Skyhook Wireless, Inc. v. GOOGLE, INC.

Filing 62

Joint Claim Construction and Prehearing Statement by Skyhook Wireless, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21 Exhibit 21, # 22 Exhibit 22, # 23 Exhibit 23, # 24 Exhibit 24, # 25 Exhibit 25, # 26 Exhibit 26, # 27 Exhibit 27, # 28 Exhibit 28, # 29 Exhibit 29, # 30 Exhibit 30, # 31 Exhibit 31, # 32 Exhibit 32, # 33 Exhibit 33, # 34 Exhibit 34, # 35 Exhibit 35, # 36 Exhibit 36, # 37 Exhibit 37, # 38 Exhibit 38, # 39 Exhibit 39, # 40 Exhibit 40, # 41 Exhibit 41, # 42 Exhibit 42, # 43 Exhibit 43, # 44 Exhibit 44, # 45 Exhibit 45, # 46 Exhibit 46, # 47 Exhibit 47, # 48 Exhibit 48, # 49 Exhibit 49)(Lu, Samuel)

EXHIBIT 41

Page 1

DAVID NICHOLS and NICHOLS LURES, INC., Plaintiffs, v. STRIKE KING
LURE CO., WALMART STORES, INC., BLISS-MURSKI SALES, INC., and RAY
A. MURSKI SALES CO., Defendants.
Civil Action No. 3:99-CV-1950-BC
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
TEXAS, DALLAS DIVISION
2000 U.S. Dist. LEXIS 15781

October 25, 2000, Decided
October 25, 2000, Filed, Entered on Docket
DISPOSITION:
construed.

[*1] Disputed claim terms properly

COUNSEL: For DAVID NICHOLS, NICHOLS LURES
INC, plaintiffs: James Edwin Willingham, Jr, Pat
Maloney, Sr, Attorneys at Law, Law Office of Pat
Maloney, Ted D Lee, Bernie Martinez, John Cave,
Attorneys at Law, Gunn Lee & Keeling, San Antonio, TX
USA.
For STRIKE KING LURE CO, defendant: Mitchell Scott
Milby, Attorney at Law, Dallas City Attorney's Office,
Martin J Sweeney, Tim D Haggard, Attorneys at Law,
Cozen & O'Connor, Dallas, TX USA.
For STRIKE KING LURE CO, BLISS MURSKI SALES
INC, defendants: John Mitchell Nevins, Attorney at Law,
Moseley & Standerfer, Dallas, TX USA.
For STRIKE KING LURE CO, WALMART STORES
INC, BLISS MURSKI SALES INC, defendants: R Alan
Weeks, Attorney at Law, Fellers Snider Blankenship
Bailey & Tippens, Tulsa, OK USA.
For STRIKE KING LURE CO, defendant: Roy C
Breedlove, Attorney at Law, Fellers Snider Blankenship
Bailey & Tippens, Tulsa, OK USA.

For WALMART STORES INC, defendant: Steven J
Rizzi, Weil Gotshal & Manges, New York, NY USA.
For WALMART STORES INC, defendant: Ralph I
Miller, Vance Loren Beagles, Sharan L Goolsby, Jennifer
L Anton, Attorneys at Law, Weil Gotshal & Manges,
Dallas, TX USA.
[*2] For YAKIMA BAIT COMPANY INC, movant:
Patrick F McGowan, Christopher J Rourk, Attorneys at
Law, Akin Gump Strauss Hauer & Feld, Dallas, TX
USA.
For YAKIMA BAIT COMPANY INC, movant: Brian G
Bodine, Attorney at Law, Timothy L Boller, Seed
Intellectual Property Law Group, Seattle, WA USA.
For STRIKE KING LURE CO, BLISS MURSKI SALES
INC, counter-claimants: John Mitchell Nevins, Attorney
at Law, Moseley & Standerfer, Dallas, TX USA.
For STRIKE KING LURE CO, BLISS MURSKI SALES
INC, WALMART STORES INC, counter-claimants: R
Alan Weeks, Attorney at Law, Fellers Snider
Blankenship Bailey & Tippens, Tulsa, OK USA.
For STRIKE KING LURE CO, counter-claimant: Roy C
Breedlove, Attorney at Law, Fellers Snider Blankenship
Bailey & Tippens, Tulsa, OK USA.

Page 2
2000 U.S. Dist. LEXIS 15781, *2

For WALMART STORES INC, counter-claimant: Ralph
I Miller, Vance Loren Beagles, Sharan L Goolsby,
Jennifer L Anton, Attorneys at Law, Weil Gotshal &
Manges, Dallas, TX USA.
For DAVID NICHOLS, NICHOLS LURES INC,
counter-defendants: Pat Maloney, Sr, Attorney at Law,
Law Office of Pat Maloney, Ted D Lee, Bernie Martinez,
Attorneys at Law, Gunn Lee & Keeling, San Antonio, TX
USA.
For DAVID NICHOLS, NICHOLAS LURES INC, [*3]
counter-defendants: James Edwin Willingham, Jr,
Attorney at Law, Law Office of Pat Maloney, San
Antonio, TX USA.
JUDGES: JANE J. BOYLE, UNITED STATES
MAGISTRATE JUDGE.
OPINION BY: JANE J. BOYLE
OPINION

MEMORANDUM OPINION AND ORDER
Plaintiffs David Nichols and Nichols Lures, Inc.
(hereinafter referred to as "Nichols") are the owners of a
patent for fishing lures covered with a glitter-containing
coating and on a method for applying the
glitter-containing coating to fishing lures (U.S. Patent
No. Re. 35,160 [the " '160 patent"]). 1 Nichols alleges
that the Defendants have, among other things, infringed
this patent.
1 The '160 patent was granted February 27, 1996
as a reissue of U.S. patent No. 5,146,707.
The case is currently before the Court on the issue of
claim construction. The Court heard oral argument at a
Markman hearing on August 22,2000 and has also
considered the briefs submitted prior to the hearing as
well as the post-hearing briefs submitted by the parties.
Before addressing the merits, the Court [*4] first reviews
the legal standards governing interpretation of patent
claims.
I. LEGAL STANDARDS
Claim construction is a question of law for the Court.
See Markman v. Westview Instruments, Inc., 517 U.S.
370, 372, 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996). The

analysis begins with the language of the claim itself. See
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996). Absent an express intent to impart
a novel meaning, terms in a claim are to be given their
ordinary and accustomed meaning, which is typically the
dictionary definition. See Optical Disc Corp. v. Del Mar
Avionics, 208 F.3d 1324, 1334-35 (Fed. Cir. 2000).
The words of the claim must also be construed in
light of the specification, the prosecution history, and the
prior art. See Embrex, Inc. v. Service Eng'g Corp., 216
F.3d 1343, 1347 (Fed. Cir. 2000) ("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.")
The Court must look first to the intrinsic evidence. See
Vitronics, 90 F.3d at 1582. [*5] The intrinsic
evidence--i.e., the patent itself, including the claims, the
specification, and the prosecution history--constitutes the
public record of the patentee's claim. See Vitronics, 90
F.3d at 1583. Competitors are entitled to rely on this
record and on the established rules of claim construction
to ascertain the scope of the patent and thus, design
around the claimed inventions. See Vitronics, 90 F.3d at
1583.
Intrinsic evidence alone will resolve any ambiguity
in most situations. See Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). Furthermore,
because of the public notice function performed by
intrinsic evidence, extrinsic evidence, such as expert
testimony regarding the meaning or scope of technical
terms, is disfavored. See Vitronics, 90 F.3d at 1583.
Thus, extrinsic evidence should not be relied upon if the
public record unambiguously describes the scope of the
patented invention. See Vitronics, 90 F.3d at 1583. In
this case, the parties agree that the claim at issue may be
interpreted relying only on the intrinsic evidence.
[*6] With these standards in mind, the Court now
turns to interpret the disputed language.
II. ANALYSIS
The '160 patent contains nine claims; only claim 1 is
at issue.
Claim 1 reads as follows:
A light dispersing and reflecting fishing
lure comprising a body securable to a

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2000 U.S. Dist. LEXIS 15781, *6

fishing line;
said body having a solid, light
dispersing, transparent resin coating over
the entire outer surface of said body;
said transparent resin coating
containing a large plurality of pieces of
brightly colored, light reflecting glitter
particles of a size not exceedingly [sic]
0.01 inches in any direction; and
said
glitter
particles
being
substantially
uniformly
dispersed
throughout
said
coating,
whereby
substantially all light incident on said
body is reflected and dispersed in all
directions from said transparent resin
coating.

The parties dispute the meaning of a number of
phrases and words of this claim, each of which the Court
addresses below.
A. "a body"
It is not entirely clear from the record whether there
is any dispute over the meaning of the term "a body." The
specification provides the following definition:
The term "body" of the lure as used
hereinafter [*7] refers either to the tear
drop shaped body applied to a lure having
a leader connected to the shank portion
projecting out of one end of the body and
a hook or hooks projecting out of the other
end of the body, or to any form of blade,
spoon or other vibrating element swivelly
attached to the lure to further attract the
attention of the fish. Thus, the term body
includes, without limitation, spinner baits,
popping lures, jig-type lures, "buzz baits",
crank baits, blades and spoons of any size
or shape.

Nichols argues that, according to this definition, the
body includes "any solid part of the lure except leader
connecting wire or shank and/or the hooks." (PL's Post
Markman Br. at 3.) Defendants do not disagree. Instead,

they raise an issue that Nichols has not addressed;
namely, that the definition of "a body" in the
specification is ambiguous because it is unclear whether
the term refers collectively to any number of elements
that together comprise a single body, or whether each of
the elements enumerated in the definition individually
comprises a body. Stated another way, the question is
whether a patented lure has only a single body comprised
of one or more elements, [*8] for example one tear
drop-shaped element to which two blade elements are
swivelly attached, or whether each element is a separate
body so that a patented lure may have several bodies.
Under the "several body" construction, a patented lure
configured according to this example would have three
bodies--one tear drop-shaped body plus two blade bodies.
The Court concludes that the proper construction of
the term "body" is that each patented lure has only a
single body, which may consist of one or more elements.
The Court finds this the most reasonable interpretation
based on the predominate use of the term in the patent,
despite one or two arguably ambiguous references in the
specification.
First, the Court finds particularly convincing that
claim 1, as well as other claims that are not at issue here,
refers to "a body securable to a fishing line." The
implication of this language is that a fishing lure has only
one body. Second, throughout the specification, the term
"body" is consistently used in the singular. For example,
the Abstract refers to the application of a glitter
containing coating to the external surfaces of "the lure
body." ( '160 Patent, Abstract.) There are numerous
[*9] other similar examples. ( '160 Patent, col. 2, line 1;
col. 2, line 9; col. 2, line 12; col. 2, line 32; col. 3, line 3;
col. 4, line 43.)
There is at least one place in the specification where
the term "body" is used in the plural form. ( '160 Patent
at col. 4, line 55.) This reference describes the method by
which the lure bodies are allowed to dry after the coating
has been applied to their surfaces. The use of the plural in
this context is easily construed as referring to the method
for drying on a single rack the bodies for several lures
and is not inconsistent with the Court's conclusion that
each lure has only one body.
In one place in the specification, "body" is used to
refer to the "head" of the lure--commonly tear
drop-shaped--which is the part of the lure molded around
the shank. ( '160 Patent, col. 1, lines 27-34.) This

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2000 U.S. Dist. LEXIS 15781, *9

language arguably implies that only the tear drop-shaped
head of the lure is the body and therefore, elements other
than the head are not part of the body. However, the
definition of "body" in the specification expressly
includes other swivelly attached elements; thus, these
elements may not be excluded from the term.
In sum, claim 1 is [*10] construed to mean that each
fishing lure has one body; said body consisting of a tear
drop shaped head element and any form of blade, spoon
or other vibrating or swivelling elements attached to the
lure to further attract the attention of the fish.
B. "resin coating"
Two aspects of this term are in dispute. The disputes
require the Court to resolve the following issues: (1)
whether claim 1, read in light of the specification and
prosecution history, should be construed as requiring the
coating to be any particular thickness and; (2) whether
the resin coating must be a two-part mixture.
1. Coating Thickness
Defendants argue that this term should be construed
to include a limitation requiring the thickness of the
coating to be at least three times the maximum glitter
particle dimension (the "3x thickness"). They
acknowledge that no such limitation is included in the
language of the claim. However, they contend that
Nichols surrendered coatings less than the 3x thickness
during prosecution and, therefore, Nichols should not
now be allowed to reclaim those smaller thicknesses in
order to pursue infringement claims.
Nichols presents three arguments in response. First,
it [*11] argues that it is improper for the Court to read
limitations from the specification and prosecution history
into the claims. Second, it argues that the doctrine of
claim differentiation creates a presumption against
reading claim 1 so as to render it identical to claim 2.
Third, it argues that the Defendants have taken the
prosecution history out of context and that any thickness
limitation derived from the prosecution history does not
apply to claim 1.
Before addressing Nichols' arguments, the Court will
first review the specification and the prosecution history.
The purpose of the invention is to produce a fishing lure
whose surface has a three-dimensional appearance, which
is believed to make the lure more attractive to fish. ( '160

Patent, col. 2, lines 14-20.) As conceded in the patent,
the application of glitter to fishing lures is not a new idea.
( '160 Patent, col. 1, lines 46-55.) Previous patents
taught that glitter could be applied by dusting, sprinkling,
or spraying the glitter onto the surface of a lure which
had been covered with wet glue. ( '160 Patent, col. 1,
lines 46-55.) According to the '160 patent, the problem
with previously known methods of applying [*12] glitter
is that the glitter particles all lay on the surface and were
easily scratched off. ( '160 Patent, col. 1, lines 56-59.)
Furthermore, most of the glitter applied by this method
lay flat on the surface thereby reflecting light only
outwardly from the surface of the lure. ( '160 Patent, col.
1, lines 59-64.)
The '160 patent purports an improvement over the
prior art with its method for dispersing small glitter
particles throughout a resin coating which is then applied
to the lure. This method is claimed to be superior to the
prior art for many reasons, but primarily because it
creates the three-dimensional appearance that was lacking
in previous lures.
The three-dimensional appearance is achieved by
applying to the surface of the lure a resin coating that
contains glitter particles which face--and thus reflect
light--in many different directions. This feature is what
distinguishes the '160 patent from the prior art. In other
words, a lure with a coating applied in accordance with
the '160 patent will not have its glitter particles
facing--and thus reflecting light--primarily outward;
instead, the glitter particles will face--and thus reflect
light--"in a very large [*13] plurality of directions" thus
imparting a three-dimensional appearance to the surface.
( '160 Patent, col. 2, line 13.)
The specification further states, in the preferred
embodiment, that the coating should be applied to a
thickness that is at least three times the size of the glitter
particles. ( '160 Patent, col. 4, lines 44-46.) The
specification explains why the coating must be three
times the size of the glitter particles:
By the thickness of the coating being
three times the maximum size of the glitter
particles, the glitter particles can be
oriented in all directions within the
coating. Since the glitter particles are
literally flat flakes, if the thickness is not
three times the size of the glitter particles,

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2000 U.S. Dist. LEXIS 15781, *13

the glitter particles will tend to lay flat. If
the glitter particles lay flat, then the
reflective effect would be two dimensional
rather than three dimensional and, again, it
would not give the appearance of live bait.
( '160 Patent, col. 4, lines 46-54.)

What is clear from this language is that the 3x
thickness is not merely an optional feature of the
preferred embodiment, but a requirement crucial to
achieving the object of the invention--a [*14]
three-dimensional appearance. Therefore, in order to be
consistent with the specification and the preferred
embodiment, the term "resin coating" must be construed
to mean that the coating thickness has to be at least three
times the maximum glitter particle dimension. As the
specification states, if the thickness is less than the 3x
thickness, then the primary innovation of the invention
will not be achieved.
That this construction is the correct one is also clear
from the prosecution history. The language of claims 1-4
as presented in Nichols' original application is identical in
all relevant aspects to the language in the final patent,
including dependent claims 2 and 4 which specify that
the coating thickness must be at least three times the
glitter size. However, claims 1-4 were initially rejected in
their entirety by the patent examiner who determined that
any innovation as to coating thickness and glitter particle
size was obvious from the prior art. (Examiner's Action,
Jan. 17, 1992, at Strike King's Br. filed July 17, 2000
App. p. 60.) In response to the patent examiner's
objection, Nichols inserted into the specification the
passage quoted above to explain why the 3x [*15]
thickness is not merely an obvious design choice, but is
instead a patentable improvement upon the prior art:
With the [above] amendment to the
specification. . .the particular problem
being solved and the stated purpose is now
clearly spelled out in the specification. If
the metallic flakes are too large, they will
migrate to one end of the lure body upon
rotation of the lure body. Further, the
thickness of the coating must be
approximately three times the size of the
reflective particles or otherwise the
particles, which are basically flat flakes of
material will have a tendency to lay flat. If

the reflective particles lay flat, they do not
have the three dimensional effect and will
not appear as live bait.
(First Amendment, Mar. 23, 1992, at
Strike King's Br. filed July 17, 2000
App. p. 68.)

Nichols points out that this response to the patent
examiner's objection addresses two elements: glitter
particle size and coating thickness. It argues that the
glitter particle size discussion is directed at the allowance
of claim 1 and the thickness discussion is directed at
allowance of claim 2; therefore, the 3x thickness is
applicable only to claim 2 and should [*16] not be
construed as a limitation on claim 1.
The Court finds this an unconvincing attempt to
parse the language of the amendment. Nichols'
characterization of the prosecution history avoids the
very construction that was offered in order to overcome
the examiner's objections. The word "further" linking the
two elements is used in the conjunctive sense and not, as
Nichols suggests, in the disjunctive sense. Thus, the
language of the amendment makes clear that the 3x
thickness, in combination with glitter size, is necessary to
achieve a three-dimensional appearance. This point is
emphasized again later in the amendment:
[Because the proposed small size of the
glitter particles] solves a particular
problem that exists in present lures that do
not reflect and disperse light in all
directions, it is submitted that claims 1-6
now patentably distinguish over [the prior
art]. Further, none of the [prior art]
references suggest the thickness of the
coating would be three times the
maximum dimension of the glitter
particles. Again, a thickness of three times
is necessary so that the glitter particles
will be oriented in all directions to give a
three dimensional effect. [*17] (First
Amendment, Mar. 23, 1992, at Strike
King's Br. filed July 17, 2000 App. p.
69.)

The Court concludes that the specification and
prosecution history indicate that Nichols relinquished

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2000 U.S. Dist. LEXIS 15781, *17

coverage of thicknesses less than the 3x thickness in
response to the patent examiner's objections. The patent
cannot now be construed to recapture this subject matter.
Nichols argues that imposing the 3x thickness
limitation improperly reads limitations from the
specifications and prosecution into the claim. This
argument conflicts with established case law and the
basic principles of claim construction which indicate that
the specification is "always highly relevant" and that the
court must reject interpretations that were disclaimed
during prosecution. See, e.g., Vitronics, 90 F.3d at
1582-83; Southwall Technologies, Inc. v. Cardinal IG
Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995). The cases
cited by Nichols do not support its position. None of
them stand for the proposition, as Nichols' argument
implies, that the Court should ignore the clear meaning of
the specification. Indeed, they all indicate that proper
analysis of a disputed term includes a [*18] review of the
specification. For example, in both Burke, Inc. v. Bruno
Indep. Living Aids, Inc. and Johnson Worldwide
Associates, Inc. v. Zebco Corp., the court did not limit the
claim language because it determined, after thorough
review of the specification, that the specification did not
support a limited construction. See Burke, Inc. v. Bruno
Indep. Living Aids, Inc., 183 F.3d 1334, 1340-41 (Fed.
Cir. 1999); Johnson Worldwide Associates, Inc. v.
Zebco Corp., 175 F.3d 985, 990-91 (Fed. Cir. 1999). In
this case, the Court is not reading an extraneous
limitation from the specification into the language of the
claim; to the contrary, the Court is construing claim 1
consistently with the essential purpose of the invention
and with what the patentee has unambiguously
represented to the public is the proper scope of the patent.
Finally, Nichols argues that under the doctrine of
claim differentiation, it is improper to read into a broader
claim limitations that are present in a narrower claim. In
this case, dependent claim 2 expressly includes the 3x
thickness limitation, and as such, is narrower than claim
1. Thus, Nichols argues, the doctrine [*19] of claim
differentiation prevents the Court from reading the same
limitation into claim 1.
However, "the doctrine of claim differentiation
cannot broaden claims beyond their correct scope,
determined in light of the specification and the
prosecution history." Multiform Desiccants, Inc. v.
Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998).
Accepting Nichols' argument would require the Court to

ignore the unambiguous implication of the specification
and prosecution history: that coating thicknesses less than
the 3x thickness are not covered by the patent. Nothing in
the cases cited by Nichols supporting the doctrine of
claim differentiation permits any other conclusion. In
Modine Mfg. Co. v. United States Int'l Trade Comm'n,
cited by Nichols, the court in fact read into a broader
claim a numerical limitation from a narrower claim, the
doctrine of claim differentiation notwithstanding, because
any other construction would have been inconsistent with
the specification and prosecution history. See Modine
Mfg. Co. v. United States Int'l Trade Comm'n, 75 F.3d
1545, 1551-54 (Fed. Cir. 1996). And in D.M.I., Inc. v.
Deere & Co., the court, [*20] while acknowledging the
importance of claim differentiation nevertheless
confirmed that a patentee may not recapture ground
relinquished during prosecution. See D.M.I., Inc. v.
Deere & Co., 755 F.2d 1570, 1574 (Fed. Cir. 1985).
In sum, the term "resin coating" is construed to mean
that the coating thickness must be at least three times the
maximum glitter particle dimension.
2. Two-Part Mixture
Defendants argue that "resin coating" should include
the additional limitation that the resin consists of a
"two-part mixture." In support of their argument,
Defendants point to several places in the specification
where the resin coating is described as a two-part mixture
of a liquid resin and a hardener. Plaintiffs do not address
this argument except to summarily state that the
limitation is not permissible because it is not present in
the claim language.
The Court concludes that the resin coating claimed
by the patent must be a two-part mixture. The Abstract,
which is a succinct description introducing the invention,
states that the glitter particles are inserted in a liquid
mixture of 1) a resin and 2) a hardener. The Summary of
the Invention also indicates [*21] that the resin coating is
"produced by mixing a liquid resin with a hardener." (
'160 Patent, col. 2, line 33.) Furthermore, the mixture
apparently serves a distinct purpose important to
achieving the object of the invention: the combination of
the two ingredients initially produces a highly viscous
liquid which facilitates the uniform distribution of the
glitter particles. ( '160 Patent, col. 2, lines 50-53.) After
the resin coating containing the glitter particles is applied
to the surface of the lure, by brushing or dipping, it
eventually hardens into a solid. ( '160 Patent, col. 2,

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2000 U.S. Dist. LEXIS 15781, *21

lines 53-61.) The lure must be rotated during the drying
period so that the glitter particles maintain their even
distribution and do not migrate to one side of the lure
under the force of gravity. ( '160 Patent, col. 2, lines
61-65.)
The preferred embodiment describes how the coating
is produced:
To produce such coating, a liquid epoxy
resin and a hardener for such resin are
mixed to produce a chemical reaction
resulting in converting the liquid mixture
into a solid by passing through a highly
viscous liquid stage. ( '160 Patent, col. 4,
lines 5-10.)
The preferred [*22] embodiment goes so far as to
suggest specific commercially-available liquid resins and
hardeners.
The Court recognizes that a patent is not necessarily
limited to the preferred embodiment. However, "whether
an invention is fairly claimed more broadly than the
'preferred embodiment' in the specification is a question
specific to the content of the specification [and] the
context in which the embodiment is described." Wang
Laboratories, Inc. v. America Online, Inc., 197 F.3d
1377, 1383 (Fed. Cir. 1999). In this case, the preferred
embodiment describes the invention itself, at least with
respect to the composition of the coating. Accordingly,
Nichols is not entitled to a broader interpretation than is
described in the preferred embodiment. The Court
concludes that the term "resin coating" is properly
interpreted as meaning a two-part mixture.
C. "entire outer surface"
Nichols asserts that the term "entire outer surface"
should be construed to mean "the greater part of the
surface which is exposed to light." In offering this
construction, Nichols seeks to modify the term in two
ways: first, by altering "entire" to mean something less
than the whole and [*23] second, by defining "outer
surface" of the lure body to mean only that part of the
lure body that is exposed to light. The Court addresses
each element separately below.
1. "entire"
In its pre-hearing Markman brief, Nichols explained

that accessories such as plastic eyes, skirts, hooks, and
shanks are often attached directly to the bodies of fishing
lures. These accessories create small areas on the lure
body that may not be covered by the glitter-containing
coating. Thus, Nichols argues that "entire" cannot mean
that every bit of surface area is covered by the coating;
instead, it must mean that only the "greater part" of the
surface of the body is covered by the coating.
Unlike the term "resin coating" construed above, the
term "entire" is not ambiguous, nor does it appear from
the specification that the patentee has qualified the term
in any way. To the contrary, a plain reading of the
specification shows that the word "entire" is intended in
its ordinary sense. "Entire" means "having no element or
part left out" or "complete in degree." Webster's Ninth
New Collegiate Dictionary 415 (1987). 2 According to
the summary, the "resin coating is applied to all external
[*24] surfaces of the body of the lure." ( '160 Patent,
col. 2, lines 32-33.) Accordingly, claim 1 must be
construed to mean that the outer surface of the body of
the lure must be completely covered by the coating. In
other words, no part of the external surface may be left
uncovered by the resin coating.
2
Although dictionaries constitute extrinsic
evidence, they are worthy of special note and
judges may rely on them when construing claim
terms so long as the dictionary definition does not
contradict any definition found in or ascertained
by a reading of the patent documents. See Optical
Disc Corp. v. Del Mar Avionics, 208 F.3d 1324,
1335 (Fed. Cir. 2000) (citing Vitronics, 90 F.3d
at 1584 n.6).
Nichols argues that such an interpretation creates a
situation wherein a lure manufacturer may avoid
infringement by simply leaving a small portion of the lure
uncovered by coating material. However, the Court may
not consider the fact that the patentee in retrospect would
have inserted [*25] qualifying terms had he considered
the implications of employing absolute language. No
matter how great the temptations of fairness or policy
making, courts are limited to interpreting claims, and are
not permitted to redraft them. See Quantum Corp. v.
Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995)
(citing Autogiro Co. of America v. United States, 181
Ct. Cl. 55, 384 F.2d 391, 396-96 (Ct. Cl. 1967)).
2. "outer surface"

Page 8
2000 U.S. Dist. LEXIS 15781, *25

Nichols argues that the term "outer surface" means
only that part of the surface of the lure that is exposed to
light. In support of this argument, Nichols explains that
the object of the invention is to produce a light-reflecting
coating that reflects substantially all of the light incident
on the body of the lure. Thus, Nichols argues, portions of
the body of the lure that may not receive light because
they are covered, for example, by a skirt of trailing plastic
streamers, are not the "outer" surface of the body. In
other words, only the portions of the lure body that are
exposed to light constitute the "outer" surface.
Although this argument has superficial appeal, close
examination reveals that it is not consistent with [*26]
either the claim or the specification. First, even assuming
that parts of the lure that are covered by a loose skirt of
streamers are not exposed to light, which is by no means
obvious, Nichols' interpretation is not supported by the
language of the claim. The purpose of the term at issue is
to indicate where the resin coating is to be applied--over
the "entire outer surface"; it does not address the
light-reflecting properties of the coating. ( '160 Patent,
col. 5, line 25.) By contrast, it is the following clause that
explains how the coating reflects light--by glitter
particles. It states: "said glitter particles being
substantially uniformly dispersed throughout said
coating, whereby substantially all light incident on said
body is reflected." ( '160 Patent, col. 5, lines 31-33.)
This language demonstrates that the light-reflecting
ability of the lure is a function of the amount of glitter in
the resin coating and not a function of where the coating
is applied.
When the claim is viewed in this way it is clear that
Nichols' argument collapses two distinct elements of the
claim: one, that the body is covered by the coating, and
two, that the glitter in the [*27] coating reflects light.
Thus, Nichols attempts to modify the first element by
inferring a limitation applicable to the second, or in other
words, to redefine "outer" surface by reference to the
light-reflecting characteristic of the glitter. However, the
Court is restricted to interpreting the words of the claim
and to accept Nichols' construction would be to expand
the claim beyond what the language supports.
Second, Nichols' construction is inconsistent with the
specification. Figures 1 and 2, and the drawing on the
first page of the patent all depict a lure having a skirt
comprised of "a plurality of plastic streamers." ( '160
Patent, figs. 1, 2; '160 Patent, col. 3, lines 48-49.) The

drawings show a skirt placed over portions of the body
that have been covered by the glitter-containing coating
(indeed, the skirt covers the entire head of the lure). Thus,
it cannot be the case that coating is only applied to those
areas of the lure that are not covered by a skirt.
In sum, the Court concludes that no modification of
the term "outer surface" is warranted.
D. "a large plurality"
"A large plurality" is the term used to describe the
quantity of glitter the coating contains. [*28] The parties
offer differing constructions. Nichols asserts that the term
is not ambiguous and proposes the dictionary definition:
"a large number or quantity." Defendants on the other
hand contend that the term "a large plurality" is
inherently ambiguous and propose the following
construction which they argue flows from the language of
the claim and the specification: "there must be sufficient
glitter to cover essentially the entire light receiving
surface of the lure body so that substantially all light
incident on the lure body is reflected."
The Court agrees that the term "a large plurality" is
ambiguous. Nichols' proposed construction, essentially a
synonym, is equally vague. Defendants' proposed
construction is more reasonable in view of the
specification.
The specification identifies a perceived problem with
the prior art; namely, that the lures did not reflect enough
light because the number and spacing of glitter particles
was insufficient. ( '160 Patent, col. 1, lines 64-67, col. 2,
lines 1-3.) The patentee's solution to this problem is to
include enough glitter in the coating so that the coating
reflects "substantially all of the light incident on the
body." ( '160 [*29] Patent, col. 2, lines 10-12.) Thus,
the amount of light reflected is a function of the number
of glitter particles in the coating. Nichols' assertion that
light is also reflected by the resin, and therefore reflection
is not a function of the number of glitter particles, is
contradicted by the language of the claim. The claim
clearly states that the resin coating itself is transparent. (
'160 Patent, col. 5, lines 24-25.) Therefore, all light that
is reflected must be reflected by glitter particles
embedded in the coating.
Accordingly, the term "a large plurality" is properly
construed to mean that the coating must contain a
sufficient number of glitter particles to reflect

Page 9
2000 U.S. Dist. LEXIS 15781, *29

substantially all light incident on the portions of the body
that are covered by the coating. 3
3 The Court has modified Defendants' proposed
construction to remove extraneous limitations on
elements which are not the subject of dispute in
this litigation.
E. "a size not exceeding 0.01 inches in any direction"
This term describes [*30] the maximum size of the
glitter particles. Defendants' position is that the term is
ambiguous and they urge the Court to adopt the following
construction: "the distance between the two most widely
separated points on the periphery of the glitter particles
must not exceed 0.01 inches." Nichols asserts that the
term is not ambiguous and does not offer a proposed
construction.
The Court finds that there is some ambiguity in the
term. As Defendants point out, it is not clear whether
"direction" refers to diagonal dimension, or whether it
refers to side dimension. The Court concludes that
Defendants' proposed construction comports with the
language of the claim and is the appropriate
interpretation. 4
4 Nichols did not dispute Defendants' proposed
construction either at the hearing or in its briefs,
and has offered no alternative.
F. "substantially uniformly dispersed throughout said
coating"
This term describes how the glitter is distributed
within the coating. Defendants urge the Court to adopt a
construction [*31] that specifies that the glitter particles
must be distributed throughout the "thickness and
entirety" of the coating.
However, the term "throughout" is unambiguous and
thus, the ordinary meaning must prevail. The ordinary
meaning of "throughout" is "in or through every part" or
"everywhere." Webster's Ninth New Collegiate
Dictionary 1230 (1987). Thus, the patent requires the
glitter to be dispersed through every part of the coating.
The specification neither contradicts not adds to the
understanding of this term; therefore, the Court declines
to impose any limitation. Although the term is not as
precise as it might be, Defendants' proposal to clarify it is
beyond the scope of claim construction. See PPG Indus.

v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed.
Cir. 1998) (holding that court may not, under rubric of
claim construction, add clarification beyond that
supported by the specification merely to facilitate claim
construction).
G. "substantially all light"
This term describes how much of the light that hits
the coating is reflected. The parties offer differing
constructions. The Defendants propose to substitute the
phrase "essentially all light"; [*32] Nichols proposes to
substitute "a large portion of but not all of the light which
falls on the body of the lure."
The Court concludes that the term is not ambiguous,
thus the ordinary meaning should prevail. The ordinary
meaning of the term is "all but an insignificant amount."
Atmel Corp. v. Information Storage Devices, Inc., 997
F. Supp. 1210, 1229 (N.D.Cal. 1998), rev'd on other
grounds by 198 F.3d 1374 (Fed. Cir. 1999).
H. "dispersed in all directions"
This term describes in which directions light hitting
the coating is reflected. Defendants propose that the word
"all" be given its ordinary meaning because there is no
basis to depart from the standard presumption in favor of
the ordinary meaning. The Court disagrees. In this case,
the inventor has not used the word "all" in its ordinary
sense, but instead has imparted a special meaning. This
special meaning is apparent in the specification, as well
as in the words of the claim at issue.
First, from the claim itself it can be seen that the
term "dispersed in all directions" does not stand alone,
but is part of a clause that works as a unit to describe
where and how the glitter particles [*33] are positioned
within the coating. The first part of the clause--"whereby
substantially all light incident on said body is
reflected"--indicates that the glitter particles are evenly
distributed throughout the coating and in such close
proximity to each other that all but an insignificant
amount of light is reflected. The second part of the
clause--the one at issue--describes how the flat glitter
particles are oriented within the coating. The term states
that the glitter is oriented so that light incident on the
coating is reflected in "all directions."
There is an infinite number of directions. If light is to
be reflected in "all" of them, then the ordinary meaning

Page 10
2000 U.S. Dist. LEXIS 15781, *33

of the word "all" would require a finite number of glitter
particles to be oriented upon an infinite number of planes.
This peculiar implication of the ordinary meaning renders
unclear the meaning of the term "in all directions" in the
context of an invention defined as having only a finite
number of glitter particles. Thus, it is appropriate to refer
to the specification to ascertain its meaning. See Johnson
Worldwide Assoc., Inc. v. Zebco Corp., 175 F.3d 985,
990 (Fed. Cir. 1999) (disputed term invites [*34]
reference to the specification when term chosen by
patentee deprives claim of meaning).

states that light is reflected "in a very large plurality of
directions." ( '160 Patent, col. 2, line 12.) Although this
term itself is somewhat ambiguous, fortunately the
patentee defines exactly what is meant by "a very large
plurality of directions" later in the specification: light is
reflected from the coating at "as many different angles. . .
as there are [glitter] particles." ( '160 Patent, col. 3 line
5.) The Court is convinced that this interpretation is the
one mandated by in view of the claim language and the
specification.
III. CONCLUSION

Furthermore, it appears that the patentee did not use
the term "all" in its ordinary sense, requiring light to be
dispersed in an infinite number of directions, but rather
has set forth a different definition. The specification

The Court concludes that the disputed claim terms
are properly construed as follows:

Disputed Term
body

Proper Construction
each fishing lure has one body; said body
consisting of a teardrop-shaped head
element and any form of blade, spoon or
other vibrating elements attached to the
lure to further attraction the attention
of fish

resin coating

the resin coating must be at least three
times the maximum glitter particle
dimension
the resin coating must be a two part
mixture consisting of a liquid resin and
a hardener

entire outer surface

the outer surface of the body of the lure
must be completely covered by the
coating; no part of the external surface
may be left uncovered by the resin
coating

a large plurality

there must be sufficient glitter to cover
essentially the entire light receiving

Page 11
2000 U.S. Dist. LEXIS 15781, *34

surface of the lure body so that
substantially all light incident on the
lure body is
reflected
a size not exceeding 0.01 inches in
the distance between the two most
widely any direction
separated points on the periphery of the
glitter particles must not exceed 0.01
inches
substantially uniformly dispersed

substantially uniformly dispersed

throughout said coating

throughout said coating

substantially all light incident on

all but an insignificant amount of light

said body is reflected

incident on the coating is reflected

dispersed in all directions

light is dispersed in as many directions
as there are glitter particles

UNITED STATES MAGISTRATE JUDGE
[*35] SO ORDERED. October 25, 2000.
JANE J. BOYLE