The opinion of the court was delivered by: Judge James B. Zagel
MEMORANDUM OPINION AND ORDER
On January 20, 2004, Plaintiff WM. Wrigley Jr. Co. ("Wrigley") filed suit against Cadbury Adams USA, LLC ("Cadbury) alleging infringement of United States Patent No. 6,627,233 ("'233 Patent"). The subject of the patent is a method for producing a chewing gum containing certain physiological cooling agents. In return, Cadbury countersued alleging infringement of United States Patent No. 5,009,893 ("'893 Patent"). The '893 Patent also claims a chewing gum or confectionary product containing physiological cooling agents. The parties have asked me to construe the meaning of several disputed claim terms.
I. The Standard Principles of Claim Construction
Claim construction is a matter of law for the court to decide. Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). In order "[t]o ascertain the meaning of claims, [the court] consider[s] three sources: The claims, the specification, and the prosecution history." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (citations omitted). These three sources are the intrinsic evidence, public records available for all to consult and rely upon when determining the meaning and scope of a patent claim. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). When the intrinsic evidence unambiguously describes the scope of a patented invention, reliance on extrinsic evidence, such as expert testimony and treatises, is inappropriate. Id.
Claim interpretation begins with the actual language of the claims. Bell Communs. Research v. Vitalink Communs. Corp., 55 F.3d 615, 619-20 (Fed. Cir. 1995). Generally, the words, phrases and terms in patent claims should receive their ordinary and accustomed meaning. Johnson Worldwide Assocs. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999). The strong presumption in favor of the ordinary meaning may be overcome only when the patentee "clearly set[s] forth a definition for a claim term in the specification." Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306 (Fed. Cir. 2003) (citing Johnson Worldwide Assoc., 175 F.3d at 989-90). "[A] technical term used in a patent claim is interpreted as having the meaning a person of ordinary skill in the field of the invention would understand it to mean." Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1372 (Fed. Cir. 2001) (citation omitted).
"Claims must be read in view of the specification, of which they are a part." Markman, 52 F.3d at 979 (citations omitted). The specification may reveal "whether the inventor has used any terms in a manner inconsistent with their ordinary meaning." Vitronics Corp., 90 F.3d at 1582 (also noting that "the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term"). The specification also serves as an aid in determining "the meaning of the claim term as it is used . . . in the context of the entirety of [the] invention." Interactive Gift Express, Inc. v. Compuserve Inc., 231 F.3d 859, 866 (Fed. Cir. 2000) (quoting Comark Communs., Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)).
The claims, however, are not limited to the embodiment shown in the specifications. Anchor Wall, 340 F.3d at 1306-07; Transmatic, Inc. v. Gulton Indus., 53 F.3d 1270, 1277 (Fed. Cir. 1995). Limitations appearing only in the specifications cannot be read into a claim because "the claim, not the specification, measures the invention." Howes v. Zircon Corp., 992 F. Supp. 957, 961 (N.D. Ill. 1998) (citing SRI Int'l v. Matsushita Elec. Corp. Of Am., 775 F.2d 1107 (Fed. Cir. 1985)). However, when the specification "makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question." SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed Cir. 2001).
The publicly-available prosecution history, which details the proceedings before the Patent and Trademark Office ("PTO"), may limit the interpretation of claim terms by revealing express representations made by the applicant regarding the scope of the claims or by excluding interpretations that were disclaimed during prosecution. Vitronics, 90 F.3d at 1582-83. However, "unless altering claim language to escape an examiner rejection, a patent applicant only limits claims during prosecution by clearly disavowing claim coverage." Kopykake Enters. v. Lucks Co., 264 F.3d 1377, 1382 (Fed. Cir. 2001) (internal quotation and citation omitted). Any such disavowal "must be clear and unmistakable." Anchor Wall, 340 F.3d at 1307. Finally, extrinsic evidence such as expert testimony may be considered only where the language of the claims remains ambiguous after consideration of the claim language, specification and file history. Key Pharms. v. Hercon Lab. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998). "[E]xtrinsic evidence in general, and expert testimony in particular, may be used only to help the court come to the proper understanding of the claims; it may not be used to vary or contradict the claim language." Vitronics, 90 F.3d at 1584.
II. Claims Requiring Construction
A. The '233 Patent Claims
The claims in the '233 Patent which require construction are stated below, with the disputed terms emphasized.
5. A coated chewing gum, the coating comprising:
a) a coating material and
b) a physiological cooling agent. . . .
34. A chewing gum composition comprising:
a) about 5% to about 95% gum base;
b) about 5% to about 95% bulking and sweetening agent; and
c) about 0.1 to about 10% flavoring agent wherein the flavoring agent comprises N-2,3-trimethyl-2-isopropyl butanamide and menthol.*fn1
B. The '893 Patent Claims
Cadbury argues that Wrigley has infringed on independent claim 1 and dependent claims 2, 3 and 6, and independent claim 12 and dependent claims 13 and 17 of the '893 patent. Those claims are stated below, with the disputed terms emphasized.
1. A chewing gum composition capable of providing long-lasting, breath freshening perception without bitterness comprising a gum base, a sweetener and a cooling composition comprising menthol and an N-substituted-p-menthane carboxamide of the formula: C6CO-NR1R2 wherein R1, when taken separately, is selected from the group consisting of hydrogen, and an aliphatic radical containing up to 25 carbon atoms; R2, when taken separately is selected from the group consisting of a hydroxy radical, and an aliphatic radical containing up to 25 carbon atoms, with the proviso that when R1 is hydrogen, R2 may also be an aryl radical of up to 10 carbon atoms and selected from substituted phenyl, phenalkyl, naphthyl and substituted naphthyl, and pyridyl; and R1 and R2 when taken together, represent a cyclic or heterocyclic group of up to 25 carbon atoms.
2. The chewing gum composition of claim 1 wherein the N-substituted-p-menthane carboxamide is N-ethyl-p-menthane-3-carboxamide.
3. The chewing gum composition of claim 1 wherein the methanol and N-substituted-p-menthane carboxamide are used in amounts of about 30 to about 95% by weight N-substituted p-menthane carboxamide and about 5 to about 7% by weight methanol, all weights being by weight of the cooling composition.
6. The chewing gum composition of claim 1 wherein the cooling composition is present in the chewing gum composition in the amount of about 0.01 to about 2% by ...