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August 17, 2005.

LASERMAX, INC., Plaintiff,

The opinion of the court was delivered by: LAWRENCE McKENNA, District Judge


LaserMax, Inc. ("LaserMax" or "plaintiff") is suing Howie Glatter ("Glatter" or "defendant") alleging willful infringement of United States Patent No. 6,025,908 ("'908 patent") under 35 U.S.C. §§ 271(a), 284. Before the Court is the issue of claim construction. The parties briefed the issue, urging definitions of disputed claim terms, and appeared for a Markman hearing, held on July 21, 2005, in which oral argument was heard as to those terms which remained in dispute at the conclusion of the briefing.


  A. Procedural History

  LaserMax brought the instant lawsuit in the Western Disrict of New York in February 2001, and it was subsequently transferred to this Court on July 18, 2001. On April 1, 2004, LaserMax moved for summary judgment on the issues of infringement and willfulness, or in the alternative, for a Markman hearing. On October 28, 2004, this Court denied plaintiff's summary judgment motion, and ordered briefing to determine whether a Markman hearing was necessary. See LaserMax, Inc. v. Glatter, No. 01 Civ. 6500, 2004 WL 2423801 (S.D.N.Y. Oct. 28, 2004).

  B. Brief Summary of the Technology

  The title of the '908 Patent is "Alignment of Optical Elements in Telescopes Using a Laser Beam with a Holographic Projection Reticle." Telescopes contain optical elements, which are usually lenses or mirrors, and sometimes prisms. The optical elements move out of alignment for a variety of reasons, including shifting during transport and movement due to temperature changes. As a result, they need to be realigned for the telescope to provide a clear image. The invention at issue is a method and apparatus for aligning the optical elements in a telescope. In the October 28 Memorandum and Order, this Court gave a brief description of the technology at issue as follows.*fn1

The patented device, a "holographic collimator," is used in the alignment of a telescope's lense and mirror elements. The method and apparatus of the '908 patent use a laser beam to project a "reticle" image, preferably a crosshair with gradations and a bright center surrounded by a concentric ring, onto the elements of a telescope. Once projected onto an element, that image can be used to determine whether the element is centered and aligned. If an element is not properly centered or aligned, the components of the projected image serve as fixed coordinates for measuring and making the necessary adjustments.
Lasermax, 2004 WL 2423801, at *1 (citations omitted).


  A. Claim Construction Procedure

  In evaluating a patent infringement action, a court must conduct a two-step analysis which involves: (a) "determining the meaning and scope of the patent claims asserted to be infringed;" and (b) "comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments, 52 F.3d 967, 976 (Fed. Cir. 1995). The instant opinion focuses on the first step, claim construction. See id.

  This Court has the benefit of the Federal Circuit's recent decision, Phillips v. AWH, No. 03-1269, 2005 WL 1620331, at *5 (Fed. Cir. Jul. 12, 2005) (en banc), as guidance in the process of claim construction. Claim construction begins with an objective "inquiry into how a person of ordinary skill in the art understands a claim term." Phillips, 2005 WL 1620331, at *5. If the "ordinary meaning of claim language as understood by a person of skill in the art [is] readily apparent even to lay judges," claim construction will involve "little more than the application of the widely accepted meaning of commonly understood words." Id. at *6. However, when the claim term is not "readily apparent," the court must look to "`sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.'" Id. (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).

  In interpreting a term in a patent claim, the court must first look to the patent itself, including the claims, specification, and prosecution history (if in evidence). See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The court may also look at extrinsic evidence "concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Innova, 381 F.3d at 1116 (citations omitted). However, in Phillips, the Federal Circuit, sitting en banc, held that "while extrinsic evidence can shed useful light on the relevant art . . . it is less significant than the intrinsic record in determining the legally operative meaning of the claim language." Id. at *10 (internal citations omitted). Furthermore, although courts "must look to the language of the claims to determine `what the applicant regards as his invention,'" id. at *4 (quoting 35 U.S.C. § 112), the Phillips court found that "the person of ordinary skill in the art is deemed to read the claim term not in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id. at *5.

  The Phillips court specifically addressed the role of a patent's specification in claim interpretation, holding that a court may "rely heavily on the [specification] for guidance as to the meaning of the claims." Phillips, 2005 WL 1620331 at *9. It reasserted that the specification is "`the primary basis for construing claims,'" id. at *7 (quoting Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985)), renouncing the methodology advocated in Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), which had given greater emphasis to dictionary definitions as a source for determining the "ordinary meaning" of claim terms.*fn2 See id. at *13. The rationale is that "[t]he claims . . . do not stand alone. Rather they are part of a `fully integrated written instrument,' consisting principally of a specification that concludes with the claims." Id. at *7 (quoting Markman, 52 F.3d at 978-79). In particular, if the specification evidences a "special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess" or the specification "reveal[s] an intentional disclaimer, or disavowal, of claim scope by the inventor . . . the inventor's intention, as expressed in the specification, is regarded as dispositive." Id. at *8. Thus, the claims must be read in view of, and construed so as to be consistent with, the specification. See id. at *7-8.

  While emphasizing the role of the specification, Phillips also reminds courts not to read undue limitations from the specification into the claims. "[T]he specification often describes very specific embodiments of the invention, [and the Federal Circuit has] repeatedly warned against confining the claims to those embodiments." Id. at *15. "To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so." Id. at *16. Courts must determine whether "the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends the claims and the embodiments in the specification to be strictly coextensive." Id. at *16. By doing so, courts may best avoid "strictly limiting the scope of the claims to the embodiments disclosed in the specification," or "divorcing the claim language from the specification" altogether. Id. In contrast to the role of the specification, the Federal Circuit placed less emphasis on the prosecution history, stating that it should be accorded limited weight because it "represents an ongoing negotiation . . . rather than the final product of that negotiation" and "it often lacks the clarity of the specification." Id. The Phillips court held that, in claim construction, the ...

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