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August 2, 2005.


The opinion of the court was delivered by: WILLIAM H. WALLS, District Judge


Plaintiffs Ricoh Company, Ltd., Ricoh Corporation and Ricoh Electronics, Inc. ("Ricoh") and defendants General Plastics Industrial Co. Ltd.'s ("GPI"), Katun Corporation's ("Katun") PNA Holdings, LLC and Nashua Corporation ("Nashua") (together, "Defendants") move the Court for the construction of certain disputed claim terms. Defendants also move the Court for partial summary judgment on the invalidity of U.S. Patent No. 6,075,963 (the "`963 patent"). Ricoh moves the Court for partial summary judgment on the infringement of the `963 patent and cross-moves on the "no-invalidity" of the `963 patent. Pursuant to Fed.R.Civ.P. 78, the motions are decided without oral argument.


  Ricoh is a family of companies that manufactures photocopying machines and related replacement products, including photocopier toner. Defendants sell replacement parts for use in copy machines. Katun works with GPI and Nashua to develop and manufacture replacement toner bottles. GPI manufactures and sells to Nashua two of the toner bottles and lids at issue in this case. Nashua purchases toner bottles and lids from GPI, and itself oversees the manufacture of certain other toner bottles and lids at issue. Nashua then labels and fills the bottles with toner, which it sells to Katun.

  In its Amended Complaint, Ricoh alleges that Defendants are liable, among other things, for infringement of six Ricoh patents based upon their manufacture and sale of toner bottles for use in Ricoh photocopiers. The patents-in-suit are U.S. Patent Nos. 5,455,662 ("the `662 patent"), 5,627,631 ("the `631 patent"), 6,289,195 ("the `195 patent"), 6,418,293 ("the `293 patent"), 5,828,935 ("the `935 patent"), and the `963 patent (together, the "patents-in-suit" or the "Ricoh patents"). The patents-in-suit all relate to toner bottles but derive from two distinct specifications. The first five patents-in-suit, the `662, `631, `963, `195, and `293 patents derive from the same patent application filed on December 28, 1993, and are part of the same patent family (the `662 patent family"). The sixth patent-in-suit, the `935 patent, derives from a different patent application filed on October 11, 1996 and is based on a different "priority document" from the documents used for the `662 patent family.

  The parties filed a Joint Claim Construction Statement ("JCCS") on July 23, 2004. Exhibit 1 of the JCCS identifies terms on which the parties agree on a construction; Exhibit 2 identifies claim terms on which the parties disagree.

  This case involves copier parts that are used to dispense replacement toner into a copier. Before the generation of replacement toner bottles at issue here was invented, toner bottles were generally installed in a vertical position. After the bottle was installed, the copier would rotate the bottle to a horizontal position. These toner bottles were restricted in size due to the amount of space required to rotate the bottle. However, a horizontally mounted bottled presented toner delivery problems — the toner would spill out as the bottle was being mounted, and as the toner was used, gravity would not propel the toner towards the bottle's mouth.

  The new generation toner bottles are inserted in a horizontal position. It is no longer necessary for these bottles to move from a vertical position to a horizontal position, so they are larger. Ricoh claims that it solved the delivery problems by inventing a new lid that is removed by the copier after the bottle is installed and a "scoop" system that delivers the toner to the mouth of the bottle as needed. In addition, the "screw" shape of the toner bottles allows the toner bottled to be rotated inside the machine without any additional space. Defendants claim that Ricoh's bottle designs are not new and were anticipated by earlier patents. Defendants point to a number of patents obtained before the patents-in-suit and claim that Ricoh obtained its patents by modifying the language in these existing patents.


  I. Standard for Claim Construction

  The construction of patent claims is a matter of law exclusively for the Court. Markman v. Westview Instruments, 52 F.3d 967, 976-79 (Fed. Cir. 1995). This Court recently discussed the standards for clam construction:
The court must first look to the "intrinsic evidence," which consists of the patent claims, the specification, and the prosecution history if in evidence. "Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The court should presume that the terms in the claim mean what they say, and, unless otherwise compelled, give full effect to the ordinary and accustomed meaning of claim terms. See Johnson Worldwide Associates, Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999). Of course, "claim construction is not philosophy . . . [it] is firmly anchored in reality by the understanding of those of ordinary skill in the art." K-2 Corp. v. Salomon S.A., 191 F.3d 1356 (Fed. Cir. 1999). And although the prosecution history can and should be used to understand the language used in the claims, it may not be used to "enlarge, diminish, or vary" the limitations in the claims. Markman, 52 F.3d at 979 (citation omitted).
"In most situations, an analysis of intrinsic evidence alone will resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to rely on extrinsic evidence," such as expert testimony, treatises and dictionaries, and articles. Vitronics, 90 F.3d at 1583. Accordingly, where the patent documents are unambiguous, expert testimony is entitled to no weight. See id. (emphasis added). Prior art may serve as a guide to the meaning of a disputed term and, particularly, as a time-saving demonstration of how a disputed term is used by those skilled in the art. See id. at 1584. Finally, "opinion testimony on claim construction should be treated with the utmost caution," because such testimony "amounts to no more than legal opinion — it is precisely the process of construction that the court must undertake." Id. at 1585 (citation omitted).
Bristol-Myers Squibb Co. v. Immunex Corp., 86 F.Supp.2d 447, 448-49 (D.N.J. 2000).

  A claim must be read as a whole, rather than element by element. See General Foods v. Studiengesell-Schaff Kohle mbH, 972 F.2d 1272, 1274 (Fed. Cir. 1992); Texas Instruments, Inc. v. U.S. Intern. Trade Com'n., 846 F.2d 1369, 1371 (Fed. Cir. 1988). The "language of the claim frames and ultimately resolves all issues of claim interpretation." Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997). The Court may not rewrite claims. K-2 Corp., 191 F.3d at 1364 ("Courts do not rewrite claims; instead we give effect to the terms chosen by the patentee."); Texas Instruments v. U.S. Intern. Trade Com'n., 988 F.2d, 1165, 1171 (Fed. Cir. 1993) ("[c]ourts can neither broaden nor narrow claims to give the patentee something different than what he has set forth.") (citation omitted). As discussed, the Court should also look to the patent specification for guidance. "Claims must be read in view of the specification, of which they are a part. . . . [T]he description may act as a sort of dictionary, which explains the invention and may define terms used in the claims." Markman, 52 F.3d at 979 (citations omitted). "[T]he 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." Vitronics, 90 F.3d at 1582. A construction that stays true to the claim language and the description of the invention will be the correct construction. See Young Dental Mfg. Co. v. Q3 Special Prods., Inc., 112 F.3d 1137, 1142-43 (Fed. Cir. 1997). However, "`particular embodiments appearing in a specification will not be read into the claims when the claim language is broader than such embodiments.'" Rhine v. Casio, Inc., 183 F.3d 1342, 1346 (Fed. Cir. 1999), quoting Electro Med. Sys. S.A. v. Cooper Life Sciences, 34 F.3d 1048, 1054, 32 U.S.P.Q.2d 1017, 1021 (Fed. Cir. 1994); see also Transmatic, Inc. v. Gulton Industries, Inc., 53 F.3d 1270, 1277 (Fed. Cir. 1995). Of course, a patentee is free to define a claim term differently from its ordinary meaning, but any special definition must be "clearly stated in the patent specification or file history." Vitronics, 90 F.3d at 1582.

  Prosecution history may be relevant to provide evidence of explicit statements by a patent applicant during prosecution to describe or distinguish a claimed invention over the prior art and thus serve to narrow the scope of a claim. Spectrum Int'l, Inc. v. Sterlite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1998).

  When appropriate, a court may consider extrinsic evidence, such as expert testimony, to assist the court in understanding how one skilled in the field of the invention would interpret the technical aspects of the document. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999). Where expert testimony is inconsistent with the specification and file history, it should be "accorded no weight." Vitronics, 90 F.3d at 1584. The Court may accept extrinsic evidence to understand the underlying technology, but it should not use such evidence to vary or contradict the claim language. See Vitronics, 90 F.3d at 1583-84; Markman, 52 F.3d at 980-81.

  Finally, "[a]lthough technical treatises and dictionaries fall within the category of extrinsic evidence, . . . they are worthy of special note. Judges are free to consult such resources at any time in order to better understand the underlying technology and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents." Vitronics, 90 F.3d at 1584, n. 6 (emphasis added).

  II. Analysis

  A. Construction of the Claim Terms Relating to "Shoulder"

  The parties ask the Court to construe the following phrases related to the "shoulder" portion of a toner container:
• "a shoulder portion forming a circumferential wall adjacent one end of said body" (`662 patent, Claim 1; `631 patent, Claims 1, 5, and 6)
• "a shoulder portion forming a wall adjacent to a first end of said hollow body" (`195 patent, Claims 7, 8, 9, 29, 30, and 31)
  • "a shoulder portion adjoining a first end of said body and forming a wall"(`293 patent, Claims 1 and 22) The parties disagree over the meaning of the words "shoulder", "adjacent", and "end" in these phrases.
  As an illustrative example, Claim 1 of the '662 patent reads:
said developer container having a hollow cylindrical main body comprising:
a shoulder portion forming a circumferential wall adjacent one end of said body;
a mouth portion on said one end, said mouth portion being smaller in diameter than said shoulder portion; and
a guide means provided on said shoulder portion for guiding said developer stored in said developer container to said mouth portion as said main body is rotated.
('662 Patent, Claim 1).

  Ricoh argues that the shoulder is "an angle or curve in the outline of an object (as between the body and the neck of a bottle) and the parts adjacent to it." This definition is based on a definition of "shoulder" found in Webster's dictionary, except for the Webster's definition reads "and often also the parts adjacent to it." See Webster's Third New International Dictionary of the English Language, Unabridged (1993) ("Webster's Third"). Ricoh also proposes that "adjacent" be construed as "nearby" and "end" as "the last part lengthwise" but "not limited to the tip."

  Katun and Nashua argue that the "shoulder" is the "the wall at the mouth end of the bottle, which is substantially perpendicular to the outer surface of the body." They argue that because the claim also requires that the "shoulder" form a "circumferential wall adjacent" to the body, and because a "wall" is a vertical structure, anything "adjoining" a horizontal body is necessarily perpendicular to that body. Katun and Nashua also argue that because the claims require a comparison between the diameter of the shoulder and the mouth, the shoulder must be a area with an single diameter.

  GTI argues that the "shoulder" should be construed to include "an inner surface thereof partly raised to the edge of the mouth portion to form raised portion(s) 85, 86a and 86." These portions form a ramp-shaped protrusion that wraps around approximately half of the top of the toner bottle.

  Defendants also argue that "adjacent" should be construed as "relatively near and having nothing of the same kind intervening" and that "end" should be construed as "the last part lengthwise."

  As discussed, the Court must start by analyzing the language of the claim itself, construing the terms according to their ordinary and plain meaning. See Johnson Worldwide Assocs., 175 F.2d at 989. In defining a term according to its plain meaning, it is appropriate to rely upon certain extrinsic evidence, such as a regular dictionary. See Vitronics, 90 F.3d at 1584 n. 6. The Court finds that the ordinary meaning of the term "shoulder" is well-represented by the definition found in Webster's dictionary: "an angle or curve in the outline of an object (as between the body and the neck of a bottle)." Webster's Third at 2104. Nothing in the intrinsic evidence contradicts this common definition. The Court is not convinced that "anything" adjoining a wall must be perpendicular to that wall. As Ricoh points out, the claim specifications recognize a wide variety of shoulder shapes with varying slopes, curves and angles. Nothing in the patents' claims or specifications limit the shoulder to a perpendicular surface. Moreover, the Court does not derive as much significance as Defendants from the claims' requirement that the shoulder have a "diameter." The claim requires only that the "shoulder" diameter be larger than the diameter of the mouth. A conical object with a "mouth" at the narrow end will necessarily have an average diameter larger than that of the mouth, and that object's diameter will be larger than the mouth's diameter at every point up to where the two pieces join. Therefore, it is not necessary to limit the construction of the term "shoulder" to a shape with a single diameter.

  The Court does not, however, view the ordinary meaning of "shoulder" to include any parts adjacent to it. Where, as here, various parts of a toner bottle are nearby, abut, or are attached to the shoulder, such a definition would obliterate the precise drafting of the claims. For this reason, the Court rejects defendant GPI's proposed construction of "shoulder," which would include portions 85, 85(a) and 86.

  The parties ask the court to construct the term "adjacent" as used in the context of "shoulder." Defendants adopt the definiton "relatively near and having nothing of the same kind intervening" Websters Third at 26. Plaintiffs construe "adjacent" to mean "nearby" or "not distant or far off." Websters Third at 26. This Court finds that "adjacent" means relatively near, or nearby. This Court is not convinced by Defendants' argument and does not find any suggestion in the patent that the added definition of "nothing of the same kind intervening" is applicable here. Id.

  The parties agree that the term "end" means "the last part lengthwise," but do not agree on whether the last part lengthwise is the bottle's mouth or the bottle's shoulder, upon which the mouth rests. The Court finds that the ordinary meaning of "last" is the part after which there is no other. After the shoulder, there is still a mouth, as well as other "adjacent" pieces. Therefore, the "last part lengthwise" can refer only to the tip or mouth of the bottle. That said, when the term "end" is used with a qualifier, such as the "end of said hollow body," the terms refers to "the last part lengthwise" of that hollow body. In this case, the "end" of the hollow body is where the "shoulder" joins the body.

  B. Construction of Claim Terms Relating to "Diameter"

  The only disputed claim terms relating to "diameter" are "adjacent" and "end." These terms have already been construed where they relate to the term "shoulder" ...

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