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Only the First, Ltd. v. Seiko Epson Corp.

July 8, 2009


The opinion of the court was delivered by: Judge Robert M. Dow, Jr.


Plaintiff Only The First, Ltd. ("OTF") has sued Defendant Seiko Epson Corporation ("SEC") for infringement of United States Patent No. 7,058,339 (the "' 339 patent"). On February 6, 2009, the Court held a tutorial and claim construction hearing, at which time it heard evidence and argument regarding the construction of various claim terms in the ' 399 patent. The claim construction issues also have been extensively briefed. Currently before the Court are OTF's Opening Brief on Claim Construction [57], SEC' s Opening Claim Construction Brief [58], OTF' s Response Brief on Claim Construction [64], and SEC' s Reply Brief on Claim Construction [65]. The Court' s construction of the disputed claim terms is set forth below.

I. Background

The ' 339 patent, entitled "Printing System," relates to a color printing system and devices and elements useful in that system. The abstract for the ' 339 patent describes the invention as:

A color printing system comprising a combination of at least four, and preferably six coloring materials, each of a different color, wherein these colors are selected from(1) an orange-red; (2) a violet-red; (3) a violet-blue; (4) a green-blue; (5) a green-yellow; and (6) an orange-yellow; as well as white and black. This system may be incorporated into a wide range of printing devices and provides a means of achieving a wide range of colors. ' 339 Patent, Abstract.

Previous color printing technology was based on mixing the primary colors of red, blue and yellow. While printers using six colors were fairly common before the issuance of the '339 patent, those printers employed the primary color mixing process, and therefore could achieve only a limited range of colors. Using the colors in the '339 patent extends the gamut of achievable colors. For example, the '339 patent makes it possible to achieve a wide range of brighter oranges, violets, greens, and colored grays that are not possible using other printing systems.

II. Legal Standard

In a patent infringement case, the court must engage in a two step analysis. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). First, the court determines the meaning and scope of the asserted patent claims. Id. Second, the court concludes whether the accused product or device infringes on the properly construed claims. Id. The first step -- claim construction -- is a legal determination to be made by the court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996). The Federal Circuit has explained that "' [t]he construction of claims is simply a way of elaborating the normally terse claim language in order to understand and explain, but not to change, the scope of the claims.'

" Terlep v. Brinkmann Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005).

Claims must be construed through the eyes of "the person of ordinary skill in the field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) ("The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation."). With that mindset, courts "look to the intrinsic evidence, including the claim language, written description, and prosecution history, as well as to extrinsic evidence" in construing claims. TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1369 (Fed. Cir. 2008).

The Federal Circuit has directed courts to "look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The analysis begins with the words of the claims themselves, which are generally given their ordinary and customary meaning. Id. "[T]he 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, 415 F.3d at 1313.

The "'heavy presumption'in favor of the ordinary meaning of claim language * * * is overcome * * * where the patentee has chosen to be his own lexicographer." Bell Atlantic Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1286 (Fed. Cir. 2001). A patentee acts as his own lexicographer where he "has clearly set forth an explicit definition of [a claim] term different from its ordinary meaning." Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1204 (Fed. Cir. 2002). The presumption in favor of the ordinary meaning is overcome only where the "special definition of the term is clearly stated in the patent specification or file history." Vitronics, 90 F.3d at 1582; Phillips, 415 F.3d at 1316 ("inventor' s lexicography governs * * * [where] the specification * * * reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess"); In re Paulsen, 30 F.3d 1475, 1480-81 (Fed. Cir. 1994) (where inventor seeks to "define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision"). Even where the patentee acts as his own lexicographer, the court' s focus remains on determining how a person of ordinary skill in the art would understand the claim terms. Thus, "the inventor' s lexicography * * * must be understood and interpreted by the court as they would be understood and interpreted by a person in that field of technology." Multiform Desiccants, Inc., 133 F.3d at 1477.

The second place to which a court looks in construing claims is the specification, in part to determine whether the inventor has redefined any claim terms. Vitronics, 90 F.3d at 1582. The Federal Circuit has explained that, because claims "are part of ' a fully integrated written instrument,'* * * [they] 'must be read in view of the specification[] of which they are a part.' "

Phillips, 415 F.3d at 1315 (quoting Markman, 52 F.3d at 978-79). Therefore, "the specification is always highly relevant to the claim construction analysis." Vitronics, 90 F.3d at 1582. Indeed, the Federal Circuit has advised that the specification "is the single best guide to the meaning of a disputed term," and, therefore, "[u]sually, it is dispositive."Id.

Nevertheless, while "the claim language must be examined in light of the written description," the Federal Circuit repeatedly has admonished courts not to read "limitations * * * into the claims from the written description." Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148 (Fed. Cir. 2003). In the same vein, the Federal Circuit "has cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification." Texas Instruments, Inc. v. United States Int'l Trade Comm'n, 805 F.2d 1558, 1563 (Fed. Cir. 1986). The line between reading a claim in light of the specification, and reading limitations into the claim from the specification is a fine one. Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). To "discern[ that line] with reasonable certainty and predictability[,] * * * the court' s focus [must] remain[] on understanding how a person of ordinary skill in the art would understand the claim terms." Phillips, 415 F.3d at 1323.

The third type of intrinsic evidence the court may consider is the prosecution history. Phillips, 415 F.3d at 1323.

If, after reviewing the intrinsic evidence, ambiguity remains regarding the meaning of disputed claim terms, the court may consider extrinsic evidence, including dictionaries, treatises, and expert testimony. Phillips, 415 F.3d at 1317; see also Vitronics, 90 F.3d at 1584 ("[o]nly if there [is] still some genuine ambiguity in the claims, after consideration of all available intrinsic evidence, should the trial court * * * resort[] to extrinsic evidence"). However, extrinsic evidence generally is considered to be "less reliable" than intrinsic evidence and "unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Phillips, 415 F.3d at 1318-19.

III. Discussion

The parties dispute the construction of six color terms that appear in claim 2 --orangered, violet-red, violet-blue, green-blue, green-yellow, and orange-yellow. The parties agree that the inventor, Michael Wilcox, acted as his own lexicographer and defined the meaning of the claimed colors within the patent. However, they disagree on the scope of those definitions. Each of the six claimed colors is defined according to the same pattern, and the disputed issues are the same for each of the six terms. Therefore, the Court will limit its preliminary discussion to one of the six terms -- "orange-red."

OTF proposes construing "orange-red" as "a color which, when analyzed spectroscopically, reflects in order of quantity or intensity, red followed by orange and then violet." SEC' s proposed construction is identical to OTF' s, but contains three additional elements. SEC proposes construing "orange-red" as "a color which, when analyzed spectroscopically, reflects in order of quantity or intensity, red followed by orange and then violet, wherein red, orange, and violet have the three highest quantities or intensities, respectively. The relative quantities or intensities of each color are determined by comparing the areas under the spectroscopic graph of reflectance (percent) versus wavelength occupied by the specified color. The wavelength occupied by each specified color is as follows: violet: 400-440 nm; blue: 420-490 nm; green: 490-550 nm; yellow: 550-590 nm; orange: 590-620 nm; red: 610-630 nm." The Court will address each of the three disputed elements in turn.

A. Three Highest Quantities or Intensities

Every color reflects a certain amount of each of the six basic colors.*fn1 'll. 30-33; [58 at 3]. For example, red reflects red, orange, yellow, green, blue, and violet light in varying degrees. Id. A red object appears red to the human eye ...

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