particular, TM argues that the Judge had not defined the term
"integrated" as used in the phrase "single integrated circuit,"
(A 42-44), and contends that this constitutes evidence that Judge
Young's rulings were not intended to be final. However, at most
this omission would mean that Judge Young cannot bind me to a
definition of the term "integrated" as used in the phrase "single
integrated circuit." It does not mean that his other rulings were
avowedly tentative, especially when both his words and his
behavior during the trial are to the contrary.
Plaintiffs next argue that the Markman constructions were
never reviewed by a higher Court — a not insignificant
proposition when nearly 40 percent of claims constructions are
changed or overturned by the Federal Circuit. See Cybor Corp. v.
FAS Technologies., Inc., 138 F.3d 1448, 1476 (Fed.Cir. 1998)
(Rader, J., dissenting). However, the only reason Judge Young's
conclusions were not reviewed on appeal is that the case was
settled. A party who cuts off his right to review by settling a
disputed matter cannot complain that the question was never
reviewed on appeal. The Markman rulings were not vacated as
part of the settlement. They therefore remain preclusive. See
Hartley v. Mentor Corp., 869 F.2d 1469, 1472-73 (Fed.Cir. 1989);
Wellons, Inc. v. T.E. Ibberson Co., 869 F.2d 1166, 1169 (8th
Cir. 1989); Siemens Med. Sys., Inc. v. Nuclear Cardiology Sys.,
Inc. 945 F. Supp. 1421, 1436 (D.Colo. 1996); Ossman v. Diana
Corp., 825 F. Supp. 870, 878 (D.Minn. 1993).*fn2
Fourth, TM argues that a Markman adjudication cannot be
preclusive prior to verdict because there is no requirement that
a Court construe the claims in suit prior to giving its final
instruction to the jury. Indeed, it appears to be the practice in
at least one federal district court to hold the Markman hearing
during the trial, with the Court issuing its ruling when it
instructs the jury at the close of the case. See, e.g., Johns
Hopkins Univ. v. Cellpro, 894 F. Supp. 819, 826 (D.Del. 1995). Of
course, if Judge Young had followed such a procedure, then there
would be no issue preclusion from the EMC case. But he did not.
He held a two day hearing, following which he issued a ruling
construing the claims. He then heard reargument and fine-tuned
his ruling, telling the parties to "live with it." He read the
ruling to the jury and handed each juror a copy. The fact that he
could have done otherwise does not vitiate the preclusive effects
of what he actually did. Had Judge Young followed the Delaware
procedure and announced his Markman ruling at the close of the
evidence, only to see the case settle while the jury was
deliberating, I have no doubt that his views about the meaning of
the disputed claims would be just as preclusive as if they had
been announced prior to trial. The fact that the judge makes the
ruling is sufficient under Lummus; when he does so is
The cases TM cites for the proposition that the collateral
estoppel effects from claim construction should be narrowly
limited to matters that were essential to a judgment (of validity
or infringement) — cases such as Jackson Jordan, Inc. v. Plasser
Amer. Corp., 747 F.2d 1567 (Fed. Cir. 1984); A.B. Dick Co. v.
Burroughs Corp., 713 F.2d 700 (Fed.Cir. 1983); and
Studiengesellschaft Kohle v. Eastman Kodak Co., 616 F.2d 1315
(5th Cir. 1980) — are inapplicable in the post-Markman era, at
least when the district court holds a special pre-trial hearing,
as Chief Judge Young did in the EMC case. These authorities were
decided at a time when patent claims were construed during jury
deliberations. It therefore made perfect sense to limit the
collateral estoppel effects emanating from a jury's judgment on
issues of validity and infringement to matters
of claim construction that were necessarily comprehended in the
verdict. That rule makes no sense when a court, acting as a
matter of law, draws binding conclusions about the meaning of
disputed patent terms for the benefits of the litigants and the
jurors. Even the one post-Markman case cited by TM for this
proposition, Phonometrics, Inc. v. Northern Telecom, Inc.,
133 F.3d 1459 (Fed.Cir. 1998), is not inconsistent with the principle
adopted by this Court. Although the Phonometrics case was
decided after Markman, it followed an earlier decision that was
not given preclusive effect and was decided several years before
Markman. See Intellicall, Inc. v. Phonometrics, Inc.,
952 F.2d 1384 (Fed. Cir. 1992).
Finally, TM argues that a recent Federal Circuit case,
Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259 (Fed.Cir.
1999), worked a change in the law and demonstrated that some of
Judge Young's rulings were erroneous. To that extent, TM
contends, collateral estoppel ought not be applied, since it
would be clear error to give preclusive effect to a ruling that
was entered prior to "a significant change in the legal
atmosphere." Bingaman v. Department of the Treasury,
127 F.3d 1431, 1437-38 (Fed.Cir. 1997), citing Commissioner v. Sunnen,
333 U.S. 591, 600, 68 S.Ct. 715, 92 L.Ed. 898 (1948).
TM is correct about the legal principle, but incorrect when it
asserts that Odetics worked a change in the law. The Odetics
opinion cited above was the eighth and most recent in the
protracted Odetics litigation. In that decision, the Federal
Circuit did not address the issue of claim construction, as TM
asserts, but rather reviewed the trial court's infringement
decision, notably, its comparison of the accused product with the
previously construed patent claim (construed under the
means-plus-function limitation). The claim limitation was
construed in an earlier decision, Odetics, Inc. v. Storage Tech.
Corp., 1997 WL 357598 (Fed.Cir. Jun. 25, 1997). Thus, the recent
Odetics ruling did not work any change in the law with respect
to that issue, although the decision will prove relevant to some
of the issues of construction on claims that are not subject to
If "finality" in the collateral estoppel context "mean[s]
little more than that the litigation of a particular issue has
reached such a stage that the court sees no really good reason
for permitting it to be litigated again," Lummus, 297 F.2d at
89, I see no reason to permit TM a second chance to litigate the
meaning of the claims previously construed by Judge Young.
Therefore, I hold that collateral estoppel forecloses TM from
relitigating the meaning of limitations (ii), (iii), (vii) and
(viii) of Claim 1, and the corresponding limitations (i), (iii)
and (iv) of Claim 7, see infra at part 2(c). The other claims
in dispute before me were not disputed in Massachusetts, and TM
is free to argue for any interpretation of those limitations
here. And, of course, IBM is not precluded from litigating
anything at all. So there is plenty for this Court to decide from
Finally, I have to observe that this issue of collateral
estoppel, which has taken on a life of its own in this action (no
doubt due to my preoccupation with it), is of marginal practical
importance, because I agree with just about everything Judge
Young did when he construed the claims in the EMC action.
Nonetheless, I have no doubt that collateral estoppel would apply
against TM on the previously litigated claims even if I thought
everything Judge Young decided was wrong. This does not, however,
mean that I agree with all the "gloss" that IBM puts on certain
key rulings by Judge Young, a point which I discuss further
IBM has relied upon two other issue preclusion theories,
judicial estoppel and party admissions under Fed.R.Evid. 801(d).
It is not necessary for me to reach those arguments, although I
do note that IBM's invocation of judicial estoppel is improper,
as that doctrine applies only to inconsistent factual positions,
not to issues
of law. See Bates v. Long Island RR Co., 997 F.2d 1028, 1037
(2d Cir. 1993); TLC Beatrice Int'l Holdings, Inc. v. CIGNA Ins.
Co., 1999 WL 33454 at *7 (S.D.N.Y. Jan.27, 1999).
2. Construction of the Disputed Claims in the '342 Patent
Before going to the individual disputed claims, I observe that
the '342 patent does not seem to me a particularly difficult
patent to construe. For the most part, the words are clear and
unambiguous and can be given their plain meaning. My reading of
Judge Young's decision is that he did precisely that, and I have
no fundamental disagreement with any of his conclusions.
Most of what IBM asks me to overlay onto Judge Young's prior
construction of Claim 1 (which is where the disputed issues
arise) derives from the patent specification. IBM takes the
position that the only invention disclosed in the patent
application was the preferred embodiment, in all its detail.
However, IBM overlooks settled rules of patent construction that
are discussed below. Absent an indication that the plain terms of
the patent were not intended to control, I decline to follow
IBM's suggested approach to interpretation of the claims.
(a) Claim No. 1 (Independent Claim): Disputed Limitations
(i) 1. A multi-unit memory system comprising:
This claim, which was not disputed before Judge Young, means
precisely what the words say. "A multi-unit memory system" is "a"
(that is to say, one, or a single) system that uses two or more
data storage memory units. Of course, the fact that the patent
claims "a" system does not mean that IBM or some other party
would escape liability for infringement by constructing two or
three or even more such multi-unit memory systems and somehow
linking them together or causing them to operate together.
There is no reason to read anything further into the very
simple words used by the claimant. There is no mention of a
"single array" in the patent claim, and I decline to adopt IBM's
suggestion that I read such a limitation into the claim, applying
the settled principle of patent construction that the language of
the claim defines its scope, see Mantech Environmental Corp. v.
Hudson Environmental Servs., Inc., 152 F.3d 1368, 1373 (Fed.Cir.
1998), and that the words of a claim are to be construed in
accordance with their ordinary meaning to persons in the relevant
field of technology, unless it appears that the inventor used
them otherwise. See Bell Communications Research, Inc., v.
Vitalink Communications Corp., 55 F.3d 615, 620 (Fed.Cir. 1995).
In particular, claims are not to be limited or construed by
reading in extraneous words from written descriptions or
specifications that are not contained in the claims themselves.
See Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed.Cir.
1998). This rule is not inconsistent with the principle that
claims should be construed in light of the patent specification,
see, e.g., Bell Communications, 55 F.3d at 620, but simply
recognizes that the claims of a patent are not limited to the
preferred embodiment that is described in the specifications.
See Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1303 (Fed.Cir.
Throughout this proceeding, IBM has contorted the plain meaning
of words and phrases used in the patent claims themselves by
referring to the written description, including the
specifications and the embodiment disclosed therein. In
construing this patent (and, indeed, all three patents), I have
adopted the principle that, where the language of the claim is
clear and unambiguous, I will read nothing additional into it. If
this means that the patent turns out to be invalid (which is a
decision for the jury, not for the Court), then so be it.
Although courts are to construe claims so as to sustain a
patent's validity where possible, see ACS Hosp.
Systems, Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577
(Fed.Cir. 1984), courts are nonetheless bound to follow the other
rules of construction discussed above. See id.
(ii) . . . an error correction code generation
circuit which generates for each block of data to be
stored in said memory system an error correction
code, . . .
(iii) . . . each block of data comprising a first
plurality of digits and each error correcting code
comprising a second plurality of digits from which at
least one digit of error may be detected and
corrected in the block of data . . .
This is the first claim that is affected by collateral estoppel
from Judge Young's decision. In the EMC case, Judge Young
construed this claim language as follows: "[Error correction code
generation circuit] means a single integrated circuit which
generates the claimed error correction code . . . Data, as I have
already said, is information. Here, the data is in the form of
digits. A block of data, as used in this phrase, means a group of
data bits which may be corrected by another group of bits called
error correction bits. The data is information to be stored in
the computer." (A 17.)