The opinion of the court was delivered by: WILLIAM PAULEY, District Judge
Plaintiff AT & T Corp. ("AT & T") brings this patent
infringement action against Microsoft Corporation ("Microsoft"), alleging
that certain of Microsoft's products containing speech codecs*fn1
infringe its United States Patent No. Reissue 32,580 (the "580 patent").
The 580 patent at issue in this litigation is a reissue of U.S. patent
4,472,832 (the "832 patent"), issued with 39 claims. The 580 patent added
claims 40-43, without amending the first 39 claims. Microsoft denies
infringement of the 580 patent and seeks dismissal of the complaint
together with a declaratory judgment of noninfringment, invalidity and
unenforceability of the 580 patent. See AT & T Corp. v.
Microsoft Corp., 01 Civ. 4872 (WHP), 2003 WL 21459573 (S.D.N.Y. June
24, 2003). Familiarity with this Court's prior Memoranda and Orders
On June 24, 2003, this Court issued a Memorandum and Order on claim
construction that, inter alia, construed the term
"excitation" in the 580 patent to mean "an input signal of a system or
apparatus without additional values," as a noun, and "relating to an
input signal of a system or an apparatus without additional values" when
used as an adjective. AT & T Corp. v. Microsoft Corp., 01
Civ. 4872 (WHP), 2003 WL 2145973, at *14-16 (S.D.N.Y. June 24, 2003). AT
& T asks this Court to reconsider its construction of the claim term
"excitation," on the ground that "the Court added a negative limitation
(`without additional values') not supported by the prosecution history."
(AT & T Opposition to Microsoft's Motion for Summary Judgment of
Noninfringement ("AT & T Opp.") at 20.)*fn3 For the reasons
set forth below, AT & T's application for reconsideration is
"[T]o be entitled to reconsideration, the movant must demonstrate that
the Court overlooked controlling decisions or factual matters that were
put before it on the underlying motion, which, had they been considered
`might reasonably have altered the result reached by the court.'"
Chere Amie, Inc. v. Windstar Apparel, Corp., 01 Civ. 0040
(WHP), 2002 WL 31108187, at *1 (S.D.N.Y. Sept. 23, 2002) (quoting
Consol. Gold Fields v. Anglo Am. Corp., 713 F. Supp. 1457, 1476
(S.D.N.Y. 1989)); accord Local Civil Rule 6.3. Reconsideration
is within the sound discretion of the district court. Dietrich v.
Bauer, 76 F. Supp.2d 312, 327 (S.D.N.Y. 1999). Because it appears
that this Court "overlooked certain technical distinctions made in the
prosecution history statements" during claim construction,
reconsideration is appropriate here. (AT & T Opp. at 20.)
The facts underlying this Court's construction of the term "excitation"
were set forth in detail in this Court's
Memoranda and Order, dated June 24, 2003. AT & T,
2003 WL 21459573, at *14-15. AT & T contends that this Court's
addition of the phrase "without additional values" in its construction is
not supported by the prosecution history of the 580 patent. AT & T
proposes that this Court construe "excitation" to mean "an input signal
of a system or apparatus that does not require use of
voiced/unvoiced coded signals and a noise generator," because
nothing in the prosecution history prohibits the use of all "additional
values." (AT & T Opp. at 23 (emphasis added); Transcript of Oral
Argument, dated Dec. 22, 2003 ("Tr.") at 4.) Microsoft urges this Court
to maintain its current construction of "excitation", and include the
phrase "without additional values." This Court agrees with AT & T
that the inclusion of the phrase "without additional values" renders its
construction of the term "excitation" overbroad.
During prosecution, the patentees attempted to distinguish their
invention from U.S. Patent No. 3,324,302 (the "Atal `302"):
Atal `302 . . . discloses a linear prediction
speech analysis and synthesis arrangement in which
predictive parameters  for a speech pattern
interval are generated. Pitch period signals 
representative of the location of glottal pulses
in the applied speech pattern are independently
generated. Signals corresponding to voiced and
unvoiced amplitudes  are produced responsive to
the pitch period and prediction parameter signals.
Voiced/unvoiced signals are required to define the
type of excitation to be applied to the decoding
filter and a noise generator is needed to
substitute for unvoiced excitation. All these
signals are coded and utilized to construct a
replica of the speech pattern . The excitation
signal of the instant application is
completely distinguished from the
multitude of signals required in Atal 302 to
perform the same function and advantageously
provides improved operation in which voiced,
unvoiced and partially voiced intervals may be
accurately constructed using a single excitation
(MS Ex. 2: Pros. Hist. 110-11 (emphasis added).) As this Court
noted in its June 24, 2003 Memorandum and Order, the patentees used both
equivocal and unequivocal language in differentiating their invention
from the prior art. AT & T, 2003 WL 21459573, at *14-15.
This Court found that viewing the prosecution history as a whole,
however, the patentees disavowed the use of all multiple signals. AT
& T, 2003 WL 21459573, at *14-15. In making that finding, this
Court also looked to other sections of the prosecution history:
[T]he voiced/unvoiced coded signal and noise
generator are eliminated and more exact
replicas can be synthesized at bit rates lower
than required for residual signal encoding.
(MS Ex. 2: Pros. Hist. at 112.)
The decoding receiver of Atal `302 requires a
noise generator, and a switching arrangement
responsive to a voiced/unvoiced decision signal to
provide the pitch pulse excitation signal for
voiced periods and a noise excitation signal for
unvoiced periods. The instant invention
advantageously eliminates voiced/unvoiced coding,
noise generation for unvoiced intervals and
switching between such intervals and provides
better quality speech reconstruction at selectable
bit rates and is completely distinguished
from Atal `302.
(MS Ex. 2: Pros. Hist. at 112-13.) See AT & T, 2003
at *15. Upon reconsideration, however, the cited portions of the
prosecution history support a more limited disclaimer of scope.
A court must consider the prosecution history of the patent "to
determine whether the applicant clearly and unambiguously `disclaimed or
disavowed [any interpretation] during prosecution in order to obtain a
claim allowance.'" Middleton, Inc. v. Minnesota Mining & Mfg.
Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002) (quoting Standard Oil
Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985))
(alteration in original). Disclaimer during prosecution of the patent may
include instances where "the patentee distinguished [a] term from prior
art on the basis of a particular embodiment, expressly disclaimed subject
matter, or described a particular embodiment as important to the
invention." CCS Fitness, 288 F.3d at 1366-67. Prosecution
disclaimer must be narrowly tailored, however, to exclude only claim
scope that has been "clearly and unmistakably" disclaimed. Omega
Eng'g, Inc. v. Rayteck Corp., 334 F.3d 1314, 1324-26 (Fed. Cir.
2003) ("[F]or prosecution disclaimer to attach, our precedent requires
that the alleged disavowing actions or statements made during prosecution
be both clear and unmistakable."); accord Sunrace Roots Enter. Co.
v. SRAM Corp., 336 F.3d 1298, 1306-07 (Fed. Cir. 2003). "[W]here the
patentee has unequivocally disavowed a certain meaning to obtain his
patent, the doctrine of prosecution disclaimer
attaches and narrows the ordinary meaning of the claim
congruent with the scope of surrender." Omega Eng'g,
334 F.3d at 1324-26 (Fed. Cir. 2003) (finding that the prosecution
history indicated a "clear and unmistakable," narrow disclaimer of claim
scope); accord Anchor Wall Sys., Inc. v. Rockwood Retaining Walls,
Inc., 340 F.3d 1298, 1310-11 (Fed. Cir. 2003).
This Court's earlier construction of the term "excitation" is
overbroad, and must be limited to encompass only the extent to which the
patentees clearly and unmistakably disavowed a particular claim scope.
Omega Eng'g, 334 F.3d at 1324-26. The prosecution history
teaches that AT & T only unequivocally disavowed a definition of
"excitation" requiring the use of the particular combination of signals
essential to practice the Atal 302 patent, which includes use of
voiced/unvoiced signals and a noise generator. Indeed, the patentees
averred that their invention was "completely distinguished" from the Atal
302 patent's combination of signals. (MS Ex. 2: Pros. Hist.3 at 110-11.)
However, in reference to the 580 patent's use of single or multiple
signals, the patentees stated more generally that the "voiced, unvoiced
and partially voiced intervals may be constructed using a
single excitation signal." (MS Ex. 2: Pros. Hist. at 110-11.) The
patentees did not indicate that voiced, unvoiced and partially voiced
intervals must be constructed using a single excitation signal.
patentees' use of equivocal language in the prosecution history to
explain the 580 patent's use of single and/or multiple signals is not the
type of clear and unmistakable disavowal essential to limit the use of
all types of additional values from the claim scope. Omega
Eneg'g, 334 F.3d at 1324-26 (noting that "the doctrine of
prosecution disclaimer" does not apply "where the alleged disavowal of
claim scope is ambiguous"); Anchor Wall, 340 F.3d at 1310-11
(same). The prosecution history undeniably supports the contention that
the patentees never unequivocally disclaimed use of all "additional
values" in the prosecution history. (MS Ex. 2: Pros. Hist. 110-13.)
Indeed, during prosecution of the 580 patent, the patentees only clearly
disavowed use of voiced/unvoiced coded signals and a noise generator,
which are essential to practice the Atal `302 patent. (MS Ex. 2: Pros.
Hist. at 110-13.) Because the prosecution history supports a limited
disclaimer of claim scope, construction of the term "excitation" may only
be limited to provide that the 580 patent does not require
voiced/unvoiced coded signals and a noise generator. (MS Ex. 2: Pros
Hist. 110-13.) Omega Eng'g, 334 F.3d at 1324-26.
AT & T's application for reconsideration of this Court's
construction of the term "excitation" in the 580 patent is granted. Upon
reconsideration, this Court reconstrues the term "excitation" when used
as a noun to mean "an input signal of a system or apparatus that does not
require use of voiced/unvoiced coded signals and a noise generator," and
when used as an adjective to mean "relating to an input signal of ...