The opinion of the court was delivered by: JOHN BISSELL, Chief Judge, District
On July 29, 2004, this Court conducted a hearing for the
purpose of construing the claims of U.S. Patent No. 6,155,411,
the focus of the present infringement action between the parties.
After receiving proposed findings of fact and conclusions of law and replies from each side, and after reviewing the record and
exhibits herein, the Court issues the present opinion.
This Court acknowledges and applies the following rules of law
regarding the construction of claims issue. In doing so, the
Court quotes liberally from the standards as expressed recently
by the Honorable Judge William G. Bassler of this Court in
Daiichi Pharm. Co., Ltd. v. Apotex, Inc., 03-937 (WGB) (Opinion
August 8, 2005).*fn1
A patent infringement action involves two steps: (1) the claims
must be properly construed in order to determine their scope and
meaning, and (2) the claims as properly construed must be
compared to the accused device or process. See CVI/Beta
Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1152 (Fed. Cir. 1997),
cert. denied, 522 U.S. 1109 (1998). The first step is a threshold
issue of law for this Court to decide. See Markman v. Westview
Instr., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd,
517 U.S. 370 (1996). At this juncture in this case, only the first step
will be addressed.
"It is a bedrock principle of patent law that the claims of a
patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp., No. 03-1269,
03-1286, 2005 WL 1620331, at *4 (Fed. Cir. July 12, 2005)
(internal quotation marks omitted). Accordingly, a court, in
construing the terms of a patent, should look first to the
language of the claim itself. Vitronics Corp. v. Conceptronics,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
The words of a claim "are generally given their ordinary and
customary meaning." Phillips, 2005 WL 1620331, at *5 (internal
quotation marks omitted). "[T]he ordinary and customary meaning
of a claim term is the meaning that the term would have to a
person of ordinary skill in the art in question at the time of
the invention, i.e., as of the effective filing date of the
patent application." Id.
The ordinary meaning of a term cannot, however, be construed in
a vacuum; rather, a court must "must look at the ordinary meaning
in the context of the written description and the prosecution
history." Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313,
1319 (Fed. Cir. 2005). The court does so to "determine whether
the inventor used any terms in a manner inconsistent with their
ordinary meaning." Vitronics, 90 F.3d at 1582.
Recently, the Federal Circuit clarified the importance of using
the specification and other intrinsic evidence to determine the
meaning of a claim. See Phillips, 2005 WL 1620331, at *13 (stating that "the specification acts as a dictionary when it
expressly defines terms used in the claims or when it defines
terms by implication"). Similarly, a patent's prosecution history
may clarify the meaning of a claim, particularly in light of
exchanges between the patent applicant and the PTO. See
Northern Telecom, Ltd. v. Samsung Elec. Co., 215 F.3d 1281
(Fed. Cir. 2000). Thus, the claim language, the specification,
and the patent prosecution history collectively referred to in
patent law as the "intrinsic record" are the foundation of
claim construction analysis and will, in most instances, resolve
any dispute regarding the interpretation of a claim term.
Vitronics, 90 F.3d at 1582-83 ("Such intrinsic evidence is the
most significant source of the legally operative meaning of
disputed claim language.")
Only in the rare circumstance in which there is still doubt as
to the meaning of a claim after the court has examined the
intrinsic record, should a court look to extrinsic evidence such
as treatises, technical references, and expert testimony, to
resolve any doubts or ambiguities. Id. at 1583.
In this case at bar, the Court has determined that examination
of the claims (particularly Claim 1 which serves as a basis for
all claims) and the specification within Patent 6,155,411 ("the '411 patent") is adequate to construe that
patent. Although in the Markman hearing the Court received
extrinsic evidence, it has determined that it is unnecessary to
resort to that evidence in reaching its decision.
The Court annexes to this Opinion, and incorporates by
reference, copies of PM2 (altered to reflect the Court's
decision) and PM3, an enlargement of Figure 1A to the patent, the
most significant drawing. PM2 has been altered to reflect the
Court's adoption of the construction of the Claims in suit as
tendered by the parties.*fn2 All undisputed constructions
are adopted. In some instances the Court has adopted Plaintiff's
construction and in other cases the Defendant's, where those
The crux of the present dispute is whether, under the '411
patent, the two vessels are preformed and then assembled
("fused") into one product or whether the patent also encompasses
a product produced as a single entity. The Court concludes that
the claims of the ...