United States District Court, S.D. New York
August 17, 2005.
LASERMAX, INC., Plaintiff,
HOWIE GLATTER, Defendant.
The opinion of the court was delivered by: LAWRENCE McKENNA, District Judge
MEMORANDUM AND ORDER
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
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 prosecution history is only useful to the
extent that it "inform[s] the meaning of the claim language" by
demonstrating (a) "how the inventor understood the invention" or
(b) "whether the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it would
otherwise need to be." Id. at *9 (citing Vitronics,
90 F.3d at 1582-83).
Cognizant of the difficulties inherent in claim construction,
Phillips suggests that courts may still look to extrinsic
evidence while examining the patent itself, though limiting its
influence to that of an abstract guide:
[T]here is no magic formula or catechism for
conducting claim construction. Nor is the court
barred from considering any particular sources or
required to analyze sources in any specific sequence,
as long as those sources are not used to contradict
claim meaning that is unambiguous in light of the
intrinsic evidence. For example, a judge who
encounters a claim term while reading a patent might
consult a general purpose or specialized dictionary
to begin to understand the meaning of the term,
before reviewing the remainder of the patent to
determine how the patentee has used the term. The
sequence of steps used by the judge in consulting
various sources is not important; what matters is for
the court to attach the appropriate weight to be assigned to those sources in light of the statutes
and policies that inform patent law.
Id. at *16 (citations omitted).
Using these principles of interpretation to inform its
analysis, this Court proceeds with the claim construction at bar.
B. '908 Patent Claim Construction
In their briefs, as supplemented by the Markman hearing, the
parties outlined four disputed claim terms. Specifically, the
disputed terms were (1) "telescope;" (2) "optical element in a
telescope;" (3) "a method of aligning an optical element in a
telescope;" and (4) "projecting a reticle image having one of a
series of lines, dots, or crosshairs onto the optical element."
Claim 1 of the patent contains the four disputed terms:
A method of aligning an optical element in a
(a) projecting a reticle image having one of a
series of lines, dots, or crosshairs onto the optical
(b) aligning the optical element in response to the
projected reticle image.
'908 Patent at 6:30-35.*fn3
The first term that the parties disputed was the word
"telescope." "Telescope" appears in every claim in the patent,
either expressly or by reference. Id. at 6:29-8:22. As used in the '908 Patent, this Court construes the term "telescope" to
include both "reflecting telescopes," which use mirrors as
optical elements, and "refracting telescopes," which use lenses
as optical elements.*fn4
Plaintiff contends that the term "telescope" should be
restricted to a "Newtonian telescope."*fn5 (See
Plaintiff's Reply Claim Construction Brief, Mar. 10, 2005, "Pl.'s
Reply Br." at 3.) Defendant, in contrast, argues that "telescope"
is much broader than plaintiff alleges, urging that the term be
construed to include both "reflecting telescopes" and "refracting
telescopes," thus comporting with the term's dictionary
definition. (See Defendant's Brief Addressing Claim
Construction, "Def.'s Opp. Br." at 3.) As discussed supra, a
court must begin its claim construction analysis by analyzing the
language of the claims themselves.
a. Doctrine of Claim Differentiation
"The doctrine of claim differentiation . . . creates a
rebuttable presumption that each claim in a patent has a
different scope." Dow Chem. Co. v. United States,
226 F.3d 1334, 1341 (Fed. Cir. 2000). The doctrine is implicit in
35 U.S.C. § 112, ¶ 4, which states that "a claim in dependent form shall
contain a reference to a claim previously set forth and then
specify a further limitation of the subject matter claimed."
(emphasis added). Thus, under the doctrine, a dependent claim and
a corresponding independent claim should not be construed to have
the same scope; the dependent claim should have an additional
limitation. The Federal Circuit recently reaffirmed the doctrine
of claim differentiation, without using that title, in
Phillips, when it stated that "[t]he presence of a dependent
claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the
independent claim." 2005 WL 1620331, at *7 (citing
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.
Cir. 2004)). The doctrine precludes interpretations of claim
language that render dependent claims too broad or independent
claims too narrow, but it should not be used to interpret an
independent claim too broadly either. See Tandon Corp. v. U.S.
Int'l Trade Comm'n, 831 F.2d 1017, (Fed. Cir. 1987) ("Whether or
not claims differ from each other, one can not interpret a claim
to be broader than what is contained in the specification and
claims as filed.") (citation omitted). b. Analysis
The doctrine of claim differentiation applies to this situation
and resolves the dispute as to the definition of "telescope" in
favor of defendant, i.e., that "telescope" includes both
reflecting and refracting telescopes rather than being limited to
Newtonian telescopes. The term "Newtonian telescope" appears in
claim 5 of the '908 Patent. '908 Patent at 6:42-43 ("The method
of claim 1, further comprising locating the optical element in a
Newtonian telescope."). Claim 5 is dependant on claim 1, which
describes: "[a] method of aligning an optical element in a
telescope." Id. at 6:30 (emphasis added). The "Newtonian"
limitation on the word "telescope" in claim 5 would be
unnecessary if a person of ordinary skill in the art would have
understood "telescope," as used in claim 1, to be restricted to
Newtonian telescopes. Based on the doctrine of claim
differentiation, the term "telescope" should not be restricted to
The next question is what the term "telescope" includes, if it
is not limited to Newtonian telescopes. Plaintiff argues that if
"telescope" is not limited to Newtonian telescopes, it should be
limited to "reflecting telescopes," which would include Newtonian
telescopes as a subgroup. (Markman Tr. at 6:12-13.)*fn6 The doctrine of claim differentiation answers this question as
well. The term "reflecting telescope" appears in claim 4. '908
Patent at 6:40-41. Claim 4 is "[t]he method of claim 1, further
comprising locating the optical element in a reflecting
telescope." Id. (emphasis added). Applying the doctrine of
claim differentiation, the term "telescope," as used in claim 1,
presumptively cannot be limited to "reflecting telescopes," which
is the limitation added in claim 4. Therefore, this Court looks
to the specification to determine whether the term "telescope"
includes refracting telescopes, as defendant suggests.
Plaintiff asserts that the specification "does not describe any
method for using this invention to align a [refracting]
telescope," and cites Phillips for the proposition that the
claims must be consistent with the specification. (Markman Tr.
at 6:4-5.) Nonetheless, as plaintiff concedes, the specification
expressly states that "the present invention may be used to align
refracting telescopes." '908 Patent at 6:11, 19-21 (emphasis
added). In fact, the specification even provides a diagram of the
invention being used with a refracting telescope. Id. at Fig.
15. Since the patent mentions refracting telescopes in the
specification, included a drawing for the invention with a
refracting telescope, and uses "reflecting telescope" as the
limitation in a dependent claim, it is clear from the intrinsic
evidence that the term "telescope," as used in the claims, includes both reflecting and refracting telescopes.*fn7
2. "Optical Element in a Telescope"
The term "optical element" appears, in either singular or
plural form, in claims 1, 10, 15, 18 and 20. As used in the '908
Patent, the term "optical element(s)" includes mirrors, lenses,
Plaintiff argues that "optical element in a telescope" should
be restricted to "mirrors." (Pl.'s Reply Br. at 2.) In contrast,
defendant contends that the phrase "optical element" is much
broader, and includes "lenses," "mirrors," and "prisms," thus
comporting with its dictionary definition. (Pl.'s Reply Br. at 3,
As a threshold matter, the term "optical element" must include
both lenses and mirrors because this Court's construction of the
term "telescope" includes both reflecting and refracting
telescopes. However, "optical element" includes both mirrors and
lenses based on other intrinsic evidence as well.
Looking to the patent claims, there are several places in which
the doctrine of claim differentiation indicates that the term "optical element(s)" is not limited to mirror(s). The
clearest example of this point is a comparison of claims 15 and
16. Claim 15 is an independent claim that is nearly identical to
claim 1. See '908 Patent at 7:3-8. It describes "[a] method of
aligning an optical element in a telescope, comprising: (a)
projecting a holographic image onto at least a portion of an
optical element to be aligned; and (b) aligning the optical
element in response to the projected holographic image." Id.
Claim 16 is "[t]he method of claim 15, further comprising
employing a mirror as the optical element." Id. at 7:9-10.
Since claim 16 is a dependent claim, which, by definition, must
add a limitation, and the limitation it adds is that the optical
element be a mirror, the doctrine of claim differentiation
instructs that the term "optical element" is not limited to a
Claims 10 and 11 have a similar relationship. Claim 10, like
claims 1 and 15, describes "[a] method of aligning an optical
element in a telescope." Id. at 6:55 (emphasis added). Claim
11, which is dependent upon claim 10, is "[t]he method of claim
10, further comprising employing a plurality of mirrors as the
optical elements." Id. at 6:61-62 (emphasis added). If the
only "optical element" in a "telescope" could be a "mirror," then
claim 11 would be redundant in requiring a "plurality of mirrors
as the optical elements," since the only optical elements in a telescope would be "mirrors." Based on the doctrine of claim
differentiation, the claim language evinces an intent that
"optical elements in a telescope" should include more than
Next, looking to the specification, the introduction states
that "[t]he present invention generally relates to the alignment
of optical elements, and more specifically to the alignment of
mirrors in a telescope." Id. at 1:6-8, 11. If the term "optical
elements" were restricted to "mirrors" then the introduction to
the specification would be redundant by using the phrase "the
alignment of mirrors in a telescope." The presence of the second
clause of the sentence indicates that the term "optical
elements," alone, is not sufficient to specify mirrors. Moreover,
as discussed supra, the specification asserts that the
invention can be used with a "refracting telescope." See id.
at 6:11, 19-21. Refracting telescopes contain lenses rather than
mirrors. (See Markman Hearing, Def. Ex. A.) Accordingly, the
meaning of "optical elements in a telescope" should at the very
least, include both "mirrors" and "lenses."
Plaintiff might argue that the introduction to the
specification is a disclaimer limiting "[t]he present invention
. . . more specifically to the alignment of mirrors in a
telescope." Id. at 1:6-8, 11 (emphasis added). According to
Phillips, "the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that
instance . . . the inventor has dictated the correct claim scope,
and the inventor's intention, as expressed in the specification,
is regarded as dispositive." 2005 WL 1620331, at *8. However, as
previously discussed, the plain language of the claims, as well
as other parts of the specification, do not evince any attempt to
limit the scope of the term "optical element." Given Phillips'
insistence on maintaining the line "between using the
specification to interpret the meaning of a claim and importing
limitations from the specification into the claim," id. at *15,
language in the specification will not be used to limit claim
scope unless that language conveys a clear intent to use the term
narrowly. Given the amount of intrinsic evidence in this case
demonstrating a broader definition, the introduction to the
specification cannot be given such a preclusive effect. The term
"optical elements" must be construed to include both "mirrors"
What is less clear is whether the phrase "optical elements in a
telescope" should include "prisms." As discussed supra, the
claims may be interpreted such that the disputed term includes
other "optical elements" besides a "plurality of mirrors;"
however, the specification neither mentions, nor provides a
diagram demonstrating the invention's use with a telescope
containing a prism. Phillips specifically warns against confining claims to specific embodiments of the invention
described within the specification. See id. Therefore, a lack
of intrinsic evidence is not dispositive. The issue is whether a
person of ordinary skill in the art would interpret the phrase
"optical element in a telescope" to include "prisms." In
ascertaining how a person of ordinary skill in the art
understands a claim term, a court may look at extrinsic evidence
where the intrinsic evidence is ambiguous. See id. at *16.
Both the prior art as well as technical dictionaries make it
clear that a prism may be used as an "optical instrument" within
a "telescope." (See Markman Hearing, Def. Exs. B, C; Def.'s
Opp. Br. at 3, ¶ 2.) Therefore, this Court will not exclude
"prisms" from the definition of "optical elements in a
telescope." In sum, this Court rejects plaintiff's definition
limiting the term "optical elements in a telescope" to "mirrors,"
in favor of a broader definition which includes "mirrors,"
"lenses," and "prisms."
3. "A method of aligning an optical element in a telescope"
The next dispute concerns the phrase "[a] method of aligning an
optical element in a telescope." The phrase appears in every
claim in the '908 patent, either expressly or by reference. It
appears twice in claim 1, once in the preamble and once in
subpart (b). The key term in this phrase is the word "aligning." As used in
the '908 patent, the term "aligning" is construed to mean moving
an optical element toward a collimated position in response to a
projected reticle image.
Glatter argues that "aligning" means "moving an optical element
in a telescope to its optimal position and angular orientation
specified in the telescopes' [sic] design." (Def.'s Opp. Br. at
3.) LaserMax contends that "aligning" meant "moving an optical
element in a telescope to a desired position." (Pl.'s Reply at
2.) The difference between the terms "optimal" and "desired" is a
difficult one to parse. The language of the claims themselves
offer little guidance as to the meaning of "aligning," as used
therein. The tautological nature of claim 1 makes it difficult to
discern a contextual definition of aligning. It claims a "method
of aligning an optical element in a telescope" wherein the
second step in the method is "aligning the optical element."
'908 Patent at 6:29, 33. Thus, the claim itself offers little
guidance in discerning a definition. Other claims, however,
demonstrate that the choice of the word "aligning" may have been
intended to mean more than simply moving or adjusting an element.
Claim 18, for example, has "aligning" in the preamble, but uses
the term "adjusting," in subpart (c), when indicating that one
following the method would move an optical element. Id. at
7:13, 21-23. Therefore, it is unclear based on the claims alone, whether "aligning" means more than
simply "moving to a desired position."
The specification provides some guidance in construing the
term. Glatter originally construed "aligning" as "moving an
optical element to an optimal position," but changed his
asserted definition during the Markman hearing to "moving to an
optical element in a telescope to its collimated position."
(See Hearing Tr. at 33:6-11.) "Collimated" is a term of art in
the field of optical devices that would be understood by a person
of ordinary skill in the art. The specification uses variations
of the word "align" several times. At one point, the
specification uses the terms "properly aligned" and "collimated"
as synonyms. First, the specification states that "Newtonian type
telescopes are subject to misalignment of the optical
elements. . . . A misaligned Newtonian telescope will exhibit an
image of a star that looks like a comet with a tail." '908 Patent
at 1:36-40. In describing how to determine whether the optical
elements are aligned, the specification uses the phrase "[i]n a
properly aligned or collimated telescope." Id. at 1:43-46.
According to the specification, the term "collimate" means
"properly aligned," as opposed to "misaligned," and in a
Newtonian telescope is characterized as an arrangement of the
optical elements wherein "a laser beam is projected through an
emission aperture to reflect off of the secondary mirror which
directs it to the center of the primary mirror. The primary mirror reflects the
beam back to the secondary mirror which then reflects it back to
the emission aperture of the laser." Id. at 1:43-49. In other
words, "[t]he complete return of the emission aperture assures
that the telescope is correctly aligned." Id. at 1:49-51. Thus,
the specification indicates that "properly aligned" means
"collimated." Aligning, therefore, means moving toward a
Nonetheless, use of the word "collimated" should not be unduly
limited to a single appropriate arrangement for the elements in a
telescope. First, although the specification's description of
"properly aligned" uses the components of a reflecting telescope
as an example, refracting telescopes can also be collimated.
See id. at 6:19-21. Second, at the Markman hearing,
plaintiff and defendant agreed that there can be more than one
"collimated position," depending upon the setup of the telescope,
for example, collimation for use with a camera may be slightly
different from collimation for use with the eye alone. (See
Markman Tr. at 43:18-25.) Since the claims pertain to "optical
element(s) in a telescope," the meaning of a claim term should
not be limited based on potential uses that differ from one
another due to a component that lies outside of the telescope,
like the viewer's eye or a camera. Therefore, the word
"collimated" restricts the term "aligning" to arrangement of the optical elements for use in a telescope (usually centering
the elements along a line formed by the beam's center), but does
not connote a single, objectively accurate position.
4. Reticle Image or Pattern
The final disputed claim term is "reticle image" or "reticle
pattern," which appears in claims 1-14, 17-19, and 22 either
expressly or by reference. As used in the '908 Patent, the term
"reticle image" or "reticle pattern" means one of a series of
lines, dots or crosshairs, capable of serving as a reference for
centering or otherwise adjusting an optical element in a
The parties' dispute over this term concerned Glatter's
assertion that the reticle image was required to be "axially
symmetric." (Def.'s Opp. Br. at 3.) It was initially unclear what
Glatter meant by "axially symmetric," whether he meant symmetric
about one axis*fn8 or two, and if it were two whether those
reference axes had to be at right angles to one another. It
appears that Glatter meant the last possibility, the sort of
two-dimensional crosshair images that appear in Figures 6-8 and
12-15: two lines lying at right angles to one another, or a shape
that is symmetric about each of those lines. (Markman Tr. at 35:10-14.) Such images, especially when they contain spaced
gradations, function well as a reference tool for (1) determining
the center of an optical element, (2) determining whether an
optical element's angular orientation is perpendicular with the
laser beam's path, and (3) measuring the difference made by a
particular adjustment. However, there is an issue as to whether
or not "reticle image," as used in the patent, is limited to such
a specific image.
Looking first to the claims, claim 1(a) provides "a reticle
image having one of a series of lines, dots, or crosshairs." '908
Patent at 6:31-32. Glatter's brief cites an online dictionary
definition for "reticle" as "a network of fine lines, dots, cross
hairs, or wires in the focal plane of the eyepiece of an optical
instrument." (Def. Opp. Br. at 3) (citing
http://www.hyperdictionary.com.) Glatter comments that in light
of his definition of the word reticle, the phrase "reticle image
having one of a series of lines, dots, or crosshairs" in claim 1
is redundant. (Id.) The Court agrees with Glatter's comment,
which indicates that claim 1 contains the definition of "reticle
image," as used in the patent. Therefore, the patent contains a
clear definition of the term in claim 1, which contains no
limitation of "axial symmetry."
Next, the term "axially symmetric" does not appear anywhere in
the '908 Patent. However, figures 6-8 and 12-15 in the '908 Patent contain reticle images that happen to be "axially
symmetric" by Glatter's definition. Additionally, the only
references to specifically shaped reticle images are to images
that happen to be axially symmetric. '908 Patent at 2:21-27,
3:13-6:27. Nonetheless, the figures and descriptions are limited
to the preferred embodiment, and courts should "avoid the danger
of reading limitations from the specification into the claim[s]."
Phillips, 2005 WL 1620331, at *15. There are examples of common
geometric images, "composed of one of a series of lines, dots, or
crosshairs" that are not "axially symmetric," according to
Glatter's definition.*fn9 Therefore, the problem with
imposing "axially symmetric" on the term "reticle image" is the
danger that it unduly limits the scope of the patent by
"confining the claims to [the preferred] embodiments." Id.
There is nothing in the patent's specification that limits term "reticle image" to
"axially symmetric" images.
Nonetheless, Glatter argues that a person of ordinary skill in
the art would interpret the term "reticle image" to be limited to
"axially symmetric" images. (Id. at 1-2.) It is clear that a
person of ordinary skill in the art would be familiar with the
term reticle. In fact, some definitions of the term reticle
reference telescopes. The Oxford English Dictionary (2d ed.
1989), for example, defines "reticle" as "[a] set of parallel
wires, threads, etc., with others intersecting them at right
angles, or of lines similarly ruled upon a sheet of glass, placed
in the object-glass of a telescope, in order to facilitate
accurate observations." However, Webster's Third New Int'l
Dictionary 1938 (1986), similar to Glatter's proffered
dictionary definition, supra, defines "reticle" as "a system of
lines, dots, cross hairs or wires in the focus of the eyepiece of
an optical instrument (as a gunsight, microscope, telescope, or
transit) used typically for estimating speed or distance, for
measuring or counting, or as a centering or aiming device." The
issue is whether one of ordinary skill in the art would
understand the term reticle to be limited to "axially symmetric"
patterns or images. The above dictionary definitions of "reticle"
differ on the issue, because one presents examples that are
"axially symmetric," as Glatter uses the term, while the other is
silent as to that limitation. Thus, there is no clear indication that
one of ordinary skill in the art would presume that limitation.
Since there is no limitation in the claims, no limitation in the
specification, and no mention of axial symmetry in the patent or
the dictionary definition, this Court will not impose that
limitation on the term "reticle."
For the foregoing reasons, the disputed terms are construed in
the manner stated above. This constitutes the Decision and Order
of this court.