The opinion of the court was delivered by: Jed S. Rakoff, U.S.D.J.
In this action, plaintiff New York University, the assignee of U.S. Patents 6,115,053 (the "'053 patent") (Pl. Ex. 1) and 6,317,132 (the "'132 patent") (Pl. Ex. 3),*fn1 asserts that certain products of defendant Autodesk, Inc. infringe one or more claims of each of these two patents. In a joint submission dated October 27, 2006, the parties presented their respective constructions of various disputed claim terms, and on December 18, 2006, the Court held a oneday "Markman" hearing to address these disputes.*fn2 See Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). Full familiarity with the submissions and testimony is here assumed. By Order dated December 28, 2006, the Court advised counsel of the Court's intention to adopt defendant's proposed constructions either entirely or in virtually all material respects. This Memorandum Order formally adopts defendant's proposed constructions in their entirety and briefly elaborates the reasons for these determinations.
In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the Federal Circuit set forth the pertinent legal principles governing claim construction. The court explained that "the words of a claim are generally given their ordinary and customary meaning" and that "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 1312-13 (internal quotation marks omitted). "Importantly, the person of ordinary skill in the art is deemed to read the claim term not only 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 1313. "[T]he best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history." Id. at 1315. Although Phillips emphasizes "the importance of intrinsic evidence in claim construction," Phillips "also authorize[s] district courts to rely on extrinsic evidence, which consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Id. at 1317 (internal quotation marks omitted).
1. "Gesture Action" ('053 patent, claims 1, 6, 20, 22)
The patented inventions may be briefly described as methods for creating realistic computer animations of characters. The first term in dispute is "gesture action." Plaintiff's proposed construction is "a defined movement of joints over time which symbolizes or emphasizes an idea, sentiment or attitude." Defendant's proposed construction is "body part undulation executed under the control of a set of coupled frequency and range signals."
Plaintiff principally objects to the word "undulation" in defendant's construction on the ground that the '053 patent describes at least one gesture action, the "casual pose," that does not entail any undulation. See transcript, 12/18/06 ("Tr."), at 9; '053 patent, 6:54-7:14. Plaintiff argues that the casual pose is "driven primarily by noise," see '053 patent at 7:11-14; '132 patent at 7:14-17, so that an observer viewing a figure in the "casual pose" would perceive movement that was random, rather than undulatory, see Tr. at 50-51. However, plaintiff's expert, Dr. Norman I. Badler, admitted that it would be "very unlikely" for the casual pose not to entail at least some undulation, see Tr. at 104-05; moreover, as defendant's expert Dr. Kellogg S. Booth noted, "the noise function constitute[s] undulation," see Tr. at 119; see also Tr. at 122, 147. More broadly, the Court agrees with Dr. Booth's testimony that neither the fact that certain gesture actions such as the casual pose entail less undulation than others, nor the fact that any gesture action can be "stopped" before undulation takes place, changes the fact that the essential nature of gesture actions is to provide for undulation. See Tr. at 109-10, 117-19, 146-49.
Plaintiff also objects to the phrase "executed under the control of a set of coupled frequency and range signals" in defendant's construction. Defendant's use of this phrase is supported, however, by the specification of the '053 patent (and the corresponding specification of the '132 patent) that introduces the phrase "gesture action" in the following terms:
The programmer/user can specify a sequence and/or combination of different gesture actions. Each action is implemented as a set of coupled frequency and range of pseudorandom time-varying signals set to each limb. The transition from one action to the next is smooth and life-like. '053 patent at 2:47-52 (emphasis added); see also '132 patent at 2:51-56. Defendant's construction largely tracks this language. Although plaintiff's expert, Dr. Badler, testified that the phrase "[e]ach action" in the above-quoted passage does not necessarily refer to a "gesture action," see Tr. at 36, and that the word "of," following the word "range," is an error and should be the word "or," see Tr. at 37, 40, the Court does not credit this testimony, finding it much more likely that the language means what it says.
Further, defendant's entire construction is supported by the deposition testimony of Dr. Kenneth Perlin, the inventor of the '053 and '132 patents, who testified that the '799 application (which underlies both patents) does not anywhere describe how to create a "gesture action" that is not a "body part undulation executed under the control of a set of coupled frequency and range signals." Declaration of Dr. Kellogg S. Booth dated November 12, 2006 ("Booth Decl."), Ex. 6 ("Perlin Dep.") at 101. Plaintiff argues that Dr. Perlin recanted this testimony by testifying later in his deposition that he thought he "could create a . . . gesture which is effectively a pose" with "[n]o time varying behavior," and that "this [would] describe how to create a gesture action that is not a set of coupled frequency and range values." Declaration of Paul D. Ackerman dated November 30, 2006 ("Ackerman Decl."), Ex. A at 281 (emphasis added). But this later testimony does not amount to a recantation because it says only what Dr. Perlin could create or describe now, and not what he did create or describe in the patents.
Accordingly, the Court adopts defendant's proposed construction of "gesture action."
2. "Composite Gesture Action" ('053 patent, claims 1, 6)
The second term in dispute is "composite gesture action." Plaintiff's proposed construction is "a gesture action (as defined above) in which movement results from a contribution of two or more gesture actions." Defendant's proposed construction is "a gesture action (as defined above) that involves movement of several joints."
Defendant's construction is supported by the fact that the phrase "composite gesture action" appears only in claims 1 and 6 of the '053 patent, not in the specification, and the phrase found its way into those claims through an amendment that plaintiff itself introduced during the procurement process to distinguish prior art. See Tr. at 14-17, 123-24. At that time, plaintiff suggested that a "composite gesture action" is an action that "govern[s] a plurality of movements at a corresponding plurality of joints," Pl. Ex. 2 ("'053 Prosecution History") at NYU004019-20, and defendant's construction largely tracks this language. In introducing the amendment, plaintiff made no claim that "composite gesture action" meant "two or more gesture actions," and relied on the assertion of control over several joints to distinguish prior art. See Tr. 14-17, 123-24.
Plaintiff responds that regardless of the prosecution history, defendant's construction renders the clause "composite gesture action" meaningless because, as plaintiff's expert testified, a mere "gesture action," alone, may entail the movement of several joints, and the word "composite" must therefore be read to indicate "two or more gesture actions" in order to avoid redundancy. See Tr. at 13; see also Tr. at 18, 64. But the prosecution history supports defendant's construction and does not accord with plaintiff's definition. The fact that defendant's construction arguably results in a partial (but far from total) redundancy --- and plaintiff's expert did not testify unequivocally on this point, see Tr. at 70-71 --- is an almost unavoidable function of the less than perfect precision of common English usage and therefore, of itself, an insufficient reason to reject it when the plain meaning is otherwise clear. See Tr. at ...