The opinion of the court was delivered by: Honorable Larry Alan Burns United States District Judge
ORDER FOLLOWING MARKMAN HEARING
The Court held a Markman hearing in this case on April 10, 2012. The Court wants, first, to commend the parties on their respective presentations. The Markman briefs that the Court read were good, but the presentations were exemplary. They patiently walked the Court through the technology at issue, the law of claims construction, and the bases for the parties' proposed construction of the claim terms at issue. The Court never got the sense that the parties' arguments were insincere. Obviously, it's the name of the game here for Zest to construe the claim terms broadly to establish infringement later on, and for Implant Direct to construe the terms narrowly to avoid infringement later on. The Court senses that Zest and Implant Direct have played this game in very good faith. Now, onto what it means to swivel.
There are only four claim terms at issue, all of which contain the word swivel or some form of it. They are: the male member having an upper end comprising a swivel joint for swivel engagement within a cap (219 Patent, Claim 1 at 13:35--38; Claim 21 at 15:24--25) the swivel joint and cap cavity together comprising means for permitting swiveling of the cap over the male member (219 Patent, Claim 1 at 13:55--58; Claim 21 at 15:37--39) a swivel joint is provided between the cap and male retention member permitting swiveling of the cap over the male retention member (219 Patent, Claim 22 at 15:63--65) the retention member comprising part of a swivel joint for swivel engagement in a recess in a dental appliance (219 Patent, Claim 23 at 16:15--17) (Zest Markman Br. at 7; ID Markman Br. at 6, 16.) We'll call these claim terms the "swivel terms."
II. Proposed Constructions
Zest proposes the following construction of the swivel terms 'Swivel joint' and 'swivel engagement' should be construed as: 'a rotational or hinging connection between the male member and the cap, in which the rotational or hinging motion is around one or more axis.' 'Swiveling' should be construed as 'any rotational movement or hinging action between the male member and the cap, around one or more axis.' (Zest Markman Br. at 7; Zest Presentation at 45.) Implant Direct proposes this alternative construction:
The male member must be able to rotate around more than one axis within the cap, and there is relative motion between the cap and the male member. (ID Markman Br. at 6, 16; ID Presentation at 19.)
III. Legal Standards of Claims Construction
The Federal Circuit's decision in Phillips v. AWH Corp. is the go-to source for the law of claims construction. 415 F.3d 1303 (Fed. Cir. 2005). Useful, supplemental principles may appear in other cases, but in Phillips most courts can find all of the guidance they need.
A. First Principles - Phillips
Claims construction has to begin with the language of the claim terms. Id. at 1312. Those terms are to be given their ordinary and customary meaning, which is "the meaning that the term[s] would have to a person of ordinary skill in the art in question at the time of the invention." Id. at 1312--13. This person "is deemed to read the claim term[s] not only in the context of the particular claim[s] in which the disputed term appears, but in the context of the entire patent, including the specification." Id. at 1313.
In some cases there's no need to look beyond the claim terms. Their ordinary meaning may be apparent and "claim construction . . . involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314. When this isn't the case, however, a court may have to turn to intrinsic or extrinsic evidence. Id. There are three sources of intrinsic evidence: (1) the claims themselves; (2) the remainder of the patent specification; and (3) the patent's prosecution history. Id.
The claims themselves matter for a couple of reasons. First, "the context in which a term is used in the asserted claim can be highly instructive." Id. Second, "[b]ecause claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims." Id.
Next, the patent specification. Patent claims themselves, Phillips explains, are part of a fully integrated document "consisting principally of a specification that concludes with the claims." Id. at 1315. The specification is simply a written description of the invention.*fn1
Here, that description consists of an Abstract, Background of the Invention, Summary of the Invention, Description of the Preferred Embodiments, and numerous drawings. That is the material in the 219 Patent that precedes the actual patent claims. Not only must claims be read in view of the specification, but the specification is the best guide to the meaning of a disputed term. Id. at 1315. "It is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims." Id. at 1317. A note of caution: The specification can only alter the plain and ordinary meaning of a claim term if it reveals a special definition "that differs from the meaning it would otherwise possess" or if it reveals "an intentional disclaimer, or disavowal, of claim scope by the inventor." Id. at 1316.
A patent's prosecution history "consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent." Id. at 1317. It matters because, like the specification, it "provides evidence of how the PTO and inventor understood the patent" and "was created by the patentee in attempting to explain and obtain the patent." Id. At the same time, a patent's prosecution history "represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation," and as a result it is less useful than the specification for claims construction purposes.*fn2 Id.
Extrinsic evidence, which includes expert and inventor testimony, dictionaries, and learned treatises, is less significant than intrinsic evidence.*fn3 Id. The Federal Circuit in Phillips identified five reasons for this. First, extrinsic evidence isn't part of the patent and "does not have the specification's virtue of being created at the time of patent prosecution for the purpose of explaining the patent's scope and meaning." Id. at 1318. Second, extrinsic publications may not have been written by someone of ordinary skill in the art. Id. Third, extrinsic evidence consisting of expert reports and testimony is often generated for the purposes of litigation "and thus can suffer from bias that is not present in intrinsic evidence." Id. Fourth, given the "virtually unbounded universe of potential extrinsic evidence," a court may be overwhelmed with it and face the "considerable task of filtering the useful extrinsic evidence from the fluff." Id. Finally, undue reliance on extrinsic evidence vis-a-vis intrinsic evidence could "undermin[e] the public notice function of patents." Id. at 1319. Consideration of extrinsic evidence is left to the Court's discretion, and it should only be considered in the context of the intrinsic evidence. Id.
B. Supplemental Principle
During the Markman hearing (and in the parties' briefs) a dispute arose regarding claims construction standards that it's prudent to single out and address here. This issue does not appear to be squarely addressed in Phillips.
The dispute is whether the manner in which an invention actually functions should inform the claims construction analysis. Zest has taken the position that it shouldn't. It's the claims of the 219 Patent, after all, that Zest accuses Implant Direct of infringing, not any particular device that Zest manufactures and sells. See Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004) ("It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude."); SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) ("Infringement . . . is determined by comparing an accused product not with a preferred embodiment described in the specification, or with a commercialized embodiment of the patentee, but with the properly and previously construed claims in suit.").
Federal Circuit precedent isn't on Zest's side. In Medrad, Inc. v. MRI Devices Corp., the Federal Circuit held in no uncertain terms that the functioning of an invention is an appropriate consideration at the claims construction phase:
Medrad argues that a court may not look to how an invention functions in determining the meaning of claim terms. Yet nothing in Ecolab or any other precedent of this court supports such a proposition, which is as unsound as it is sweeping. As we stated in Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed Cir. 1998), 'ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim.' It is therefore entirely proper to consider the functions of an invention in seeking to determine the meaning of particular claim language. 401 F.3d 1313, 1319 (Fed. Cir. 2005). None of this is to say that the manner in which an invention functions is dispositive for claims construction purposes, or that courts have to consider it. Presumably, it falls into the category of extrinsic evidence that may-or may not-be useful in the construction of claim terms depending on how clear the intrinsic evidence is.
It's this latter point that Implant Direct, in the Court's judgment, gets wrong. It may be appropriate as a general matter, in construing claim terms, to look at how an invention functions. But that doesn't mean that a party surrenders or waives a certain claim construction just because of how a finished product embodying its patent comes together. In other words, Implant Direct can't simply hold up Zest's LOCATOR attachment system and argue that it trumps the construction of a claim term that would seem an incomplete description of the device. That would make the invention self-defining in some sense, and that would violate that bedrock principle of patent law that "the claims of a patent define the invention." Innova, 381 F.3d at 1115. It is also, transparently, an ends-driven method of ...