Advanced Cartridge Technologies, LLC v. Lexmark International, Inc.
Filing
288
ORDER--claim construction. Signed by Judge Steven D. Merryday on 2/21/2012. (BK)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
ADVANCED CARTRIDGE
TECHNOLOGIES, LLC,
Plaintiff,
v.
CASE NO.: 8:10-cv-486-T-23TGW
LEXMARK INTERNATIONAL, INC.,
Defendant.
/
ORDER
Advanced Cartridge Technologies, LLC, (ACT) sues Lexmark International,
Inc., for patent infringement. The parties seek claim construction in accord with
Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).
Lexmark designs and manufactures printers and printer products, including
printer toner cartridges. Some Lexmark toner cartridges carry a computer chip that
allows the cartridge to operate with a printer only while the cartridge contains the
original toner supplied by Lexmark. The chip discourages a cartridge
“re-manufacturer” from selling a used Lexmark cartridge filled with new toner.
Steven Miller founded ACT and invented the patents-in-suit. Miller and others
each created a chip that, by either neutralizing or replacing a Lexmark chip, enables
re-sale of a Lexmark cartridge. Larger than a Lexmark chip, a typical replacement
chip both overlaps a Lexmark chip and expands from a Lexmark chip in one
direction. In other words, a rectangular replacement chip overlaps a smaller
Lexmark chip.
In Patent Number 7,113,710 (the ‘710 patent), for a “structure preventing the
use of an unauthorized circuit board”; in Patent Number 7,257,356 (the ‘356 patent),
for an “ergonomic toner cartridge”; and in Patent Number 7,643,773 (the ‘773
patent), for a “user-friendly imaging cartridge” Miller patented a toner cartridge with
a handle and a toner cartridge with a block that obstructs a replacement chip. Miller
transferred each patent to ACT, and ACT alleges that Lexmark infringed each
patent.
The three patents resemble one another, and most of the disputed terms appear
in more than one of the patents. Each patent presents a cartridge with a “mounting
surface” that connects with a printer’s chip, also known as a “circuit board.” Two of
the cartridges include a “blocking structure” that fills the space above or below the
“mounting surface.” Two of the cartridges include a handle on the “trailing end”
(the end not connecting with a printer) “sufficient to accommodate a user’s fingers.”
Determining the meaning of a disputed patent term “to one of ordinary skill
in the art” (a question of law) can require a detailed analysis of the specification and
the prosecution history, an inquiry into scientific principles and technical terms, or a
plunge into the state of the art. Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d
-2-
1324, 1332 (Fed. Cir. 2011). This action, on the other hand, “involves little more
than the application of the widely accepted meaning of commonly understood
words.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). Unless a patent
explicitly says otherwise, a specification that describes only one embodiment of an
invention forecloses no other embodiments that the patent’s claims express. Phillips,
415 F.3d at 1323; Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir.
2004). Most of the claim construction disputes in this action arise because Lexmark
attempts to narrow a patent claim with either the specification or asseveration.
To begin, Lexmark raises:
• “a flat mounting surface” and “a flat mounting surface adapted to
receive” (‘356 patent, claims 1 and 3; ‘710 patent, claims 1
and 8; ‘773 patent, claims 1 and 2).
Lexmark proposes that, to accord with each drawing and each written description of
each patent’s only embodiment, the “flat mounting surface” must contact the
“entire” circuit board of a printer. ACT provides two correct responses. First, the
patents never limit a claim’s scope to an embodiment; on the contrary, each patent
states that the embodiment illustrates rather than delineates the invention. Second,
nothing in an embodiment shows that a printer circuit board must overlap perfectly
the “flat mounting surface.” No printer circuit board even appears in a patent
drawing.
-3-
Lexmark attempts to introduce in several other places words not suggested by
the claim language. For instance, Lexmark disputes:
• “an arch extending transversely across said waste bin’s trailing end”
and “an arch extending transversely across said imaging cartridge’s
trailing end” (‘356 patent, claims 2 and 3; ‘773 patent, claims 1 and
2).
Lexmark argues that the term means “an outwardly extending curved structural
member spanning substantially all of the width of the trailing end” of the waste bin or
imaging cartridge. Compared to the readily understandable word “arch,” “curved
structural member” achieves no improvement; requiring the arch to “span[]
substantially all of the width of the trailing end” narrows the claim without
justification.
Next:
• “said arch rising to a height sufficient to accommodate a user’s
fingers when said user’s thumb is positioned on said handle” (‘356
patent, claims 2 and 3; ‘773 patent, claims 1 and 2).
In place of this straightforward language, Lexmark suggests, “the arch’s curvature
extending above the imaging cartridge’s body is sufficient to permit placement of a
user’s fingers between the bottom of the arch and the top of the imaging cartridge
when the user’s thumb is positioned on the handle.” The patent’s language
efficiently describes a handle large enough to accommodate fingers. “Between the
bottom of the arch and the top of the imaging cartridge” adds nothing to the idea that
the handle “accommodates” fingers – “accommodate” conveys that a user can place
-4-
fingers on the handle. “Above” needlessly replaces (and potentially distorts the
meaning of) “rising to a height.”
Also:
• “a handle in the center of an end of the cartridge, said handle
adapted to direct a user’s hand to the center of the cartridge” (‘356
patent, claims 1 and 3; ‘773 patent, claims 1 and 2).
Lexmark contends that the “handle” in each patent must include a “thumb grip.”
Each patent’s written description sometimes calls the handle a “thumb grip,” but
again, the written description need not limit a claim. Even if “handle” requires a
small elaboration, Lexmark tenders an aggressive constriction.
In support of construing “handle” to mean “thumb grip,” Lexmark cites a
superficially contradictory passage in each specification that distinguishes two of the
patents over prior art. E.g., (Doc. 76, Ex. 2 at 57) The passage simultaneously
suggests that each previous toner cartridge lacked a handle and that some previous
toner cartridges included a small and useless handle. At any rate, the most natural
interpretation of the passage conveys that some previous cartridges included a small
handle that a user typically ignored, and ACT therefore may not claim each handle
on the back of a toner cartridge. ACT may, however, claim more than a “thumb
grip” handle on the back of a toner cartridge. Given that the small size of each
earlier toner cartridge handle supposedly deters use, a handle “adapted” to direct a
-5-
user’s hand to the center of the cartridge means a handle “sufficiently large” to direct
a user’s hand to the center of the cartridge.
Lexmark next attempts to narrow:
• “an upper blocking member extending from a point just above said
flat mounting surface to a lower surface of said planar wing” (‘710
patent, claim 16).
Lexmark claims that this term means “a curved structure extending from the top of
the flat mounting surface to the planar wing.” The ‘710 patent’s embodiment
features a curved blocking member, but as ACT states, a straight, stepped, jagged, or
squiggly blocking member remains within the claim. No reason emerges to omit that
the mounting surface attaches to “a lower surface” of the planar wing. Lexmark fails
to justify altering a coherent and capable term.
Lexmark objects that two terms are indefinite. See Young v. Lumenis, Inc., 492
F.3d 1336, 1345-46 (Fed. Cir. 2007). First:
• “the flat mounting surface has an upper extent terminating at a point
substantially related to the first circuit board” (‘710 patent, claims 7
and 15).
“Related” means, more or less, to share some connection or some association.
American Heritage Dictionary 1523 (3d ed. 1992) (defining “related” as “being
connected; associated”). Any two items may share one or more from an
innumerable array of “connections,” close or distant, intimate or tenuous, obvious or
obscure, etc., e.g., temporal, textural, tribal, structural, spatial, spectral, ontological –
-6-
on and on. Unless a speaker specifies (or, as occurs more often, implies) a quality or
a category as well as a range of measure, to say that two items are “related” conveys
no explicit information.
If “related” conveys nothing, adding “substantially” changes nothing.
“Substantially” suggests a large magnitude (a test-taker can score “substantially” –
that is, greatly – above average) or a close approximation (a robot might act
“substantially” – almost – human). See Epcon Gas Sys., Inc. v. Bauer Compressors, Inc.,
279 F.3d 1022, 1031 (Fed. Cir. 2002); 3 Donald S. Chisum, Chisum on Patents
§ 8.03[3][c][vi] (2010) (providing several pertinent examples). Like “largely related,”
“actually related,” or “really related,” “substantially related” communicates nothing
unless “related” means something ascertainable. Even then, “substantially” suffers
dysfunction – saying two items are “substantially” related seems no more coherent
than saying a given number is “substantially” prime – although patent law
contemplates an awkward use of a term. See Anchor Wall Sys., Inc. v. Rockwood
Retaining Walls, Inc., 340 F.3d 1298, 1310-11 (Fed. Cir. 2003) (allowing the term
“generally parallel” in a patent). In any event, similar to how a person told only that
an object is “brightly pastel” cannot name the object’s color, a person told only that
two items are “substantially related” cannot describe the items’ connection. The
conjunction of two inexact terms often creates only a double inexactitude.
-7-
Nevertheless, if the ‘710 patent’s specification “provides a standard for
measuring substantiality, relativity, or closeness such that one skilled in the art can
determine whether a particular product [] falls within the language of the claim,” the
claim remains sufficiently definite. Chisum, supra § 8.03[3][c]; Rockwood Retaining
Walls, Inc., 340 F.3d at 1310-11. In the ‘710 patent, “substantially related” modifies
the size or position of a space, the flat mounting surface’s termination adjacent to the
first circuit board. As the ‘710 patent states, “unauthorized circuit boards are
substantially larger than [an] authorized board, so the presence of [] blocking
members [] obstructs the placing of a ‘piggy back’ circuit board over the host circuit
board.” (Doc. 76, Ex. 1 at 111) In addition, the clause following the term that
contains “substantially related” prohibits a “physical structure” large enough for the
mounting of a replacement chip above the flat mounting surface. Accordingly, to
ensure that the patented cartridge obstructs a replacement chip, the top of the flat
mounting surface must end near, or “at a point substantially related to,” the printer
circuit board. The ‘710 patent’s purpose, specification, and claims show that
“substantially related” means “close enough to prevent the placement of a
replacement circuit board between the end of the first circuit board and the beginning
of the blocking structure.”
-8-
The second clause that Lexmark finds indefinite immediately follows the first:
• “whereby no physical structure extends vertically from the flat
mounting surface to which a circuit board can be mounted” (‘710
patent, claims 7, 15, and 16).
Lexmark complains that the word “vertically” in the second purportedly indefinite
term conveys no direction. Aware of the dimensions of a typical replacement circuit
board, aware that the patent term precludes a “physical structure” “to which a circuit
board can be mounted,” and aided by the drawings in the ‘710 patent, a person of
ordinary skill in the art can easily comprehend that “vertical” means above the flat
mounting surface – “above” as applied to the cartridge’s orientation in nearly all of
the patent’s drawings.
Finally, both parties seek construction of words in:
• “a blocking structure that prevents placement of a replacement circuit
board into overlying relation to said first circuit board” and “an
upper blocking member that prevents placement of a replacement
circuit board into overlying relation to said first circuit board” (‘356
patent, claims 1 and 3; ‘710 patent, claims 1 and 8);
and in a similar term:
• “said upper blocking member obstructs the placing of a replacement
circuit board over said first circuit board” and “said upper blocking
member obstructs the placing of a second circuit board over said first
circuit board” (‘710 patent, claims 3, 11, and 16).
Lexmark proposes that “a blocking structure” means “a pair of curved structures,”
that “prevents” means “prohibit[s],” that “upper” blocking member means
“extending from the top of the flat mounting surface,” and that “obstructs the placing
-9-
of” means “blocks the placement of.” Each new word in Lexmark’s constructions
either introduces an unwarranted restriction or contributes nothing useful.
ACT reads both “overlying relation” and “over” to mean “between the
contacts of the first circuit board and the contacts of the receiving printer.” The
blocking structure aims to obstruct the placement of a replacement chip. A
replacement chip situates between the contacts of a cartridge’s circuit board and the
contacts of a printer’s circuit board in order to prevent the cartridge circuit board
from communicating properly with the printer circuit board. Hence, ACT’s
construction obeys the patent’s purpose and matches what “overlying relation” and
“over” mean to one of ordinary skill in the art.
ACT argues that “replacement circuit board” means “a circuit board over a
host circuit board, commonly known in the industry as a piggy back circuit board.”
Lexmark concurs that a replacement circuit board is “a circuit board over a host
circuit board.” As for “commonly known in the industry as a piggy back circuit
board,” even if ACT correctly identifies “piggy back” as an informal term for a
replacement circuit board, ACT fails to demonstrate that “piggy back” should attach
to the definition of “replacement circuit board” in the claim construction.
- 10 -
*
*
*
To summarize, (1) a handle “adapted” to direct a user’s hand to the center of a
toner cartridge means a handle “sufficiently large” to direct a user’s hand to the
center of a toner cartridge; (2) the “substantially related” termination of a flat
mounting surface and a first circuit board means a termination “close enough to
prevent the placement of a replacement circuit board between the end of the first
circuit board and the beginning of the blocking structure”; (3) “overlying relation”
and “over” mean “between the contacts of the first circuit board and the contacts of
the receiving printer”; and (4) “replacement circuit board” means “a circuit board
over a host circuit board.” No other term requires construction.
ORDERED in Tampa, Florida, on February 21, 2012.
Steven D. Merryday
STEVEN D. MERRYDAY
UNITED STATES DISTRICT JUDGE
- 11 -
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?