The opinion of the court was delivered by: Harold Baer, Jr. District Judge
Plaintiff Lottotron, Inc. ("Lottotron") commenced a lawsuit against defendant Scientific Games Corp. ("Scientific Games"), for patent infringement of four patents assigned to Lottotron. The four patents-in-suit are United States Patent Nos. 5,910,047 ("the `047 patent"); 5,415,416 ("the `416 patent"); 5,904,619 ("the `619 patent"); and 5,921,865 ("the `865 patent") (collectively "the Scagnelli patents"). A Markman hearing was held on July 14, 2003 to determine the meaning of disputed terms. The Court construes the terms in the context of the asserted claims as follows.
The Scagnelli patents concern a lottery wagering system or method that enables a subscriber to place lottery wagers through a telecommunication means, such as a telephone, in one or more available lotteries. In one preferred embodiment, separate telephone numbers are provided for "enrolling" subscribers, e.g., signing up wagerers new to the system, and for wagering. Depending on the phone number called by the subscriber, an automatic call director ("ACD") directs the call to the appropriate voice responsive unit ("VRU") that provides voice instructions to either enroll a subscriber or place a wager according to which of a plurality of lottery games the subscriber prefers to play.
II. GENERAL CLAIM CONSTRUCTION STANDARDS
Claim construction is a matter of law for the court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd 5l7 U.S. 370 (1996). The Page 2 process begins with the language of the claims, which is to be read and understood as it would be by a person of ordinary skill in the art. Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1372 (Fed. Cir. 2001); Hockerson-Halberstadt, Inc. v. Avia Group Internat'l, Inc., 222 F.3d 951, 955 (Fed. Cir. 2000); see also Markman, 52 F.3d at 986 ("[T]he focus [in construing disputed terms in claim language] is on the objective test of what one of ordinary skill in the art at the time of the invention would have understood the term[s] to mean."). In construing the claims, the Court may examine both intrinsic evidence (e.g., the patent, its claims, the specification and file history) and extrinsic evidence (e.g., expert reports, testimony, and anything else). Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999). In interpreting the disputed terms, it is well settled that a court should look first to the intrinsic evidence. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Generally, the terms in a claim should be given their ordinary and accustomed meaning as understood by one of ordinary skill in the art at the priority date of the patent application. Dow Chem., 257 F.3d at 1372; K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362 (Fed. Cir. 1999). Extrinsic evidence is considered only where the intrinsic evidence does not provide a sufficient description to resolve ambiguities in the scope of the claim. See Vitronics, 90 F.3d at 1583; Johnson Worldwide Assoc., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999). The definition of a claim term maybe altered from its ordinary and accustomed meaning if "clearly and deliberately set forth in the intrinsic evidence, such as the written description and prosecution history. K-2 Corp., 191 F.3d at 1363. For instance, arguments made during the prosecution of a patent application to distinguish the claimed invention over the prior art may limit the scope of construction of the claim term, and should be given the same weight as claim amendments. Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999); Southwall Techns., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995).
If a clause contains a means-plus-function limitation, the first step in construing it is to identify the function of that limitation. Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999). The next step is to identify the corresponding structure in the written description necessary to perform that function. Id. If a claim limitation employs means-plus-function language, the limitation may only be construed to cover "the corresponding Page 3 structure . . . described in the specification." 35 U.S.C. § 112, ¶ 6. A "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 duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6." B. Braun Medical, Inc. v. Abbott Laboratories, 124 F.3d 1419, 1424 (Fed. Cir. 1997).
Invocation of § 112, ¶ 6 does not relieve the inventors of the requirements under § 112, ¶¶ 1 & 2. In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994). "For a claim to meet the particularity requirement of [35 U.S.C. § 112,] ¶ 2, the corresponding structure(s) of a means-plus-function limitation must be disclosed in the written description in such a manner that one skilled in the art will know and understand what structure corresponds to the means limitation." Atmel v. Information Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999). "The disclosure of the structure (or material or acts) may be implicit or inherent in the specification if it would have been clear to those skilled in the art what structure (or material or acts) corresponds to the means (or step)-plus-function claim limitation." Manual of Patent Examining Procedure ("MPEP") (8th ed.) § 2181 (2003) (citing Atmel, 198 F.3d at 1380; In re Dossel, 115 F.3d at 946-47)(emphasis added). Satisfaction of the description requirement imposed by ¶ 1 will satisfy the requirements off ¶ 6. In re Knowlton, 481 F.2d 1357, 1366 (CCPA 1973). When the written description only implicitly or inherently sets forth the structure corresponding to the means-plus-function, however, the Patent and Trademark Office recommends that the disclosure be amended "to explicitly state, with reference to the terms and phrases of the claim element, what structure . . . performs the function recited for a claim element." MPEP § 2181. Even so, when the structure is only implicit or inherently disclosed in the written description, that description may comply with § 112, ¶¶ 1 & 2 if a person skilled in the art would know and understand which structure corresponds to the means limitation. See Creo Prods., Inc. v. Presstek, Inc., 305 F.3d 1337, 1347 (Fed. Cir. 2002)(affirming holding that claim was not invalid despite the fact the structure corresponding to the recited function in a means-plus-limitation was only implicit in the written description); MPEP § 2181 (acknowledging that a disclosure that implicitly sets forth the corresponding structure may be "in compliance with 35 U.S.C. § 112, first and second paragraphs."). Page 4
The parties here seek claim construction of the term "routed" and "routing," which are terms that appear throughout many of the claims in the Scagnelli patents. In addition, defendants contend that the means-plus-function claim limitations in many of the asserted claims are indefinite or largely limited to the type of machine enumerated by the specifications.
A. Function of Routed and Routing
Lottotron takes claim 1*fn1 of the `047 patent as an example of a claim that uses the terms "routing" and "routed." Clause (a), which contains the term "routing," is a mean-plus-function limitation. From the face of the claim, the ACD means performs two functions: (1) it receives incoming messages from subscribers and (2) routes each of said messages according to Page 5 which one of said plurality of different wagering formats*fn2 is requested by a caller. Lottotron contends that the term "route" should be treated as equivalent to "transmit." Scientific Games contends that routing, in addition to transmission, requires "(i) an identification of a characteristic of the calls, communications or messages" and "(ii) a selection of a destination for the calls, communications, or messages depending on the identified characteristic." Scientific Games ("S.G.") Br. at 4.
Neither the specification nor prosecution history clearly spells out the definition of "routing" and "routed." I will presume, as the parties do here, that the terms carry the ordinary meaning as understood by persons of ordinary skill in the art. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366-67 (Fed. Cir. 2002). Despite the agreement that dictionaries may be used to help construe the terms, see Lottotron Repl. at 4; S.G. Br. at 10, the parties interpret the significance of the dictionary definitions differently. Scientific Games suggests that the dictionary definitions are wholly consistent with its construction that requires the ACD means to identify a characteristic of the message, select a destination for such message, and transmit the messages. Scientific Games notes that the verb "route" is defined to mean: "[t]o send by a certain route," or "[t]o assign a route to," Webster's II New Riverside Dictionary 595 (Revised ed. 1996) (emphasis added); "to send or forward by a particular route," Webster's Encyclopedic Unabridged Dictionary of the English Language 1676 (1996) (emphasis added); "to send by a select route," or "to divert in a specified direction," Merriam Webster On-Line, at http://www.merriam-webster.com (last visited June 19, 2003) (emphasis added). In addition, defendant observes that Newton's Telecom Dictionary defines "routing" as "[t]he process of selecting the correct circuit path for a message." Newton's Telecom Dictionary 618 (14th ed. 1998) (emphasis added).
Lottotron argues that Scientific Games' definition is wrong because, inter alia, it ignores the ordinary definition of the term, which "does not inherently require `identification' or `selection,'" Lottotron Repl. at 4, and because it imports limitations from one embodiment in the specification into the claim term. Id. at 5. Further, Lottotron notes that it would be ...