The opinion of the court was delivered by: MARTIN JENKINS, District Judge.
This matter concerns the alleged infringement of: (1) U.S.
Patent No. 6,086,697 (" '697 patent"), entitled "Rotating Label
System and Method," and (2) U.S. Patent No. 6,237,269 ("'269
patent"), entitled "Roll-Fed Method for Constructing a Rotatable
Label System." The Court will now construe the disputed claim
terms within the two patents.
Stephen M. Key is the named inventor in each of the patents,
both of which are assigned to Stephen Key Design, LLP.*fn1 The two
patents generally disclose systems and methods for "constructing
a rotatable label and attaching the rotatable label to a
container." '697 Patent at Abstract; '269 Patent at Abstract.
More specifically, the rotatable label described in the '697
patent "includes a release tab releasably attached to the
container, or to an inner label adhered to the container, to
secure the outer label to the container while the outer label is
wrapped around the container." '697 Patent at Abstract. The
release tab is subsequently detached, allowing the outer label to
rotate about the container. The '269 patent describes methods by
which the leading end of the outer label is "temporarily affixed
to the container while the outer label is wrapped around the
container. Once the trailing end is attached to a front surface
of the leading end, the outer label can be rotated about the
container over the inner label." '269 Patent at Abstract,
5:61-6:13. Both patents describe the outer label as preferably
being adapted with a transparent portion or window permitting the
viewing of information on the inner label and/or container. '697
Patent at Abstract; '269 Patent at Abstract.
Stephen Key Design and CCL Label (collectively, "Plaintiffs")
assert that Lego Systems, Inc., The Lego Group, and Lego Schweiz
AG (a.k.a. Lego Production AG) (collectively, "Defendants")
infringe both patents by manufacturing, distributing, and selling
a product called "Lego Bionicle," which utilizes a labeling
system that employs a fixed inner label, and an outer label that
rotates about the inner label and container. See id., Exh. C.
The construction of a patent claim is a matter of law for the
Court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372,
116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). To determine the meaning
of a patent claim, the Court considers three sources: the claims,
the specification, and the prosecution history. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en
bane), aff'd, Markman, 517 U.S. 370, 116 S.Ct. 1384,
134 L.Ed.2d 577.
First, the Court looks at the words of the claims. Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
"[T]he analytical focus must begin and remain centered on the
language of the claims themselves, for it is that language
that the patentee chose to use to particularly point out and
distinctly claim the subject matter which the patentee regards as
his invention." Texas Digital Systems, Inc. v. Telegenix, Inc.,
308 F.3d 1193, 1201-2 (Fed. Cir. 2002)(internal quotations and
citations omitted). Thus, there is a "heavy presumption" that
claim terms bear their ordinary meaning, as understood by persons
skilled in the relevant art. Id. at 1202; see also Teleflex, Inc.
v. Ficosa North America Corp., 299 F.3d 1313, 1325.
Second, it is always necessary to review the specification to
determine if the presumption of ordinary meaning is rebutted.
Texas Digital Systems, 308 F.3d at 1204. The presumption is only
rebutted in situations where the inventor (1) acting as his own
lexicographer, clearly set forth an "explicit definition" of the
term that is different from its ordinary meaning; or (2) has
disavowed or disclaimed scope of coverage by using words of
"manifest exclusion or restriction. . . ." Id. "But if the
meaning of the words themselves would not have been understood to
persons of skill in the art to be limited only to the examples or
embodiments described in the specification, reading the words in
such a confined way would mandate the wrong result and would
violate our proscription of not reading limitations from the
specification into the claims." Id; see also Teleflex, 299 F.3d
at 1326 ("limitations from the specification are not to be read
into the claims. . .").
Third, the court may consider the prosecution history of the
patent, if in evidence. Vitrouics, 90 F.3d at 1582. "Although the
prosecution history can and should be used to understand the
language used in the claims, it too cannot enlarge, diminish, or
vary the limitations in the claims." Markman, 52 F.3d at 980
(internal quotations and citations omitted). However, a
concession made or position taken to establish patentability in
view of prior art, upon which the examiner has relied, is a
substantive position on the technology for which a patent is
sought, and will generally generate an estoppel. In contrast,
when claim changes or arguments are made in order to more
particularly point out the applicant's invention, the purpose is
to impart precision, not to overcome prior art. Such prosecution
is not presumed to raise an estoppel, but is reviewed on its
facts, with the guidance of precedent. Pall Corp. v. Micron
Separations, Inc., 66 F.3d 1211, 1220 (Fed. Cir. 1995) (citations
Ordinarily, the Court should not rely on expert testimony to
assist in claim construction, because the public is entitled to
rely on the public record of the patentee's claim (as contained
in the patent claim, the specification, and the prosecution
history) to ascertain the scope of the claimed invention.
Vitronics, 90 F.3d at 1583. "[W]here the public record
unambiguously describes the scope of the patented invention,
reliance on any extrinsic evidence is improper." Id. Extrinsic
evidence should be used only if needed to assist in determining
the meaning or scope of technical terms in the claims, and may
not be used to vary or contradict the terms of the claims. Id.
(quoting Pall Corp., 66 F.3d at 1216); Markman, 52 F.3d at 981.
However, the Court is free to consult reference materials, such
as dictionaries, for assistance in determining the ordinary
meaning of a claim term and such sources are not considered
extrinsic evidence. Texas Digital Systems, 308 F.3d at 1202-03.
Further, the intrinsic record must be consulted to determine
which definition is most consistent with the use of the word by
the inventor. Id. at 1203. However, "[i]f more than one
dictionary definition is consistent with the use of the word[ ]
in the intrinsic record, the claim term[ ] may be construed to
encompass all such consistent meanings." Id.