The opinion of the court was delivered by: Honorable Barry Ted Moskowitz United States District Judge
Randall Robinson ("Plaintiff" or "Patentee") received U.S. Patent No. 4,930,448 ("the '448 patent") on June 5, 1990, for his invention entitled "Animal Toy." The device consists primarily of a motorized mechanism by which an object rotates about a stationary base via an elongate rod. The basic idea is that an animal will be drawn to the spinning object and have some sort of pleasant interaction with it.
On August 26, 2005, Mr. Robinson filed a complaint with this Court alleging infringement of the '448 patent by Advanced Decoy Research, Inc. On April 13, 2006, Plaintiff amended his complaint to include George Brint and Panic Mouse, Inc. as additional defendants.
Plaintiff and Defendants have filed briefs supporting their proposed constructions of the claims of Patent '448. Pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), the Court must construe the claims of the '448 patent as a matter of law. On February 26, 2007, the court held a Markman hearing. Having considered the evidence presented in the parties' briefs and arguments at the hearing, the Court issues the following order construing the claim language as a matter of law.
I. Legal Standard for Claim Construction
To ascertain the meaning of the claims, the court initially looks to three sources of intrinsic evidence: the claims, the specification, and the prosecution history. Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history."). These sources form the public record of the patentee's claim. Id. at 1583. If the meaning of a claim is unambiguous from the intrinsic evidence, a court may not rely on extrinsic evidence in construing the claim. Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998).
In construing the claims, the court first looks at the language of the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc) aff'd 517 U.S. 370 (1996). There is a "heavy presumption" in favor of the ordinary and accustomed meaning of claim language as understood by one of ordinary skill in the art. Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312-1313 (Fed. Cir. 2005) ("We have made clear, moreover, that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application."). Accordingly, a technical term used in a patent is usually interpreted as having the meaning a person of ordinary skill in the field of the invention would have understood it to have at the time of filing. However, a patentee is entitled to "act as his own lexicographer to specifically define terms of a claim contrary to their ordinary meaning." Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (citations omitted). In these instances, a court should construe the term as defined by the patentee. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999).
In its initial examination of the intrinsic evidence, the court is also instructed to "examine the prosecution history to determine whether the patentee has relinquished a potential claim construction in an amendment to the claim or in an argument to overcome or distinguish a reference." Bell Atlantic Network Services., Inc. v. Covad Communications Group, 262 F.3d 1258, 1268 (Fed. Cir. 2001) (citing Southwall Techs., Inc. v. Cardinal IG, Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) ("The prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution.")). The prosecution history, or "file wrapper," contains the complete record of all the proceedings before the United States Patent and Trademark Office ("USPTO"), including any express representations made by the applicant regarding the scope of the claims. Bell Atlantic, 262 F.3d at 1268. In examining the prosecution history, however, the Court cannot "enlarge, diminish, or vary" the limitations of the claims. Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 227 (1880).
If the meaning of the claim limitation is apparent from the intrinsic evidence alone, the Court may not rely on extrinsic evidence other than that used to ascertain the ordinary meaning of the claim limitation. Bell Atlantic, 262 F.3d at 1268-69. However, in the "rare circumstance" that the meaning of the asserted claims cannot be ascertained after examining the intrinsic evidence, the Court may look to extrinsic evidence to help resolve any lack of clarity. Id. Extrinsic evidence consists of all evidence external to the patent and prosecution history and includes such evidence as expert testimony, articles, and inventor testimony. Markman, 52 F.3d at 980. It may be used only to assist the Court in determining the proper understanding of the disputed limitation, rather than "to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history." Bell Atlantic, 262 F.3d at 1269. While dictionaries fall within the category of extrinsic evidence, the Court is free to consult them at any time "so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents." Vitronics, 90 F.3d at 1584 n.6. Dictionaries are preferred over opinion testimony because they are objective and available to the public. Id. at 1585. This limited use of extrinsic evidence comports with the principle that "[a]llowing the public record to be altered or changed by extrinsic evidence . . . would make th[e] right [to design around the claimed invention] meaningless." Id. at 1583. "Any other rule would be unfair to competitors who must be able to rely on the patent documents themselves, without consideration of expert opinion that then does not even exist, in ascertaining the scope of a patentee's right to exclude." Southwall, 54 F.3d at 1578.
II. Construction of the Terms of the '448 Patent: Claim 1
The Court addresses the following twelve terms of Claim 1 of the '448 patent:
 A toy device for the amusement of pet animals,  comprising:  a base member having a  lower surface for freely seating on a substantially flat surface, the lower surface  having no projections for connection to the seating surface; an  elongate, rod-like member  rotatably mounted at one end on said base member and extending in an upwardly and  radially outwardly arched path away from said base member with its free endspaced radially outwardly from the outer  periphery of said base member; a  single flexible connecting device secured to the free end of said elongate member; an object attached to said connecting device  opposite and directly below the free end of said member; and  drive means on said base member for rotating said elongate member to move said object in a path around said base for the amusement of a pet unsecured to said base.
A. "A Toy Device for the Amusement of Pet Animals"
The first disputed language, "a toy device for the amusement of pet animals," comprises the preamble of Claim 1. As a general rule, preambles are not construed as limiting the claims except in those instances where they recite "essential structure" or where they are "necessary to give life, meaning, and vitality to the claim." Catalina Mktg. Int'l, Inc. v. Coolsavings.com, 289 F.3d 801, 808 (Fed. Cir. 2002) (citation omitted). Thus, generally, "a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention." Id. (citation omitted). However, a patentee's "clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention." Id. Thus, statements of intended use may limit the claims in those instances where the patentee "clearly and unmistakably relied on those uses or benefits to distinguish prior art." Id. at 809.
In this instance Plaintiff clearly relied on use specified in the preamble to distinguish from the Postings reference (U.S. Pat. #1,699,308) when, in a response to the USPTO examiner's initial rejection, he characterized Postings as an "exercising device" and noted that the device in Postings "clearly has no 'amusement' value to the animals whatsoever." (Def's Ex. B at 35-36 (emphasis and quotations in original).) Plaintiff thereby relied on the "amusement" element of the preamble to define his claimed invention and to distinguish it from a prior art reference. Thus the preamble must be construed as limiting inasmuch as the claim requires an element of "amusement."
Plaintiff argues, and at first glance it appears, that the preamble need not be construed as limiting "amusement" to that of "pet animals." In this instance, Patentee did not argue during prosecution that his invention was patentably distinct from Postings based on the fact that a pet was to be amused. Indeed, he could not have done so because the Postings reference in fact discloses a device for the exercising of a pet (a dog). However, the intended use specified in the preamble, and which the Patentee relied upon in the prosecution history, is that of a "toy device for the amusement of pet animals." Plaintiff has cited no authority for the proposition that a preamble specifying the intended use of the device should be dissected in the claim construction process to include only the single distinguishing element. Such a dissection would be particularly odd in this instance where the remaining phrase ("for the amusement") is simply not logically cognizable without reference to the "amusee."
In light of the foregoing analysis, the Court will construe the preamble phrase "a toy device for the amusement of pet animals" as "a device for the amusement of an animal kept for pleasure or companionship, rather than solely for utility."*fn1
"Comprising" is a term of art in patent law which is construed to mean, as the parties stipulate, "including but not limited to." See SanDisk Corp. v. Memorex Products, Inc., 415 F.3d 1278, 1284 (Fed. Cir. 2005).
As such, the Court construes "comprising" to mean "including but not limited to."
Defendants cite to various other patents, which would have been prior art at the time of the '448 application, for the proposition that "base member" means "an integral support structure." Because the patent specification is reasonably clear on the structure of this element, and owing to the general presumption in favor of construing claim terms using intrinsic evidence, reference to other patents or additional extrinsic evidence is unnecessary. See Key Pharms, 161 F.3d at 716.
Plaintiff cites to the patent specification, in particular column 2 at line 19, for the proposition that "base member" should be construed to mean a "housing." However, that sentence states that the device "basically comprises a base or housing," thereby implying that a base member is not ahousing. In addition, while the patent specification appears to use the two terms interchangeably in some places, it also clearly distinguishes between the two in others. Compare Patent Abstract ("A toy device for a pet animal comprises a base housing having an upper wall . . . .") with Column 1, Line 27 ("The base preferably comprises a housing in which the rotatable member and drive assembly are mounted . . . .") (emphasis added). Accordingly, the Court cannot find that the specification clearly defines the term "base member" as a "housing."
Rather, the implication present throughout the patent, and the Court's understanding of the plain meaning,*fn2 indicate that the term "base member" should be construed as "supporting structural unit."
D. "Baving a Lower Surface for Freely Seating on a Substantially Flat Surface"
Defendants suggest that this term should be construed to mean having a "flat lower surface that rests directly onto a flat ground surface, in contact with the surface." (Joint Claim Construction Chart ("Claims Chart"), p. 2, section 1.3.) In support of this definition, the Defendants propose that the remainder of the phrase implies that the lower surface must be flat in order that it may "freely [sit] on a substantially flat surface." However, the Court believes this definition overreaches, in that the lower surface need not necessarily be flat to enable it to rest on a flat surface. The surfaces of many objects are not flat - an upturned bowl for example - yet those objects are quite capable of resting on a substantially flat surface.
Plaintiff contends that the phrase should be construed to mean that the base member is not secured to the flat surface, and cites to the prosecution history as evidence. During prosecution, the Patentee was faced with a prior art rejection by the patent examiner, and was forced to argue around the Postings reference. To avoid Postings, the Patentee argued both the above-mentioned "amusement" angle, as well an argument that Postings disclosed a device whereby the animal was tethered to the device and the device was secured to a surface (generally, the ground) - thus ostensibly forcing the animal to run circles around a stationary object. In contrast, Patentee argued, his invention describes a device in which the animal is neither tethered to the device, nor is the device secured to the surface.
The Court finds Plaintiff's argument persuasive. The prosecution history provides for a definition of the phrase which is consistent with the language of the claims, specification, and the plain meaning.*fn3 As such, the Court construes "having a lower surface for freely seating on a substantially flat surface" to mean: "having a lower surface that sits on, but is not secured to, a mostly flat surface."
E. "The Lower Surface Having no Projections for Connection to the Seating Surface"
Plaintiff contends that this phrase must be construed in light of the prosecution history to mean "having no arms extend[ing] downwardly into the seating surface." (Claims Chart, p. 2, section 1.4.) In support of this construction, Plaintiff cites to the November 20, 1989 amendment in response to the examiner's prior art rejections. In this response, Plaintiff was forced to argue around the prior art disclosure of Postings and McMurry (U.S. Pat. # 2,831,457) when he stated: "[I]n both Postings and McMurry, the base member is physically secured to the ground surface via projections from its lower surface . . . . It therefore is not freely seated on the ground in either case. . . ." (Def's Exh. B at 37.) In conjunction with this argument, it appears that Plaintiff amended Claim 1 to include the above language, claiming a negative element of "no projections."
The Court does not agree with Plaintiff's contention that the prosecution history should be interpreted as limiting "no projections for connection to the seating surface" to "no arms extend[ing] downwardly into the seating surface." While Plaintiff's intention when drafting the amended claim may have been to only disclaim those projections which extended downwardly, he did not do so. It is a fundamental axiom in patent law that a Court may not redraft a claim, via construction, to encompass what the patentee intended to claim, or could have claimed. In a situation very similar to this one, where the patentee was relying on prosecution history to support construction of the term "permanently affixed" as meaning "affixed to prevent movement in at least a horizontal plane," the Federal Circuit stated:
To be sure, the prosecution history indicates that the applicant intended to amend the claims to avoid the "detachable" connection of the Johnson skate. The same history, however, indicates that the applicant chose to add the term "permanently" to the claims in order to achieve this result. That the applicant could possibly have added terms other than "permanently" to create a patentable distinction with the asserted prior art is simply irrelevant to our claim construction task. Courts do not rewrite claims; instead, we give effect to the terms chosen by the patentee. See, e.g., Texas Instruments Inc. v. International Trade Comm'n, 988 F.2d 1165, 1171, 26 U.S.P.Q.2d (BNA) 1018, 1023 (Fed. Cir. 1993) ("[T]o construe the claims in the manner suggested by TI would read an express limitation out of the claims. This, we will not do because '[c]courts can neither broaden nor narrow claims to give the patentee something different than what he has set forth'" (quoting Autogiro Co. of Am. v. United States, 181 Ct. Cl. 55, 384 F.2d 391, 396, 155 U.S.P.Q. (BNA) 697, 701 (Ct. Cl.1967).).
K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364-65 (Fed. Cir. 1999).
Just as the court in K-2 refused to expand the scope of the phrase beyond that which was claimed, so must this Court. The distinction that the claim amendment here was a negative one, or specifically negating an element of the claim, does not distinguish K-2 from the present case. In this instance, reading "downwardly" into the claim would serve to expand the scope of Plaintiff's claim, because the claim would then encompass all projections not protruding "downwardly" - just as reading "permanently" to mean "affixed to prevent movement in at least a horizontal plane" would expand the scope of the K-2 claim to include fixation in methods outside the commonly understood definition of "permanently." Though a patentee is entitled to be his own lexicographer, "'the words of a claim will be given their ordinary meaning, unless it appears that the inventor used them differently.'" K-2, 191 F.3d at 1364 (quoting Hoganas AB v. Dresser Industries, Inc., 9 F.3d 948, 951 (Fed. Cir. 1993). In this instance, Plaintiff has not demonstrated that the language used in the prosecution history is sufficient to overcome the ordinary meaning of the phrase.*fn4
As such, "the lower surface having no projections for connection to the seating surface" shall be construed as "the lower surface having no parts extending outwardly for attachment or fastening to the seating surface."
F. "An Elongate, Rod-Like Member"
Plaintiff proposes that this phrase be construed as a "shaft having a length." The Court finds that such a construction would be unhelpful to a jury, as it remains quite vague in its employment of the phrase "having a length." Defendants' proposal of "a long, slender rod-like structure" appears to be supported by the patent specification and the dictionary definition of elongate,*fn5 and it also gives some additional definition to the phrase. Accordingly,
"an elongate, rod-like member" shall be construed as "a long, slender rod-like structure."
G. "Rotatably Mounted at One End on Said Base Member"
The parties stipulate that the term "rotatably mounted" means "connected such that it rotates." The Court shall construe it as such.
H. "Extending in an Upwardly and Radially Outwardly Arched Path Away from said Base Member"
The parties stipulate that "radially outwardly" means "away from center." The Court shall construe it as such.
I. "With its Free End Spaced Radially Outwardly from the Outer Periphery of said Base Member"
The parties stipulate that "periphery" means "the edge." The Court shall construe it as such.
J. "A Single Flexible Connecting Device Secured to the Free End of said Elongate Member"
Defendants assert that the term "flexible connecting device" connotes a means-plus-function element, thereby falling within the purview of 35 U.S.C. § 112, ¶ 6, and limiting the element to structures delineated in the specification.
Under 35 U.S.C. § 112, ¶ 6, "[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof." The statute states that these types of claims are not construed to cover all possible means for performing the stated function, but are "construed to cover the corresponding structure, material, or acts described in the specification ...