The opinion of the court was delivered by: Amon, District Judge.
AMENDED MEMORANDUM & ORDER*fn1
Before the Court are defendant's motions for partial summary
judgment on the issue of claim construction and for summary
judgment of non-infringement and plaintiff's cross-motion on the
issue of infringement. The claim language is construed as set out
below. Neither party is entitled to summary judgment at this
Plaintiff brought the instant action on January 2, 1997,
alleging that certain of defendant's products and services
infringe his patent, United States Patent No. 4,670,857, entitled
"Cartridge-Controlled System Whose Use is Limited to Authorized
Cartridges." Although the complaint does not specify which of
defendant's products allegedly infringe the patent, plaintiff has
taken the position in this litigation that, at the least, the
products in issue are "any product using Authenticode technology
or public/private key pairs for authenticating software, Windows
NT, Internet Explorer, Microsoft Transaction Server, and Internet
Information Server." Letter from Plaintiff to Court dated August
15, 1997, at 2. Plaintiff claims that defendant's products
infringe his patent both literally and under the doctrine of
equivalents, and that the infringement is willful. Plaintiff
seeks a permanent injunction, a declaratory judgment that
defendant infringed `857, treble monetary damages, costs, and
although he is representing himself, attorneys' fees.
Plaintiff originally filed an application for his patent on
October 26, 1981. The patent was issued by the United States
Patent Office ("Patent Office") on June 2, 1987. The patent
contains eight claims. The claim at issue in this case is claim
five, which provides as follows:
A plurality of mass-produced identical systems each
comprising data processing means for generating
memory-accessing address signals and for executing
memory-furnished instructions; and means for
interfacing said data processing means with an
insertable storage medium having information stored
therein; characterized by a read-write memory; said
data processing means further controlling generation
of memory-accessing address signals to allow
accessing of information in the form of blocks of
encrypted instructions from an inserted storage
medium, decryption of the blocks of encrypted
instructions thus accessed, and generation of
memory-accessing address signals to allow storage of
the decrypted blocks of instructions in said
read-write memory, and thereafter executing
instructions furnished by said read-write memory in
response to generated memory-accessing address
signals; said blocks of instructions being stored in
encrypted form in said storage medium in accordance
with a private key which is associated with a public
key of a public-key cryptosystem pair, and said data
processing means controlling the decryption of said
blocks of encrypted instructions in accordance with
said public key; each of said identical systems
controlling said decryption and thereafter execution
of instructions furnished by its read-write memory in
the identical manner responsive to insertion of the
same storage medium.
The specification of plaintiff's patent states that the
invention embodied in the patent "relates to cartridge-controlled
systems, and more particularly to such a system whose use is
limited to authorized cartridges." Id. at col. 1, lines 5-7.
The specification proceeds to describe microprocessor-controlled
systems, including video game units, which operate according to a
series of instructions stored in devices, such as cartridges,
containing interchangeable read-only memories (ROM). See id. at
col. 1, lines 8-25. Without the invention, manufacturers other
than the manufacturer of the machine containing the
microprocessor can market original cartridges for use with the
microprocessor. See id. at col. 1, lines 25-35. The "general
object" of the invention is to prevent manufacturers from doing
so without permission, by providing "a cartridge-controlled
system whose use is limited to cartridges authorized by the
machine manufacturer." Id. at col. 1, lines 36-38.
The specification of the patent also states, however, that such
a cartridge-controlled system is not the only context in which
the invention may be used. "Although the illustrative embodiment
of the invention is disclosed in the context of a
cartridge-controlled machine, it is to be understood that the
principles of the invention apply to systems which are controlled
by other types of insertable storage media. For example, the
principles of the invention may be applied to programs furnished
on discs designed for use with a microcomputer." Id. at col. 1,
The specification then describes how the invention works. "In
accordance with the principles of the invention . . . the machine
is designed such that the actual instructions which control the
machine operation are never stored in conventional program form
in the cartridge, even in the cartridges sold by the machine
manufacturer. Instead, the instructions stored in the cartridge
by the authorized manufacturer are in an encrypted form. When a
cartridge is first placed in the machine, the encrypted
instructions are read and then decrypted; the decrypted
instructions are stored in a random access memory (RAM)" in the
machine. Id. at col. 2, lines 3-13. The invention differs from
the prior art because "[i]n the prior art, the machine usually
accesses individual instructions directly from the ROM contained
in the cartridge. In accordance with the invention, however,
after the encrypted instructions are decrypted in the machine,
they are stored in RAM in their decrypted from . . . and it is
the instructions in the RAM which are then accessed." Id. at
col. 2, lines 13-20. By storing the decrypted instructions in the
RAM in the machine, it would be possible for someone skilled in
the art to ascertain the decryption algorithm by analyzing the
machine. See id. at col. 2, lines 21-25. However, this
possibility would not jeopardize the ability of the machine
manufacturer to use the invention to control the programs used in
its machine, because the encryption algorithm must also be known
in order to design a program that will decrypt intelligibly. See
id. at col. 2, lines 25-35. This encryption algorithm will be
known only to the machine manufacturer; "the encryption algorithm
cannot be determined from knowledge of the decryption algorithm
alone." Id. at col. 2, lines 30-31. The encryption and
decryption steps of the invention are carried out in accordance
with the principles of public-key cryptography, a form of
cryptography developed during the 1970s, which at the time of
plaintiff's invention, was generally used to securely transmit
messages over communications channels. See id. at col. 5, lines
Plaintiff's patent application was originally rejected by the
Patent Office. The patent examiner assigned to plaintiff's
application found, inter alia, that plaintiff had failed to
provide an enabling disclosure
and an adequate written disclosure of the invention, see Def.'s
Memo. on Claim Construction, Ex. D, at 2, and that plaintiff's
invention was not sufficiently distinct from prior art encryption
schemes in the microprocessor environment. See id. at 7-8.
Plaintiff subsequently amended his application, see id., Ex. E,
but it was rejected by the examiner once again. Plaintiff
appealed the examiner's findings, see id. Ex. I, and was
ultimately awarded the patent by the Board of Patent Appeals and
Interferences. See Plaintiff's Memo. in Opposition to
Defendant's Motion for Partial Summary Judgment on Claim
Construction ("Pl.'s Opp. Memo. on Claim Construction"), Ex. 2.
The Board summarized plaintiff's invention by stating:
The invention pertains to a method and system for
preventing the unauthorized use of a new program in a
controlled machine by encrypting the authorized
program(s) with a private key and decrypting the
encrypted program(s) in any one of a plurality of
identical machines each of which is provided with a
public key of a public-key cryptosystem pair.
In 1992, plaintiff brought suit against Nintendo for allegedly
infringing his patent. A court in the Southern District of New
York granted summary judgment to Nintendo, finding that Nintendo
demonstrated that it did not use public-key cryptography to
secure its game cartridges. See Def.'s Memo. on Claim
Construction, Ex. B. During the litigation, plaintiff asked the
Patent Office to re-examine his patent in light of prior art that
might be asserted against him. The Patent Office declined to
re-examine the patent, finding that the additional prior art did
not change its analysis of plaintiff's patent.
A. Defendant's Motion for Partial Claim Construction
Defendant has moved for partial summary judgment on the issue
of claim construction. At issue is the meaning of the term
"insertable storage medium," used in Claim 5.
Deciding whether a patent has been infringed is a two-step
process. First, the court construes the patent claims at issue.
See Rodime PLC v. Seagate Technology, Inc., 174 F.3d 1294, 1301
(Fed.Cir. 1999), cert. denied, ___ U.S. ___, 120 S.Ct. 933, 145
L.Ed.2d 812 (2000). "[T]he construction of a patent, including
terms of art within its claim, is exclusively within the province
of the court." Markman v. Westview Instruments, Inc.,
517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Second, the
properly construed claims must be compared to the accused device.
See Rodime, 174 F.3d at 1301-02. This second step, the
determination of infringement, whether literal or under the
doctrine of equivalents, is a question of fact. See, e.g., North
Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1574
(Fed.Cir. 1993) (citation omitted).
2. Principles of Claim Construction
To interpret claim language, the Court considers three primary
sources: the claims themselves, the specification, and the
prosecution history. See Georgia-Pacific Corp. v. U.S. Gypsum
Co., 195 F.3d 1322, 1332 (Fed.Cir. 1999) (citing Bell & Howell
Document Management Prod. Co. v. Altek Sys., 132 F.3d 701, 705
(Fed. Cir. 1997)). Patent claims "particularly poin[t] out and
distinctly clai[m] the subject matter which the applicant regards
as his invention." Markman, 517 U.S. at 373, 116 S.Ct. 1384
(quoting 35 U.S.C. § 112). The patent specification "describ[es]
the invention `in such full, clear, concise, and exact terms as
to enable any person skilled in the art . . . to make and use the
same.'" Id. (citing 35 U.S.C. § 112). The prosecution history
"contains the complete record of all the proceedings before the
and Trademark Office, including any express representations made
by the applicant regarding the scope of the claims." Vitronics
Corp. v. Conceptronic Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996).
The words of the claim itself are the single most important
source of the meaning of the claim. See Eastman Kodak Co. v.
Goodyear Tire & Rubber Co., 114 F.3d 1547, 1552 (Fed.Cir. 1997),
abrogated on other grounds by Cybor Corp. v. FAS Technologies,
Inc., 138 F.3d 1448 (Fed.Cir. 1998) (in banc). The claim
language is given its ordinary and customary meaning unless a
special definition is employed in the specification or
prosecution history. See Vitronics, 90 F.3d at 1582 (citation
omitted); see also Digital Biometrics, Inc. v. Identix, Inc.,
149 F.3d 1335, 1344 (Fed.Cir. 1998) ("Without an express intent
to impart a novel meaning to claim terms, an inventor's claim
terms take on their ordinary meaning.") (quoting York Prods.,
Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572
(Fed.Cir. 1996)). "Although the patentee is free to define his
claim terms in a manner inconsistent with their ordinary meaning,
`he must set out his uncommon definition in some manner within
the patent disclosure.'" Wolverine World Wide, Inc. v. Nike,
Inc., 38 F.3d 1192, (Fed.Cir. 1994) (quoting Intellicall, Inc.
v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed.Cir. 1992),
abrogated on other grounds by Cybor Corp. v. FAS Technologies,
Inc., 138 F.3d 1448 (Fed.Cir. 1998) (in banc)).
In construing the language of the patent claims, the court
"interprets words in a claim as one of skill in the art at the
time of the invention would understand them." Eastman Kodak,
114 F.3d at 1555 (citing Intellicall, 952 F.2d at 1387);
accord Markman v. Westview Instruments, Inc., 52 F.3d 967, 986
(Fed.Cir. 1995), aff'd 517 U.S. 370, 116 S.Ct. 1384, 134
L.Ed.2d 577 (1996).
In general, words used in different places in a patent should
be construed consistently. See Digital Biometrics, 149 F.3d at
1345 (citation omitted) (noting that "the same word appearing in
the same claim should be interpreted consistently"). If the
meaning of the claim language is unambiguous, or can be
determined with reference to the context provided by the
specification and prosecution history, resort to extrinsic
evidence is not necessary. See Eastman Kodak, 114 F.3d at 1555
(citing Vitronics, 90 F.3d at 1583). But because the court must
interpret the claim language as one skilled in the art at the
time of the invention would have understood it, "the testimony of
one skilled in the art about the meaning of claim terms at the
time of the invention will almost always qualify as relevant
evidence." Id. The trial court "is best situated" to decide
whether extrinsic evidence is needed to properly construe the
claim. Id. (citing International Communication Materials, Inc.
v. Ricoh Corporation, 108 F.3d 316, 318-19 (Fed.Cir. 1997)).
A final principle of construction by which this Court is guided
is the doctrine that limitations that appear in one claim should
not be read into another claim that omits those limitations. See
D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 1574 (Fed.Cir.
1985). This is known as the doctrine of "claim differentiation"
and its is a "fixed . . . long and well established" rule of
claim construction. Id.
3. Construing the Claim Language
To make its determination on the proper construction of the
claim, the Court received documentary evidence, written
testimony, and portions of the depositions of each side's expert
witnesses, and held two oral arguments at which the attorneys
outlined their views on claim construction. The Court also
reviewed the many briefs and letters submitted by both sides,
including those letters received in response to the status
conference held on January 7, 2000.
Defendant has moved for partial summary judgment on the issue
of claim construction. In the motion, defendant asks the Court to
establish as a matter of law that claim 5, by use of the term
"insertable storage medium," requires "a physical device which
stores information and is inserted into a machine by the user."
Defendant's Reply Memo. in Support of Summary Judgment on Claim
Construction ("Def.'s Reply Memo. on Claim Construction"), at 1.
Plaintiff argues that this claim language cannot be construed in
isolation, but rather must be interpreted with reference to the
surrounding phrase, which is "means for interfacing said data
processing means with an insertable storage medium having
information stored therein." The Court agrees with plaintiff that
interpretation of the phrase "insertable storage medium" cannot
proceed in isolation. The Court will therefore construe the
entire claim element.
a. "data processing means"
By statute, Congress has provided requirements for construing
certain types of claims known as "means-plus-function" claims.
See 35 U.S.C. § 112, ¶ 6.*fn2 A "means-plus-function" claim
element defines a "means" for performing some function without
specifying a definite structure. See Cole v. Kimberly-Clark
Corp., 102 F.3d 524, 531 (Fed.Cir. 1996). Whether a claim
element is a means-plus-function element is a question of law for
the court. See Rodime, 174 F.3d at 1302 (citing Personalized
Media Communications, LLC v. International Trade Comm'n,
161 F.3d 696, 702 (Fed.Cir. 1998)).
The Court of Appeals for the Federal Circuit has developed
rules for invoking the means-plus-function analysis.
"Specifically, if the word `means' appears in a claim element in
combination with a function, it is presumed to be a
means-plus-function element to which § 112, ¶ 6 applies."
Al-Site Corp. v. VSI In'tl Inc., 174 F.3d 1308, 1318 (Fed.Cir.
1999) (citations omitted); see also Rodime, 174 F.3d at 1302.
This presumption is especially strong if the phrase "means for"
is used. See Greenberg v. Ethicon Endo-Surgery, Inc.,
91 F.3d 1580, 1584 (Fed.Cir. 1996). This presumption can be rebutted in
two ways. "[A]ccording to its express terms, § 112, ¶ 6 governs
only claim elements that do not recite sufficient structural
limitations. Therefore, the presumption that § 112, ¶ 6 applies
is overcome if the claim itself recites sufficient structure or
material for performing the claimed function." Al-Site, 174
F.3d at 1318 (internal citations omitted). The second way the
presumption is rebutted is if the claim uses the word "means" but
does not recite any corresponding function. See Rodime, 174
F.3d at 1302.
The claim element at issue — "data processing means" — uses the
word "means," and therefore there is a presumption that this is a
means-plus-function claim element. That initial presumption is
confirmed because the phrase describes the function ...