The opinion of the court was delivered by: Pisano, District Judge.
Presently before the Court in this patent infringement action is the parties' request for claim construction. Plaintiff ICI Uniqema, Inc. ("ICI" or "Plaintiff") asserts in this matter that the sunscreen products of Defendant Kobo Products, Inc. ("Kobo" or "Defendant") infringe on its patents, United States Patent Nos. 5,599,529 (the "'529 patent"), entitled "Dispersions" 5,366,660 (the "'660 patent") and, also entitled "Dispersions."*fn1 The patents involve dispersions of titanium dioxide ('529 patent) and zinc oxide ('660 patent) that are used in the manufacturing of sunscreens.
The parties have filed a Joint Claim Construction Statement identifying agreed upon claim term constructions along with disputed claim terms and proposed constructions for the disputed terms. At oral argument, the parties further clarified and narrowed the number of terms in dispute. Each party has fully briefed the issue of the proper construction of the disputed claim terms. The Court, having carefully considered the submissions of the parties and the arguments of counsel at the Markman hearing, addresses the proper construction of the disputed claim terms below.
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,*fn2 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." Id.
II. The Disputed Claim Terms
The parties have identified several terms from the claims of the '529 and '660 patents that are in dispute. The Court will address each of these in turn.
This disputed term appears in Claims 1 and 22 of the '529 patent, and in claims 1 and 26 of the '660 patent. The parties dispute the meaning of this term for the same basic reasons in each patent. Plaintiff argues that the term should be broadly construed, and offers the following proposed construction: "a slippery or viscous liquid or liquifiable substance that is substantially immiscible in water, including any such substance that would find value in a cosmetic preparation." Joint Claim Chart*fn3 ("Chart") at 2. Plaintiff bases its construction on the non-limiting language in the patents' specifications, each of which indicate that the oil referred to can be "any oil" but "usually will be an oil which finds value in a cosmetic preparation." '529 patent, col. 4, lines 1-3; '660 patent, col. 3, lines 13-15. The specifications further state that such oils "usually" are vegetable oils, and they list "typical examples" of the same. '529 patent, col. 4, lines 3-11; '660 patent, col. 3, lines 15-22. Citing the dictionary (Dictionary.com and the American Heritage Dictionary) Plaintiff argues that "oil" should be defined more in terms of its functional qualities rather than the material of which it is comprised. Under Plaintiff's proposed construction, the term "oil" would include silicone oils, esters and alcohols.
Defendant argues for a more narrow construction, and contends that the term "oil" as used in the patents should be construed as vegetable oils, sunflower oil, caster oil. This term is limited to materials which are greasy, sticky and viscous liquid substances that are non-volatile and substantially immiscible in water and comprise at least one carbon chain. The term "oil" does not include metal based fluids, such as silicon based ...