The opinion of the court was delivered by: Richard J. Holwell, District Judge
MEMORANDUM OPINION AND ORDER
This litigation involves solid ink sticks used in plaintiff Xerox Corp.'s phase change color printers. Xerox has asserted a single claim against defendant Media Sciences Inc. ("MSI") for MSI's alleged infringement of patents relating to Xerox's ink sticks and printer feed chutes. MSI manufactures generic ink sticks for Xerox's color printers and sells them in direct competition with Xerox. At issue are four patents: Xerox alleges infringement of (1) claims 1-5, and 7 of U.S. Patent No. 6,719,419 ("the '419 patent"); (2) claims 1-6 of U.S. Patent No. 6,761,444 ("the '444 patent"); claims 4, 5, and 8-10 of U.S. Patent No. 6,966,644 ("the '644 patent"), and claims 1-7 of U.S. Patent No. 6,986,570 ("the '570 patent").
The patents-in-suit describe elements of solid ink feed systems for phase change*fn2 printers. This system works much like the mechanism that delivers staples in a common office stapler. Just as staples are laid onto a track where a spring pushes them forward to the actual stapler component, these ink sticks are dropped down onto a track where a spring loaded mechanism pushes them forward to a heated melt plate. (See Fig. 1 attached hereto.) At the surface of the melt plate, the waxy ink melts and falls below into the print system, and the spring continually pushes more ink stick from the rear to replace the spent ink. Unlike a stapler, the ink stick feed system has four different tracks for this operation, one for black ink plus one for each of the three primary colors. This creates a problem that the stapler does not face: the lay user might put the wrong color ink stick into one of the tracks, where it could damage the printer (or at the very least lead to a bizarre printed product). In order to prevent this from happening, the prior art used a shaped slot over each track to lock out ink sticks that did not have the proper shape. (e.g. Loofbourow et al U.S. Patent No. 6,966,644.) Thus, each track has a plate over it with a shaped cutout that allows for insertion of only those ink sticks that correspond to that shape, and which are in turn the correct color. The differently shaped cutouts essentially act as key holes which can only be accessed with a correspondingly shaped ink stick -- the key. This approach is referred to as "insertion keying" because the shaped slot/lock and shaped stick/key prevent the user from inserting an incorrect stick into the feed channel.
One apparent innovation in Xerox's patents is to further address the mis-loading problem with what can be referred to as "feed channel keying." With feed channel keying, even if the incorrect ink stick makes it into the feed channel, another key element built into the base of that channel blocks the stick from moving along the channel to the melt plate. A simple example of a feed channel key would be a plastic ridge running the length of the feed channel. Only an ink stick with a gap in that spot would be able to ride the channel down to the heating element. This is described in, for example, the '419 patent, titled "Feed Channel Keying For Solid Ink Stick Feed." Feed channel keying can be combined with insertion keying to doubly ensure that only the correct ink sticks make it into the printer, as for example in the '444 patent. (See Fig. 2 attached hereto).
Another apparent innovation in Xerox's patents is to make the perimeter shapes look like "visually recognizable symbols" such as numbers. Thus in one embodiment each track has a plate over it with a shaped cutout that looks like a stretched out number 1, 2, 3, or 4. (See Fig. 3 attached hereto.) The corresponding ink sticks also look like stretched out numbers 1, 2, 3, and 4, and the hope is that with all of this guidance the lay user will correctly load his or her printer. This innovation is expressed, for example, in the '570 patent titled "Feed Guidance and Identification for Ink Stick."
Another problem for phase change printers, which is actually common to office staplers as well, is jamming. In the past, ink sticks have sometimes jammed against the sides of the ink feed channels, and overall friction has caused problems in printer operation. Xerox has attempted to address this problem with a guide-rail system whereby the shaped bottom of a feed channel corresponds to the shaped bottom of the ink stick in a way that guides it along the channel and to the heat plate. Aspects of this approach are expressed in, for example, the '644 patent, titled "Guide For Solid Ink Stick Feed."
MSI makes replacement ink sticks for Xerox printers that compete directly with Xerox's own ink sticks in the printer cartridge after-market. For details on the intricacies of that market, the relationship between MSI and Xerox, and other related issues, see this Court's prior opinions in this case: the September 30, 2009 opinion resolving Xerox's motion for summary judgment on MSI's monopolization counterclaims (660 F. Supp. 2d 535); the March 30, 2009 opinion resolving Xerox's motion for partial summary judgment on its first affirmative defense (609 F. Supp. 2d 316); and the Sept. 14, 2007 opinion resolving Xerox's motion to dismiss MSI's antitrust counterclaims (511 F. Supp. 2d 372). For the purposes of this particular opinion it suffices to know that Xerox sued MSI for patent infringement, the parties requested claim construction, and a claim construction hearing was held on November 6, 2008. This order sets forth the Court's construction of the disputed claim terms.
The standards governing the construction of patent claims are familiar and well established. See generally Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (summarizing and restating doctrine). Because patents are addressed to practitioners in the field of the patented invention, a court should usually construe claim language consistent with its "ordinary and customary meaning" to a person of ordinary skill in the relevant art on the effective filing date of the patent application. Id. at 1312--13. "Such a person is deemed to read the words used in the patent documents with an understanding of their meaning in the field, and to have knowledge of any special meaning and usage in the field." Id. at 1313 (quoting Multiform Dessicants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)).
To determine the "ordinary and customary meaning" of a claim term, a court should first consult the intrinsic evidence-the claims, the specification, and the prosecution history. See, e.g., Primos, Inc. v. Hunter's Specialties, Inc. 451 F.3d 841, 847--48 (Fed. Cir. 2006); Kinik Co. v. Int'l Trade Comm'n, 362 F.3d 1359, 1365 (Fed. Cir. 2004). Prior art cited to the examiner during prosecution is considered part of the prosecution history. See Phillips, 415 F.3d at 1317.
"A fundamental rule of claim construction is that terms... are construed with the meaning with which they are presented in the patent document. Thus claims must be construed so as to be consistent with the specification...." Merck & Co., Inc. v. Teva Pharms. USA, Inc., 347 F.3d 1367, 1370 (Fed. Cir. 2003) (citations omitted). Therefore, the patent specification has been called the most important guide to claim construction. See, e.g., Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 ("[The specification] is always highly relevant to the claim construction analysis. Usually, it is dispositive."); Phillips, 415 F.3d at 1315--16 ("The best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history." (quoting Multiform Desiccants, 133 F.3d at 1478)).
The specification may show that a patentee has provided its own definitions for claim terms or has narrowed the scope of the claims through disclaimer. See Phillips, 415 F.3d at 1316. In such cases, the claim is construed according to the patentee's expressed intent even if the resulting construction departs from the ordinary meaning of the claim language. See, e.g., id.; Honeywell Int'l, Inc. v. Universal Avionics Sys. Corp., 493 F.3d 1358, 1361 (Fed. Cir. 2007) ("When a patentee defines a claim term, the patentee's definition governs, even if it is contrary to the conventional meaning of the term."). A patentee may redefine a term either explicitly or implicitly. See, e.g., Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1367 (Fed. Cir. 2003) ("The applicant may also act as his own lexicographer and use the specification to implicitly or explicitly supply new meanings for terms"); Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) ("[T]he specification may define claim terms 'by implication' such that the meaning may be 'found in or ascertained by a reading of the patent documents.'").
Though claims should be interpreted in light of the specification, it generally is inappropriate to import limitations from the specification into the claims. See, e.g., N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1348 (Fed. Cir. 2005); Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 412 F.3d 1284, 1289 (Fed. Cir. 2005); see also SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001) (describing the reading of a limitation from the written description into the claims as "one of the cardinal sins of patent law"). For example, the scope of a claim is usually not limited to the particular embodiment or embodiments described in the specification. See, e.g., Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1364-- 65 (Fed. Cir. 2003) ("[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.") In order to determine whether the limitations of an embodiment should be applied to a claim, a court must determine whether a person of skill in the art would consider the embodiments to be merely exemplary, or whether they are intended to define the scope of the claim. See Phillips, 415 F.3d at 1323; Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1290 (Fed. Cir. 2006) ("[I]mport[ing] limitations from the specification into the claims... should be avoided unless the patentee clearly 'intends for the claims and the embodiments in the specification to be strictly coextensive.'" (quoting Phillips, 415 F.3d at 1323)).
The prosecution history, also part of the intrinsic evidence, may "inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Phillips, 415 F.3d at 1317. However, the prosecution history "often lacks the clarity of the specification and thus is less useful for claim construction purposes." Id..
"Extrinsic evidence is that evidence which is external to the patent and file history, such as expert testimony, inventor testimony, dictionaries, and technical treatises and articles." Vitrionics, 90 F.3d at 1584. While a district court may consult extrinsic evidence as part of the claim construction analysis, such evidence is considered less reliable than the intrinsic evidence. See, e.g., Phillips, 415 F.3d at 1317--19 ("[T]he court should keep in mind the flaws inherent in each type of [extrinsic] evidence and assess that evidence accordingly.").
These guidelines are not exhaustive. As the Federal Circuit has noted, "there is no magic formula or catechism for conducting claim construction," and a court is not "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." Phillips, 415 F.3d at 1324. "[W]hat matters is for the court to attach the appropriate weight... to those sources in light of the statutes and policies that inform patent law." Id.
The parties dispute whether the claims at issue in this suit cover ink sticks in combination with corresponding key elements, or ink sticks alone. Xerox contends that they are addressed to the ink sticks alone, and MSI asserts that the claimed invention is the combination of an ink stick and its corresponding feed channel or insertion key. Claim 1 of the '419 patent claims "[a]n ink stick for use in a solid ink feed system of a phase change ink jet printer, the ink stick comprising:."*fn3 Claim 1 then features the limitation of an ink stick body wherein the key element corresponds in shape and position to a feed channel key in a longitudinal feed channel of the solid ink feed system so that the ink stick key element passes the feed channel key after the ink stick has been at least partially inserted into the longitudinal feed channel. Xerox contends that because the preamble leads with "an ink stick.the ink stick comprising," and because other claims in the patents more directly address the entire feed system, the claims should be construed to cover only ink sticks with the described features. MSI argues that the combination forms the claimed invention.
The law governing this specific kind of claim dispute-whether a claim covers a leading element alone or the combination of that apparatus with a described cooperative element-is murky. Xerox points to In re Stencel, 828 F.2d 751 (Fed. Cir. 1987), as subsequently read by the district court in Smith Corona Corp. v. Pelikan, 784 F. Supp. 452 (M.D.Tenn. 1992), for the proposition that "an applicant may define and limit an invention in terms of that invention's intended environment without claiming the environment as part of a combination with the invention." Smith Corona, 784 F. Supp. at 463, aff'd, 1 F.3d 1252, 1993 WL 192516 (C.A.Fed. 1993). In Stencel itself, an applicant appealed from the USPTO's rejection of his claim for a special driver that could lock a particular collar into position. The driver needed to have a very specific shape in order to initiate the locking mechanism in the collar, and that shape was described in the patent for the driver with reference to the shape of the collar. The USPTO had rejected the claim, stating that although the collar and its locking mechanism were novel, the driver itself was predicted by the prior art: the locking mechanism did not distinguish the driver itself but only the collar that housed it. Stencel, 828 F.2d at 754. The Federal Circuit rejected this argument, and held that "[a]s a matter of claim draftsmanship, appellant is not barred from describing the driver in terms of the structure imposed upon it by the collar." Id. at 754. Accordingly, the Circuit found that, in light of the included description of the collar, the patent was not predicted by the prior art. Id. at 755.
Stencel was not a claim construction case, and does not explicitly address the combination claim issue. For additional support, plaintiff relies on Smith Corona's interpretation of Stencel as quoted above. Indeed Smith Corona treated Stencel as a claim construction case that was dispositive of the combination claim issue before it. In Smith Corona, a typewriter manufacturer had developed a system for matching up ribbon cassettes with the correction cassettes needed for each kind of ribbon. Smith Corona, 784 F. Supp. at 457-59. The ribbon cassettes and correction cassettes were connected to each other inside of the typewriter by a hook built into one and a slot in the other that allowed the hook to pass through it. Id. Cassettes with matching types of ribbon and correction tape had their hooks and slots located in the same position. Id. The parties disputed whether the patent's claims covered the ink ribbon cassette alone or a ribbon cassette in combination with a correction cassette. Id. at 460. Based on its interpretation of Stencel as permitting an applicant to limit an invention in terms of its intended environment without claiming a combination, the district court in Smith Corona concluded that the claims before it were directed only to the ribbon cassette, and not a combination. Id. at 463.
The few other cases to have addressed the matter, including most recently Canon Inc. v. GCC International Limited, GCC, 450 F. Supp. 2d 243 (S.D.N.Y. 2006), have applied Smith Corona's interpretation of Stencel. In Canon, a generic manufacturer of ink cartridges for Canon's printers was accused of patent infringement. Id. at 246. The printer cartridges at issue connected to the printer itself in part via "a projection" that engaged with "twisted surfaces" on a hole in the printer's driver apparatus. Id. at 248-249. The parties disputed whether the patents covered the cartridge alone or the cartridge in combination with the entire printer, a determination which they believed was relevant to determining if the doctrine of permissible repair applied. Id. at 247-248. Relying on Smith Corona's analysis of Stencel, the district court concluded that the patents covered the cartridge alone. Id. at 250 ("I conclude that the reading of Stencel in Smith Corona is correct and applies to claim construction in this case."). However despite Canon's reliance on Smith Corona (and despite the Federal Circuit's luke-warm and summary affirmation of Smith Corona)*fn4, this Court concludes that Smith Corona's reading of Stencel cannot determine the outcome of the claim construction issues before it, for several reasons.
First, the Canon court quoted and followed the Smith Corona analysis of Stencel, only to have that analysis explicitly called into question on appeal. Although the Federal Circuit affirmed the result of Canon (granting a preliminary injunction), it explicitly cast doubt on Canon's combination claim analysis: "[o]n the present record, there is a reasonably debatable question of whether [the disputed claim] should be construed to cover the cartridge alone or the cartridge as part of a combination. Therefore this Court is not now reaching its final conclusion as to the matter." Canon Inc. v. GCC International Limited, GCC, 263 Fed. Appx. 57, (Fed. Cir. 2008) (affirming on alternate grounds). Canon's analysis of the combination claim issue is indistinguishable from Smith Corona's, and accordingly the Federal Circuit's reservations as to Canon's approach apply with equal force to Smith Corona. This Court therefore undertakes its analysis independently.
The second reason this Court does not rely on Smith Corona is that a recent Federal Circuit opinion, decided shortly before Canon and not referenced therein, is inconsistent with it. In Bicon, Inc. v. The Straumann Company, 441 F.3d 945 (Fed. Cir. 2006), a patent holder appealed from a grant of summary judgment of noninfringement. Bicon, 441 F.3d at 946. A disputed claim described a cuff for use in ...