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June 13, 2000


The opinion of the court was delivered by: Amon, District Judge.



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 time.


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.

A. The Patent

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.

U.S. Patent No. 4,670,857, at col. 8, lines 11-36, reproduced at Defendant's Memo. in Support of Partial Summary Judgment on Claim Construction ("Def.'s Memo. on Claim Construction"), Ex. A.

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, lines 51-58.

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 16-18.

B. Patent File History

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.

Id. at 1-2.

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.

1. Standard of Review

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 Patent 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 ...

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