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March 26, 1999


The opinion of the court was delivered by: Joyce Hens Green, District Judge.


At the request of the parties, this Court held a Markman hearing to construe the terms of a United States patent owned by defendant and counterclaimant Innovatron, S.A. ("Innovatron"). At issue are two method claims describing the process for electrically connecting a portable card — the precursor of today's "smart cards." The background for this lawsuit is set forth in Thomson Consumer Electronics, Inc. v. Innovatron, S.A., 3 F. Supp.2d 49 (D.D.C. 1998).


Under patent law, an inventor sets forth the invention to which he claims exclusive rights in a series of claims. In litigation, interpretation of the terms used in patent claims has been declared to be a matter of law to be decided by the Court. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 978-81, 987 (Fed.Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). In cases where a party's view that a patent has been infringed or is invalid turns on how the claims are construed, the Markman decisions suggest a procedure for claim construction early in the case — a Markman hearing — to facilitate resolution of patent cases as a matter of law. See MediaCom Corp. v. Rates Technology, Inc., 4 F. Supp.2d 17, 21-22 (D.Mass. 1998) ("These hearings run the gamut from midtrial sidebar conferences that undergird relevance rulings . . . to virtual mini-trials extending over several days and generating extensive evidentiary records.") (citations omitted).

In this case, the parties mutually requested at the initial scheduling conference that the Court schedule a freestanding Markman hearing to resolve their interpretive disputes at an early stage of the case. The Court was told that her claim construction would allow the parties to evaluate whether the case could be resolved by dispositive motions. Relying on the expertise of the experienced patent litigators on both sides, who invited the Court to jump on the Markman bandwagon, the Court did so. Having been through the process — which was not uninteresting — the Court now has some misgivings.*fn1 The parties have an actual and concrete dispute about the meaning of many of the claim terms. However, their request for construction of those terms is not tied to any specific request for relief. Review of the proposed orders submitted by the parties after the hearing demonstrate that what is sought borders on an advisory opinion in violation of Article III's case or controversy requirement.*fn2

Indeed, during the Markman hearing, the Court was urged to render blind justice in construing the patent claims without receiving information concerning how a certain construction might influence either the infringement or validity analysis; the fear being that the claim construction might be unduly influenced by knowledge of the allegedly infringing device's method of operation. The Court fully recognizes the principle that the claim terms are to construed without regard to how the claims might read on a specific device, but that can be accomplished in connection with a specific request for relief. Under the unique circumstances of this case, in which the parties have fully litigated some of their claim contentions in the context of requests for relief before the International Trade Commission ("ITC" or "the Commission"), the Court is willing to construe the terms as requested. However, because the Federal Circuit currently is reviewing the Commission's construction of a number of these same terms, this Court expressly reserves the right to revisit the claim construction herein when the Federal Circuit's final decision is released.


A. Legal Standards Governing Claim Construction

Claim construction requires a degree of imagination from the Court. First, the Court must obtain sufficient currency with the technical terms employed to read the patent because the objective of claim construction is to ascertain the meaning that a person of ordinary skill in the art would give to the terms in dispute. See Wiener v. NEC Electronics, Inc., 102 F.3d 534, 539 (Fed.Cir. 1996); Haynes Int'l, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1578 n. 4 (Fed.Cir. 1993). Second, the Court must travel in time, for the operative time for interpreting the claim terms is the date of the application for the patent. See Wiener, 102 F.3d at 539.

In this case the parties agree that the requisite degree of skill to read the '464 patent is two years of formal training in electrical engineering or one year of practical experience. E.g., Markman Hrg.Tr. [hereafter "Tr."] (June 30, 1998, a.m.) at 41-42 (testimony of Dr. Roman Kuc ("Kuc")). The parties further agree that the relevant date is January 28, 1978, when the inventor, Roland Moreno ("Moreno") filed his foreign application. See Tr. (June 30, 1998, p.m.) at 18-19.

When interpreting the claims, the Court may resort to certain sources, which are arranged in hierarchical order. The Court looks first to those sources on which the general public may rely to ascertain the scope of a patent, i.e., the patent itself, which includes the claims and the specification, and, if relevant, the prosecution history before the Patent and Trademark Office (a.k.a. the "file wrapper"). See Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.Cir. 1998); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996). These sources comprise the "intrinsic evidence" of the patent's meaning, and, together they are "the most significant source of the legally operative meaning of disputed claim language." Vitronics, 90 F.3d at 1582.

Construction begins with the wording of the claims, asserted and non-asserted, which are to be examined in their entirety. See Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed.Cir. 1995). The claim's words and phrases should be given their ordinary and customary meaning. However, a patentee may choose to be her own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition is clearly stated in the patent specification or file history. Vitronics, 90 F.3d at 1582.

Perhaps the most difficult rule of claim construction to apply is that the claims "must be read in view of the specification, of which they are a part." Markman, 52 F.3d at 979.

  The specification contains a written description of
  the invention which must be clear and complete enough
  to enable those of ordinary skill in the art to make
  and use it. Thus the 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. However, the limitations of the specification may not be read into the claims. Comark, 156 F.3d at 1186. The Federal Circuit acknowledges that "there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification." Id.

Prosecution history should also be considered as intrinsic evidence, including the record of proceedings before the Patent and Trademark Office. See Vitronics, 90 F.3d at 1582 (prosecution history is "often of critical significance in determining the meaning of the claims"). Those proceedings may incorporate the patentee's representations as to claim scope, together with a review of the prior art. See id. at 1583.

"In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term." Id. However, if ambiguity remains, the Court may consult extrinsic evidence such as expert testimony, dictionaries or learned treatises. See Thomson, 3 F. Supp.2d at 52. Nevertheless, such extrinsic evidence may not contradict the manifest meaning of the claims as set forth, even by implication, in the specification and prosecution history. See Vitronics, 90 F.3d at 1584-85.

B. The '464 Patent

The '464 patent is entitled "Method and Apparatus for Electrically Connecting a Removable Article, In Particular A Portable Electronic Card." Claim 1 (independent) and Claim 8 (dependent from Claim 1) are set forth below.*fn3

  1. Method for electrically connecting a removable
  article having at least one electric circuit thereon,
  with an electric device, which cooperates with said
  removable article, said removable article having
  electrically conductive terminals and said electric
  device having conductor elements, both said
  electrically conductive terminals and said conductor
  elements having corresponding contact surfaces, the
  method comprising the steps of:
    (a) bringing, respectively, said corresponding
      contact surfaces of said electrically conductive
      terminals into contacting relationship with
      said corresponding contact surfaces of said
      conductor elements;
    (b) testing said corresponding contact surfaces
      for the existence of correct alignment and
      electrical contact between said corresponding
      contact surfaces; and
    (c) displacing said corresponding contact surfaces
      relatively, in a direction tangential to said
      corresponding contact surfaces if said testing
      determines non-alignment and non-existence of
      correct electrical contact, and stopping the
      relative displacement of corresponding contact
      surfaces when said testing determines said
      alignment and existence of correct electrical
  8. Method as defined by claim 1 wherein said step of
  testing said corresponding contact surfaces for said
  existence of correct electrical contact comprises:
  performing predetermined operations which provide
  a predetermined expected response from the
  removable article upon the existence of correct
  alignment and electrical contact; and comparing the
  actual response of said removable article with the
  predetermined expected response.

'464 Patent, Col. 9, Ins. 54-68; Col. 10, Ins. 1-10, 51-59.

C. The Disputed Terms

Claim 1 preamble

1. "Method for Electrically Connecting"

The parties now agree that this is a statement of the invention's purpose and does not limit Claim 1.

2. "Cooperates"

The parties now agree that this term means that the removable article and the electric ...

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