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.
FACTS AND PROCEDURAL BACKGROUND
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
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).
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;
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
('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" ...