The opinion of the court was delivered by: District Judge Blanche Manning
In this case, plaintiff, Goss International Americas, Inc. ("Goss") alleges that the defendants infringed U.S. Patent No. 6,082,724 ("the '724 patent") directed to a collating machine used in the assemblage of newspapers. The parties requested a claim construction hearing pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996) ("Markman hearing"), which this court referred to the magistrate judge. The magistrate judge held the Markman hearing and issued its report and recommendation ("R&R") on the construction of the claims at issue. The defendants timely objected to the R&R pursuant to 28 U.S.C. § 636(b)(1) and Fed. R. Civ. P. 72. Those objections are now before the court.
The '724 patent is entitled "Variable Speed Signature Collating Apparatus" and is directed to a collating machine, which is frequently used in the assembly of newspapers to ensure, through sensors contained in the apparatus, the proper and correct positioning of the various sections (i.e., a sports section, a home section, a business section, etc.). The claims of the '724 patent currently at issue in these objections are 1, 13, 17, 20 and 24.
The defendants contend that because claim construction is an issue of law, the magistrate judge's determinations must be reviewed de novo. In re Gabapentin Patent Litigation, 503 F.3d 1254, 1259 (Fed. Cir. 2007)(citations omitted). The plaintiffs, however, assert that because the defendants argue that the magistrate judge erred in how she applied well-settled law to the facts of the case, Judge Valdez's conclusions should be reviewed only for "clear error."
Under Fed. R. Civ. P. 72, the determination of whether this court performs its review under a clear error or de novo standard is based on whether the issue decided is dispositive. This case was referred to the magistrate judge to conduct a Markman hearing under 28 U.S.C § 636(b)(3), which allows the magistrate judge to perform "such additional duties as are not inconsistent with the Constitution and laws of the United States." The magistrate interpreted this reference to require the issuance of a report and recommendation ("R&R") pursuant to § 636(b)(1)(B), objections to which require de novo review by this court. Given the fact that claim construction is likely dispositive of Goss's claims of infringement, this court will review the magistrate judge's R&R de novo. See 12 Fed. Prac. & Proc. Civ. 2d § 3068.2 ("Rule 72 is thus in keeping with the legislative intent [of 28 U.S.C. § 636]: at the very least, the eight motions listed in the statute will be governed by the procedures and de novo review of Rule 72(b),and these procedures should also apply to any other pretrial matters or other 'additional duties' that, in a particular case, may be 'dispositive of a claim or defense of a party.'"). See also Shuffle Master v. Vendingdata, No. 2:04-CV-01373-BESLRL, 2007 WL 674290, at *1 (D. Nev. Feb. 28, 2007)(noting that the court was compelled to review de novo the magistrate judge's R&R on a Markman hearing pursuant to 28 U.S.C. § 636(b) and that "[t]his standard is consistent with that which is applied in the [de novo] review of claim constructions made pursuant to [the Markman decision].")(citations omitted).
As noted by the Federal Circuit, "[a]n infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). Further, as noted by the Federal Circuit: the words of a claim "are generally given their ordinary and customary meaning." We have made clear, moreover, that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention. . . .
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)(internal citations omitted). In construing a claim, the court should look to three sources: the claim, the specification, and the prosecution history. Markman, 52 F.3d at 979-80. However, "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.'" Phillips, 415 F.3d at 1315 (citation omitted). See also Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir. 2004)("In most cases, the best source for discerning the proper context of claim terms is the patent specification wherein the patent applicant describes the invention.").
Courts may, in addition to the intrinsic evidence noted above (i.e., the claim, specification and prosecution history), also "rely on extrinsic evidence, which 'consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.'" Phillips, 415 F.3d at 1317 (citation omitted). However, extrinsic evidence is "less significant" than intrinsic evidence when construing a claim. Id.
With these principles in mind, the court will proceed with its review of the construction of the disputed claims.
B. "Control Means" of Claim 1
The defendants first argue that the R&R incorrectly construed the "control means" clause of Claim 1, which reads as follows: control means for varying the speed of operation of said variable speed motors in said plurality of article feeder means and the speed of operation of said variable speed motor in said conveyor drive means.
1. Applicable Law and Magistrate Judge's Ruling
The R&R acknowledged that both parties agreed that the clause is a means-plus function limitation subject to 35 U.S.C. § 112, ¶ 6. Section 112, ¶ 6 states that:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This paragraph "allow[s] the use of means expressions in patent claims without requiring the patentee to recite in the claims all possible structures that could be used as means in the claimed apparatus." Med. Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) (citation omitted). In other words, this portion of the patent statute allows an element to be defined by its function rather than its physical structure. However, "[t]he price that must be paid for use of that convenience is limitation of the claim to the means specified in the written description and equivalents thereof." Id.
Thus, the Federal Circuit recently held:
Once a court concludes that a claim limitation is a means-plus-function limitation, two steps of claim construction remain: 1) the court must first identify the function of the limitation; and 2) the court must then look to the specification and identify the corresponding structure for that function. If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite. Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 950 (Fed. Cir. 2007)(internal citations omitted). This is so because: in order for a means-plus-function claim to be valid under § 112, the corresponding structure of the limitation "must be disclosed in the written description in such a manner that one skilled in the art will know and understand what structure corresponds to the means limitation. Otherwise, one does not know what the claim means."
Id. (citations omitted). The parties agree that, pursuant to the first step, the magistrate judge correctly identified the function as "varying the speed of operation of said variable speed motors in said plurality of article feeder means and the speed of operation of said variable speed in said conveyor drive means."
Under the second step, the court looks to the specification and identifies the corresponding structure for that function. "Under § 112, ¶ 6, a court may not import . . . structural limitations from the written description that are unnecessary to perform the claimed function." Wenger Mfg., Inc. v. Coating Machinery Systems, Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001)(citation omitted). See also Unidynamics Corp. v. Automatic Products Intern., Ltd., 157 F.3d 1311 (Fed. Cir. 1998) ("Structure disclosed in the specification, however, is only a 'corresponding' structure to the claimed means under § 112, ¶ 6 if the structure is clearly linked by the specification or the prosecution history to the function recited in the claim.")(citations omitted).
The magistrate judge agreed with Goss that the corresponding structure should be construed to include: "a main controller, preferably a microcomputer, and a plurality of sheet material feed controllers such as microcomputers, which are connected to the main controller and equivalents thereof." R&R at 14, No. 05-C-5622 (N.D. Ill. Aug. 28, 2007). The magistrate judge concluded that the structures identified by the defendants, including an algorithm to be performed by the main controller, were not necessary to carry out the function in claim 1. She pointed out that claim 12 supported her conclusion:
Claim 12 recites the following structure: An apparatus as set forth in claim 1 wherein said control means includes a main controller which controls the speed of operation of said variable speed motor in said conveyor drive means and a plurality of sheet material feeder controllers which are connected with one of said variable speed motors in one of said article feeder means and with said main controller.
Claim 12 thus adds support for Goss's proposed construction of the term 'control means' in claim 1. See Medtronic Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1313 (Fed. Cir. 2001).
2. This Court's Construction
Based on the specification, this court agrees with the magistrate judge and finds two corresponding structures necessary to perform the recited function: a main controller and a plurality of sheet material feed controllers.*fn1 In terms of the main controller, the patent specification explicitly states that the main controller "control[s] the speed of operation of ...