Johnson Outdoors Inc, et al v. Navico, Inc. et al

Filing 94

MEMORANDUM OPINION AND ORDER that the claim term "image," as it appears in the claims of the Patents in suit, is construed as "a visual representation of the underwater environment produced by sound rather than light." Signed by Honorable William Keith Watkins on 4/20/2011. (wcl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF ALABAMA
NORTHERN DIVISION
JOHNSON OUTDOORS INC., et al.,
Plaintiffs,
v.
NAVICO, INC.,
Defendant.

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CASE NO. 2:10-CV-67-WKW [WO]

MEMORANDUM OPINION AND ORDER
Plaintiffs Johnson Outdoors, Inc. (“Johnson Outdoors”) and Johnson Outdoors Marine
Electronics, Inc., d/b/a Humminbird (“Humminbird” or collectively “Johnson Outdoors” or
“Plaintiffs”) bring this patent infringement action against Defendant Navico, Inc. (“Navico”).
Johnson Outdoors alleges infringement of four patents generally related to boat-mounted
side-scan sonar imaging devices. Among Navico’s defenses are invalidity and inequitable
conduct during the prosecution of one of the patents. On March 8, 2011, the court conducted
a claim construction hearing with respect to the patents in suit. Upon consideration of the
parties’ arguments, claim construction briefs, and the evidence presented, the court construes
the disputed claim term as set forth below.

I. BACKGROUND
Johnson Outdoors filed a Third Amended Complaint (Third Am. Compl. (Doc. # 45)),
alleging patent infringement by Navico of four of Johnson Outdoors’s patents relating to a
“system, to be mounted to a boat, employing side scan sonar beams to locate fish and
underwater structures, and to display them in detailed and recognizable images.” (Third Am.
Compl. ¶ 2.) These boat-mounted side scanning sonar imaging systems are sold by Johnson
Outdoors under Humminbird’s “Side Imaging” registered trademark.
The four Patents at issue all derive from U.S. Patent Application No. 11/195,107 (the
“'107 Application”), which was filed on August 2, 2005. The first Patent to issue, U.S.
Patent No. 7,652,952 (the “'952 Patent”), discloses and describes a “sonar imaging system
compris[ing] a transducer coupled to the watercraft and having at least one side scanning
element and at least one bottom scanning element, [and] an electronic control head unit
coupled to the transducer and configured to display sonar images.” ('952 Patent Abstract
(Doc. # 71, Ex. A).) The next Patent to issue, U.S. Patent No. 7,710,825 (the “'825 Patent”)
describes the same system, but “further includ[es] signal processing circuitry . . . and a digital
processor for providing signals . . . to produce a display image on the display showing boat
location, a water column between the boat and the bottom, and an underwater image
comprising at least one of a left side underwater image and a right side underwater image.”
('825 Patent Abstract (Doc. # 71, Ex. B).) The third Patent to issue, U.S. Patent No.
7,729,203 (the “'203 Patent”) describes the same system, but “includ[es] a GPS receiver for
providing GPS position data[.]” ('203 Patent Abstract (Doc. # 71, Ex. C).) The fourth Patent
2

to issue, U.S. Patent No. 7,755,974 (the “'974 Patent”), describes the same system but
“further includes a user interface including user inputs and a display and a digital processor
. . . to show an underwater image based upon the side scan image data, wherein the digital
processor, in response to a user command, performs an image enhancement algorithm to
enhance the underwater image.” ('974 Patent Abstract (Doc. # 71, Ex. D).)
Johnson Outdoors alleges that, after it had filed patent applications to protect its
technology, Navico, with knowledge that the United States Patent and Trademark Office
(“PTO”) had determined that claims in the '107 Application were patentable1, began to sell
“its own side scan sonar products to compete directly with the Humminbird ‘Side Imaging’
products. Navico calls these products its ‘Lowrance LSS-1 StructureScan Imaging System’
. . . .” (Third Am. Compl. ¶¶ 5-6.) The Third Amended Complaint alleges, in four counts,
that Navico, “by making, using, importing, offering to sell and/or selling” its Lowrance
StructureScan Imaging System, infringed the patented technology of the '952, '825, '203, and
'974 patents held by Johnson Outdoors.
Navico filed an Amended Answer (Am. Answer (Doc. # 51)), which included
affirmative defenses and counterclaims seeking declarations of noninfringement, invalidity,
and unenforceability of the four patents at issue.
At the Markman hearing, both parties presented well organized and persuasive
arguments consistent with briefing (Docs. # 89, 90) concerning the “image” claim term.

1

Johnson Outdoors claims priority to August 2, 2005, the date of the '107 Application. (Third
Am. Compl. ¶ 2.)

3

Both parties agree that construction of the claim term will have no impact on Johnson
Outdoors’s infringement claims, but that it will impact Navico’s invalidity defenses as to the
'952 and '203 Patents. (Doc. # 89, at 3; Doc. # 90, at 2.) Navico further argues that
construction of the term “image” will also impact all of its other defenses against all four
Patents. Satisfied that “image” is a claim term that is sufficiently in controversy, the court
will construe the term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to
the extent necessary to resolve the controversy.”).
II. LEGAL STANDARD
A.

Generally
A patent confers the right to exclude others from making, using, or selling the

invention defined by the patent’s claims. Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d
448, 452 (Fed. Cir. 1985) (citing 35 U.S.C. § 154). A patent must describe the exact scope
of an invention and its manufacture to secure to the patentee all to which he is entitled, and
to apprise the public of what is still open to it. Markman v. Westview Instruments, 517 U.S.
370, 373 (1996). These objectives are served by two distinct elements of a patent document.
First, the patent contains a specification describing the invention in such full, clear, concise,
and exact terms as to enable any person skilled in the art to make and use the same. 35
U.S.C. § 112. Second, a patent includes one or more claims, which particularly point out and
distinctly claim the subject matter which the applicant regards as his or her invention. Id.

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Put simply, “[s]pecifications teach. Claims claim.” SRI Int’l v. Matsushita Elec. Corp., 775
F.2d 1107, 1121 n.14 (Fed. Cir. 1985).
The first step in any assertion of infringement or invalidity is claim construction. See
Union Oil Co. of Cal. v. Atl. Richfield Co., 208 F.3d 989, 995 (Fed. Cir. 2000) (quoting
Rockwell Int’l Corp. v. United States, 147 F.3d 1358, 1362 (Fed. Cir. 1998)). “The
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.” Id. (quotation
omitted). Claim construction is a matter of law to be decided exclusively by the court.
Markman, 517 U.S. at 390.
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the
invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415
F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water
Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Specifically, it is the claim
terms, the words employed within the claims, that define the scope of the patented invention.
Id.; see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
Claim terms “are generally given their ordinary and customary meaning.” Phillips, 415 F.3d
at 1312 (citing Vitronics, 90 F.3d at 1582). “[T]he 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[.]” Phillips, 415 F.3d at 1313 (citing Innova, 381 F.3d
at 1116).

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B.

Intrinsic Evidence
“There is a hierarchy for various types of intrinsic evidence.” Applied Signal Tech.,

Inc. v. Emerging Mkts. Commc’ns, Inc., No. 09cv2180, 2011 WL 500786, at *2 (N.D. Cal.
Feb. 9, 2011). In descending order, this hierarchy is comprised of “‘the words of the claims
themselves, the remainder of the specification, [and] the prosecution history[.]’” Phillips,
415 F.3d at 1314 (quoting Innova, 381 F.3d at 1116). “When the intrinsic evidence is
unambiguous, it is improper for the Court to rely on extrinsic evidence[.]” Applied Signal
Tech., 2011 WL 500786, at *2.
“In some cases, the ordinary meaning of claim language as understood by a person of
skill in the art may be readily apparent even to lay judges, and claim construction in such
cases involves little more than the application of the widely accepted meaning of commonly
understood words.” Phillips, 415 F.3d at 1314. However, “the meaning of a claim term as
understood by persons of skill in the art is often not immediately apparent[.]” Id. In such
cases, the court must look to other components of the intrinsic record in order to decipher the
meaning of claim terms.
“The claims, of course, do not stand alone.” Phillips, 415 F.3d at 1315. “Rather, they
are part of a fully integrated written instrument, consisting principally of a specification that
concludes with the claims.” Id. (internal quotation marks and citation omitted). “[T]he
specification ‘is always highly relevant to the claim construction analysis. Usually it is
dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting
Vitronics, 90 F.3d at 1582); see also Multiform Desiccants, Inc. v. Medzan, Ltd., 133 F.3d
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1473, 1478 (Fed. Cir. 1998) (“The best source for understanding a technical term is the
specification from which it arose, informed, as needed, by the prosecution history.”). The
specification is necessarily helpful in deciphering claim terms because of the statutory
directive that the specification describe the claimed invention “in full, clear, concise, and
exact terms.” 35 U.S.C. § 112; see also Phillips, 415 F.3d at 1316.
Because of the specification’s instructive nature, the Federal Circuit has “recognize[d]
that the specification may reveal a special definition given to a claim term by the patentee
that differs from the meaning it would otherwise possess. In such cases, the inventor’s
lexicography governs.” Phillips, 415 F.3d at 1316.
“In addition to consulting the specification, [the Federal Circuit] [has] held that a court
‘should also consider the patent’s prosecution history, if it is in evidence.’”2 Phillips, 415
F.3d at 1317 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
1995)). The prosecution history is intrinsic evidence and “consists of the complete record
of the proceedings before the [Patent and Trademark Office (“PTO”)] and includes prior art
cited during the examination of the patent.” Id. (citation omitted). “Yet because the
prosecution history represents an ongoing negotiation between the PTO and the applicant,
2

The Phillips opinion contains a slight ambiguity as to the circumstances under which a court
should consider prosecution history. The quotation reproduced above unqualifiedly states that a court
should consider the prosecution history any time it is in evidence. However, earlier in the Phillips
opinion, when the en banc court was describing the role of the specification in claim construction, the
court stated that “[u]sually [the specification] is dispositive[,]” and that “[t]he best source for
understanding a technical term is the specification from which it arose, informed, as needed, by the
prosecution history.” 415 F.3d at 1315 (emphasis added). When the prosecution history is in evidence
but is not needed for claim construction because the specification is dispositive, there is an ambiguity as
to whether the prosecution history should be considered. In this case, the prosecution history is useful
and is considered.

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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. (citations omitted).

“Nevertheless, the prosecution history can often inform the meaning of the claim
language . . . .” Id. (citations omitted).
C.

Extrinsic Evidence
Extrinsic evidence “‘consists of all evidence external to the patent and prosecution

history, including expert and inventor testimony, dictionaries, and learned treatises.’”
Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980). Even though “it is improper
for [district courts] to rely on extrinsic evidence” when the intrinsic evidence is
unambiguous, Applied Signal Tech., 2011 WL 500786, at *2, a district court may
“[n]onetheless . . . admit and use [extrinsic] evidence” when it would be helpful in
“educat[ing] the court regarding the field of the invention” or in “determin[ing] what a person
of ordinary skill in the art would understand claim terms to mean[.]” Phillips, 415 F.3d at
1319. “In sum, extrinsic evidence may be useful to the court, but it is unlikely to result in
a reliable interpretation of patent claim scope unless considered in the context of the intrinsic
evidence.” Id.

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III. DISCUSSION
The only disputed claim term is “image.”3 Navico proposes that “image” be endowed
with “its ordinary and customary meaning,” which, according to Navico, is “a visual
representation.” (Navico’s Opening Br. 12.) Johnson Outdoors, on the other hand, proposes
a narrower definition: “[A] detailed visual representation of the underwater environment that
is produced by sound rather than light.” (Johnson Outdoors’s Opening Br. 3 (Doc. # 72).)
The parties agree that an image is a visual representation. The parties disagree as to whether
the visual representation need be (1) produced by sound rather than light, (2) of the
underwater environment, and (3) detailed. The first two disagreements will be addressed
together, followed by the third.
A.

“Produced by Sound Rather than Light” and “of the Underwater Environment”
Johnson Outdoors argues that the intrinsic evidence surrounding the use of the claim

term “image” reveals that the inventors imported a distinct meaning to the term, using it to
refer to visual representations that are produced by sound rather than light and that are of the
underwater environment.
In support of its position, Johnson Outdoors first directs the court’s attention to claim
1 of the '952 Patent. (Markman Hr’g Tr. 9-10 (Doc. # 91).) With respect to the “produced
by sound rather than light” aspect of Johnson Outdoors’s proposed construction, the words

3

Navico also contends that claims 10, 11, 12, 13, and 29 of the '203 Patent are non-constructable
“because they are indefinite under 35 U.S.C. § 112.” (Navico’s Opening Br. 20 (Doc. # 71).) Navico’s
arguments in this regard are better suited for the summary judgment stage, or later. Accordingly, they
will not be addressed at this time.

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“sonar” and “acoustic” appear thirteen times, one time directly in reference to “a liquid
crystal display (LCD) for displaying side scan sonar images . . . .” ('952 Patent, 12:49-13:7
(emphasis added); Markman Hr’g Tr. 9-10.) Johnson Outdoors’s argument is that, to a
person of ordinary skill in the art, the use of the word “image” in the context of a
specification and claims for a sonar imaging system necessarily implies that the “images”
referred to therein are created by sound rather than light. (Johnson Outdoors’s Opening Br.
13-14.)
Regarding the second aspect of its proposed claim construction, “of the underwater
environment,” Johnson Outdoors highlights the language in claim 1 of the '952 Patent
referring to “[a] transducer assembly mounted to a boat.” ('952 Patent, 12:50) (emphasis
added). Within the transducer assembly are two side scan acoustic elements that produce
side scan sonar beams, which are “mounted within the housing and oriented at a depression
angle of between about 20 degrees and about 40 degrees[.]” ('952 Patent, 12:65-67)
(emphasis added). Because the images are produced from the received return echoes of the
acoustic wave beams emitted by these acoustic elements, and because these acoustic
elements are mounted on a boat and positioned down into the water and emitting wave beams
at the specified depression angle down into the water, Johnson Outdoors argues that a person
of ordinary skill in the art of sonar imaging devices would understand the word “image” to
contemplate only those images that are “of the underwater environment.” (Markman Hr’g
Tr. 10-11.)

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As part of its broader argument that the claim term “image” should be given its
ordinary meaning, Navico argues that the term to be defined is “image,” not “sonar image”
and not “underwater image.” (Markman Hr’g Tr. 28.) Referring back to claim 1 of the '952
Patent, Navico argues that the use of “[t]he modifier ‘sonar’ in front of the word ‘image’
necessarily means that not all ‘images’ are ‘sonar images.’” (Def.’s Opening Br. 14 (Doc. #
71).) Navico advances a similar argument regarding the modifier “underwater” before
“image.” (Def.’s Opening Br. 14-15.) Navico cites Phillips, in which the en banc court
considered the claim term “baffles.” The court stated: “To take a simple example, the claim
in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not
inherently mean objects made of steel.” 415 F.3d at 1314.
Navico’s reliance on this isolated sentence of Phillips is misplaced. In the prior
sentence, the court stated the principle that “the context in which a term is used in the
asserted claim can be highly instructive.” Id. Context was the primary concern. The fact
that the word “steel” was a modifying adjective that, by principles of inclusion, may imply
that baffles need not be made of steel, was merely an example of the importance of
examining context.
Indeed, the terms “sonar image” and “underwater image” do strongly imply that an
image does not inherently mean visual representations produced by sound rather than light
or visual representations of the underwater environment. Of course, the word “image,” when
detached from the context of sonar imaging devices, often refers to visual representations that
are not created by sound and that are not of the underwater environment. But in the context
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of these claims for this sonar imaging system, a person of ordinary skill in the art of sonar
imaging devices would view the term “image,” modified by numerous references to “sonar”
and/or “acoustic” and describing how and in which direction the acoustic elements which
generate the images are positioned, as referring only to images that are created by sound
rather than light, of the underwater environment.
The specifications of the Patents confirm these two aspects of Johnson Outdoors’s
proposed construction of the term. In two separate instances, the '952 Patent specification
approaches explicitly defining the claim term “image.” Very early in the specification, the
inventors disclose a “display device [that] displays representations of the received echoes,
for locating fish and other underwater articles.” ('952 Patent, 1:31-33) (emphasis added).
The word “image(s)” could, in a contextually cohesive manner, seamlessly replace the
italicized text.
Later on in the specification, the inventors disclose that “the sonar return data is
communicated . . . to the electronic control head unit for display of images or symbols
representative of the received return echoes of the acoustic wave beams.” ('952 Patent, 8:610) (emphasis added). This sentence can be read in two ways. The critical word is “or.”
First, a disjunctive reading would signify that the electronic control head unit can display (1)
images or (2) symbols representative of the received return echoes of the acoustic wave
beams.

In the above interpretation, the word “or” is taken in the disjunctive, as

contemplating one or the other. However, and second, the word “or” also has a common
definitional usage. The definitional reading would signify that the electronic control head
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unit can display images, which are defined as “symbols representative of the received return
echoes of the acoustic wave beams.” ('952 Patent, 8:8-10.) In other words, the phrase after
the “or” defines “images.” Looking to the context of the entire specification, this description,
if one is to adopt the definitional reading of the sentence, is nearly identical to the first
description cited in the preceding paragraph. By contrast, the disjunctive reading would
result in a confusing redundancy: “[t]he sonar return data is communicated . . . to the
electronic control head unit for display of images or [images].” ('952 Patent, 8:6-10.)
A few sentences down in column 8 of the '952 Patent specification, the “images”
described earlier in column 8 are further defined. “The images include a bottom profile,
objects along the bottom or in the water (e.g., fish), and the like.” ('952 Patent, 8:23-25.) In
light of the placement and positioning of the acoustic elements as claimed, and the
description in the specifications of what information the images convey, a person of ordinary
skill in the art would interpret the term image as being “of the underwater environment.”
In sum, the claims themselves, these two sentences from the '952 specification, and
the rest of the specifications as a whole reveal “a special definition given to a claim term by
the patentee that differs from the meaning it would otherwise possess.” Phillips, 415 F.3d
at 1316. The intrinsic evidence contemplates the term “image” as referring to visual
representations (1) created by sound rather than light and (2) that are of the underwater
environment. Because “[t]he inventor’s lexicography governs,” id., the court’s construction
of the claim term “image” will include that the images are produced by sound rather than
light and that they are of the underwater environment.
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B.

“Detailed”
The final point of contention is Johnson Outdoors’s argument that the intrinsic and

extrinsic evidence regarding the claim term “image” reveals that the inventors imported a
distinct meaning to the term, using it to refer to visual representations that are “detailed.”
(Pl.’s Opening Br. 14-17.)
Johnson Outdoors refers principally to columns 5, 6, and 8 of the '952 Patent
specification in support of its proposed claim construction. These parts of the specification
describe the use of wide and narrow wave beams. The specification states that “[t]he size
of the wave front created by the transmitted acoustic beam affects the resolution of the return
echo and thus the quality of the imaging of subsurface articles displayed by the sonar
device.” ('952 Patent, 5:64-66.) “Generally, a wide beam provides diffused return echoes
that are particularly suited for indicating the presence of fish in a wide area surrounding the
watercraft.” ('952 Patent, 5:67-6:3.) “A narrower beam on the other hand provides a more
detailed return echo or signal representative of the subsurface article.” ('952 Patent, 6:4-6.)
A few lines down, the specification continues this teaching: “The narrow beam is useful for
providing details of the underwater article or the bottom.” ('952 Patent, 6:11-13.) In column
8, the specification states that “the return sonar signal[s] from the bottom [and side]
reflection[s] carr[y] details . . . .” ('952 Patent, 8:3-6.) On account of these references in the
specification, Johnson Outdoors “submit[s] that the definition of ‘image’ is clear from the
intrinsic record, and should include the explicit requirement that the image is a detailed visual

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representation.” (Pls.’ Opening Br. 16) (emphasis in original). Johnson Outdoors’s proposed
construction will not be adopted for a variety of reasons.
The first reason is that the intrinsic evidence cited by Johnson Outdoors is insufficient
to establish the “detailed” prong of Johnson Outdoors’s proposed construction. Unlike the
prior two prongs of Johnson Outdoors’s proposed construction, nothing in the claim language
itself supports limiting the definition of “image” to visual representations that are “detailed.”
Furthermore, the references to “detailed” or “details” in the specification are insufficient to
read the limitation into the term “image,” and thus the claim language itself. A thorough
reading of the referenced portions of columns 5 and 6 reveal that this recitation is merely
instructive as to the differing uses of and results conveyed by wide and narrow wave beams.
As noted, “[s]pecifications teach. Claims claim.” SRI Int’l, 775 F.2d at 1121 n.14. To
import this teaching into the claim language would be to commit “one of the cardinal sins of
patent law – reading a limitation from the written description into the claims[.]” Phillips, 415
F.3d at 1320 (quoting SciMed Life Sys. v. Advanced Cardiovascular Sys., Inc., 242 F.3d
1337, 1340 (Fed. Cir. 2001)).
The language from column 8 of the '952 specification is equally unhelpful to Johnson
Outdoors’s proposed construction. This portion of the specification describes how the return
sonar signals carry “details” in the form of data that is sent “to the electronic control head
unit for display of images . . . .” ('952 Patent, 8:4-8.) Aside from the grammatical
differences between nouns and adjectives, the noun “detail” and the adjective “detailed”

15

ascribe different meanings to the ideas they are trying to convey. Dictionaries4 suggest that
the noun “detail” describes a constituent part of a whole, without making any quantitative
assessment. Webster’s Third New International Dictionary 616 (1986) (“a part of a whole”);
Am. Heritage Dictionary 494 (4th ed. 2006) (“individual part or item”). On the other hand,
the descriptive adjective “detailed” is defined as “marked by abundant detail,” Webster’s
Third at 616, or “characterized by abundant use of detail,” Am. Heritage Dictionary at 494.
The adjective “abundant,” used in both dictionaries, expressly contemplates a quantitative
assessment. Webster’s Third at 8 (“possessing in great quantity”); Am. Heritage Dictionary
8 (“rich” or “plentiful”). This quantitative distinction is important because it means that use
of the noun “details” does not necessarily imply that the sum of the constituent parts, in this
case the “image,” is, in fact, “detailed.” For example, each pixel of a digital photograph may
be described as a “detail” of that digital photograph. And despite having those “details,” the
photograph, if of poor quality and low resolution, may not be “detailed.”
Navico invokes the doctrine of prosecution disclaimer to support its position that the
claim term “image” does not include the limitation that the “image” be “detailed.” The

4

Reference to dictionaries, considered extrinsic evidence when used to construe claim terms, is
permissible in this instance. The terms “detail,” “detailed,” and “abundant,” the dictionary definitions of
which the court recites, are not claim terms. It is “the words of the claims themselves [that] define the
scope of the patented invention.” Phillips, 415 F.3d at 1312 (quoting Vitronics Corp., 90 F.3d at 1582).
Thus, it is only the claim terms themselves to which the court applies the law of claim construction.
Because the dictionary-defined words listed above are not claim terms, the court need not follow the
formalized claim construction analysis in elucidating their meaning. Moreover, as the court finds below,
the intrinsic evidence itself does not support Johnson Outdoors’s “detailed” prong of its proposed
construction of “image.” Thus, even if the analysis used for interpreting claim terms also applies to
words in the specification that are not themselves claim terms, consideration of dictionaries as extrinsic
evidence would nevertheless be proper in this case because the intrinsic evidence does not sufficiently
resolve the meanings of “detail” and “detailed.”

16

prosecution disclaimer doctrine “preclud[es] patentees from recapturing through claim
interpretation specific meanings disclaimed during prosecution.” Omega Eng’g v. Raytek
Corp, 334 F.3d 1314, 1323 (Fed. Cir. 2003). To make a showing of prosecution disclaimer,
the alleged infringer must show (1) that the patentee cancelled or narrowed the scope of a
claim, and (2) that the patentee made an express disclaimer or unambiguous disavowal of the
previous claim scope. After the PTO’s fourth rejection of Johnson Outdoors’s claims,
Johnson Outdoors returned with a new set of claims that included a requirement that the
images be “camera-like.” (Doc. # 71, Ex. E, at 454, 459, 461.) Johnson Outdoors explained
that the claims “contain one or more limitations not present in the [previously] rejected
claims, which limitations patentably distinguish the pending claims from the prior art of
record.” (Doc. # 71, Ex. E, at 464.) Among the new limitations was the limitation that the
sonar imaging system “generate[ ] camera-like images[.]” (Doc. # 71, Ex. E, at 464.) The
PTO Examiner rejected this limitation for several reasons (discussed below); Johnson
Outdoors removed the “camera-like” limitation; and a patent was issued. Navico argues that
because “Johnson Outdoors accepted the refusal, changed its claims to simply recite the
broader and unencumbered term ‘image,’ and was granted a patent[,]” Johnson Outdoors
cannot now “recapture what it earlier gave up.” (Navico’s Opp’n Br. 9 (Doc. # 76).)
Without considering Johnson Outdoors’s argument that the prosecution disclaimer doctrine
does not apply because Johnson Outdoors, in fact, broadened its claim scope instead of
narrowing it, Navico’s prosecution disclaimer argument still fails. Navico has failed to point

17

to any express disclaimer or unambiguous disavowal on the part of Johnson Outdoors
relating to the “camera-like” limitation.
Prosecution disclaimer aside, the prosecution history on this point still is relevant as
intrinsic evidence. The PTO Examiner rejected Johnson Outdoors’s claims for two reasons.
First, the Examiner stated that “[t]he specification . . . fails to provide any support for the
limitation to ‘camera-like’ images . . . .” (Doc. # 71, Ex. E, at 476-77.) Such is the case
presently. The specification fails to provide adequate support for importing “detailed” into
the claims through the claim term “image.”
Second, the PTO Examiner rejected the “camera-like” limitation on the ground that
it was “vague and indefinite.” (Doc. # 71, Ex. E, at 476-77.) However, the adjective
“detailed” is even more vague and indefinite than “camera-like.” “Camera-like” at least
conveys the specific idea that the sonar images resemble those types of images that are
created by light. The adjective “detailed,” with nothing in the intrinsic record that delimits
its meaning, conveys nothing but subjectivity. To the eye of the beholder with ordinary skill
in the art, a sonar image that does not resemble light-created images could nevertheless be
detailed. The court declines to construe a claim term in such a way as to render the claim
indefinite.
Finally, the exemplary images themselves, which are part of the specification, do not
support Johnson Outdoors’s proposed construction. ('952 Patent, Figs. 13-19.) Any
particular viewer with ordinary skill in the art may view these images and reach a conclusion
different from any other as to whether any, some, or all of these images are “detailed.”
18

Because there is nothing in the intrinsic record to support Johnson Outdoors’s
proposed construction of the claim term “image” as “detailed,” the court need not address
any extrinsic evidence submitted on this issue.
IV. CONCLUSION
Accordingly, it is ORDERED that the claim term “image,” as it appears in the claims
of the Patents in suit, is construed as “a visual representation of the underwater environment
produced by sound rather than light.”
DONE this 20th day of April, 2011.
/s/ W. Keith Watkins
UNITED STATES DISTRICT JUDGE

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