Although not relying upon these decisions in its claim
construction, the Court notes that its interpretation of these
terms comports with the terminology employed by other courts.
See Rodime, 174 F.3d at 1297 (drawing a distinction between a
hard disk and a hard disk drive); Conner Peripherals, Inc. v.
Western Digital Corp., No. 93 Civ. 20117, 1993 WL 645932, at * 2
(N.D.Cal. Aug.16, 1993) (drawing a distinction between a hard
disk and a hard disk drive); cf. Tandon Corp. v. U.S. Intern.
Trade Com'n, 831 F.2d 1017, 1019 (Fed. Cir. 1987) (drawing a
distinction between a floppy disk and a floppy disk drive).
Therefore, the Court finds that the phrase "insertable storage
medium having information stored therein" must be construed to
require that the storage medium is a physical device which itself
stores information; and that the storage medium is itself
inserted into the machine (rather than being connected in some
other manner) in order to operate it.
The Court recognizes that during the forthcoming infringement
analysis under the doctrine of equivalents, distinctions that may
be found or implied in this claim construction may not be
dispositive in conducting that analysis.
c. "means for interfacing"
The final part of the claim phrase that needs to be construed
is "means for interfacing." There is a strong presumption that
this is a means-plus-function claim element because it employs
the phrase "means for." See Greenberg, 91 F.3d at 1584. The
fact that the claim element recites a function, "interfacing,"
but does not recite any structure for performing the interfacing,
further confirms that this is a means-plus-function claim
element. However, even if a claim element does not, on its face,
recite definite structure, it may still call to mind definite
structure to one skilled in the art and therefore avoid falling
under § 112, ¶ 6. See Personalized Media Communications, LLC v.
International Trade Comm'n, 161 F.3d 696, 704-05 (Fed.Cir.
1998). Plaintiff has argued to this Court that a "means for
interfacing" can be a socket, a slot, a floppy disk drive, and
perhaps other devices as well. Defendant's expert has testified
that to him the word interface means "all the mechanical,
electrical and logical provisions for communication between the
one thing and the other." Deposition of Berson, Pl.'s Opp. Memo.
on Infringement, Ex. 31 at 121. Based on these representations,
the Court finds that the phrase "means for interfacing" would not
have called to mind a definite structure to one skilled in the
art. Therefore, the presumption that this is a
means-plus-function claim element has not been rebutted, and
"means for interfacing" will be construed according to the
dictates of § 112, ¶ 6.
In analyzing a means-plus-function element, the first step is
to precisely identify the function. See Micro Chemical, Inc. v.
Great Plains Chemical Co., Inc., 194 F.3d 1250, 1258 (Fed.Cir.
1999). In this case, the function is "interfacing." The word
"interfacing" is not defined in the patent, and the parties have
not cited any uses of the term in the prosecution history. A
contemporaneous dictionary of computer terms defined interface
as: "a general term to describe the connecting link between the
two systems. Most frequently refers to the hardware and software
required to couple together two processing elements in a computer
system." A.J. Meadows et al., Dictionary of Computing and New
Information Technology (1982) (quoted in Katz v. AT & T Corp.,
63 F. Supp.2d 583, 600-601 (E.D.Pa. 1999)). Although not speaking
specifically about the claim element at issue, in his deposition
defendant's expert Dr. Berson defined
"interfaced" as "all the mechanical, electrical and logical
provisions for communication between the one thing and the
other." Pl.'s Opp. Memo. on Infringement, Ex. 31 at 121.
Plaintiff has cited this definition approvingly in his motion
papers. See id. at 9. A non-technical dictionary also supports
a broad reading of the term.*fn6 The Court finds that one
skilled in the art would understand interface to be a broad,
general term, meaning, as the Dictionary of Computing and New
Information Technology put it, "the connecting link between the
two systems," encompassing both hardware and software linkages.
An interface is therefore the means necessary to connect and
communicate between two parts of a system.
The second step in the means-plus-function analysis involves
determining what structure corresponds to the function. See Kahn
v. General Motors Corp., 135 F.3d 1472, 1476 (Fed.Cir. 1998). A
structure in the specification will only be deemed a
"corresponding structure" "if the specification clearly links or
associates that structure to the function recited in the claim."
Id. (citing B. Braun Medical, Inc. v. Abbott Lab.,
124 F.3d 1419, 1424 (Fed.Cir. 1997) ("We hold that . . . structure
disclosed in the specification is `corresponding' structure only
if the specification or prosecution history clearly links or
associates that structure to the function recited in the
claim.")). This statutory "duty to link or associate structure in
the specification with the function is the quid pro quo for the
convenience of employing § 112, ¶ 6." Id. (citing O.I. Corp.
v. Tekmar Co., 115 F.3d 1576, 1583 (Fed.Cir. 1997)).
The claim language at issue reads "means for interfacing said
data processing means with an insertable storage medium having
information stored therein." The data processing means and the
insertable storage medium are the things being interfaced.
Therefore, the Court's task is to determine the corresponding
structure that is clearly identified as the means to interface
the data processing means*fn7 and the insertable storage medium.
Plaintiff argues that the phrase "means for interfacing"
encompasses "at least sockets and floppy disk drives," because
these are specifically disclosed in the patent. Pl.'s Opp. Memo.
on Infringement at A4. Plaintiff claims that the socket is a
"means for interfacing" a cartridge storage medium with a video
game console disclosed in the patent. Floppy disk drives are
encompassed because the patent specification recites that the
invention could be applied to "programs furnished on discs."
Defendant agrees that "means for interfacing" is written in
means-plus-function language, but disagrees with plaintiff's
interpretation of the implications. Defendant contends that the
ROM accessing circuit is the only structure corresponding to the
means for interfacing. The Court will first discuss whether
sockets and ROM accessing circuits are corresponding structures,
and then turn to floppy disk drives.
[i]. Sockets and ROM Accessing Circuits
Plaintiff argues that the "means for interfacing" is a "slot"
or "socket," terms which plaintiff apparently believes are
synonymous. See Pl.'s Reply Memo. on Cross-Motion at 12-13.
According to plaintiff, the slot is the means for interfacing,
because the "order of the circuits" is "(1) cartridge, (2) slot
with contacts, (3) ROM accessing circuit, and (4)
microprocessor." Therefore, plaintiff argues, "[t]he cartridge
mates with the slot, not with the ROM accessing circuit." Id.
Defendant argues that the "means for interfacing" is the ROM
accessing circuit. To support this claim, defendant points to
language in the specification describing the role of the ROM
accessing circuit as the intermediary between the inserted
storage medium and the microprocessor: "The cartridge then
delivers the instruction to the microprocessor via the ROM
accessing circuit." Patent `857, col. 3, lines 46-48.
Figure 1 and Figure 2, describing the prior art video game
system and the modifications required by the invention,
respectively, are instructive. According to the text, Figure 1
shows the following:
The instructions for controlling the microprocessor
operation are stored in a ROM contained in cartridge
12. The cartridge is insertable into an appropriate
slot in the machine, and contacts 15 on the cartridge
engage a plurality of contacts, shown by the numeral
14, connected to the ROM accessing circuit 16. The
ROM accessing circuit is connected to microprocessor
18 over a conventional bus system. The microprocessor
transmits an address to ROM accessing circuit 16
corresponding to the location in the cartridge ROM
which contains the next instruction to be executed.
The cartridge then delivers the instruction to the
microprocessor via the ROM accessing circuit.
Id. at col. 3, lines 36-48.
Applying the broad definition of interface discussed above, it
is clear that both plaintiff's (slot or socket) and defendant's
(ROM accessing circuit) suggestions for the construction of
"means for interfacing" are too narrow. Plaintiff would have the
slot be the sole means for interfacing, ignoring the plain
language of the specification which describes an interfacing role
for other elements, such as the ROM accessing circuit. Plaintiff
reads interface to mean only the mechanical means for physically
attaching the inserted storage medium to the machine, but this is
too confined a definition. Notably, plaintiff provides no
testimony from one skilled in the art to support this
interpretation. Defendant's circumscribed reading of the phrase
must also be rejected. "Interface" does not just describe the
device that enables electronic communication between the storage
medium and the microprocessor (the ROM accessing circuit), but
also the mechanical means by which the connection and
communication is facilitated. Thus the slot and contacts on the
machine are also part of the means for interfacing, as well as
the "conventional bus system" connecting the ROM accessing
circuit to the microprocessor. See id. at col. 3, lines 36-48.
The diagram and text clearly link these structures with the
function described in Claim 5.
To summarize, the corresponding structure to the "means for
interfacing" is the ROM accessing circuit, the bus, the contacts
and slot, and their equivalents.
[ii]. Floppy Disk Drives
A more difficult question arises where the patent holder
asserts that other structures besides ones extensively discussed
and diagramed in the specification are "corresponding
structures." For instance, in this case plaintiff claims that a
floppy disk drive is an also interfacing means. See Pl.'s Opp.
Memo. on Infringement at 1; Plaintiff's Reply Memo. in Support of
Plaintiff's Cross-Motion ("Pl.'s Reply Memo. on Cross-Motion") at
5. However, the term "floppy disk drive" is nowhere mentioned in
the Rackman patent. Plaintiff points instead to the following
language in the specification:
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.