The opinion of the court was delivered by: Virginia M. Kendall, United States District Judge Northern District of Illinois
Judge Virginia M. Kendall
MEMORANDUM OPINION AND ORDER
Plaintiff Cummins-Allison Corp. ("Cummins") has sued Defendants Glory Ltd., Glory Shoji Co., Ltd., and Glory (U.S.A.), Inc. ("Glory"), for infringement of two of Cummins's patents, the 5,295,196 (the "196 Patent") and the 6,459,806 (the "806 Patent"). Cummins moved this Court to reconsider the March 28, 2005 Opinion and Order construing the claims of the '196 Patent. Simultaneously, Glory moved this Court to reconsider the March 28, 2005 Opinion and order construing one of the claims of the '806 Patent. The Court vacated the March 28, 2005 order construing the claims of the '196 Patent, and held hearings on the construction of the claims of both patents on July 14 and 17, 2006. The Court's construction of the claims of the '196 Patent are set forth below. The Court does not change the previous ruling on the '806 Patent.
The facts leading to this suit have been described in detail in the prior memoranda and opinions published in this case.*fn1 In summary, Cummins and Glory each manufacture machines that sort and count currency. Cummins holds several patents for currency sorting and denominating machines, among them the '196 and '806 Patents. On the date that the '806 Patent issued from the Patent and Trademark Office, Cummins filed suit against Glory for infringement of numerous claims in both the '196 and the '806 Patents.
In late 2004, Glory moved for summary judgment that it had not infringed either of the patents at suit. Glory reasoned that when the disputed claims in each of the patents are properly construed Glory's machines do not infringe on Cummins' machines. The court denied the parties' request to hold a Markman hearing on claim construction for either of the two Patents. The court ruled on both summary judgment motions in two separate memorandum opinions, both issued on March 28, 2006 (hereafter the " '196 Opinion" and the " '806 Opinion").
In June 2005, Cummins moved to reconsider the court's decision with respect to the construction of the '196 Patent claims. Specifically, Cummins argued as a matter of law that the court inappropriately relied upon the specification of a subsequent patent in order to construe the claim "central portion." Cummins argued that reliance upon a subsequent patent is inappropriate and a misstatement of the Federal Circuit's holding in Microsoft v. Multitech Sys. Inc., 357 F.3d 1340 (Fed. Cir. 2004). After hearing oral argument on the motion in April 2006, the Court determined that it would hold a Markman hearing on claim construction for the '196 Patent. Out of deference to Glory, which did not move to reconsider any portions of the '196 Opinion, the Court vacated the '196 Opinion in its entirety and requested that the parties rebrief all claims construction in the '196 Patent and prepare expert testimony as extrinsic evidence.
Also in June 2005, Glory moved to reconsider the court's decision with respect to the construction of the claims in the '806 Patent. Specifically, Glory argued that the court erred as a matter of law when it determined that the phrase "automatically denominating" is not a means-plus function and is therefore not subject to the constraints of 35 U.S.C. § 112, ¶ 6. Because "automatically denominating" is the end result of a number of steps, argued Glory, it must be a "function" and fall within the confines of ¶ 6 of § 112. At oral argument on the motion in April 2006, Glory also argued that a Federal Circuit case published subsequent to the '806 Opinion, Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), should further influence the Court to permit reconsideration. After review of the motion and the Phillips decision, the Court denied Glory's motion for reconsideration. After setting the Markman hearing for the '196 Patent, however, the Court agreed to hear additional expert testimony with respect to the '806 Patent at the same hearing.
The parties submitted a joint claim construction chart and briefed claim construction of both Patents. The Court held a Markman hearing on both Patents on July 14 and 17, 2006.
In order to determine whether a patent is infringed, the court must conduct a two-step process. First, the court construes the claims of the patent or patents at issue. Then, the court compares the allegedly infringing product with the patented product in order to determine whether summary judgment may be granted on the issue of infringement. Crystal Semi-Conductor Corp. v. TriTech Microelectronics Int'l, 246 F.3d 1336, 1345 (Fed. Cir. 2001). An accused device infringes if it meets each claim limitation, either literally or under the doctrine of equivalents. Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004).
To determine the proper construction of a patent's claims, the court must first look to the intrinsic evidence of a patent - the claims, the specification, and the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Only if the intrinsic evidence is insufficient to construe a claim may a court turn to extrinsic evidence, such as expert testimony. Id. at 1584. The words of a claim "are generally given their ordinary and customary meaning" that the "term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips, 415 F.3d at 1312-13. Persons of ordinary skill in the art are deemed to read claim terms not in isolation, but rather in the context of everything in the patent, including the specification. Id. at 1313.
II. Construction of Claims in the '196 Patent
The parties dispute terms in claims 1, 3, 6, 8, 9, 10, 11, 13, 16, and 18 in the '196 Patent. The court need only construe the independent claim, claim 1, which contains all disputed claims. See Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989) ("One who does not infringe an independent claim cannot infringe a claim dependent on and thus containing all the limitations of that claim."). The Court addresses each of the disputed claim terms in turn.
The phrase "central portion" of a bill, present in claim 1 and in many of the dependent claims, formed the basis for Cummins' motion to reconsider the '196 Opinion. In relevant part, the '196 Patent claim 1 describes scanning ...