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CONVOLVE, INC. v. COMPAQ COMPUTER CORP.

August 9, 2005.

CONVOLVE, INC. and MASSACHUSETTS INSTITUTE OF TECHNOLOGY, Plaintiffs,
v.
COMPAQ COMPUTER CORP. and SEAGATE TECHNOLOGY LLC, Defendants.



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.

FACTS

  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).

  CLAIM CONSTRUCTION

  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. Cir. 2002).

  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

  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:
1. Input
  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 found invalid.

  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 quantifies."*fn7

  3. First Constraint

  The second element of claim 1 provides: "establishing first constraints bounding the available input to the physical system" ('635 patent ...


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