The opinion of the court was delivered by: Cedarbaum, J.
Plaintiff Combined Tactical Systems, Inc. sues Defense Technology Corporation of America and Federal Laboratories, Inc. for patent infringement. Because the parties do not agree on the correct construction of certain terms used in the claims of method patent 6,752,086 ("the '086 patent") and object patent 6,755,133 ("the '133 patent"), a hearing was held in accordance with the teaching of Markman v. Westview Instruments, 52 F.3d 967, 979 (Fed. Cir. 1995)(en banc), aff'd, 517 U.S. 370 (1996).
Both parties manufacture and sell "less-lethal" munitions. The subject of this case is a projectile formed from a tubular-shaped, "beanbag style" sock containing lead shot that is inserted into a shotgun shell and then launched. The '086 patent is for a method of preparing the low-lethality projectile, and the '133 patent protects the projectile's "flight shape." Both patents are continuations of plaintiff's 6,202,562 patent ("the '562 patent"), which Judge Cote had previously determined was not infringed by defendants' product. See Combined Sys., Inc. v. Def. Tech. Corp. of Am., 230 F. Supp. 2d. 544, 548-49 (S.D.N.Y. 2002), aff'd, 350 F.3d 1207 (Fed. Cir. 2003).
The parties dispute the meaning of several terms in the '086 and '133 patents, which are discussed below.
In construing the meaning of a patent claim, "the words of a claim are generally given their ordinary and customary meaning." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)(en banc)(internal quotations omitted). The ordinary and customary meaning of a claim term is "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1313. The ordinary meaning of a term to one skilled in the art may, in some circumstances, be apparent "even to lay judges," and general purpose dictionaries may be helpful in such circumstances. Id. at 1314.
The Phillips Court noted that "[b]ecause claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims." Id. In addition, "claims must be read in view of the specification, of which they are a part...the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Id. at 1315 (internal citations and quotations omitted). However, the court also warned that claims should not be limited to the embodiment described in the specification. Id. at 1323.
Initially, the parties dispute the meaning of the language in claims 1 and 9*fn1 of the '086 patent: "using preliminarily an unfilled tubular sock-like projectile body having a closed front end and a rear edge bounding a rear opening thereinto." '086 patent, 5:5-7. Plaintiff argues that this phrase describes the initial shape of the projectile body, "preliminarily" or "prior to" taking the first step in the patented preparation process. Under plaintiff's proposed construction, the "projectile body" may have multiple openings at earlier stages in the preparation sequence, as long as a closed front end is formed prior to taking the first enumerated step in plaintiff's patented preparation method, which is filling the sock-like body with shot.
Defendants disagree. They argue that the inclusion of the word "preliminarily" requires "that the method of shaping a low lethality projectile starts with using an unfilled tubular sock-like shape, i.e., a tube shape hollow body having a single inner compartment formed by one closed end opposite one opening formed by a rear edge." Def. Br. at 6.*fn2 Defendants argue that the claim requires that the projectile body have only one opening at the very beginning of the preparation process, prior to the employment of any steps taken to shape the projectile body, not merely prior to the first enumerated step in plaintiff's patented preparation method.
The plain meaning of "preliminarily" is "at first" or "prior to." In the patent claims, "preliminarily" is used as an adverb which modifies "using," meaning that the claimed preparation process begins by using "an unfilled tubular sock-like projectile body having a closed front end." Therefore, the claim covers all processes which use an "unfilled", "tubular", "sock-like" projectile body prior to taking the first enumerated step in the preparation process of filling the projectile body with shot.
2. "tubular sock-like projectile body"
Defendants argue that "tubular sock-like projectile body" should be given the same construction as another term in the patent, "tubular projectile body," since both terms are used interchangeably in the patent to refer to the same object. Defendants' proposed construction of the phrase is "a tube shape hollow body having a single inner compartment." Def. Br. at 6. Defendants note that both "tubular" and "sock-like" must contribute to the definition of the term, meaning that the body has a single interior shape (like a tube) but is closed on one end (like a sock). Plaintiff argues that the phrase should be construed to mean: "any unfilled tubular fabric construction material having a single chamber of at least one layer of material." Plaint. Br. at "Ex. F." Defendants do not object to plaintiff's assertion that nothing in the claim requires that the tube must be composed of only one layer of material. Nor does plaintiff dispute that the tube must have a single inner chamber or compartment. As the proposed constructions ...