The opinion of the court was delivered by: William H. Walls, U.S.D.J.
Walls, United States District Judge
U.S. Patent No. 5,870,919 ("`919 patent") issued to plaintiff SDS USA as assignee on February 16, 1999. This patent teaches an "apparatus" (claims 1-7), "method" (claims 8-11) and "system" (claim 12) to aid the mass production of cardboard boxes and similar items. The claimed machine shapes a die from metal rule. The die, later placed in a diecutting machine, is used to stamp out box blanks from sheet material such as cardboard. The `919 patent issued from U.S. Patent Application No. 49,391 ("`391 application"), which had been filed in March 1998. The `391 application was a continuation of U.S. Patent Application No. 668,379 ("`379 application"), filed June 1996, which claimed the priority date of a Korean patent application filed in June 1995. The inventor of the `919 patent is Byung-Jun ("Brian") Song, President of SDS.
Defendant Ken Specialties moves for summary judgment that the `919 patent is invalid for indefiniteness, 35 U.S.C. § 112, ¶ 2, and for failure to satisfy the written description requirement, 35 U.S.C. § 112, ¶ 1. Each party requests that the court make a Markman ruling to construct the `919 patent claims.
The court conducted hearings and heard oral argument on July 21 and July 31, 2000. At the outset, the court denied Ken's motion for leave to file a sur-reply memorandum. Ken had also moved in limine to preclude testimony by plaintiff's expert; after a Daubert hearing, the court concluded that SDS' proffered expert Stephen Tricamo was not skilled in the art of diecutting and diemaking, and granted Ken's motion to preclude his testimony concerning issues unique to that field. However, the court reserved the right to draw upon Dr. Tricamo's expertise in general, universal principles of engineering. ANALYSIS
1. Summary Judgment Standard
Summary judgment is appropriate where the moving party establishes that "there is no genuine issue as to any material fact and that [it] is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). A factual dispute between the parties will not defeat a motion for summary judgment unless it is both genuine and material. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). A factual dispute is genuine if a reasonable jury could return a verdict for the non-movant and it is material if, under the substantive law, it would affect the outcome of the suit. See Anderson, 477 U.S. at 248. The moving party must show that if the evidentiary material of record were reduced to admissible evidence in court, it would be insufficient to permit the non-moving party to carry its burden of proof. See Celotex v. Catrett, 477 U.S. 317, 318 (1986).
Once the moving party has carried its burden under Rule 56, "its opponent must do more than simply show that there is some metaphysical doubt as to the material facts in question." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). The opposing party must set forth specific facts showing a genuine issue for trial and may not rest upon the mere allegations or denials of its pleadings. See Sound Ship Building Co. v. Bethlehem Steel Co., 533 F.2d 96, 99 (3rd Cir. 1976), cert. denied, 429 U.S. 860 (1976). At the summary judgment stage the court's function is not to weigh the evidence and determine the truth of the matter, but rather to determine whether there is a genuine issue for trial. See Anderson, 477 U.S. at 249. In doing so, the court must construe the facts and inferences in the light most favorable to the non-moving party. See Wahl v. Rexnord, Inc. 624 F.2d 1169, 1181 (3rd Cir. 1980).
Ken initially proceeds under 35 U.S.C. § 112, ¶ 2: "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." The purpose of the definiteness requirement is to notify potential competitors whether their inventions infringe the patent. Morton Int'l, Inc., v. Cardinal Chemical Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993). Satisfaction of this requirement is a question of law. Exxon Research and Eng'g Co. v. United States, 46 Fed. Cl. 278, 281 (Fed. Cl. 2000). Of course, a patent is presumed valid, see 35 U.S.C. § 282, and any challenger must produce clear and convincing evidence to overcome that presumption.
"The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification. . . . If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more." Miles Laboratories, Inc. v. Shandon Inc., 997 F.2d 870, 874-75 (Fed. Cir. 1993) (citations omitted). The degree of precision needed to meet the definiteness requirement varies with the nature of the subject matter. Id. at 875.
Though a court usually seeks the conventional definitions of terms, a patentee is free to act as his or her own lexicographer. Beachcombers v. WildeWood Creative Products, Inc., 31 F.3d 1154, 1158 (Fed. Cir. 1994). Accordingly, this court must scrutinize "the way one of skill in the art would interpret the claims in view of the written description portion of the specification" -- and usually limit the inquiry to such evidence. Solomon v. Kimberly-Clark Corp., 2000 WL 867589, at *3-4 and n.4 (Fed. Cir. 2000). As in a Markman analysis, the court first examines the intrinsic evidence (the language in the patent claim and specification), then turns to extrinsic evidence only if the intrinsic evidence "is insufficient to enable the court to construe disputed claim terms." Exxon, 46 Fed. Cl. at 280-84 (citation omitted).
Ken makes indefiniteness arguments based on three phrases found in the `919 patent claims: "ribbon stock," "elongate member" and "transferring unit."
Defendant's first argument concerns the term "ribbon stock," found in each of the 12 claims of the `919 patent. See claims 1-7 (describing a "metallic ribbon stock folding apparatus"), claims 8-11 ("method of folding metallic ribbon stock") and claim 12 (a "system for folding metallic ribbon stock"). Ken argues that ribbon stock constitutes a limitation on each patent claim. Ken Br. at 5. Should the court disagree, Ken nevertheless advances in the alternative that the term must be understood to construct the patent claims. It concludes: "The term `ribbon stock' does not have an understandable meaning, and as such, all of the claims of the `919 patent must be held invalid for indefiniteness." Ken Br. at 5 (emphasis in original). In its related motion for claim construction, SDS remarks that while the apparatus described in the `919 patent is novel, "there is no suggestion that ribbon stock per se is novel. On the contrary, the `919 patent makes clear that at least one form of ribbon stock (i.e., cutting blade) existed in the prior art, as did other devices for folding ribbon stock." SDS Markman Br. at 20. SDS relies on dictionary definitions of the terms "ribbon" and "stock" *fn1 ; descriptions of "steel rule stock," "stock," "metal ribbon" and "metal ribbon stock" in purported prior art patents; and the patent examiner's references to "ribbon" in the prosecution history. Plaintiff concludes: "[T]he only reasonable and appropriate construction of `ribbon stock' is to include within its scope a supply of continuous metallic material, such as flat cutting blade or even wire . . ." SDS Br. at 27.
Ken counters that the term "ribbon stock" is not defined by the `919 patent claims, and that the `919 specification nowhere uses that phrase. It concludes that the phrase is not defined by the intrinsic evidence. It also insists that SDS' proffered "ordinary meaning" of the phrase is unsupported: Ken claims that "ribbon stock" has no plain meaning within the diecutting and diemaking industry, *fn2 referring to testimony of SDS' President Simon Song, a glossary published by the International Association of Diecutting and Diemaking (I.A.D.D.), and its own reading of the purported prior art patents. Ken further objects that, according to the dictionary cited by SDS, "ribbon" is first defined as "[a] narrow strip or band of fine fabric, such as satin or velvet, finished at the edges and used for trimming or tying." Ken Br. at 13. *fn3 "Thus, SDS is apparently implying that the invention could also cover a unit that folds and cuts clothing, gift wrapping, etc. Such a result is absurd . . . [and] well beyond what the `919 patent was intended to cover." Id. Next, Ken cites the I.A.D.D. definition of "stock": "Paper or other material to be die cut or printed." Warshavsky Decl. Exh. N. "Thus, when someone in the diecutting and diemaking industry uses the term `stock,' [she is] referring to the product which will eventually be made by the diecutter." Ken Br. at 14. Finally, defendant distinguishes plaintiff's proffered prior art patents as either irrelevant to the precise term "ribbon stock," or describing a field other than diecutting or diemaking. Id. at 15. Defendant concludes that a person with skill in the art could not determine the bounds of the claims using the words "ribbon stock" and that the claims must be invalidated as indefinite.
In reply, SDS submits the declaration of Dr. Tricamo: I am familiar with the level of knowledge of one of ordinary skill in the metal forming arts, including within the diemaking field, at least as early as June 1995 and to the present. (¶ 4).
The claims of the `919 patent use the words "metallic ribbon stock" and "ribbon stock" to describe the metal material being worked upon by the apparatus and method stated in the claims. In my opinion, Claim 1 uses the words "ribbon stock" as a shorthand expression for "metallic ribbon stock," which identifies a material intended to be acted upon by the components of the claimed apparatus. (¶ 6).
When I reviewed the claims of the `919 patent, I had no trouble understanding what was referred to by the terms "metallic ribbon stock" and "ribbon stock" even without the benefit of the specification of the `919 patent, and I do not believe that one skilled in the art would have any trouble understanding them. . . . "Ribbon stock" is a common term used and understood not only by engineers and other technical individuals in the metal forming arts, but is also, in my opinion, one used and understood by non-technical people. In essence, "ribbon stock" defines a flat strip of metal having edges that are generally parallel, as exemplified by a ribbon. "Ribbon stock" can be of any length. The use of "metallic" ribbon stock makes it clear that the material must be metallic, as contrasted with, for example, decorative fabric ribbon. (¶ 7) (Emphasis added).
I understand that terms commonly used in the diemaking industry include "rule," "steel rule," "metal rule," "cutting rule" and "knife." In my opinion, the term "metallic ribbon stock" is consistent with the above terms. (¶ 15).
Finally, SDS argues that as a matter of law, the use of the phrase "ribbon stock" in the claims, though not in the specification, does not defeat definiteness. SDS Br. at 25.
Ken's argument lacks merit. Beginning with the specification, see Miles Laboratories, Inc., 997 F.2d at 875, and Exxon, 46 Fed. Cl. at 283, the court notes that the abstract describes the invention as a "unified folding system for processing in one work line all working processes needed in cutting and folding a cutting blade in a shape suitable to sheet matter molding." The specification is replete with references to said "cutting blade," which is used to "press a folding or a cutting line on plate matters such as paper, canvas, leather, plastic, etc." See `919 Patent, col. 1, lns. 21-23; Figure 2 (showing cutting blade 500 in preferred embodiment). It is clear from the specification that such "cutting blade," initially "wound in a roll shape," see col. 4, ln. 61, is fed through the claimed invention, which folds the blade "in [a] shape suitable to a molding of the sheet material," see col. 5, lns. 25-27. In turn, a representative claim describes a "metallic ribbon stock folding apparatus" comprising a transferring unit, a rotary assembly, at least one retractable elongate member, "said rotary assembly configured for arcuate motion . . . to fold a portion of said ribbon stock by said elongate member." See Claim 1 (emphasis added).
The court finds from this review that the disputed "ribbon stock" described in the claims refers to the material from which the preferred- embodiment "cutting blade" is constructed. *fn4 According to the specification, the preferred embodiment uses a supply of metal rule, which it calls a "cutting blade" once it enters the machine, cuts and folds it to produce a die later used to cut predetermined shapes into sheet material such as cardboard. The specification, by its distinction between the terms "cutting blade," and "plate matters"/"sheet material," refutes the defendant's argument that the claimed "ribbon stock" refers to cardboard or other sheet material which will eventually be stamped out in the diecutting process. And the claims themselves, referring to "metallic ribbon stock," refute Ken's assertion that the invention concerns fabric, clothing, or gift wrap.
The court recognizes that the patentee failed to "match" the terms of the claims to the phrases used in the patent specification. Yet, as noted by SDS, such is legally irrelevant: other courts have rejected the indefiniteness defense,
even though the precise words used in the patent's specification are not necessarily used in the [patent's] claims. Inasmuch as the statute does not require an inventor to use the exact same words in both the specification and the claims, the court must determine whether the language used by the inventors in the patent's claims clearly and adequately set forth what is claimed in the invention, whether the language is consistent with the language used in the patent's specification, and whether the language is reasonably clear in its meaning. Pennwalt Corp. v. Durand-Wayland, Inc., 225 U.S.P.Q. 558, 565 (N.D. Ga. 1984), aff'd in part and vacated in part, 833 F.2d 931 (Fed. Cir. 1987) (addressing only infringement). See also Aqua-Aerobic Systems Inc. v. Richards of Rockford Inc., 1 U.S.P.Q.2d 1945, 1954 (N.D. Ill. 1986) (rejecting definiteness challenge based on patentee's failure to use the word "member" in both patent claims and specification: "While the patent may not be perfectly drafted, it is clear from an overall reading of the patent that the `member' referred to in claim 8 is the casting."), aff'd in part and vacated in part, 835 F.2d 871 (Fed. Cir. 1987).
Finally, though expert testimony proffered by litigants tends to differ as to the understanding of a person with ordinary skill in the art, and despite this court's ruling that Dr. Tricamo may not testify as to the niche field of diecutting and diemaking, the court finds Dr. Tricamo's declaration to be useful guidance as to the background technology and terminology in the metal forming arts. See Exxon, 46 Fed. Cl. at 282, 284.
This court's determination is enforced by contrast to Morton Intern., Inc. v. Cardinal Chemical Co., in which the Federal Circuit approved a district court's determination of indefiniteness because the claimed chemical compounds could not be proved to exist even with the use of "sophisticated analytical instrumentation and . . . model systems." 5 F.3d 1464, 1469-70 (Fed. Cir. 1993). The level of imprecision here, even as alleged by defendant, does not rise to that level; plaintiff survives summary judgment of indefiniteness on the "ribbon stock" terminology.
Ken also alleges indefiniteness based on the term "elongate member," found or incorporated in each of the `919 patent claims, as for example:
[Claim] 1. A metallic ribbon stock folding apparatus comprising: a transferring unit . . .
a rotary assembly having first and second rotary bodies . . . at least one retractable elongate member, said elongate member mounted for movement between a retracted position where said elongate member is disengaged from at least one of said rotary bodies and an extended position where said elongate member engages both said first and second rotary bodies; and said rotary assembly configured for arcuate motion . . .
[Claim] 3. The metallic ribbon stock folding apparatus as recited in claim 1 comprising two elongate members.
[Claim] 5. The metallic ribbon stock folding apparatus as recited in claim 4 [which is dependent on claim 1] wherein the at least one retractable elongate member has a stock engaging edge formed by the intersection of at least two sides of the substantially trapezoidal cross-section. (Emphasis added). See generally Claims 1-12, `919 Patent, col. 6-8.
Ken argues that the "elongate member" term is not defined in the patent; not used in the patent specification; and not found in the I.A.D.D. glossary. Ken Br. at 18-20. Ken and its experts assert that the phrase is wholly unfamiliar to the diecutting and diemaking industry, that "[t]hose with skill in the art cannot determine the bounds of the claims that include `elongate member,' and that "It is not possible to understand the term `elongate member' as it is used in the `919 patent." Kengott Decl. ¶ 26; Therrien Decl. ¶¶ 24-29.
SDS' response to Ken's contentions is foreshadowed by Ken's own brief: "The term `bending pin,' however, is one that is used in the prior art." Ken Br. at 20 n.6. *fn5 Plaintiff's reply focuses on the patent's prosecution history, particularly a preliminary amendment filed July 29, 1998 which mentioned the elusive "elongate member." Gilman Decl. Exh. 4 at 44-48. The patent examiner responded by rejecting two claims as indefinite, not on any basis mentioned by defendant. See August 26, 1998 action by Examiner Daniel Crane, id. at 52-59 (rejecting claim 11 as indefinite for failure to define the phrase "opposite sides," and claim 17 for not describing the movement of the elongate member. Notably, Examiner Crane used the phrase "elongate member" without comment.) And in October 1998, Examiner Crane himself offered proposed redrafted claims, "to clarify what constitutes an extended and retracted position and to specify that the elongated member is the active work bending implement. It is believed that the claims as now amended overcome any indefiniteness and define  the art of record." Id. at 76-81. In short, plaintiff argues that the patent examiner, presumably skilled in the art, had no difficulty understanding the disputed term.
Once again, the specification provides crucial guidance. Anticipating conclusions, this court finds that the "elongate member" of the patent claims is identical to the folding member, labeled as part 330 in the diagrams of the invention's preferred embodiment. The folding member (or members), part of "folding unit," "folding device" or "folding means" 300, serves to fold the cutting blade at a pre-set angle.
The following excerpts from the specification provide a flavor of the use of "folding means 300":
[From Abstract]: "[T]he cutting blade transferred to the folding device is folded in a predetermined shape by a folding member which performs a going-straight movement and a rotating movement. . . ." See `919 Patent Abstract.
[From "Summary of the Invention": the claimed invention includes, inter alia]: a "folding means including at least two folding members" . . . . See col. 2, lns. 3-8.
[From "Detailed Description of the Preferred Embodiment]: "The guide holes 323a and 323b are provided to insertably receive a folding member 330, to facilitate movement thereof" . . . See col. 3, lns. 47-49.
[Again,] "the folding member 330 is inserted through guide hole 323a of rotary body 320a, [passes through other parts of the invention, including rotary body 320b] and is capable of being moved upwards and downwards. The folding member 330 inserted for mutual connection of rotary bodies 320a and 320b is provided for the folding work of the cutting blade 500, revolving together with the rotary bodies 320a and 320b. When the folding work is not being performed, the folding member 330 is completely apart from folding body 313 and is moved towards an upper side." See col. 3, ln. 58 - col. 4, ln. 1.
[And,] "Folding member 330 has a substantially triangular shape, which enables the cutting blade 500 to be folded easily even without applying an immoderate force. To fold the cutting blade easily, an application of any other shape excepting the triangulate shape doesn't matter." See col. 4, lns. 27-32.
[Finally, in the "operation embodiment of the folding system]: "When the revolving bodies 320a and 320b are rotated, the folding member 330 is also rotated. That is, the folding member 330 is rotated and moved around . . . for the folding operation as shown in FIG. 5. At this time, the moved folding member contacts with the cutting blade 500 . . . thereby the cutting blade 500 is naturally folded by a rotating force of the folding member 330" . . . See col. 5, lns. 52-61. (Emphasis added.)
Simple comparison of the specification and the above- quoted claims demonstrates that the "elongate member" of the claims has been described and described again in the patent specification -- only there it was called a "folding member". This court has no difficulty determining the bounds of an invention involving such a term. Nor did patentee's Dr. Tricamo:
Upon reviewing the `919 patent claims, I had no trouble at all understanding what was intended by the words `elongate member,' and it is my opinion that one of ordinary skill in the metal forming art would also have no trouble understanding what is meant by these words. Such words are common to describe mechanical terms. They mean a member or element which is longer than it is wide. In the context, it is this element that `folds' or `bends' the ribbon stock.
See Tricamo Decl. ¶ 16. Ken defined the challenged part as a "bending pin," and SDS was likewise free to act as its own lexicographer. See Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 2000 WL 1035753 (Fed. Cir. 2000). Summary judgment on this issue is denied.
Finally, Ken challenges SDS' use of the phrase "transferring unit" in the ...