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
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 ...