The opinion of the court was delivered by: Joyce Hens Green, District Judge.
MEMORANDUM OPINION AND ORDER
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).
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
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
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.
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
(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.
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.
The parties now agree that this term means that the removable
article and the electric ...