The opinion of the court was delivered by: Michael A. Telesca United States District Judge
Plaintiff Tailored Lighting, Inc. ("TLI"), brings this action pursuant to federal patent law, (codified at 35 U.S.C. § 100 et. seq.), claiming that defendant Osram Sylvania Products, Inc., ("Sylvania") has infringed one of TLI's patents. Specifically, TLI contends that Sylvania has infringed Claims 1, 2, 3, 4, 9 and 19 of United States Patent No. 5,666,017 (the "'017 patent"), by manufacturing and selling its SilverStar and Cool Blue automobile headlamps, which replicate certain lighting characteristics in the same manner as is taught in the '017 patent. The '017 patent teaches, in general, the manufacture and use of light bulbs, which emit light waves at wavelengths similar to wavelengths observed in certain daylight conditions. The inventor claims that the light produced by the bulb disclosed in the patent is superior to light emitted from traditional bulbs because the light from the disclosed bulb more closely approximates natural light.
Pursuant to Markman v. Westview Instr., Inc., 517 U.S. 370 (1996) ("Markman"), the parties requested that the court construe Claim 1 of the '017 patent.*fn1 Once the claim is construed, the parties may then try the infringement issue to the trier of fact. TLI argues that Claim 1 of the '017 patent should be given a broad interpretation, and should not be limited to only those embodiments of the invention disclosed in the patent. Sylvania urges a limited construction of Claim 1: giving a narrow scope to the terms used in the claim, and limiting the claim to only those embodiments, and its equivalents, disclosed in the patent. Prior to interpreting the claim, a brief descriptive background of the technology at issue and the '017 patent is set forth below.
On September 9, 1997, the United States Patent Office issued United States Patent 5,666,017, entitled "Daylight Lamp," which names Kevin P. McGuire ("McGuire") as the inventor, and plaintiff TLI as the assignee. The patent teaches a lamp that "produc[es] a special spectral light distribution which is substantially identical in uniformity to the spectral light distribution of a desired daylight throughout the entire visible light spectrum." See TLI's Br. at 1. Under the method described in the patent, such a lamp generally contains a lamp envelope comprised of an exterior surface, a light-producing element substantially centrally disposed within the lamp envelope, and a coating on the surface of the lamp envelope. See id. Typically, the lamp envelope is a glass or "bulb" enclosure and the light-producing element is a metal filament that, when excited by electrical energy, emits radiant energy at least throughout the entire visible spectrum. According to TLI, the coating on the surface of the lamp may be either a reflective or absorptive coating or both, with the light emitted by the filament that is not intended to be transmitted, being either reflected back to the filament or absorbed.
In 1996, the United States Supreme Court held in Markman v. Westview Instr., Inc., 517 U.S. 370, 372, that "construction of a patent, including terms of art within its claim, is exclusively within the province of the court." Because the meaning of claim terms is often "the central issue of patent litigation . . ." and because "most aspects of trial hing[e] on this determination . . . a conscientious court will generally endeavor to make this ruling before trial." Loral Fairchild Corp. v. Victor Co. of Japan, Ltd., 911 F.Supp. 76, 79 (E.D.N.Y. 1996) (Rader, J. sitting by designation)(citing Markman v. Westview Instr., Inc., 52 F.3d 967 (Fed.Cir.1995)(internal quotation omitted)).
In determining how the terms of a claim are to be construed, "the court should look first to . . . intrinsic evidence . . . i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)(citing Markman, 52 F.3d at 979). "Such intrinsic evidence is the most significant source of legally operative meaning of disputed claim language." Vitronics, 90 F.3d at 1582. "In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,]" and in such circumstances, reliance on extrinsic evidence, such as expert testimony is "improper." Id., at 1583.
In considering the intrinsic evidence, the court looks first to the words of the claims, including the claims not asserted, to define the scope of the patented invention. Id., at 1582. The words in the claim are given their ordinary and customary meaning, unless the patentee chooses to define the words in a specific manner. Id. If the patentee chooses to be his or her own lexicographer, the specified definitions assigned to particular words or terms must be found either in the specification or the file history. Id. Accordingly, it is always necessary to review the specification to determine if any specialized meanings have been given to terms used in the patent. Id. Finally, with respect to intrinsic evidence, the prosecution history of the patent may often be of "critical significance" in defining claim terms. Id. The prosecution history often contains express representations made by the applicant regarding the scope or limitations of claims, and therefore is a valuable resource in determining meanings of words used in the claims. Id.
II. Claim 1 of the '017 Patent
Claim 1 of the '017 patent discloses:
A lamp for producing a spectral light distribution substantially identical in uniformity to the spectral light distribution of a desired daylight with a color temperature of from about 3500 to about 10,000 degrees Kelvin throughout the entire visible light spectrum from about 380 to about 780 nanometers, comprising:
(a) an enclosed lamp envelope having an interior surface and an exterior surface;
(b) a light-producing element substantially centrally disposed within said lamp envelope and which, when excited by electrical energy, emits radiant energy throughout the entire visible spectrum with wavelengths from about 200 to about 2,000 nanometers at non-uniform levels of radiant energy across the visible spectrum; and
(c) at least one coating on at least one of said surfaces and having a transmittance level in substantial accordance with the formula wherein T(l) is the transmission of said envelope coating for said wavelength l from about 380 to about 780 nanometers, D(l) is the radiance of said wavelength for the desired daylight, S(l) is the radiance of said element at said wavelength at normal incidence to said lamp envelope, S*(l) is the radiance of said element at said wavelength at non-normal incidence to said lamp envelope, and N is the percentage of visible spectrum radiant energy directed normally towards said exterior surface of said lamp envelope.
III. Construction of the Disputed Claim terms of the '017 Patent*fn2
A. "Substantially identical in uniformity to"
The parties contest the definition of the term "substantially identical in uniformity to" as used in Claim 1. TLI contends that the term "substantially identical in uniformity to" does not need to be construed because it does not limit the claim. See TLI's Br. at 8. However, TLI argues that should the court decide that the preamble is limiting, the term "substantially identical in uniformity to" should be accorded its ordinary and customary meaning. See id. According to TLI, the ordinary and customary meaning of the term "substantially" is "same or very close to." Thorn EMI N. Am. v. Intel Corp., 936 F. Supp. 1186, 1198 (D.Del. 1996). See id.
Sylvania argues that the term "substantially identical" is explicitly defined in the specification of the '017 patent, and therefore, the court should adopt the patent's definition of this term. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (In cases where specification explicitly defines how term should be construed, inventor's lexicography governs). See id. According to Sylvania, there is no support in the specification of the '017 patent for ...