The opinion of the court was delivered by: David E. Peebles U.S. Magistrate Judge
REPORT AND RECOMMENDATION
This action involves two direct competitors in the cable and telecommunications industry with a history of prior judicial and administrative intellectual property skirmishes, and who once again find themselves embroiled in a patent dispute. Plaintiff John Mezzalingua, Inc., d/b/a PPC ("PPC") has commenced this action against defendant Corning Gilbert, Inc. (" Corning Gilbert") alleging infringement of two patents relating to coaxial cable connectors through Corning Gilbert's marketing of its UltraShield and UltraRange series of allegedly infringing connectors. Corning Gilbert has denied infringement and counterclaimed seeking a declaratory judgment of non-infringement, patent invalidity, and unenforceability, additionally asserting pendent state law counterclaims for intentional interference with business relations, abuse of process, and commercial disparagement.
The parties have sought guidance from the court with respect to ten
disputed claim terms appearing within the two patents in
suit.*fn1 In light of that request the matter has been
referred to me by Chief Judge Gary L.
Sharpe, the assigned district judge, for the issuance of a report and
recommendation to him regarding claim construction. The following
constitutes my reported findings and recommendations, based upon
comprehensive submissions from the parties and a claim construction
hearing conducted by the court.
At issue in this action are two patents issued to inventor Noah P.
Montena, who is employed at PPC as a Principal Engineer, both of which disclose a cable connector and method of operation. The first, U.S. Patent No. 6,558,194 (the "'194 Patent"), was issued on May 6, 2003. The second, U.S. Patent No. 6,848,940 (the "'940 Patent") followed on February 1, 2005. Both patents relate to connectors used to couple coaxial cable to such devices as televisions, cable boxes, and cable modems.
The technology involved in the two patents and the coaxial cable industry generally is not particularly complex. Coaxial cables provide a means for transmission of electronic signals, and typically are comprised of four elements, including 1) an outer coating, to act as an environmental seal; 2) a metal braid, or shield, designed to prevent unwanted external magnetic signals and other influences from interfering with the electrical signals being conveyed by the cable; 3) a dielectric layer, which acts as an insulator; and 4) a center conductor through which the electrical signals travel. Montena Decl. (Dkt. No. 34-1) ¶ 4. A coaxial cable connector is typically attached to the end of a length of cable in order to extend the physical and electromagnetic shielding structure of the cable through to the receiving port of the television or other device to which the cable is being attached. Id. at¶ 5. The connector typically facilitates attachment to the port through use of a threaded nut or by other similar means. Id.
Early cable connectors utilized a crimping process, usually achieved through use of a hexagonal crimping tool that permanently deformed the connector, causing it to become attached to the cable, in order to attach a connector to a cable end. Montena Decl. (Dkt. No. 34-1) ¶ 6. One prominent disadvantage of hexagonal crimping, prompting those in the field to explore better solutions, was the failure of a crimp-type connector to provide a fully enclosed, impregnable seal between connector and cable. Montena Decl. (Dkt. No. 34-1) ¶ 6.
In the mid-1990's compression-type connectors, or radial seal connectors, were introduced. Montena Decl. (Dkt. No. 34-1) ¶ 7. Among the advantages of such compression-type connectors was that they provided for a water-tight, 360E seal. Id. There were disadvantages associated with early compression-type connectors, however, in that many involved more than one component and were therefore difficult to manipulate, and often were not "universal", meaning that they were not designed to fit onto cable ends of differing diameters. Id.
In 1997, while working in his capacity for PPC, Montena conceived of a new type of compression connector that was both universal and provided for the benefit of a water-tight seal. Montena Decl. (Dkt. No. 34-1) ¶ 8. Montena's invention, which is disclosed and claimed in the '194 and '940 patents, includes five principal elements, including 1) a tubular post; 2) a nut or other means of attaching a connector to a video port; 3) a cylindrical body member that on one end is attached to the tubular post and on the other includes a cylindrical sleeve or other deformable portion; 4) a compression ring; and 5) a tapered wall or similar dimensioning in the compression ring that, when the compressing ring is slid axially over the cylindrical body member, deforms part of the cylindrical sleeve inwardly against the jacket of the coaxial cable. Id. One of the predominant, innovative features of Montena's invention is the use of a compression ring, also called a fastener member, that is dimensioned such that when the cable and connector are joined the compression ring deforms the body member of the connector inwardly against the cable jacket. This action serves two purposes, creating a mechanical engagement with the cable and forming a water tight seal.
An example of Montena's invention is included in the following drawing, which depicts a longitudinal cross-sectional view of the preferred embodiment of the invention disclosed in the '194 patent: '194 Patent, Fig. 1. That figure shows a connector 10 ready for placement on the prepared end of a cable 12. The cable includes an electrical center conductor 14 surrounded by a braid conductor or conductive grounding sheath 16 by a foil 18 and an insulator core or dielectric 20. A dielectric covering or sheathing jacket 22 surrounds the braid and comprises the outermost layer of the cable.
Turning to the connector 10, it is dimensioned to accommodate receiving the prepared end of the coaxial cable, and consists of a first body member that includes a connector body or cylindrical body member 24 and a post member 26. The connector 10 also has a second body member, or a fastener member 28. The post 26 typically is a tubular member having a first opening at the first end 30 and a second opening at the second end 32. The post or a tubular post 26 defines the first inner cavity 34. The first outer cavity or first central bore 36 is open at a first end of the cylindrical body member 24 and is closed at the other end or second end of the connector body or cylindrical body member 24 together with the post member 26.
In the preferred embodiment the connector body 24 and the post member 26 are typically separate components, with the connector body 24 being press fitted into the outer surface of the post member 26. The connector body 24 is preferably formed of brass or a copper alloy, and the post member is composed of brass, although in an alternative preferred embodiment the connector body 24 and post member 26 can be formed integrally as a single piece, and the connector body 24 can be fabricated of a plastic composition.
The focus of plaintiff's infringement claims in this action are two product lines offered by Corning Gilbert. The first product, the UltraRange connector, was developed in or about 2004 in an effort to design around the '194 Patent following a jury verdict in Wisconsin in favor of PPC and against Corning Gilbert, finding infringement with regard to Corning Gilbert's earlier UltraSeal connectors. The second accused device, the UltraShield, was introduced in 2010 and operates much in the same way as the UltraRange connector in terms of the manner in which it forms a seal with a cable end. The UltraRange and UltraShield connectors differ from PPC connectors manufactured under the '194 and '940 Patents in the manner in which a water tight seal is accomplished between connector and cable. Unlike the PPC connector, the UltraRange and UltraShield products do not include bodies that deform. Instead, a plastic gripper is utilized to slide under the connector body and secure the cable, also serving to seal the connector.
Plaintiff commenced this action on July 5, 2011. Dkt. No. 1. Issue
was thereafter joined by the filing of an answer on behalf of Corning Gilbert on September 6, 2011, generally denying the material allegations set forth in plaintiff's complaint and, inter alia, containing defenses and counterclaims asserting non-infringement, invalidity, and unenforceability of the patents in suit. Dkt. No. 6.
An early summary judgment motion by Corning Gilbert on the issue of non-infringement was denied by the court as premature. See Dkt. Nos. 19, 21, 22, and text order dated 11/18/11. Since then, as a precursor to adjudication of the various infringement claims and defenses raised in the action, the parties have requested the court's guidance in defining certain disputed terms contained within the claims of the two patents in suit, including the following:
Cylindrical Body Member '194 First End '194 and '940 Cylindrical Sleeve '194
First Central Bore '194 and '940 Compression Ring '194 and '940 Central Passageway '194 and '940 Commensurate '194 Said Inwardly Tapered Annular Wall Causing Said Rear End Portion of Said Cylindrical Sleeve to be Deformed Inwardly '194 Connector Body Member '940 Fastener Member '940 The parties have submitted extensive briefing and materials regarding these claim terms, see Dkt. Nos. 34, 36, 38, and 39, and a claim construction hearing was held by the court on April 25, 2012.
A. Claim Construction: The Legal Framework
Patent claim construction represents an issue of law to be decided by the court. Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1329 (Fed. Cir. 2012); Cybor Corp. V. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). The guiding principles associated with patent claim construction are well-established and not particularly controversial.
Perhaps the most comprehensive discourse to date regarding the claim construction calculus is found in the Federal Circuit's en banc decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), cert. denied, 546 U.S. 1170, 126 S. Ct. 1332 (2006). In Phillips, though with considerable elucidative discussion regarding the relative importance of intrinsic and extrinsic evidence, the Federal Circuit in essence endorsed its earlier decision in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996), previously regarded by the courts and patent practitioners as defining the contours of the claim construction inquiry. Phillips, 415 F.3d at 1324. The principal teaching of Phillips -- and not a significant departure from earlier claim construction jurisprudence -- is that claim terms should generally be given an ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention when read in the context of the specification and prosecution history.*fn2 Phillips, 415 F.3d at 1313; Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); Aventis Pharma S.A., 675 F.3d at 1329; see also CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) ("Generally speaking, we indulge a 'heavy presumption' that a claim term carries its ordinary and customary meaning.") (citations omitted).
There are two exceptions to this general rule. The first involves cases in which the patentee has acted as his or her own lexicographer, specifying a particularized definition to be attributed to a claim term. See Thorner, 669 F.3d at 1365; Phillips, 415 F.3d at 1316; Vitronics Corp., 90 F.3d at 1580. To act as his or her own lexicographer a patentee must clearly and unequivocally manifest an intention to define a term differently than the plain and ordinary meaning which would otherwise obtain. Aventis Pharma S.A., 675 F.3d at 1350; Thorner, 669 F.3d at 1365.
Under the second exception, a claim term may also properly be given a meaning which is different and more restrictive than its customary meaning when a patentee has made it clear, either through the patent's specification or during patent prosecution, that the invention does not include a full range of a particular term, and he or she has thereby disavowed the full scope of a claim's scope. Thorner, 669 F.3d at 1366; Aventis Pharma S.A., 675 F.3d at 1330; see also SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). As is the case with regard to a patentee acting as a lexicographer, this exception to the otherwise general rule that patent terms should be given their ordinary meaning is both narrow and exacting; "[t]o constitute disclaimer, there must be a clear and unmistakable disclaimer." Thorner, 669 F.3d at 1366-67.
While the words of a patent claim will generally control, they should not be interpreted in isolation, in derogation of other portions of the patent; instead "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." Phillips, 415 F.3d at 1313. In this regard, a patent specification, which some liken to an internal dictionary, must be carefully reviewed to determine whether, for example, the inventor has used a particular term in a manner inconsistent with its ordinary meaning. Id. at 1313-14; see also Vitronics, 90 F.3d at 1582 (citing Markman v. Westview Instruments, Inc.,52F.3d 967, 979 (1995)).
A patent's specification often constitutes the "single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582. When resorting to a patent's specification for guidance with respect to disputed claim terms one must consider it as a whole, and all portions should be read in a manner that renders the patent internally consistent. Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379-80 (Fed. Cir. 2001). "[W]hile it is true that claims are to be interpreted in light of the specification and with a view to ascertaining the invention, it does not follow that limitations from the specification may be read into the claims[,]" Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988) (emphasis in original), "[n]or should particular embodiments in the specification be read into the claims; the general rule is that the claims of a patent are not limited to the preferred embodiment." Cornell Univ. v. Hewlett-Packard Co., 313 F. Supp. 2d 114, 126 (N.D.N.Y. 2004) (Mordue, C.J.) (citing, inter alia, Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1204 (Fed. Cir. 2002)).
In addition to the claim terms themselves and the patent's specification, a third category of relevant intrinsic evidence worthy of consideration is the history surrounding prosecution of the patent. That history, which is customarily though not always offered to assist a court in fulfilling its claim construction responsibilities, is generally comprised of the complete record of proceedings before the PTO including, significantly, any express representations made by the applicant regarding the intended scope of the claims being made, and an examination of the prior art. Vitronics, 90 F.3d at 1582-83. Such evidence, which typically chronicles the dialogue between the inventor and the PTO leading up to the issuance of a patent and thus can act as a reliable indicator of any limitations or concessions on the part of the applicant, oftentimes proves highly instructive on the issue of claim construction. Philips, 415 F.3d at 1313 ("We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history.") (quoting Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005)).
B. Construction of Disputed Terms
Claims 1 and 2 of the '194 and '940 patents, which are nearly identical, serve as a useful backdrop for the court's claim construction analysis. Claim 1 of the '194 patent discloses the following:
1. A connector for coupling an end of a coaxial cable to a threaded port, the coaxial cable having a center conductor surrounded by a dielectric, the dielectric being surrounded by a conductive grounding sheath, and the conductive grounding sheath being surrounded by a protective outer jacket, said connector comprising:
a. a tubular post having a first end adapted to be inserted into an exposed end of the coaxial cable around the dielectric thereof and under the conductive grounding sheath thereof, said tubular post having an opposing second end;
b. a nut having a first end for rotatably engaging the second end of said tubular post and having an opposing second end with an internally threaded bore for threadedly engaging the threaded port;
c. a cylindrical body member having a first end and a second end, the first end of said cylindrical body member including a cylindrical sleeve having an outer wall of a first diameter and an inner wall, the inner wall bounding a first central bore extending about said tubular post, the second end of said cylindrical body member engaging said tubular post proximate the second end thereof, said cylindrical sleeve having an open rear end portion for receiving the outer jacket of the coaxial cable, said open rear end portion being deformable;
d. a compression ring having first and second opposing ends and having a central passageway extending there-through between the first and second ends thereof, the first end of said compression ring having a first [non-tapered (claim 1)/constant diameter (claim 2)] internal bore of a diameter commensurate with the first diameter of the outer wall of said cylindrical sleeve for allowing the first end of said compression ring to extend over the first end of said cylindrical body member, the central passageway of said compression ring including an ...