The opinion of the court was delivered by: Samuel Der-yeghiayan, District Judge
This matter is before the court on the claim construction of certain disputed claims in United States Patents No. 6,870,964 ('964 Patent) and No. 7,382,929 ('929 Patent). We construe the disputed claims as stated below.
Plaintiff IP Innovation LLC (IPI) and Plaintiff Technology Licensing Corporation contend that they have the exclusive right, title and interest in the '964 Patent and the '929 Patent. Plaintiffs contend that Defendant Vizio, Inc. (Vizio) and Defendant Microsoft Corporation (Microsoft) infringed upon the '964 and '929 Patents "by making, using, importing selling or offering to sell, and/or by inducing, aiding and abetting, encouraging or contributing to others' use of, among other products, video game consoles, television products, DVD products, and projector products that fall within the scope of one or more claims of the patents." (SA Compl. Par. 9). Plaintiffs brought the instant action and included in the second amended complaint a patent infringement claim against Defendants, seeking damages and injunctive relief.
Patent claims are construed as a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). In construing claims, a court must first consider the intrinsic record. Goldenberg v. Cytogen, Inc., 373 F.3d 1158, 1164 (Fed. Cir. 2004). The Federal Circuit has stated that "[w]hen interpreting claims, [a court should] inquire into how a person of ordinary skill in the art would have understood claim terms at the time of the invention." Pfizer, Inc. v. Teva Pharmaceuticals, USA, Inc., 429 F.3d 1364, 1372-73 (Fed. Cir. 2005)(citing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)). In applying this standard, "the person of ordinary skill in the art isdeemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification" as well as the prosecution history. Id.; Phillips, 415 F.3d at 1313-14, 1317; see also Edward Lifesciences LLC v. Cook Inc., 2009 WL 2998543, at *4 (Fed. Cir. 2009)(stating that court's initial inquiry for claim construction includes a consideration of prosecution history). In addition, in certain instances, "the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent . . . , and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words . . . [in which case] general purpose dictionaries may be helpful." Phillips, 415 F.3d at 1314 (internal citations omitted).
DISCUSSION Plaintiffs contend that Microsoft is infringing upon claims 1 and 4 of the '964 Patent and claims 1, 16, 32, and 48 of the '929 Patent. Plaintiffs contend that Vizio is infringing upon all of the same claims except claim 4 of the '964 Patent.
I. Prior Claim Constructions
The '964 and '929 Patents are divisions of United States Patent No. 6,529,637 (the '637 Patent). In turn, the '637 Patent is itself a continuation-in-part of United States Patent No. 5,424,780 (the '780 Patent). Together, the '929 Patent, the '964 Patent, the '637 Patent, and the '780 Patent constitute the '780 Patent family. In accordance with the "Supreme Court's guidance on stare decisis in Markman," a court should adopt the constructions of previously construed claim terms in a disputed patent. Miken Composites v. Wilson Sporting Goods, 515 F.3d 1331, 1338 n. * (Fed. Cir. 2008).
In IP Innovation L.L.C. v. Sony Electronics, Inc., 2005 WL 2035578 (N.D. Ill. 2005) the court previously construed certain claims in the '964 Patent, the '637 Patent, and the '780 Patent. Id. at *1. In IP Innovation L.L.C. v. Lexmark Intern., Inc., 424 F.Supp.2d 1078 (N.D. Ill. 2006) the court previously construed certain claims in the '637 Patent, and the '780 Patent. Id. at 1083. Thus, in Sony and Lexmark, the courts previously construed claims in the '780 Patent family. There is a presumption that "a claim term carries the same meaning throughout a particular patent and related patents, including a continuation-in-part." Sony, 2005 WL 2035578, at *7 (N.D. Ill. 2005)(citing Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003)). In general, Defendants have not shown that the '964 and '929 Patents at issue in the instant action, which are divisions of the '637 Patent, which is a continuation-in-part of the '780 Patent, should have claims with different constructions. There is every indication that the synonymous claims in the '780 Patent family should be construed the same. Thus, in regard to the instant claim constructions, the court must take into consideration the prior constructions made in Sony and Lexmark. In addition, even if such prior rulings concerning the '780 Patent family were not presumptively binding in this case, the rulings would form part of the prosecution history and the intrinsic record for the court's primary consideration. The respective prosecution histories of the '964 and '929 Patents include the prosecution history of the '637 Patent and, by extension, that of the '780 Patent. See Goldenberg, 373 F.3d at 1167 (stating that the intrinsic record, in turn, includes both the prosecution history of the disputed patent and, if available, the prosecution history of a parent of the disputed patent); Miken Composites, 515 F.3d at 1338 n.* (indicating that prior claim constructions of related patents become a part of the instrinsic record). We note that, having considered the record in this case, the claim constructions provided below would remain the same whether we consider the prior constructions as presumptively binding or merely part of the intrinsic record.
II. Video Display Device and Display Means
Plaintiffs propose to construe the terms "video display device" ('964 Patent, claim 1) and "display means" ('964 Patent, claim 4) broadly as a device for providing an image which may be viewed by a viewer, where the device is capable of displaying a moving image. Defendants propose to limit the terms to mean a raster scan device. In the alternative, Defendants propose to define the terms to mean a camera, scanner, television, laser printer, fax machine, or the like that is coupled to the video fill circuit and displays the enhanced image. Where one claim in a patent does not contain a certain limitation, but another claim in the patent does contain the limitation, "that limitation cannot be read into the former claim in determining either validity or infringement." Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1325-26 (Fed. Cir. 2003)(stating that "[t]here is a rebuttable presumption that different claims are of different scope" and that "courts must take extreme care when ascertaining the proper scope of the claims, lest they simultaneously import into the claims limitations that were unintended by the patentee"). In the instant action, the words "raster" and "scan" are absent from claims 1 and 4, but are present elsewhere in such patents, such as in claim 5 of the '964 Patent, which depends from and further limits claim 4. Defendants have not provided sufficient justification to read into claims 1 or 4 as limitations the words "raster" and "scan." Thus, the limiting construction "raster scan" cannot be read into claim 1 or 4.
In regard to Defendants' alternative proposed construction, Defendants propose to graft the Sony construction of "display means" onto the entire term "video display device." Plaintiffs, on the other hand, seek to preserve the relationship between the construction and the terms "display means" and "display device," accounting separately for the modifier "video." The court in Sony indicated that a display device should be construed broadly to encompass matrix and hard copy display devices as well as raster type displays, which is what Plaintiffs propose. 2005 WL 2035578, at *3-*4. Defendants have not provided sufficient justification to reach a different construction in regard to the claims before this court. Therefore, we construe the terms "video display device" ('964 Patent, claim 1) and "display means" ('964 Patent, claim 4) in a manner consistent with Plaintiffs' proposed construction.
III. Pixel and Image Element
Plaintiffs propose to construe the term "pixel" ('964 Patent, claim 1; '929 Patent, claims 1, 16, 32, 48) broadly, as the smallest complete element of an image and propose to construe the term "image element" ('964 Patent, claim 1) as encompassing pixels and pels as well as sub pixels and sub pels, noting that an element of an image may be something other than a pixel. Defendants propose to construe both terms more narrowly, defining, "pixel" as the smallest independently addressable location capable of being displayed on a display device and "image element" as one or more pixels.
Plaintiffs point out, and Defendants agree, that in Sony and Lexmark Plaintiffs' proposed claim construction prevailed. 2005 WL 2035578, at *3-*4; 424 F.Supp.2d at 1087-88. Defendants contend, however, that these prior constructions addressed the '780 and '637 Patents and that, in Sony, the court's constructions extended to the '964 Patent only to the extent that both parties agreed that the term should be construed consistently among the three patents involved in that case. Defendants contend that the parties have not agreed to such a construction in this case. However, as discussed above, the claim constructions in Sony and Lexmark are applicable to the instant claim construction, and in accordance with Miken, the prior constructions are part of the prosecution history in this case. Thus, it is unnecessary for the parties to have a prior agreement for adopting constructions since the prior constructions in this case are part of the intrinsic record.
Defendants also argue that although the terms "pixel" and "image element" appear in both prior patents and the current ones, we should disregard the claim constructions in Sony and Lexmark since the '780 Patent contains a different specification, and the language of the claims in the '637 Patent is not identical to the language in the claims in this case. In regard to differences in specification and claim language, both the Sony and Lexmark courts construed the '637 Patent consistently even though it was a continuation-in-part of the '780 Patent, meaning that it necessarily added material not disclosed in the '780 Patent, its parent patent.
The '964 and '929 Patents, as divisional patents, disclose and claim the same subject matter as their parent, the '637 Patent. If the Sony and Lexmark courts construed a continuation-in-part, with new material consistently, then it necessarily follows that a court also construe divisional patents, with no new material, consistently.
Defendants also argue that the '780 and '637 Patents "are not at issue here and were held unenforceable." (D CL C 10). Defendants indicate early in the main body of their opening claim construction brief, that a prior judge "ruled unenforceable the '780 and '637 patents because of inventor Carl Cooper's inequitable conduct in prosecuting those patents." (D CL C 1). In addition, Defendants present arguments later in their opening claim construction brief concerning the unenforcability of the patents. (D CL C 10, 15). Plaintiffs contend that Defendants' statements and arguments are misleading, since the judge who made the unenforcability ruling subsequently vacated that ruling. Despite the fact that Defendants present various arguments regarding unenforcability premised on the prior ruling, Defendants in fact concede in a footnote on page 1 of their opening brief that the ruling was vacated. New Medium LLC v. Barco N.V., 2009 WL 2385890 (N.D. Ill. 2009)(vacating a prior order, 582 F.Supp.2d 991 (N.D. Ill. 2008), which had declared the '780 and '637 Patents unenforceable). Therefore, we construe the terms "pixel" ('964 Patent, claim 1; '929 Patent, claims 1, 16, 32, 48) and "image element" ('964 Patent, claim 1) in a manner consistent with Plaintiffs' proposed construction.
Plaintiffs propose to construe the term "void" ('964 Patent, claim 1) as a space or spaces in the image carried by the input video signal where a change or illumination may be made to cause an improvement of the perceived quality of the image. Defendants argue that the court should construe the term void more narrowly, to be an off pixel or a space between two pixels, but specifically not a defective pixel such as that corrected by United States Patent No. 4,573,070 ('070 Patent), nor part of a jagged edge in an image. Defendants also argue that Plaintiffs' proposed construction is estopped by the prosecution history of the '964 Patent. In addition, Defendants contend that their proposed construction should be adopted since it parallels the PTO's definition of "void" as excluding jagged edges.
Defendants argue that the term "void" should not include defective pixels. The intrinsic record, which includes the prosecution history and prior claim constructions of the '780 Patent family supports Plaintiffs' proposed construction. The '964 Patent specification provides a range of examples consistent with this construction:
Examples of voids would include such things as defects, unwanted elements, improper elements, corrupted elements, valid but replaceable elements, locations with no image information, and/or other locations or elements which may be in question or need for improvement. The term void is used to cover all these and similar situations for uniformity.
('964 Patent, col. 3, lns. 38-52, emphasis added). Plaintiffs' construction was also previously accepted by the court in Lexmark. 424 F.Supp.2d at 1089-90. Thus, the specification in the '964 Patent indicates that voids can be defects. This rebuts Defendants' proposal that voids are not defective pixels and supports Plaintiffs' proposal that voids are spaces in the image where a change may be made to cause an improvement.
Defendants also contend that Plaintiffs' proposed construction is estopped by the prosecution history of the '964 Patent. Defendants assert that J. Carl Cooper (Cooper), the inventor of the '964 Patent, distinguished another of his patents, the '070 Patent, from the '964 Patent by claiming in a response to a Patent and Trademark Office (PTO) Action that "a defective pixel, such as that corrected by the '070 Patent, is not the same as 'voids' as in the presently rejected claims." (9/5/03 Resp. to 4/8/03 Off Act, 2)(emphasis in original). The court in Lexmark rejected ...