, the Federal Circuit acknowledged that expert
testimony can be useful for providing background on the relevant
technology and to shed light on what a person skilled in the
pertinent field would understand a particular term to mean. Id.
at *10. The court warned, however, that judges should be
particularly weary of expert testimony that consists of
conclusory statements or is offered in a form that is not subject
to cross-examination. Id. at *10-11. Moreover, as with other types of extrinsic evidence, courts
should discount expert testimony that is clearly at odds with the
intrinsic record. Id. at *10
In sum, though there exists no "magic formula or catechism for
conducting claim construction," and the sequence of steps used by
the judge is unimportant, id. at 16, the focus should remain
centered around construing the claims within the context of the
patent itself. The disputed claims of each patent-in-dispute will
be discussed in turn.
The parties dispute several terms found in claim 15, which in
its entirety discloses:
A method of improving the quality of an image which
may be displayed on an image display device, the
image made up of a number of image elements,
including the step of selecting a plurality of pixels
of said image, the step of comparing a first of said
selected pixels to at least a second of said selected
pixels to select voids of said image to be altered
and including the further step of altering voids in
said image in response to said comparing step thereby
improving the apparent resolution of the image
without requiring an increase in the number of image
elements originally making up the image.
The term "pixel" is used throughout the '780 family of patents,
including contested claims 15, 110, and 146 of the '780 patent,
claims 1 and 107 of the '637 patent, and claims 4 and 10 of the
'964 patent. Claim 15 serves as an example of how the term
"pixel" is used within the patents. Both parties agree that the
term should be construed consistently throughout the three
patents-in-suit, and thus the meaning the Court adopts with
respect to the '780 patent will apply to the '637 and '964
patents as well. IPI contends that the term "pixel" is an acronym for "picture
element" and is defined as the smallest complete element of an
image. According to IPI, pixels can be formed of sub pixels,
which themselves are not considered complete pixels as defined
above. Sony argues that IPI's proffered definition is incomplete,
as it does not take into account that the meaning of pixel is
dependent on whether it is being used in the context of an
electronically coded image or in an electronic display device.
Instead, Sony asserts that the better definition is the following
one set forth in the McGraw-Hill technical dictionary: "the
smallest part of an electronically coded picture image" or "the
smallest addressable element in an electronic display; a short
form for picture element. . . ."*fn1
of Scientific and Technical Terms 1436 (4th ed. 1989).
When defining terms, courts are directed to give words their
broadest reasonable construction that is consistent with the use
of the term in the patent. See In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this instance, as
defendant avers, the definition of pixel is highly context
dependent. See Def's Brief at 4. IPI's definition more fully
encompasses the range of meanings for pixel, as it is not obvious
from the patent that the term is used only in the context of an
electronically coded image or an electronic display device.
Most importantly, IPI's interpretation comports with the use of
"pixel" in the context of the patent. Claim 16 references "a
portion of a pixel." This usage is consistent with the idea that
a pixel may be formed by sub-pixels, which themselves do not
constitute complete elements. The Court therefore adopts IPI's interpretation of "pixel" as the
smallest complete element of an image; synonymous with image
The parties next dispute the meaning of "image element," as
used in claims 15, 110, and 146 of the '780 patent, claims 1 and
107 of the '637 patent, and claims 4 and 10 of the '964 patent.
Though the parties' interpretations vary, they concur that the
Court should adopt a uniform meaning for the term.
IPI defines "image element" as encompassing complete pixels, as
well as sub pixels and other elements of images that are not
pixel-related. It submits that although pixel is synonymous with
image element, the reverse is not true, as an image element may
refer to a sub-pixel or something altogether unrelated to a
pixel. Sony, in contrast, urges the Court to adopt identical
meanings for the terms pixel and image element, namely, the
smallest part of an electronically coded picture image or the
smallest addressable element in an electronic display.
The Court believes IPI's definition more closely aligns with
how a person of ordinary skill in the technology would understand
the term "image element." Admittedly, in the context of the
disputed claims, it is somewhat unclear whether the terms "pixel"
and "image element" carry differing meanings. As Sony observes,
the patentee appears to frequently use the two terms
interchangeably. For example, Sony highlights two descriptions of
figure seven in the '780 patent's specification. One describes
the figure as depicting "a group of nine neighboring image
elements." U.S. Patent No. 5,424,780, col. 3, lines 18-20.
Another refers to the same figure as showing "a group of 9 pixels
which are located on 3 scan lines of a raster." Id. at col. 7,
lines 26-27. This example, however, is not necessarily
inconsistent with IPI's construction. As IPI suggests, all pixels may be image elements, but not all image
elements are necessarily pixels. Thus the fact that the patentee
uses both terms to describe the items in the figure does not run
counter to IPI's position. Sony also argues that the patent
directly equates the two terms when it describes "spatial
resolution" as "the number of elements or pixels [that] make up
an image." But again, this excerpt does not conclusively support
Moreover, the use of "image element" in unasserted claims
clearly supports IPI's interpretation. In the '637 patent, claim
127 repeatedly refers to the term "image elements." Claim 140 of
that same patent discloses "The method of claim 127 wherein the
image elements are pixels." As a dependent claim, claim 140 must
be narrower in scope than claim 127. If the patent used image
element and pixel interchangeably, it would violate the doctrine
of claim differentiation by rendering claim 140 wholly
superfluous. Furthermore, the patentee is entitled to a
presumption that there is a difference in meaning and scope when
different words are used in separate claims. See Tandon Corp. v.
United States Int'l Trade Comm'n, 831 F.2d 1017, 1023 (Fed. Cir.
1987); see also Power Mosfet Techs., L.L.C. v. Siemens AG,
378 F.3d 1396, 1410 (Fed. Cir. 2004). In particular, where "the
absence of such difference in meaning and scope would make a
claim superfluous, the doctrine of claim differentiation states
the presumption that the difference between claims is
significant." Tandon Corp, 831 F.2d at 1023. Finally, the Court
notes that IPI's interpretation is in accord with the only
dictionary definition submitted by the parties.*fn2 The
Court therefore accepts IPI's definition of "image element" as
encompassing complete pixels, as well as sub pixels, and other elements of
images that are not pixel related.
The terms "void" or "voids" is used in disputed claims 15 and
146 of the '780 patent and claims 1, 107, and 145 of the '637
patent. IPI proposes that, as with the previously discussed
terms, a uniform definition of voids should be adopted throughout
the '780 family of patents. Sony, however, argues that with
respect to this term, the patentee used one meaning of the term
in the '780 patent but explicitly redefined the term in the
continuation-in-part '637 patent. The Court considers the term
within the context of each patent.
For purposes of both the '780 and '637 patents, IPI defines
voids as spaces around or in the image where a change of
illumination may be made to cause an improvement of the perceived
quality of the image (e.g., blank areas of the image near a
detailed area of the image). Importantly, IPI adds that these
spaces may or may not include an unused image element.
Sony contends that a void in an image, as used in the '780
patent, means a physical point in a displayed image that is not
addressed by image elements on the incoming signal at any time. Thus, according to Sony, the voids disclosed in the '780 patent
reflect an empty space, opening, gap, or the quality without
being something in the video information in the signal carrying
the image. Sony submits that the patentee redefined the term in
the '637 patent, as any location in an image including defects,
unwanted elements, improper elements, corrupted elements, valid
but replaceable elements, locations with no image information,
and other locations or elements which may be in question or in
need for improvement.
The term "voids" was not expressly defined in the '780 patent,
and thus we must ascertain its meaning from the context of the
patent. IPI emphasizes that language used in surrounding claims
indicates that "voids" must include locations containing existing
image elements. It points out that claim 110, which was added
during reexamination of the '780 patent, discloses "the method of
claim 15 characterized in that the void can include at least in
part a portion of a space occupied by another image element." IPI
argues that this claim makes it clear that a void can include a
space occupied by another element. It also draws the Court's
attention to the specification's discussion of how a video fill
signal can generate a new pixel or pixels, which may be "used for
"filling, substitution or replacement [and] may be comprised of
all or a portion of a pixel." U.S. Patent No. 5,424,780, col. 5,
lines 48-50. IPI reasons that if a fill signal includes
substitution or replacement of old pixels with newly generated
pixels, then a void, by definition, must include the possibility
that a pixel exists within the space designated as a void.
Other claim language supports Sony's interpretation. The Court
counted five claims that refer to a "void between image
elements." See claims 3, 11, 12, 96 and 147. Moreover, the
claims and specification contain numerous references to "blank
areas," a phrase that the patentee appears to use interchangeably
with "voids." For instance, claim 135 discloses a "means for changing the shape of at least one element [that] can include
generating fill image elements in blank areas of the display."
Use of the term blank tends to suggest that the patentee had the
ordinary meaning of "void" in mind when drafting the patent. In
sum, the claims and specification do not conclusively support one
interpretation over the other.
The prosecution history, however, sheds more light on the
intended meaning of the term. During prosecution of the '780
patent, the inventor, James Cooper, responded to an examiner's
objection of a claim based on obviousness by stating:
Applicant has reviewed and considered the examiner's
remarks given in his 35 U.S.C. § 103 rejection over
Cooper '070. Applicant believes however that the
examiner is incorrect in his assertion that a
defective pixel such as corrected by the '070
invention is the same as, and would include, voids in
the image as in the present disclosure and claims.
The '070 patent generally shows replacing a given
pixel with an average of pixels based on the
similarity or ranking of pixels. The similarity or
ranking of pixels is not related to the absence of
elements as the examiner suggests. It might be noted
that Webster defines the noun void as empty space,
opening, gap, the quality of being without something,
etc. Such definition would preclude the filling of
voids from being obvious in view of the averaging of
similar elements for removal of noise which is
disclosed in the '070 patent.
See S/N 355,461 O.A. response 6/18/92 at 17. The Court reads
Cooper's remarks, and in fact believes that this is only sound
interpretation of his comments, as an unambiguous limit on the
scope of "voids."
Moreover, during prosecution of the '780 patent on
reexamination, Cooper made amendments to certain claims on March
16, 2001. In this document, he amended then claim 138, which read
"the apparatus of claim 1 characterized in that the void can
include at least in part a portion of a space occupied by another
element" to read "the apparatus of claim 1 characterized in that
the void can be filled in part with portions of two image
elements." See G15/7422R1F at 9. When Cooper, later in the same
document, discussed his interview with the examiner, he noted that
[i]n respect to the "portion of a space occupied by
another image element" in claim 138, the undersigned
pointed out how the voids may be filled by all or a
portion of a pixel (fig. 5A; col 4 Ins 51-52; col 5
In 50; col 10 Ins 26-31; col 12 Ins 23-34). This use
could utilize a combination of a plurality of pixels
for the fill element, thus utilizing a portion of two
(or more) elements to fill a given void. The examiner
indicated he would again reconsider this rejection
with the wording as currently constituted.
Id. at 17. Though the Court was not provided with subsequent
excerpts of the prosecution so as to determine later changes made
to the above mentioned claim 138, the inventor's remarks are
illustrative. Following this reasoning, current claim 110, which
reads "The method of claim 15 characterized in that the void can
include at least in part a portion of a space occupied by another
image element," most likely refers to the newly generated
elements rather than image elements already existing in the
Because the prosecution history of the '780 patent limits the
interpretation of "voids" in a manner that unequivocally excludes
IPI's interpretation, see Omega, 334 F.3d at 1324, the Court
adopts for that patent Sony's proposed definition of "void" as a
physical point in a displayed image that is not addressed by
image elements on the incoming signal at any time.
The parties do not truly dispute the meaning of "void" in the
'637 patent, aside from their preferred phraseology. Both agree
that in the context of the disputed claims in that patent, a
"void" may include a space occupied by an image element. Indeed,
as Sony highlights, the ...