The opinion of the court was delivered by: Judge Robert M. Dow, Jr.
MEMORANDUM OPINION AND ORDER
Plaintiff SOC-USA, LLC ("SOC-USA") has sued Defendants Office Depot, Inc. ("Office Depot") and Epson America, Inc. ("EAI") for infringement of United States Patent No. 7,456,018 B2 ("the '018 patent"). The matter is before the Court on claim construction of the '018 patent and Defendants' related motion for summary judgment of invalidity for indefiniteness . The Court's construction of the disputed claim terms is set forth below. For the reasons stated below, Defendants' motion for summary judgment is granted in part and denied in part.
On April 7, 2009,SOC-USA filed the instant patent infringement action in the Southern District of Florida. Shortly thereafter, on July 30, 2009, the action was transferred to this Court, where it was assigned case number 09-cv-4655. On August 26, 2009, this Court granted the parties' agreed motion to consolidate SOC-USA's action against Office Depot and EAI (no. 09-cv-4655) with case number 07-cv-1333 on relatedness grounds. Case number 07-cv-1333 is a patent infringement action initiated by Only The First, Ltd. ("OTF") against Seiko Epson Corporation ("SEC") for infringement of United States Patent No. 7,058,339 (the "'339 patent").
The two cases are closely related in terms of both the patents in suit and the parties. The '018 patent is a continuation of the '339 patent, and the two share the same specification. The two principals of OTF created SOC-USA. OTF then transferred the '018 patent to SOC-USA. Defendant EAI is the U.S. subsidiary of Defendant SEC. In both actions, the accused products are the R800/1800 Epson printers and/or the ink cartridges used in those printers.
B. The Court's Construction of the '339 Patent
This Court previously construed certain disputed claim terms in the '339 patent. 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. With respect to the '339 patent, OTF and SEC disputed the construction of six color terms that appear in claim 2 of the '339 patent -- orange-red, violet-red, violet-blue, green-blue, green-yellow, and orange-yellow. On July 8, 2009, this Court issued a claim construction opinion  construing those disputed claims. The Court construed the term "orange-red" as follows:
A color which, when analyzed spectroscopically, reflects in order of quantity or intensity, red followed by orange and then violet, wherein red and orange have the two 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: 610-700 nm.
The Court construed each of the other six claimed colors according to the same pattern.
As noted above, the '339 and '018 patents have the same specification. Therefore, like the '339 patent, the '018 patent relates to a color printing system comprising a combination of orange-red, violet-red, violet-blue, green-blue, green-yellow, and orange-yellow, as well as white and black.
Plaintiff has asserted claims 7, 9, 11, 13, 15, 17, 19, 21, 27 and 29 of the '018 patent against Defendants' R800/1800 printers. Claims 7, 11, 15, 19, and 27 each follow the following format:
"A colour printing system comprising a combination of at least four coloured materials, each of a different colour, wherein at least three of the four colours are selected from:
(5) a green-yellow * * * and
(6) an orange-yellow * * * provided the combination is other than cyan, magenta, a yellow and black."
Claims 7, 11, 15, 19, and 27 differ from one another only in the way in which they describe the claimed colors. Claim 7 defines the colors in terms of "peak reflectance percentage."*fn1 Claim 11 defines the colors in terms of "intensity."*fn2 Claim 15 defines the colors in terms of "peak intensity."*fn3 Claim 19 defines the colors in terms of "dominant intensity."*fn4 Finally, claim 27 defines the colors in terms of the "area under a graph of reflectance (percent) versus wavelength."*fn5 The remaining asserted claims of the '018 patent -- claims 9, 13, 17, 21, and 29 -- are dependent claims which add the limitation, "wherein each colouring material is an ink, dye, toner or pigment," a term that is not in dispute.
Thus, the asserted claims of the '018 patent are similar to the previously-construed claims of the '339 patent in that they recite the same six claimed colors. However, the claims of the '018 patent differ in the way in which they describe those claimed colors. The claims of the '339 patent only referred to the color names (e.g.,"orange-red"), while the claims in the '018 patent recite the six claimed colors according to the respective order of the six basic colors (red, orange, yellow, green, blue, and violet) based on their "peak reflectance percentage," "intensity," "peak intensity," "dominant intensity," or "area under a graph of reflectance (percent) versus wavelength."
In the motion for summary judgment that is currently before the Court, Defendants assert that a number of claim terms are indefinite, and seek summary judgment of invalidity on that basis. In particular, Defendants contend that the terms "cyan," "magenta," "yellow," and "each of a different colour," which appear in each of the independent asserted claims, are indefinite. Defendants also argue that the terms "peak intensity" (as used in claim 15) and "dominant intensity" (as used in claim 19) are indefinite. Finally, Defendants submit that the phrase "peak reflectance percentage," which appears in claims 7 and 9, constitutes improper new matter, such that those claims are invalid.
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 ...