was held on June 26, 2000 on Dwight Cavendish's Motion to Enter Report of
Special Master and on Macrovision's Motion to Modify Report of Special
Master, and the parties appeared through their respective counsel of
record. Having considered the briefs submitted by the parties, and the
arguments of counsel, and for the foregoing reasons, Dwight Cavendish's
Motion to Enter Report of Special Master is hereby GRANTED and
Macrovision's Motion to Modify Report of Special Master is hereby
II. STANDARD OF REVIEW
Claim construction is a matter of law for the court, which is empowered
and obligated to construe the meaning of the language used in the patent
claim. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.
1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577
(1996). In reviewing a special master's conclusions of law, the district
court conducts a de novo review. Swoboda v. Pala Min., Inc., 844 F.2d 654
(9th Cir. 1988); see also Oil, Chemical and Atomic Workers Intern.
Union, AFL-CIO v. N.L.R.B., 547 F.2d 575, 580 (D.C.Cir. 1976) ("a
master's conclusions of law are entitled to no special deference from the
reviewing court.") Accordingly, the court will conduct a de novo review
of the Special Master's claim construction.
III. LEGAL STANDARD FOR CLAIM CONSTRUCTION
Claim construction is a matter of law for the court, but claim
construction is not an obligatory exercise in redundancy and therefore
does not require the court to repeat or restate every claim term. U.S.
Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.Cir. 1997).
Rather, the court must interpret only disputed terms. Wang Laboratories,
Inc. v. Mitsubishi Electronics America, Inc., 103 F.3d 1571, 1583
(Fed.Cir. 1997). Resolving the meaning of disputed terms allows the court
to clarify and explain what the patentee covered by the claims. U.S.
Surgical, 103 F.3d at 1568.
In interpreting disputed claim terms, the court should look first to
the intrinsic evidence of record. Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (Fed.Cir. 1996.) Intrinsic evidence includes the
language of the claims, the specification, and the file history, if in
evidence. Id. Such intrinsic evidence is the most significant source of
the legally operative meaning of the disputed claim language. Id. In most
situations, analysis of the intrinsic evidence alone will resolve any
ambiguity in a disputed claim term. Id. at 1583.
The words of the claims themselves define the scope of the patented
invention. Vitronics, 90 F.3d at 1582. Claim construction begins and ends
in all cases with the actual words of the claim. Renishaw PLC v. Marposs
Societa per Azioni, 158 F.3d 1243, 1248 (Fed.Cir. 1998). Absent a special
and particular definition created by the inventor, terms in a claim are
to be given their ordinary and accustomed meaning. Id. at 1249. This
holds true for technical terms as well, which are interpreted from the
perspective of persons skilled in the art. See Phillips Petroleum Co. v.
Huntsman Polymers Corp., 157 F.3d 866, 871 (Fed.Cir. 1998). Ordinarily, a
claim term expressed in general descriptive words will not be limited to
a numerical range appearing in the specification or other claims.
Renishaw, 158 F.3d at 1248.
To determine whether disputed terms have been used by the inventor in a
manner other than their ordinary meaning, it is always necessary to
review the specification. Vitronics, 90 F.3d at 1582. The specification
acts as a dictionary when it expressly defines terms used in the claims
or when it defines terms by implication. Id. A court may not resort to
statements in the specification to construe a claim unless there is a
claim term with which to draw in those statements. Renishaw, 158 F.3d at
The court may also consider the file history of the patent, if it is in
evidence. Vitronics, 90 F.3d at 1582. The file history is often of
critical significance in determining the meaning of the claims. Id. Any
interpretation that is provided or disavowed in the file history shapes
the claim scope. Renishaw, 158 F.3d at 1249 n. 3.
In addition to intrinsic evidence, a court may rely on extrinsic
evidence to construe claims, but only where the intrinsic evidence alone
does not resolve the ambiguity in a disputed claim term. Vitronics, 90
F.3d at 1583. Extrinsic evidence may not be used to vary or contradict
the claim language. Id. at 1584. A court may, however, examine or consult
extrinsic evidence to ensure that its claim construction based on
intrinsic evidence is not inconsistent with how a person skilled in the
art would understand the claim terms. Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1308-09 (Fed. Cir. 1999). Extrinsic
evidence refers to evidence that is external to the patent and its file
history, such as expert testimony, inventor testimony, dictionaries, and
technical treatises and articles. Vitronics, 90 F.3d at 1584. The court
may freely consult dictionaries and technical treatises at any time to
better understand the technology and may rely on dictionary definitions
when construing claims, so long as the dictionary definition does not
contradict any definition found in the patent documents. Id. at 1584, n.
The Special Master's report construed four disputed terms. Macrovision
filed objections to the Special Master's report, but only as to the
recommended interpretation for the term "defeating the effects of a video
anti-copy process" ("the defeating phrase") in Claim One. The Special
Master recommends that the defeating phrase be construed to mean:
"circumventing a copy protection process to produce a watchable copy."
Macrovision objects, proposing the alternative construction of "defeating
some or all of the effects of a video anti-copy process and includes
reducing the effects of a video anti-copy process." Dwight Cavendish, on
the other hand, urges that the Special Master is correct. Thus, the
dispute centers around whether the `927 patent covers technology that
reduces negative side effects on the original videotape (as Macrovision
contends) or only technology that counteracts the anti-copying process
(as Dwight Cavendish contends). For the reasons that follow, the court
finds that the disputed phrase means "circumventing a copy protection
process to produce a watchable copy."
A. The Plain Meaning of the Words in the Claim Support a Construction
of "Circumventing a Copy Protection Process to Produce a Watchable
"The words of the claims themselves define the scope of the patented
invention." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed.Cir. 1996); see also Renishaw PLC v. Marposs Societa' per Azioni,
158 F.3d 1243, 1248 (Fed. Cir. 1998). In this case, the words "the
effects" do not specify or exclude any specific types of effects.
Instead, the term "the effects" is plural and all inclusive. Thus, it
follows that "the effects" means all the effects, and the words of the
claim provide no basis for interpreting "the effects" to mean "some or
all of the effects."
Macrovision objects to this construction because it requires the
addition of the words "to produce a watchable copy." Macrovision's
argument is unavailing in light of the additional words in the
construction that it asserts. Macrovision urges adding the words "and
includes reducing the effects of a video copy process." The plain meaning
of the words does not support this construction because it not only adds
words, it adds a new concept, that of decreasing negative unintended side
effects. Macrovision also asserts that this construction is invalid
because it improperly adds a modifier "all" to the term "the effects."
This construction, however,
does not add a modifier. Instead, it recognizes that the word "the"
modifies "effects," to produce a phrase that is allinclusive.
Accordingly, the plain meaning favors the construction "circumventing a
copy protection process to produce a watchable copy."
B. The Different Words Used in Claim One and Claim Six Do Not Require
Macrovision argues that a comparison of Claims One and Six shows that
the defeating phrase in Claim One should not be construed to mean "to
produce a watchable copy." The preamble to Claim One asserts "[a] method
of defeating the effects of a video anti-copy process" while Claim Six
covers "[a] method of defeating a video copy protection process . . .
thereby enabling recording a viewable copy of the video signal."
Macrovision asserts that these differences were intentional and intended
to make Claim One broader than Claim Six.
1. Claim Differentiation Doctrine Does Not Apply
The doctrine of Claim Differentiation assumes that different claims
have different scopes, and creates a presumption that different words
have different meanings. The presumption that different words have
different meanings, however, only applies if the absence of the different
meanings would render one claim superfluous. Tandon Corp. v. U.S.
International Trade Commission, 831 F.2d 1017, 1023 (Fed.Cir. 1987). In
this case, the presumption does not apply because construing the preamble
of Claim One to have the same meaning as the preamble of Claim Six would
not render either claim superfluous as multiple differences exist between
the claims.*fn1 Moreover, the intrinsic and extrinsic evidence in this
case show that "defeating the effects of a video anti-copy process" and
"defeating a video copy protection process" have the same meaning and
overcomes any presumption that would have been created by the doctrine of
2. The Different Words In Claims One and Six Do Not Require Different
Although it is unclear whether Macrovision argues that claim
differentiation applies, it is clear that Macrovision attempts to rely
upon the logic underlying the claim differentiation doctrine. Macrovision
argues that it is invoking the "common sense notion" underlying the claim
differentiation doctrine that "different words or phrases used in
separate claims are presumed to indicate that the claims have different
meaning and scope." (Mot. to Modify at 5:26-6:2, quoting Karlin
Technology Inc. v. Surgical Dynamics, Inc.,