The opinion of the court was delivered by: Richard W. Roberts United States District Judge
MEMORANDUM OPINION AND ORDER
Michilin Prosperity Co. ("Michilin") alleges that the POWERSHRED PS70-2CD distributed by Fellowes Manufacturing Co. ("Fellowes") infringes United States Patent No. 6,550,701 ("the '701 patent") under the doctrine of equivalents. The parties submitted claim interpretation memoranda, and a hearing was held in accordance with Markman v. Westview, 517 U.S. 370 (1996), to construe the disputed terms of the '701 patent claims. Consistent with the patent claims, the specification and extrinsic evidence where appropriate, "two inports" will be construed to mean at least two inports, the orientation of the "vertical channel walls" and "inclined, curved channel walls" will be interpreted to be in relation to the plane of the roller blades, "touch switch" will denote a switch that requires physical contact in order to be activated, the "paper touch switch" and "disc touch switch" will be construed as separate switches that are located in different "appropriate locations," and the "single touch switch" of claim 4 will be construed as a switch, in addition to the paper touch switch and disc touch switch.
With the claims now construed, it is clear that the '701 patent discloses, but does not claim, a one-switch embodiment of the claimed shredding invention, thereby dedicating that embodiment to the public. Because the one-switch embodiment has been dedicated to the public, Michilin may not assert infringement under the doctrine of equivalents for that embodiment, and Fellowes's previous motion for summary judgment of non-infringement under the doctrine of equivalents based on the disclosure-dedication rule now will be granted.
The '701 patent claims as its invention a shredder with inports for paper and media storage discs and a paper touch switch and a disc touch switch to activate the shredding function. The patent contains four claims and claim 1 is the sole independent claim, reciting a machine body, two inports (one to receive paper, the other discs), a paper touch switch and a disc touch switch, which each activate the shredding function when something is inserted in its corresponding inport. '701 patent, col. 4:52 -- col. 6:15. Fellowes's POWERSHRED PS70-2CD has inports for paper and media storage discs and only a single optical switch to activate the shredding function. Michilin alleges that the POWERSHRED PS70-2CD shredder infringes the '701 patent under the doctrine of equivalents. Michilin and Fellowes dispute the proper construction of seven claim terms of the '701 patent that require resolution in accordance with Markman.
Fellowes previously moved for summary judgment of non-infringement under the doctrine of equivalents based on the disclosed-but-not-claimed rule, also known as the disclosure-dedication rule, and that motion was denied.*fn1
In construing patent claims, a court must start with the claim language and consider it in light of the specification and prosecution history, and if necessary use extrinsic evidence, such as inventor testimony, to clarify any remaining ambiguity. Searfoss v. Pioneer Consol. Corp., 374 F.3d 1142, 1149 (Fed. Cir. 2004); Biogen, Inc. v. Berlax Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003); Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1332 (Fed. Cir. 2001); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312-19 (Fed. Cir. 2005).
I. CLAIM CONSTRUCTION OF THE DISPUTED TERMS
The '701 patent claims "two inports on an upper lid thereof" to receive the paper and optical discs to be shredded. The parties agree that "two inports" means the invention possesses two inports, but Fellowes argues that the '701 patent claims two or more inports, while Michilin contends that the patent claims two, and only two, inports. (See Michilin's Resp. Brief at 9-10; Fellowes's Opening Brief at 13-14.)
The '701 patent uses the term of art "comprising" to claim all of the elements, including the "two inports," of the invention, meaning that the claimed elements are essential, "but other elements may be added and still form a construct within the scope of the claim." Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997); '701 patent, col. 4:54. Therefore, the '701 patent claims an invention with at least two inports.
B. "Vertical channel walls" of the disc inport and "inclined, curved channel walls" of the paper inport
The '701 patent recites a paper inport with "inclined, curved channel walls" and a disc inport with "vertical channel walls." '701 patent, col 4:61-63. Fellowes argues that the orientation of the channel walls leading from the inports should be construed as relative to the plane of the roller blades, while Michilin maintains that the orientation of the channel walls should be ...