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Carotek, Inc v. Kobayashi Ventures

September 8, 2011


The opinion of the court was delivered by: Naomi Reice Buchwald United States District Judge


Plaintiffs Carotek, Inc. and Event Capturing Systems, Inc. (collectively, "Carotek") filed actions, which are now consolidated, seeking, inter alia, a determination that three patents are invalid and unenforceable. Defendant Kobayashi Ventures, LLC ("Kobayashi"), then-owner of the three patents, asserted various counterclaims, including for patent infringement. Presently before us is a request by Carotek and Kobayashi to construe various claims in the three above- mentioned patents: U.S. patent numbers 5,717,456 ("the '456 Patent"), 5,821,990 ("the '990 Patent"), and 6,211,905 ("the '905 Patent") (collectively, "the Patents").*fn1

Following briefing and a Markman hearing, we adopt the following constructions of the disputed claim terms.


Before we construe the claim terms, we briefly summarize the nature of the claimed invention and the language of the Patents.

I. The Invention

The claimed invention relates to a system for monitoring a continuous manufacturing process, which is a process that involves the uninterrupted production or handling of products.*fn2

('456 Patent at col. 1, ll. 5-11.) Examples of such processes include packaging, bottling, stamping, assembling a discrete product, manufacturing webs of paper, and printing on large rolls of paper. (Id. at col. 1, ll. 13-20; id. at col. 4, ll. 29-53.) Many of these processes occur on an assembly line or other production line.

In general, a desired objective of a continuous manufacturing process is that the output have certain predetermined characteristics. Deviations from these predetermined characteristics may result in lost production time and unacceptable output. (Id. at col. 1, ll. 21-29.)

The claimed invention includes a system -- such as multiple video cameras -- for continuously monitoring production. (Id. at col. 1, ll. 54-63.) The claimed invention then converts the captured images into digitized data. (Id. at col. 1, ll. 64-65.) The data, in turn, are stored in subparts called segments and clips, which correspond to the data generated from a specific location over a specific period of time. (Id. at col. 1, ll. 66-67; id. at col. 2, ll. 1-9.) Generally, the data are stored on a first-in-first-out basis, with newly-digitized data displacing the earliest-digitized data. (Id. at col. 2, ll. 1-9.) Additionally, the claimed invention includes so-called control means, which are capable of responding to a signal that identifies a production deviation or problem. The control means can then extract one or more digitized data clips and form a clip to be displayed or viewed, presumably so the problem can be identified and remedied. (Id. at col. 2, ll. 10-16.)

According to the Patents, the claimed invention permits individuals to observe and monitor a production process more efficiently and effectively than using video cameras and video tape. (Id. at col. 1, ll. 30-51.)

II. Claim Language

Kobayashi alleges that Carotek is infringing on the following claims: (1) claims 1 and 5-7 of the '456 Patent; (2) claims 1-2, 4-6, 9-13, 17-25, and 27-66 of the '990 Patent; and (3) claims 1-13, 16-17, 20-21, and 23-47 of the '905 Patent.

We need not recite the language of all of the claims at issue because the disputed claims share many of the same phrases. However, claim 1 in the '456 Patent and claim 1 in the '905 Patent are representative of the claims throughout the Patents and, for ease of reference, we set forth these claims below and emphasize the claim terms presently in dispute.*fn3

Claim 1 in the '456 Patent recites:

1. A monitoring process for monitoring the manufacture of a continuous web of paper having one or more predetermined characteristics in a paper manufacturing machine comprising: a plurality of monitoring means which comprises one or more video cameras for monitoring the paper web, each monitoring means addressing the paper web at a different location of interest along the paper web at a different location of interest along the paper manufacturing machine and for producing a video image of the paper web at the location; digital converting means for converting the video image into a digitized video signal; digital data storage means for receiving said digitized video signal and storing digitized segments thereof, each of which comprises a plurality of digitized clips, said digitized segments and clips of a predetermined length covering real time operation of said machine, said digitized segments being stored such that earlier prior stored digitized data in said segment is removed as new digitized data is stored in said segment to maintain said stored segment at or about said predetermined length; computer control means for controlling the operations of said monitoring system, said means in communication with said data storage means, said computer control means in communication with a distributive control system for controlling said machine, said control system having one or more deviation detectors for detecting deviations from predetermined characteristics as said paper web passes through said machine; and one or more video monitors in communication with said computer control means and for displaying the image of digitized video signals under the control of said computer control means; wherein an occurrence of a deviation from the predetermined characteristics of said web, said distributive control system transmits a deviation signal comprising the time, date and location of said deviation event to said computer control means, and in response thereto said computer control means identifying the digitized data segment corresponding to said deviation event, extracting the deviation event clip, the preceding clip preceding said break event clip to form a display clip and displaying said display clip on a video monitor. ('456 Patent at col. 9, ll. 6-48.)

Claim 1 in the '905 Patent recites:

1. A monitoring system for continuously monitoring a process comprising: a plurality of monitoring means for continuously monitoring a pre-determined characteristic of the process and collecting monitored data, each monitoring means addressing a different location of interest of said process, and capable of monitoring and collecting real time data relative to said location; data converting means for converting said output data into digitized data; digital data storage means capable of storing segments of said digitized data, each of said segments comprised of a plurality of digitized data clips, said segments and said clips of predetermined lengths which cover the operations of said process at a relevant location over a predetermined period of time, said digitized data segments being stored such that as new digitized data is stored in said segment, the earliest prior stored digitized data in said segment is displaced from said segment to maintain said segment at said predetermined length; and control means for controlling said monitoring system, said control means in communication with said digital data storage means and capable of extracting one or more digitized data clips according to predetermined criterion to form one or more extracted clips, and capable of displaying said extracted clips.

('905 Patent at col. 9, ll. 7-32.)

The parties seek construction of the following terms, many of which are emphasized above: "control means," "clip," "predetermined length," "extract," "form," "digital converting means," "library means," and "monitoring means."*fn4


I. Applicable Law

Analysis of patent infringement involves two steps: first, the construction of the meaning and scope of the asserted claims; and second, the determination of whether the accused device infringes the claims, as construed. See Solvay S.A. v. Honeywell Int'l, Inc., 622 F.3d 1367, 1379 (Fed. Cir. 2010) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd 517 U.S. 370 (1996)). In this case, the parties have asked us to engage in the first step of the infringement analysis.

Claim construction is a question of law, see Markman v. Westview Instruments, Inc., 517 U.S. 370, 384 (1996), the purpose of which is to determine what is covered by an asserted claim. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008). In other words, "[t]he construction of claims is simply a way of elaborating the normally terse claim language in order to understand and explain, but not to change, the scope of the claims." Terlep v. Brinkmann Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005).

Before construing the claims at issue, we briefly review the sources of evidence that we may consider when interpreting the claims in the Patents as well as the general principles of claim construction that may be pertinent to our analysis.

A. Sources of Evidence

When construing a patent claim, a court may look to multiple sources, including "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).

Although a court may consider each of these sources of evidence, certain sources may be more significant than others in determining the legally operative meaning of the claim language. See Phillips, 415 F.3d at 1317.

1. Intrinsic Evidence

The Federal Circuit often emphasizes the importance of so-called intrinsic evidence in claim construction. See Netcraft Corp. v. eBay, Inc., 549 F.3d 1394, 1397 (Fed. Cir. 2008); Phillips, 415 F.3d at 1317. Such evidence includes the claims themselves, the rest of the patent specification, and the prosecution history, if in evidence. See Terlep, 418 F.3d at 1382; Phillips, 415 F.3d at 1314-17.

The starting point for claim construction is the "ordinary and customary meaning" of the term. See Phillips, 415 F.3d at 1312-13. The "ordinary and customary meaning" is in turn defined as the meaning that a person having ordinary skill in the art would attribute to the term in the context of the patent. Id. at 1313. On occasion, "the ordinary meaning of claim language as understood by a person of skill in the art" will be sufficiently apparent that the claim language itself is all that is needed to construe the claims at issue. Id. at 1314. However, even when the terms in a claim are not self- explanatory, "[t]he context in which a term is used in the asserted claim can be highly instructive." Id.*fn5

Apart from the claims themselves, a patent consists of a written description of the patented invention, which is also referred to as the specification. Under the Patent Act, 35 U.S.C. §§ 1 et seq., the specification must describe the claimed invention in "full, clear, concise, and exact terms." 35 U.S.C. § 112, ¶ 1. Because of this statutory role, the specification "is always highly relevant to the claim construction analysis." Phillips, 415 F.3d at 1315-16. Accordingly, "claims must be read in view of the specification, of which they are a part." Id. at 1315.

The prosecution history of a patent, also part of the intrinsic record, "consists of the complete record of the proceedings before the [Patent and Trademark Office ("PTO")] and includes the prior art cited during the examination of the patent." Id. at 1317. Like the claims and the specification, "the prosecution history provides evidence of how the PTO and the inventor understood the patent," and accordingly, "can often inform the meaning of the claim language[.]" Id. However, "because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes." Id.

2. Extrinsic Evidence

The Federal Circuit also authorizes the use of extrinsic evidence to facilitate claim construction. See Netcraft Corp., 549 F.3d at 1397; Phillips, 415 F.3d at 1317. As a general matter, extrinsic evidence "consists of all evidence external to the patent and prosecution history," including expert testimony, inventor testimony, dictionaries, and treatises. Phillips, 415 F.3d at 1317. However, unlike intrinsic evidence, extrinsic evidence is not part of "the indisputable public record." Id. As a result, the Federal Circuit has cautioned that putting too much weight on extrinsic evidence "poses the risk [of] . . . undermining the public notice functions of patents." Id. at 1318-19. Nevertheless, while extrinsic evidence is less important than intrinsic evidence, district courts are "authorized . . . to rely upon [it]." Id. at 1317.

B. Enablement Requirement

According to the Federal Circuit, the enablement requirement of section 112 of the Patent Act "frame[s] the issue" of claim interpretation for the court. See Phillips, 415 F.3d at 1311-12. That section provides, in relevant part, that:

[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . and shall set forth the ...

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