The opinion of the court was delivered by: GEORGE DANIELS, District Judge
MEMORANDUM DECISION AND ORDER
Plaintiffs Colvolve, Inc. ("Convolve") and Massachusetts
Institute of Technology ("M.I.T.") (collectively, "plaintiffs")
bring suit, alleging that defendants Compaq Computer Corp.
("Compaq") and Seagate Technology LLC ("Seagate") (collectively,
"defendants") have infringed several of their patents. Plaintiffs
seek injunctive relief and monetary damages. A Markman hearing
was held to address the construction of the patent claims.
Plaintiff Convolve owns United States Patent Nos. 5,639,267
("the '267 patent") and 6,314,473 ("the '473 patent"). Plaintiff
M.I.T. owns United States Patent No. 4,916,635 ("the '635
patent"). Plaintiffs allege patent infringement, trade secret
misappropriation, and breach of contract. Specifically,
plaintiffs assert infringement of claims 1-4, 11, 21, and 24 of
the '635 patent, claims 19, 29, 39, and 55 of the '267
patent,*fn1 and claims 1, 3, 4, and 7-15 of the '473 patent. The '635 patent, entitled "Shaping Command Inputs to Minimize
Unwanted Dynamics," discloses a method to reduce vibration and
noise in physical systems. One example given is of a load-bearing
crane which, as the load is moved, develops vibrations within the
system. As the operator moves the crane, the load begins to
swing. This swing and resulting vibration can increase stress on
the crane, forcing the operator to wait for the load to come to
rest before performing another operation, such as lowering the
load to the ground. The '635 patent discloses a method for
reducing unwanted dynamics, such as the swinging of the crane
load, by translating the sequence of operations performed by the
operator into a sequence of operations that achieves the same end
position while minimizing the unwanted dynamics introduced into
the system. The method of altering the inputs to a system is
generally referred to within the art as "input shaping." ('635
patent Col. 1 line 29).
The '473 patent, entitled "System for Removing Selected
Unwanted Frequencies in Accordance with Altered Settings in a
User Interface of a Data Storage Device" discloses the
application of input shaping to computer disk drives. Computer
disk drives consist of platters coated with a magnetic substance,
and a sensor attached to an arm which scans over the platters as
they rotate. The spinning of the platters and movement of the arm
introduce vibrations into the disk drive. The arm must be
precisely positioned over the platter to accurately read the data
contained therein, and vibration increases the time for the arm
to reach the correct location. Performance of hard drives can be
increased by spinning the platters or moving the arm more
rapidly, at the cost of increased vibration. As disk drive
capacity increases, the arm must become increasingly precise. All
of these factors indicate the desirability of eliminating
vibration in disk drives. The '473 patent translates the signals
sent to the disk drive into a sequence which reduces unwanted
vibration caused by the movement of the arm. The patent
identifies certain frequencies which, when reduced, cause the disk drive to operate more
quietly, and other frequencies that allow the arm to seek the
correct position more quickly. ('473 patent Col. 7 lines 16-20).
Patent infringement analysis involves two steps. In the first
step the court determines the proper construction of the patent
claims by establishing the scope and boundaries of the subject
matter that is patented, as a matter of law. In the second step,
the trier of fact compares the properly constructed patent with
the alleged infringing device to determine if infringement has
occurred. Claim construction is a question of law for the
court.*fn2 See Markman v. Westview Instruments, Inc.,
52 F.3d 967 (Fed. Cir. 1995), aff'd, 517 U.S. 320 (1996). The
claims of a patent define "the metes and bounds of the right
which the patent confers on the patentee to exclude others from
making, using, or selling the protected invention." Corning
Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257
(Fed. Cir. 1989). Proper interpretation looks first to the
intrinsic evidence: the language of the claims themselves, the
patent specification, and the prosecution history if it is in
evidence. See Gart v. Logitech, Inc., 254 F.3d 1334, 1340
(Fed. Cir. 2001). The claims are at the center of the analysis.
See Interactive Gift Express, Inc. v. Compuserve, Inc.,
256 F.3d 1323, 1331 (Fed. Cir. 2001). There is a heavy presumption
that claim terms have the plain and ordinary meaning given to
them by one of ordinary skill in the art. See Bell Atl.
Network Servs., Inc., v. Covad Communications Group, Inc.,
262 F.3d 1258, 1268 (Fed. Cir. 2001). Where the claim language is
unambiguous, the intrinsic record should only be consulted to
determine whether a deviation from the plain meaning is
required.*fn3 See Interactive Gift Express, Inc., 256 F.3d at 1331. Dictionaries may be used
at any point in litigation to aid the court in better
understanding both the technology and terminology used by those
skilled in the art, but the dictionary definition cannot indicate
a meaning different from the intrinsic record. See Texas
Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.
Furthermore, claims must be read in light of the specification,
of which they are a part. See Markman, 52 F.3d at 979. Claim
terms must be constructed so as to be consistent with their use
in the specification.*fn4 The presumption that claim terms
have their ordinary meaning is rebutted when the inventor has
demonstrated a clear intent to act as his own lexicographer.
See C.R. Bard, Inc. v. United States Surgical Corp,
388 F.3d 858 (Fed. Cir. 2004) (providing an explicit definition or words
of manifest exclusion demonstrate disavowal of claim scope). The
specification also contains a preferred embodiment of the
invention, which discloses the best mode of practicing the
invention contemplated by the inventor. The preferred embodiment
does not impart a limitation on the claims. The prosecution
history, a contemporaneous record of proceedings before the
Patent and Trademark Office, must also be considered if it is in
evidence. Amendments made by the patentee to overcome or
distinguish a reference serve to limit claim terms, as do
statements made to the examiner during prosecution. However, if
the applicant wishes to disclaim claim scope during prosecution,
such disclaimer must be clear and unambiguous. See Invitrogen
Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1367 (Fed. Cir.
2003). After the intrinsic evidence has been considered, the court may
look to extrinsic evidence to guide the interpretation. Extrinsic
evidence includes expert and inventor testimony, treatises, and
all other evidence external to the text of the patent and the
prosecution history. See Markman, 52 F.3d at 979-90.
The '635 patent is directed to a method for removing unwanted
dynamics from a physical system. The patent discloses a method,
called "shaping," which modifies inputs to a system so as to
minimize those unwanted dynamics. In the preferred embodiment, a
mathematical model of the system is generated, from which the
response of the system to an input can be determined. ('635
patent Col. 4 lines 63-69). Based on this model, a sequence of
inputs*fn5 is generated such that the unwanted dynamics of
each individual input cancels out the unwanted dynamics of the
others when an impulse is applied to the system. In different
refinements of the system, the number of inputs in the generated
sequence is increased. ('635 patent Cols. 5-7). As more inputs
are added to the sequence, the ability of the model to reduce
unwanted dynamics to an acceptable level is improved. ('635
patent Col. 6 lines 12-49). The ability of the model to maintain
unwanted dynamics below an acceptable level is termed
"robustness." ('635 patent Col. 4 lines 14-18).
The parties dispute the meaning of several terms which appear
in multiple claims. Each of the terms has the same meaning unless
otherwise noted. Claim 1 is cited by both parties as a
representative claim. (Pls.' Claim Construction Br. For U.S.
Patent No.'s '635, '267, and '473 at 37; Defs.' Responsive Claim
Construction Brief for U.S. Patent Nos. '635 and '267 at 9). A. CLAIM 1:
The first element of claim 1 provides: "A method for generating
an input to a physical system to minimize unwanted dynamics in
the physical system response . . ." ('635 patent Col. 10 lines
41-42) (emphasis added).
Plaintiffs allege that the term "input" encompasses any
"information that is delivered to the system from outside the
system", relying on the plain dictionary definition of the term.
(Pls.' Claim Construction Br. At 39). The dictionary definition
of "input" is "data or similar information fed into a computer or
accounting machine." Merriam-Webster's Third New International
Dictionary Unabridged, Merriam-Webster, Inc., 1993.*fn6
Defendants respond, relying principally on the specification,
that an "input" is "the second signal that is applied to a
control system to cause a desired action in the control system
such that the altering of the first signal to create the second
signal is unaffected by the actual action of the control system."
(Joint Claim Construction and Prehearing Statement at Exhibit B,
'635 Patent 1). The principal distinction in defendants'
definition is that the signal sent to the physical system is "an
altered signal generated outside the control loop." (Defs.'
Proposed Claim Construction Order for U.S. Patent Nos. '635; '267
and '473 at 10). Defendants seek to exclude situations where the
input shaping is performed within the control loop. The control
loop is a configuration where a system receives an input, acts in
response to it, then measures whether the system reached the
desired state. If the system did not respond as anticipated, then
the system is adjusted repeatedly until the correct state is
reached. The plain meaning of "input" is consistent with its use
throughout the patent. Particularly relevant are two uses in
claim 11. The preamble provides: "Method for shaping an arbitrary
command input to a dynamic physical system . . ." ('635 patent
Col. 11 lines 17-19). The third element provides: "controlling
the physical system based on the shaped command input . . ."
('635 patent Col. 11 lines 24-25). Any interpretation of the term
"input" must be consistent across these uses. There is a
"presumption that the same terms appearing in different portions
of the claims should be given the same meaning unless it is clear
. . . that the terms have different meanings at different
portions of the claims." Fin Control Systems Pty, Ltd., v. OAM,
Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001). The use in the
preamble of claim 11 clearly indicates that the "input" therein
is the input to the physical system that is going to be shaped,
as the second element provides that the input is shaped by
"convolving the impulse sequence with the arbitrary command
input." ('635 patent Col. 11 lines 22-23). The use in the third
element is modified by "shaped command," indicating that the
input has been shaped as disclosed in the first two elements. The
plain meaning of "input" offered by plaintiffs is consistent with
all these uses. "Input" covers, generally, a piece of information
which is delivered to a system. In the preamble of claim 11, this
input is the unshaped input to a physical system which the
invention addresses. In element three, it is the shaped element
produced by the invention.
Defendants offer two main arguments for their proposed
construction. The first is that the patent only discloses a
system where the shaped command input is generated outside the
control loop. (Defs.' Responsive Claim Construction at 11). An
inquiry into whether or not a patent adequately discloses an
invention is a question of validity. See, e.g., Moba v.
Diamond Automation, 325 F.3d 1306 (Fed. Cir. 2003). It is
improper to determine validity before properly constructing the
claims. See Markman, 52 F.3d 967. It is apparent that
plaintiffs have not disclaimed the situation where input shaping is performed within
the control loop. Whether or not they have adequately disclosed a
method which can be used within the control loop is question of
validity. Plaintiffs have asserted a construction that is
supported by the plain language of the specification, and
accordingly bear the risk that the patent will subsequently be
Defendants' second argument is that Plaintiffs' construction
"would necessarily cover an unaltered input that would result in
the very unwanted vibrations the alleged inventions are intended
to eliminate." (Defs.' Responsible Claim Construction at 10).
This assertion lacks merit. Adopting plaintiffs' construction
merely indicates that an "input" follows the plain and ordinary
meaning of the term. Concerns that the patent will be broadened
beyond what is claimed, "a method for generating an input . . .
to minimize dynamics," are unfounded as infringement requires
that each limitation of the claim be met, either literally or
under the `doctrine of equivalents.' See Frank's Casing Crew &
Rental Tools, Inc., v. Weatherford Int'l, Inc., 389 F.3d 1370,
1377 (noting "literal infringement requires that each and every
limitation set forth in a claim appear in an accused product");
Riles v. Shell Exploration and Production Co., 298 F.3d 1302,
1309 (stating "[i]nfringement under the doctrine of equivalents
requires that the accused product contain each limitation of the
claim or its equivalent.") An accused infringer must meet the
other limitations of the claim in order to infringe, including
that the method "minimize unwanted dynamics." If an input does
not "minimize unwanted dynamics," then it is not covered by claim
1 because it has failed to meet all the elements of that claim.
Accordingly, plaintiffs' proposed construction for the term
"input" is adopted. The term "input," as used in independent
claims 1, 11, 21, and 24, and dependent claim 2, is interpreted
to mean: "information that is delivered to the system from
outside the system." 2. Expressions
The first element of claim 1 provides: "establishing
expressions quantifying the unwanted dynamics of the physical
system" ('635 patent Col. 10 lines 44-45) (emphasis added).
Plaintiffs argue that the term "expression" indicates any means
of symbolizing, and so in this context, an "expression" would be
anything that quantifies the unwanted dynamics of the system.
(Pls.' Claim Construction Br. For U.S. Patent No.'s '635, '267,
and '473 at 40). Plaintiffs base this meaning on the dictionary
definition of an expression. The dictionary definition most
relevant to the context of the patent is: "A sign or a character
or a finite sequence of signs or characters (as logical or
mathematical symbols) representing a quantity or operation."
Merriam-Webster's Third New International Dictionary
Unabridged, Merriam-Webster, Inc., 1993. Defendants insist that
the meaning be limited to mathematical equations which are in the
time domain. (Defs.' Proposed Claim Construction Order for U.S.
Patent Nos. '635, '267, and '473 at 1). A mathematical equation
in the time domain is one which expresses some value, here the
unwanted dynamic, as a function of time.
The correct interpretation must be consistent with the use of
the term in the specification. See Texas Digital,
308 F.3d at 1202. The terms "expression" and "expressing" or "expressed"
appear several times in the specification: "establishing
expressions quantifying the unwanted dynamics" ('635 patent Col.
3 lines 62-63); "a system's unwanted dynamic response will be
expressed as a function of its transient input" ('635 patent Col.
4 lines 54-57); "[t]he same result can be obtained mathematically
by adding two impulse responses and expressing the result for all
times greater than the duration of the input" ('635 patent Col. 5
lines 17-21); "[e]limination of vibration after the input has
ended requires that the expression for Aamp equal zero at the
time at which the input ends . . ." ('635 patent Col. 5 lines
44-46); "[i]n order to quantify the residual vibration level for a system, a vibration-error expression must
be defined . . ." ('635 patent Col. 6 lines 1-3); "[i]t can be
shown that the same expressions that guarantee zero derivatives
with respect to frequency also guarantee zero derivatives with
respect to damping ratio" ('635 patent Col. 6 lines 41-44);
"[t]hese sequences can be obtained by expressing the same (or
some other equivalent) constraint equations . . ." ('635 patent
Col. 7 lines 10-12).
Imposing defendants' "time domain" limitation would be
inappropriate. While many of the "expressions" discussed in the
specification are solved for time, see, i.e., '635, Col. 5,
lines 44-46; '635, Col. 5, lines 44-45, all of these examples
occur in the preferred embodiment of the specification. Since
limitations cannot be imposed based solely on the preferred
embodiment, defendants' argument requires that the patentee
evinced a clear intent to act as his own lexicographer.
Consistent and explicit use of a claim term in the specification
to mean something other than the ordinary meaning indicates this
intent. See Intellicall, Inc. v. Phonometrics, Inc.,
952 F.2d 1384, 1388 (Fed. Cir. 1992) (noting "[s]o long as the meaning of
an expression is made reasonably clear and its use is consistent
within a patent disclosure, an inventor is permitted to define
the terms of his claims.") The patentee did not consistently and
uniformly use "expression" to unambiguously refer to time-domain
equations, See, i.e., '635, Col. 6, lines 46-48 (referring to
a graph in the frequency domain as "the vibration-error
expression for the same three sequences of impulses . . .") The
use in the specification is not sufficiently definite to
demonstrate the necessary "unequivocal intent," therefore the
plain and ordinary meaning is presumed.
Within the context of the specification, and to be consistent
with the plain meaning, "expression" cannot include all possible
methods that quantifies a dynamic. There must be a solution that
minimizes that which is quantified expression. ('635, Col. 10,
lines 50-52). The only type of "expression" offered by plaintiffs which quantifies
and can be solved is a mathematical characterization. (Pls.'
Reply to Defs.' Responsive Claim Construction Br. for U.S. Patent
Nos. '635 and '267 at 3). Plaintiff has argued that "expression"
should not be limited to "equations where there must be an equal
sign" (Transcript of Proceedings Held on 3/31/2004 at 262). Given
the character of the invention, which is designed to meet or
exceed a threshold level of unwanted dynamics, there is no reason
to impose a requirement for "an equal sign." Accordingly, the
term "expression," as used in independent claim 1 is interpreted
to mean: "a mathematical characterization that
The second element of claim 1 provides: "establishing first
constraints bounding the available input to the physical system"
('635 patent ...