Gerber Scientific, Inc. v. Roland DGA Corp
RULING granting in part and denying in part 229 Motion for Reconsideration. Signed by Judge Christopher F. Droney on 11/16/2011. (Gothers, M.)(6 pages)
UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
GERBER SCIENTIFIC INTERNATIONAL, INC., :
ROLAND DGA CORPORATION and
ROLAND DG CORPORATION,
RULING ON MOTION FOR RECONSIDERATION
This case arises out of a patent dispute between plaintiff Gerber Scientific International,
Inc. (“Gerber”) and defendants Roland DGA Corporation and Roland DG Corporation
(collectively, “Roland”). On January 14, 2011, the Court issued a Ruling on Claim Construction,
ECF No. 193 [hereinafter Markman Ruling]. Roland moved for reconsideration of that ruling,
and the Court ruled on that motion on May 27, 2011. Ruling on Motion for Reconsideration,
ECF No. 226 [hereinafter Ruling 1]. Gerber now moves the Court to reconsider Ruling 1.
In July 1996, Gerber was issued Patent No. 5,537,135 (the “Patent”), which covered a
method and apparatus for computerized graphic production. The Patent was amended in May
2006 by a Ex Parte Reexamination Certificate issued by the U.S. Patent Office. The process
utilized a printer to print on sheet material and a cutter to cut the sheet material and printed
material within the periphery of the cut edges.
The Patent uses a computer to produce the data which helps generate a graphic product
from sheet material. The data establishes a positional relationship between the actual graphic
image and the edges of that design. The computer then transmits this positional information to
the printer, which prints the image onto the sheet material. Simultaneously, the computer also
transmits this information to the cutting device, which cuts the design along the edges in
accordance with the positional information.
The Patent sets forth two independent claims: Claim 1 focuses on a method and Claim 16
focuses on an apparatus. All of the terms disputed in the instant Motion for Reconsideration are
in Claim 16.
“The standard for granting [a motion for reconsideration] is strict, and reconsideration
will generally be denied unless the moving party can point to controlling decisions or data that
the court overlooked—matters, in other words, that might reasonably be expected to alter the
conclusion reached by the court.” Shrader v. CSX Transp., Inc., 70 F.3d 255, 257 (2d Cir. 1995).
The Court should not grant a motion for reconsideration where the moving party seeks merely to
re-litigate matters already addressed by the Court. Id.
Disputed Terms in Claim 16
At the initial claims construction stage, Gerber argued that a “printing means” should be
construed as “a thermal printer, a dot matrix printer, a line printer, or their equivalent.” Roland
asked the Court to instead identify the thermal printer as the corresponding structure to the
“printing means.” See 35 U.S.C. § 112, ¶ 6. In its Markman Ruling, the Court determined that
the specification in the Patent did not limit the corresponding structure to thermal printers.
Upon reconsideration, this Court held that, while the specification anticipated that nonthermal printers can constitute printing means, the specification did not state what those other
kinds of printers could be, and therefore the corresponding structures must be limited to thermal
printers. Ruling 1 at 4-5 (citing Fonar Corp. v. Gen. Elec. Co., 107 F.3d 1543, 1551-52 (Fed.
Cir. 1997)). The Court construed “printing means” to correspond to “thermal printers only.”
Gerber now asks the Court to reconsider its most recent construction of “printing means”
and to construe the term to include dot matrix and line printers; in the alternative, Gerber asks
this Court to clarify this construction by deleting the word “only” and replacing it with “and their
“A structure disclosed in the specification is only deemed to be ‘corresponding structure’
if the specification clearly links or associates that structure to the function recited in the claim.”
Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1476 (Fed. Cir. 1998). The issue between the two
parties appears to be the test for this clear link. Gerber argues that, to determine if this link exists,
this Court may consider whether “one of skill in the art would understand the specification itself
to disclose the structure.” Med. Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d
1205, 1212 (Fed. Cir. 2003). Cf. Medtronic, Inc. v. Adv. Cardiovascular Sys., Inc., 248 F.3d
1303, 1313 (Fed. Cir. 2001) (“[O]ne skilled in the art would not perceive any clear link or
association between these structures and the function . . . .”). Relying on an expert declaration,
Gerber argues that “a person of ordinary skill in the art would understand” that a dot matrix
printer and a line printer are capable of performing the function of “printing means.” Pl.’s Mem.
in Supp. of Mot. for Recons. 7, ECF No. 229 [hereinafter Pl.’s Mem.]. Roland seems to argue
that the understanding of Gerber’s expert is not sufficient to overcome the lack of a clear link in
the language of the Patent.
Gerber made this same argument in opposing the first Motion for Reconsideration.
Defs.’ Mem. in Opp. to Mot. for Recons. 14, ECF No. 198. The Court did not explicitly reject
this argument in its Ruling on Motion to Reconsider; instead the Court relied on Fonar Corp. v.
Gen. Elec. Co. to hold that “when a specification states that other structures may be used in
addition to the disclosed structure, but does not specifically identify those structures, the claim is
limited to use of the disclosed structure.” Ruling 1 at 4. Unlike the specification in Fonar, in
which no other structures in addition to the disclosed structure were identified in the Patent, the
specification here does identify dot-matrix and line printers. Therefore, the question on
reconsideration is whether these two types of printers were “clearly linked” to the function agreed
The U.S. Court of Appeals for the Federal Circuit has found expert testimony and
declarations insufficient to establish the “clear link” when the plain language of the patent does
not indicate such a link. See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1332 (Fed. Cir.
2003) (holding that expert declarations demonstrating the understanding of one of skill in the art
“cannot be used to vary the plain language of the patent document” and refusing to identify other
structures as a corresponding structure because “the specification does not clearly associate those
structures with the claimed function”). Further, Gerber’s expert, as a person skilled in the art,
merely stated that he believed that dot matrix and line printers were capable of performing the
said function. Instead, what is required is that a person skilled in the art believes that there was a
link in the specification between the function and the structures. Medtronic, Inc., 248 F.3d at
1315. Gerber’s expert does not declare as much.1
Even if Gerber’s expert declaration had addressed the expert’s perception of a link, this is
not sufficient to establish the link, particularly given the consistent use of “thermal printer”
throughout the Patent, which the Court considered in Ruling 1. Dot-matrix printers are only
referred to once in the Background section of the Patent (Patent, column 2, lines 14-17). While it
is the case that line printers are referred to in Claim 17, which claims an apparatus wherein the
“printing means is a line printer,” both parties conceded at argument that line printers are not a
separate type of printer analogous to thermal or dot-matrix printers but instead “line printer”
describes another aspect of printers. Thus thermal printers and dot-matrix printers can also
simultaneously be line printers, and therefore the Court’s construction does not exclude line
printers. Line printers can constitute printing means so long as they are thermal line printers. See
Defs.’ Supplemental Claim Construction Br. 14, ECF No. 98.
Gerber also asks this Court to clarify that the claim includes those structures “and their
Additionally, the decisions that Gerber cites in support of its argument are
distinguishable. This case is unlike situations such as Linear Tech. Corp. v. Impala Linear Corp.,
379 F.3d 1311. In that case, the specification noted that the structure at hand, a one-shot circuit,
could be replaced with a “pulse-width modulator circuit . . . .” 379 F.3d at 1322. The court held
that although a specific pulse-width modulator circuit was not referenced, persons of skill in the
art would know that “pulse-width modulator circuit” referred to a “discrete class of circuit
structures that perform known functions.” This is much narrower than the specification at hand,
which simply describes “other types of printers including those with movable heads.” Other
cases cited by Gerber also have a much clearer link between the structure and the function or are
inapplicable for other reasons. See Med. Instrumentation and Diagnostics Corp., 344 F.3d at
1214 (expert testimony regarding understanding of one of skill in the art and an explicit
statement in the prosecution history and the inclusion of the structure in question in a figure of
the patent all constituted a sufficiently clear link); Budde v. Harley-Davidson, Inc., 250 F.3d
1369, 1381 (holding that the district court should have applied a higher evidentiary standard
because its finding that the patent lacked any corresponding structure rendered the patent
equivalents” in accordance with 35 U.S.C. § 112, ¶ 6 (“[S]uch claim shall be construed to cover
the corresponding structure, material, or acts described in the specification and equivalents
thereof.”). Roland does not object to the Court’s explicit clarification. Therefore, this Court
construes “printing means” to correspond to “thermal printers and their equivalents.”
“positional relationship”: order bias
Gerber also asks this Court to reconsider its incorporation of an “order bias” into Claim
16's apparatus claim. Claim 16 incorporates language from Claim 1 to claim “second storage
means for storing data defining printed material and a positional relationship of the printed
material within the peripheral edges of the graphic image as machine readable data.”
In the Markman Ruling, the Court held that the method claims “implicitly require and
ordering of steps,” Markman Ruling at 15, but that the apparatus claims did not require
chronological ordering, that they “merely describe physical structures that comprise the
invention.” Markman Ruling at 16. Upon reconsideration, the Court held that to the extent that
Claim 16 incorporated language describing the method of Claim 1 – “defining printed material
and a positional relationship of the printed material within the peripheral edges of the graphic
image” – the order bias of Claim 1 is incorporated into Claim 16.
Gerber now argues that the functional language does not describe what the storage means
does because the storage means cannot “perform any function other than . . . storing data.” Pl.’s
Mem. at 11. However, the Court in Ruling 1 did not assume that the functional language
describes the function of the storage means; rather, the functional language describes the purpose
of the data that is stored by the storage means, namely to define printed material and a positional
relationship of the printed material within the peripheral edges of the graphic image. The Court’s
construction of “positional relationship” as having an order bias then does not require the storage
means to define peripheral edges, a function it cannot perform. The Court’s construction also
does not require that data to create “peripheral-edge or printed-material data.” Pl.’s Mem. at 11.
Instead, as Roland argues, the Court’s construction requires that the “data defining the peripheral
edges must be defined before the data defining the printed material,” Defs.’ Mem. in Opp’n 7,
ECF No. 232, which is consistent with the Court’s construction of Claim 1.2
In its Reply Brief Gerber raises the new argument that “second storage means” be
construed to require that the accused second storage means merely be capable of storing data
“created pursuant to the order bias of the method claims.” Pl.’s Reply Mem. in Supp. of its Mot.
for Recons. 3-4, ECF No. 237. However, as Roland correctly argues, a “means-plus-function”
claim limitation can only be infringed by a device that actually performs the function, not one
that is merely capable of performing that function.3 Typhoon Touch Tech., Inc., 2011 WL
5289603, at *2 (affirming the district court’s requirement that the apparatus actually be
programmed or configured to perform the function of storing a data collection application);
Applied Med. Res. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 (Fed. Cir. 2006) (holding that in
The Federal Circuit recently affirmed a district court’s incorporation of functional
language in construing an apparatus claim. See Typhoon Touch Tech., Inc. v. Dell, Inc., 2011
WL 5289603, at *2-3 (Fed. Cir. Nov. 4, 2011).
Contrary to Gerber’s interpretation of the Federal Circuit’s holding in Typhoon Touch,
this Court interprets the distinction made in that opinion to be between an apparatus that
performs the function now and an apparatus that can be modified to perform the function at a
later time. Both parties seem to agree that the apparatus in Claim 16 must at least be capable of
storing data now. Roland argues that the device must not only be capable of performing the
function now but must also actually perform the function now. The Typhoon court rejected the
appellant’s argument that it is irrelevant if the function is actually performed by the apparatus and
affirmed the district court’s requirement that the function “‘must’ be performed.” 2011 WL
5289603, at *2.
order to literally infringe, the accused device had to actually perform both of the claimed
functions in a means-plus-function claim).
Gerber does not raise any other argument concerning the Court’s limited incorporation of
an order bias with regards to the functional language describing the data stored by the storage
means. Therefore the Court denies reconsideration of its construction of “positional
relationship” as incorporating an order bias.
For the reasons set forth above, the defendants’ motion for reconsideration [Dkt. # 229] is
GRANTED in part and DENIED in part.
SO ORDERED this 16th day of November 2011, at Hartford, Connecticut.
/s/ Christopher F. Droney
CHRISTOPHER F. DRONEY
UNITED STATES DISTRICT JUDGE
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