The opinion of the court was delivered by: Pisano, District Judge.
Presently before the Court in this patent infringement case is the parties' request for claim construction. Plaintiff Joyal Products, Inc. ("Joyal") has brought this action against Johnson Electric North America, Inc., Johnson Electric Consulting, Inc., Johnson Electric Industrial Manufactory, Ltd., and Delphi Corporation ("Defendants") claiming that Defendants infringed on Joyal's patent, United States Patent No. 5,111,015 (the "'015 Patent"), titled "Apparatus and Method for Fusing Wire." This patent relates to a particular method for making electrical connections in the production of a class of machines known as dynamoelectirc machines, which includes electric motors and generators.
The instant action was filed on October 21, 2004. Plaintiff filed an Amended Complaint on February 9, 2005. A Second Amended Complaint joining additional defendants was filed on June 24, 2005, and a Third Amended Complaint was filed on July 24, 2006. Thereafter, on April 5, 2007, the parties filed a Joint Claim Construction Statement identifying agreed upon claim term constructions along with disputed claim terms and proposed constructions for the disputed terms. Each party subsequently fully briefed the issue of the proper construction of the disputed claim terms. The Court held a Markman hearing on September 24, 2007. This Opinion addresses the proper construction of the disputed claim terms.
I. Standards for Claim Construction
In order to prevail in a patent infringement suit, a plaintiff must establish that the patent claim "covers the alleged infringer's product or process." Markman v. Westview Instrs., Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Consequently, the first step in an infringement analysis involves determining the meaning and the scope of the claims of the patent. Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 988 (Fed. Cir. 1995). Claim construction is a matter of law, Markman v. Westview Instrs., Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) aff'd 517 U.S. 370 (1996), therefore, it is "[t]he duty of the trial judge . . . to determine the meaning of the claims at issue." Exxon Chem. Patents, Inc. v. Lubrizoil Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995).
In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), the Federal Circuit emphasized that "[i]t 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." 415 F.3d 1312 (internal quotations omitted) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) ("we look to the words of the claims themselves . . . to define the scope of the patented invention"); Markman, 52 F.3d at 980 ("The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims."). Generally, the words of a claim are given their "ordinary and customary meaning," which is defined as "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Id. at 1312-13 (citations omitted). In this regard, the Federal Circuit has noted that It is the person of ordinary skill in the field of the invention through whose eyes the claims are construed. Such person is deemed to read the words used in the patent documents with an understanding of their meaning in the field, and to have knowledge of any special meaning and usage in the field. The inventor's words that are used to describe the invention--the inventor's lexicography--must be understood and interpreted by the court as they would be understood and interpreted by a person in that field of technology. Thus the court starts the decisionmaking process by reviewing the same resources as would that person, viz., the patent specification and the prosecution history.
Id. (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed.Cir.1998)).
In the process of determining the meaning of a claim as understood by a person skilled in the art, a court may look to various sources from which the proper meaning may be discerned. These sources include "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Id. at 1314. While a court is permitted to turn to extrinsic evidence, such evidence is generally of less significance and less value in the claim construction process. Id. at 1317. Extrinsic evidence would include evidence that is outside the patent and prosecution history, and may include expert testimony, dictionaries and treatises. Id. The Federal Circuit has noted that caution must be exercised in the use of extrinsic evidence, as this type of evidence may suffer from inherent flaws affecting its reliability in the claim construction analysis. Id. at 1319 ("We have viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms."). While "extrinsic evidence may be useful to the court, . . . it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence."
II. The Disputed Claim Terms
The parties have submitted a Joint Claim Construction Statement in which they have identified sixteen disputed claim terms. The Court will address each of these in turn.
1. "Fusing Method of Forming a Fused Joint"
This disputed phrase appears in Claims 1 and 16 of the '015 Patent. Plaintiff has offered two alternate constructions. Plaintiff's first proposed construction for this phrase is as follows: "a method of making a mechanical surface adhesion bond between electrically conductive elements by applying heat to soften the elements without melting them and pressure to force the softened elements together." Alternatively, Plaintiff proposes this more concise construction: "method of bonding electrically conductive elements together by applying heat and pressure to force the elements together." Defendants, on the other hand, argue that "fusing method of forming a fused joint" means: "method of making a connection between two or more parts resulting from uniting or blending in a whole by melting together."
The first obvious difference in the two proposed constructions centers on the question of whether the joining of the two parts to be connected, in this case the terminal and armature wire, requires heating the parts to the point of melting. Under Defendants' proposed construction, the terminal and armature wire would be heated to the point of melting, which in turn could cause them to become joined. Under Plaintiff's construction, melting is expressly avoided and the parts are merely softened by the application of heat. Also, the parties differ on the issue of whether the application of pressure to the parts being joined is included within the meaning of the disputed phrase.
In support of its proposed construction, Plaintiff points first to the language of the claims themselves. According to Plaintiff, nothing in Claim 1 or Claim 16 indicates that the fusing method claimed requires heating the terminal and the armature wire to the point of melting them together. In response, Defendants point to the language in the claims that describes the application of "heat sufficient to . . . fuse" the armature wire to the terminal.*fn1 This language, according to Defendants, specifically describes melting because, they argue, "to fuse" means "to bond" and the fusing described in the claims entails the application of only heat to achieve the resulting bond, i.e., to "mak[e] a fused joint." Said another way, under Defendant's interpretation, the "fusing" described in the disputed phrase is a heat-only process that involves bonding parts through the process of melting them together.
However, Defendants' argument appears to be somewhat circular, as it is dependent upon the construction of the term "fuse," and how this term, as well as the concept of "fusing," is understood by a person of ordinary skill in the art of commutator fusing. See On Demand Machine Corp. v. Ingram Industries, Inc., 442 F.3d 1331, 1337 (Fed. Cir. 2006) ("[T]he proper judicial construction of a claim and its terms is from the viewpoint of a person of ordinary skill in the field of the invention; the court must determine how such a person would understand the claim in the context of the particular technology and the description in the specification, with due reference to the prosecution history."). Persons of skill in the art are deemed to read the claim term "not only in the context of the particular claim in which the patent appears, but in the context of the entire patent, including the specification." Philips, 415 F.3d at 1313. Indeed, the Phillips court noted that the specification may be the "single best guide to the meaning of a disputed term." Id. at 1315.
The specification of the '015 Patent describes the procedure known as "fusing":
Fusing is a known technique for joining electrically-conductive elements in which a fusing electrode is contacted with one element adjacent the joint so that the fusing electrode forces the elements together. A ground electrode is also contacted with one of the elements, typically at a location remote from the joint, such that an electrical current is passed through the electrodes and at least one of the elements. Heat generated by the electrical current, and the high pressure applied by the fusing electrode, causes a bond to form between the elements.
Nothing in the patent specification indicates that "fusing" requires "melting" of any part to be joined. Nor, according to the specification, does "fusing" appear to be a heat-only process. Rather, the specification describes "fusing" as the joining of electrical conductors through the application of both heat and pressure. This supports Plaintiff's proposed construction of the disputed term. Similarly, the prosecution history of the '015 Patent and the prior art of a patent discussed during prosecution further support Plaintiff's proposed construction. It appears that the Patent Examiner had considered the term "fusing" to be synonymous with "welding," which, like Defendants' interpretation of the term, would require melting. However, counsel for Joyal explained to the examiner that "fusing" and "welding" were "entirely different joining techniques." Buckingham Decl.*fn2 , Ex. B at J00198. Counsel explained that "fusing" involved joining elements to one another "under the combined influence of heat transferred from the fusing electrode and pressure applied by the fusing electrode." Id. at J00198. Additionally, counsel referred to the prior art Warner '152 patent,*fn3 which had been cited by the Patent Examiner, and which explained that in "fusing," "the electrode dissipates heat into the assembly to soften the parts without causing them to reach their plastic state. . . . [P]ressure is applied to thereupon force the softened parts together to form the compression joint." Buckingham Decl., Ex. D at col. 1:60-64.
Notwithstanding the above evidence that supports the conclusion that "fusing" or "to fuse" is understood by persons skilled in the art to include the application of both heat and pressure, Defendants argue that the inclusion of "pressure" into the construction of Claim 1 is not permitted under the doctrine of claim differentiation. That doctrine is based on "the common sense notion that different words or phrases used in separate claims are presumed to indicate that the claims have different meanings and scope." Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1369 (Fed. Cir. 2007) (quoting Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed. Cir.1999)). Defendants point to Claim 4, which states as follows: "The method of claim 1, further included applying a compressive force against said terminal by said electrodes." According to Defendants, if the application of pressure was included in the construction of Claim 1, then Claim 4 would be rendered redundant and superfluous.*fn4
Plaintiff responds that the specification makes clear that the application of pressure that is described in Claim 1 is different from the application of pressure set forth in Claim 4, and, therefore, the claims are consistent with the doctrine of claim differentiation. Plaintiff asks the Court, consistent with the doctrine of claim differentiation, to "presume a difference in the meaning and scope when different words or phrases are used in separate claims." Comark Comm., Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998). According to Plaintiff, Claim 4 refers to an optional subsequent step of pressure being applied, which is in addition to the application of pressure during the fusing described in Claim 1. Indeed, Claim 4 expressly uses the term "further," which in ordinary ...