PAUL D. BORMAN, District Judge.
The instant Opinion and Order relates solely to the Court's claim construction of the term "electrically connected."
This is a patent infringement case. Plaintiffs Peter A. Hochstein, Jeffrey Tenenbaum, and Harold W. Milton (collectively, "Hochstein") claim that Defendant Microsoft Corporation ("Microsoft") infringed upon their U.S. Patent No. 5,292,125 ("'125 Patent"), titled "Apparatus and Method for Electrically Connecting Remote Video Games." The '125 Patent involves an invention that allows "for two or more players playing the same video game to compete with each other without using the same physical video game which alleviates the necessity of proximity of the players." '125 Patent col. 2 ll. 39-43. The '125 Patent describes a system where a video
On December 14, 2009, 2009 WL 6372589 Special Master Richard D. Grauer issued his third "Report and Recommendation on Hochstein's Motion for Reconsideration of Claim Construction" relating to the term "electrically connected." See docket entry 518.
As the case currently stands, the phenomenon of "electromagnetic induction" has been excluded from the scope of the term "electrically connected."
The Special Master had previously recommended that "electromagnetic induction" be excluded from the scope of "electrically connected" in his Report and Recommendation dated June 30, 2009. See docket entry 481, p. 2.
Docket entry 502.
Pursuant to the Court's order dated December 15, 2009, see docket entry 519,
On January 27, 2010, Hochstein filed a response to Microsoft's objections. See docket entry 522. Hochstein argues that the Special Master's December 14, 2009, R & R is sound in all respects except for one minor detail, discussed infra.
The Court heard oral argument on Microsoft's objections to the December 14, 2009, R & R on March 5, 2010.
On April 4, 2010, the Special Master submitted to the Court a memorandum supplementing his December 14, 2009, R & R construction of the term "electrically connected." Pursuant to Fed.R.Civ.P. 53(f)(1), the Court provided the parties with notice of that memorandum and an opportunity to respond by supplemental memoranda prior to issuing its Opinion and Order on this claim construction. See docket entry 525. The parties filed supplemental memoranda. The Court has had no further contact with the Special Master.
The issue of claim construction of the term "electrically connected" is now fully briefed and ready for decision. The Court reviews de novo factual findings and legal conclusions of the Special Master to which a specific objection has been made. See Fed.R.Civ.P. 53(f).
"Issues of claim construction—what do the claims mean?—are for the court to decide and explicate on the record." R. Harmon, Patents & the Federal Circuit § 6. 1, p. 330 (9th ed. 2009). As stated by the United States Court of Appeals for the Federal Circuit,
Phillips v. AWH Corp., 415 F.3d 1303, 1312-1313 (Fed.Cir.2005) (en banc) (citations omitted).
"The ordinary and accustomed meaning of a disputed claim term is presumed to be the correct one." Harmon, Patents & the Federal Circuit, supra, at § 6.2, p. 352. "[A] party wishing to alter the meaning of a clear claim term must overcome the presumption that the ordinary and accustomed meaning is the proper one, demonstrating why such an alteration is required." Id. The presumption can be overcome "where the patentee has chosen to be his own lexicographer." Bell Atlantic Network Servs., Inc. v. Covad Commc'n Group, Inc., 262 F.3d 1258, 1268 (Fed.Cir.2001). "[T]he patentee may act as his own lexicographer by using the
The legal propositions discussed in the preceding paragraph address the circumstances under which a court may alter the meaning of a disputed claim term that has an ordinary and accustomed meaning. But what about a situation where a claim term lacks an ordinary and accustomed meaning? "[T]here is no `heavy presumption' of ordinary meaning where a disputed term lacks an accepted meaning in the art. Absent such an accepted meaning, a claim term is construed only as broadly as provided for by the patent itself." Harmon, Patents & the Federal Circuit, supra, at § 6.2, pp. 352-353.
Importantly, "[c]ourts construe claims by considering the evidence necessary to resolve disputes about claim terms and to assign a fixed, unambiguous, legally operative meaning to the claim." Id. at p. 328. "[I]ntrinsic evidence is the most significant source of the legally operative meaning of disputed claim language." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). As the term relates to claim construction, "intrinsic evidence" is "the patent itself, including the claims, the specification and, if in evidence, the prosecution history." Id.
"Extrinsic evidence," on the other hand, "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed.Cir.1995) (en banc), aff'd 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).
Harmon, Patents & the Federal Circuit, supra, at § 6. 1, pp. 331-332 (footnote omitted). Critically, however,
Vitronics Corp., 90 F.3d at 1584-1585 (citations omitted). See also Markman, 52 F.3d at 981 ("[e]xtrinsic evidence is to be used for the court's understanding of the patent, not for the purpose of varying or contradicting the terms of the claims"); Harmon, Patents & the Federal Circuit,
Harmon, Patents & the Federal Circuit, supra, at § 6.4, p. 386.
Significantly, the Federal Circuit has stated that the title of the invention is "near[ly] irrelevan[t]" to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1312 (Fed.Cir. 1999). "We are only aware of one case from [the Federal Circuit] in which the patent title was accorded any significance whatsoever in a claim construction." Id. The court went on to note that even in that one case where the title was mentioned, the ultimate claim construction did not rely on the patent's title: "that the patent title has only been mentioned once by this court in the context of claim construction and, even then, merely to make an illustrative point in one sentence, makes a powerful statement as to the unimportance of a patent's title to claim construction." See id. at 1313.
The critical question in the present case is whether the term "electrically connected" "can be understood from a careful reading of the public record." See Vitronics Corp., 90 F.3d at 1584. If it can, then the Court is not permitted to consider extrinsic evidence. If it cannot, then the Court may consider extrinsic evidence so long as it is not "used to vary claim terms from how they are defined, even implicitly, in the specification or file history." See id. at 1584-1585.
The Special Master discussed the intrinsic evidence in Section III(C)(1) of his December 14, 2009, R & R, and concluded that "the intrinsic evidence alone does not provide a compelling basis to conclude whether `electrically connected' encompasses a connection created by means of electromagnetic induction." December 14, 2009, R & R at 19.
In its first objection, Microsoft contends that it was reversible error for the Special Master to consider extrinsic evidence because the intrinsic evidence is unambiguous regarding the meaning of "electrically connected." According to Microsoft, "[t]he intrinsic evidence points to one conclusion. `Electrically connected' ... does not include connections through electromagnetic induction." Microsoft's Objections to December 14, 2009, R & R at 8 (docket entry 520).
In order to evaluate Microsoft's initial objection, it is necessary to set forth the reasoning underlying the Special Master's conclusion that "the intrinsic evidence alone does not provide a compelling basis to conclude whether `electrically connected' encompasses a connection created by means of electromagnetic induction, as in an isolating transformer." December 14, 2009, R & R at 19.
The Special Master began his analysis by examining the language used in the patent, noting that
Id. at 14 (footnote omitted). The Special Master is saying essentially two things. First, the term "electrically connected" is used consistently throughout the patent (except in the title of the invention) to describe the same kind of connection—a connection in the form of an electrically conductive wire or line. Second, the term "electrically connected" is never used to describe a connection utilizing electromagnetic induction.
In reaching this conclusion, the Special Master noted significant facts. First, the Special Master noted that "[a]sserted claim 39 used the phrase `electrically connected' three times to describe the relationship between various claimed components," December 14, 2009, R & R at 8, and that "[i]n every one of th[ose] uses of the term, ... the corresponding `electrical connection' disclosed in the specification and drawings is by means of electrically conductive wire or line, with no disclosed gap as would exist if there were a capacitor or transformer interposed between the connected components." Id. at 9-10.
Second, the Special Master noted that "[t]he phrase ["electrically connected"] was apparently not used during the prosecution history of the '125 Patent." Id. at 9.
Third, the Special Master noted that "`[e]lectrically connected' (or `electrically connecting') is used just four times outside of the claims." Id. The first two times it is used outside of the claims is in the title of the invention, which appears twice in the patent.
In accordance with Pitney Bowes, supra, the Special Master correctly recognized that "the title of a patent is entitled to little if any weight in claim construction analysis," id. at 11, while at the same time noting that the context in which the title appears supports Hochstein's position that electromagnetic induction should be included within the scope of "electrically connected." Ultimately, the Special Master concluded that "[i]n view of the Pitney Bowes holding, ... the patent's title, though supporting Hochstein's arguments concerning claim construction, is entitled to limited weight in this claim construction analysis." Id. at 12-13.
With regard to the third "electrically connected" reference found outside of the claims, the Special Master concluded that there is "no indication in the specification or in Figures 2 and 3 that the connection described ... is anything other than an electrically conductive wire or line." Id. at 13. The Special Master reached the same conclusion with regard to the fourth "electrically connected" reference found outside of the claims. Id.
Summarizing the intrinsic evidence as it relates to the use of the phrase "electrically connected" in the patent, the Special Master stated:
Id. at 14 (footnote omitted).
Next, the Special Master proceeded to examine the language in the patent used to describe connections utilizing electromagnetic induction. The Special Master noted, "it is particularly significant to the present analysis to consider the terminology that the patent did use to describe [connections utilizing electromagnetic induction]" since "th[is] phenomenon is at the heart of the present claim construction controversy." December 14, 2009, R & R at 14 (emphasis retained). After closely examining the language used in the patent, the Special Master correctly noted that the specification and claims use all of the following words to describe the connections formed by electromagnetic induction: "couplers," "coupling," "connect," "connecting," and "directly connecting." Id. at 19. Accordingly, the Special Master wrote:
Id. at 16.
Next, Special Master Grauer "consider[ed] other portions of the patent where some form of `connected' is used dozens of times to refer to connections via current-carrying conductors, without the associated `electrically' qualifier." Id. In other words, the Special Master proceeded to examine how the term "connected" is used in the patent, either alone or with a qualifier other than "electrically." The Special Master noted that "connected" is used in the patent to describe the same type of connection that is described elsewhere in the patent as "electrically connected." Id. at 16-17. That is, "connected" is sometimes used to describe connections by an electrically conductive wire or line. And, as discussed above, "connected" is also used to describe connections formed by electromagnetic induction. Because "connected" is used in the patent to describe both electrically conductive and non-conductive connections, the Special Master concluded that "the patent is not consistent in its use of [the terms `connected' and `electrically connected'], there being some arbitrariness in the choice of terms both in the specification . . . and in claim 39 itself." Id. at 16-17. For this reason, the Special Master thought it necessary to consult extrinsic evidence to aid in the construction of the disputed term "electrically connected."
In its first and second objections to the Special Master's December 14, 2009, R & R, Microsoft argues that the Special Master should not have considered extrinsic evidence; he should have concluded his analysis after finding that (1) "electrically connected" is used consistently, with the exception of the title of the invention, to describe a connection in the form of an electrically conductive line or wire, (2) "electrically connected" is never used to describe a connection utilizing electromagnetic induction, and (3) other terms—and not the term "electrically connected"—are used to describe connections utilizing electromagnetic induction.
Microsoft faults the Special Master for allowing the patent's use of a broader term, "connected," to create an ambiguity with regard to the meaning of a narrower term, "electrically connected," when it
Microsoft's Objections to December 14, 2009, R & R at 3-4 (docket entry 520). In other words, Microsoft argues that it is not inconsistent, as the Special Master found, for the patentee to use a broad term ("connected") to describe two narrower terms (direct connections using a line or wire, and connections utilizing electromagnetic induction), both of which fall under the broader "connected" umbrella. Because, according to Microsoft, the Special Master's decision to consider extrinsic evidence "rests [solely] upon [this] non-existent inconsistency," Microsoft argues that extrinsic evidence—which is what led the Special Master to reach his recommended claim construction—is inadmissible.
Hochstein concurs with the Special Master's analysis and conclusion regarding the admissibility of extrinsic evidence to aid in the construction of the disputed term "electrically connected." According to Hochstein, "the Special Master correctly recognized that the intrinsic evidence does not define electrically connected and does not address whether `electrically connected' includes or excludes electromagnetic induction." Hochstein's Resp. to Microsoft's Objections to December 14, 2009, R & R at 1 (docket entry 522).
Special Master Grauer's supplement dated April 4, 2010, reaches the same conclusion as his December 14, 2009, R & R; that "electrically connected" should be construed to encompass connections via electromagnetic induction.
In Bell Atlantic, the Federal Circuit reviewed the trial court's decision to construe the disputed claim term "mode" narrowly, despite the fact that "[i]t may be true that the ordinary meaning of the word . . . supports a broader meaning." 262 F.3d at 1269. The court considered whether to alter the meaning of a disputed claim term that may have had a broader ordinary and accustomed meaning. Because "the patentee may act as his own lexicographer by using the specification to define terms either expressly or `by implication,'" the court "look[ed] at the intrinsic evidence to determine whether the
Several Federal Circuit cases have applied the Bell Atlantic holding, and each of them inform this Court's analysis. First, in Nystrom v. TREX Co., 424 F.3d 1136, 1142 (Fed.Cir.2005), the parties disputed whether the claim term "board" should be construed broadly to include planks made from any material, or narrowly to include planks made from wood only. Both parties acknowledged that the latter (narrow) construction reflected the ordinary meaning of the term. Id. at 1145. Although there was no language expressly limiting the term "board" to planks made from wood, the Federal Circuit noted that "[t]he written description and prosecution history consistently use the term `board' to refer to wood decking materials cut from a [wooden] log." Id. Thus, even though there was "no disavowal of [claim] scope in the written description or prosecution history," id., the Federal Circuit concluded that the presumption in favor of the term's ordinary meaning had not been rebutted and that the disputed term had been defined through its consistent narrow usage in the patent: "Broadening of the ordinary meaning of a term in the absence of support in the intrinsic record indicating that such a broad meaning was intended violates the principles articulated in Phillips." Id. at 1145-1146.
Second, as summarized by the Federal Circuit in Nystrom, the court had recently stated, in AquaTex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374 (Fed.Cir. 2005):
Nystrom, 424 F.3d at 1145 (citations omitted).
Third, in Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir.2004), the parties disputed whether the term "group key" should be construed broadly to include all subscribers or narrowly to include only subsets of all subscribers. The court noted that the disputed term had no accepted meaning in the art and, relying on J.T. Eaton & Co., Inc. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1570 (Fed.Cir.1997), emphasized that "absent such an accepted meaning, we construe a claim term only as broadly as provided for by the patent itself." Irdeto Access, 383 F.3d at 1300. The court then
Id. at 1303. See also id. at 1302 (discussing two additional Federal Circuit cases (Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed.Cir.2004), and Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294 (Fed.Cir.2003)), both of which apply the Bell Atlantic holding).
Both parties agree with the Special Master's determination that, excluding the title of the patent, "`electrically connected' is used in the specification and claims only to describe connections by means of electrically conductive wires." December 14, 2009, R & R at 18-19. The parties further agree that, excluding the title of the patent, the disputed term, "electrically connected," "is never used to describe a connection with an intervening gap, such as occurs in an isolating transformer that utilizes electromagnetic induction to couple two circuits across a gap." Id. Instead, other words—such as "connected" or "couple"—are used in the patent to describe connections through electromagnetic induction.
Microsoft argues that the Court should not consider extrinsic evidence in light of these undisputed conclusions because "electrically connected" is defined implicitly through its consistent, narrow usage throughout the patent. Hochstein, on the other hand, emphasizes the Special Master's determination, also undisputed, that "nothing in the patent . . . explicitly excludes electromagnetic induction from the scope of "electrically connected," or . . . requires a conclusion that it should be so excluded," December 14, 2009, R & R at 18, since the disputed term is not explicitly defined in the patent. However, under Bell Atlantic, a claim term may be implicitly defined through consistent use. Thus, the Special Master's conclusion, and Hochstein's argument in favor of it, do not honor the Bell Atlantic holding.
Hochstein also contends that the manner in which the disputed term is used in the title of the patent is inconsistent with how it is used consistently elsewhere, thereby precluding a finding that the claim term is consistently used "throughout the entire patent specification." See Bell Atlantic, 262 F.3d at 1271. But that contention just emphasizes the reality that "electrically connected" is used consistently throughout the patent to describe a connection by an electrically conductive wire or line; it is not used more broadly to describe other kinds of connections, such as a connection by means of electromagnetic induction.
The title of the patent, which appears twice in the specification, reads: "Apparatus and Method for Electrically Connecting Remotely Located Video Games." In his December 14, 2009, R & R, the Special Master analyzed in great detail whether the manner in which "electrically connecting" is used in the title is inconsistent with the way it is used elsewhere. See December 14, 2009, R & R at 10-13. Although the Special Master ultimately accorded "limited weight" to the title in accordance with Pitney Bowes, he nevertheless found probable merit to Hochstein's argument that a claim construction that excludes
The Background goes on to say that:
December 14, 2009, R & R at 11. Simply put, the Special Master is concluding that the proper reading is that it was never intended that connection from one player to the other distant player would be through a long electrical cord that could extend miles, or even hundreds of miles.
Microsoft disagrees with the Special Master's analysis and conclusion regarding the title, and argues that "the title of the '125 patent is consistent with the patentees' use of `electrically connected' in the rest of the patent exclusively to describe electrically conductive connections." Microsoft reasons, as the Special Master noted in his December 14, 2009, R & R, "that the title does not specifically say that the local and remote video games are "electrically connected" to each other; the title could mean, as in the first sentence of the Abstract, that each of the two games is "electrically connected" to the video game communicator." December 14, 2009, R & R at 10-11 (underlined emphasis retained).
The Special Master considered Microsoft's argument and rejected it, stating that "the context provided by the Background and Summary sections of the '125 Patent specification strongly favors Hochstein's interpretation of the patent's title." Id. at 11. Thus, the Special Master concluded that the manner in which "electrically connecting" is used in the title is likely inconsistent with how the term is used elsewhere in the patent. According to the Special Master and Hochstein, the disputed term is used more broadly in the title to describe a connection that does not involve an electrically conductive line or wire; elsewhere, it is used narrowly to describe only connections by means of electrically conductive lines or wires. Thus, Hochstein and the Special Master believe that the manner in which the disputed term is used in the title of the patent "destroys" the otherwise consistent manner in which the patentee used the term elsewhere in the patent.
The Court finds there to be genuine ambiguity with regard to how the disputed term is used in the title; the way in which
In addition, the Court must reiterate that the Federal Circuit has explicitly stated that the title is "near[ly] irrelevan[t]" to claim construction and that it is "only aware of one case from [the Federal Circuit] in which the patent title was accorded any significance whatsoever in a claim construction." See Pitney Bowes, 182 F.3d at 1312. Based on the Court's reading of Pitney Bowes, it is improper to place any reliance on the title of the patent in this claim construction analysis. This Court ascribes no weight to the title in this claim construction analysis due to both its vagueness in its use of the disputed term, and in its near irrelevancy pursuant to Pitney Bowes.
In the end, the Court agrees with Microsoft that
Microsoft's Objections to April 4, 2010, Supplement to R & R of December 14, 2009, at 6 (docket entry 526). Stated differently,
Id. at 1-2.
Once the Special Master made the correct and undisputed findings that the patentee (1) consistently used the term "electrically connected" to describe only electrically conductive connections, (2) never used the term "electrically connected" to describe connections utilizing electromagnetic induction, and (3) consistently used terms other than "electrically connected" to describe connections utilizing electromagnetic induction, the Court finds that he should have concluded his analysis utilizing intrinsic evidence alone. The Special Master erred when he proceeded to analyze how the broader term "connected" is used in the patent without the limiting modifier "electrically." It was this erroneous step that led the Special Master to his conclusion that "the intrinsic evidence alone does not provide a compelling basis to conclude whether
Hochstein points out that "Bell Atlantic is about `redefining' a claim term to have an `unconventional meaning' different from the term's ordinary meaning." Hochstein's Resp. to Microsoft's Objections to April 4, 2010, Supplement to R & R of December 14, 2009, at 5 (docket entry 527). This is a correct statement. It is also correct, as Hochstein asserts, that this case does not involve such a scenario. However, Bell Atlantic does not apply only to situations where a court is considering a deviation from the ordinary meaning of a claim term. The reach of Bell Atlantic is wider; it applies whenever a claim term, though not explicitly defined, is used "throughout the entire patent specification, in a manner consistent with only a single meaning." Bell Atlantic, 262 F.3d at 1271. For example, in Irdeto Access, discussed above, the Federal Circuit held that the disputed claim term, which had no ordinary and accepted meaning in the art, was implicitly defined through consistent use in accordance with Bell Atlantic. See 383 F.3d at 1301. Here, the patentee consistently used "electrically connected" only in a narrow sense to describe electrically conductive connections. Moreover, the patentee consistently used other terms, such as "connected" (without the "electrically" qualifier) and "coupled" to describe connections over a gap in a transformer. Pursuant to Bell Atlantic, the Court finds that this consistent usage (and non-usage) of the disputed term evinces the patentee's "clear intention[]" to exclude electromagnetic induction from the scope of "electrically connected." See Teleflex, 299 F.3d at 1327. See also Harmon, Patents & the Federal Circuit, supra, at § 6.2, pp. 352-353 ("[a]bsent . . . an accepted meaning, a claim term is construed only as broadly as provided for by the patent itself").
For all these reasons, the Court finds that the disputed term, "electrically connected," has been implicitly defined by consistent use in the patent pursuant to Bell Atlantic and its progeny, such that resort to extrinsic evidence is unnecessary. Notwithstanding this determination, however, the Court has closely examined the extrinsic evidence of record in this case and, for the reasons discussed in the next section of this Opinion and Order, finds all of it unhelpful. Thus, even if the Court were inclined to consider such evidence, the outcome of this claim construction dispute would remain unchanged.
As discussed above,
Markman, 52 F.3d at 980. Moreover,
Vitronics Corp., 90 F.3d at 1584-1585 (citations omitted). See also Markman, 52 F.3d at 981 ("[e]xtrinsic evidence is to be used for the court's understanding of the patent, not for the purpose of varying or contradicting the terms of the claims"); Harmon, Patents & the Federal Circuit, supra, at § 6.4, p. 386 ("[i]f the meaning of the claim limitations is apparent from the totality of the intrinsic evidence, then the claim has been construed").
In his R & R dated December 14, 2009, and his supplement dated April 4, 2010, the Special Master considered three types of purported extrinsic evidence: (1) the testimony of the parties' experts, Dr. Macedonia for Microsoft, and Dr. Matheson for Hochstein; (2) dictionary definitions of the disputed term; and (3) the litigation conduct of Microsoft. The Court addresses each, in turn.
Not surprisingly, Dr. Matheson, on behalf of Hochstein, and Dr. Macedonia, on behalf of Microsoft, disagree with regard to the ultimate question here—whether a person of ordinary skill in the art, at the time of the invention, would consider a connection by means of electromagnetic induction to be an "electrical connection." The Special Master urges the Court to give "enhanced credibility" and "additional weight" to the testimony of Microsoft's expert, Dr. Macedonia, elicited before the present dispute involving electromagnetic induction arose:
December 14, 2009, R & R at 21. Before the focus of the parties' attention shifted from wireless connections (radio waves) to electromagnetic induction, Microsoft urged the Court to adopt one of the following constructions of "electrically connected":
All three of these proposed constructions say the same thing—that an "electrical connection" must involve the flow of current/electricity between the two items being connected.
The Special Master concludes that
The Court disagrees with the Special Master and Hochstein, and finds that Microsoft has never conceded or admitted that electromagnetic induction falls within the ambit of "electrically connected." It is true that, by offering the proposed constructions above, Microsoft admitted that an "electrical connection" is one that allows for current/electricity to flow between the two things being connected. However, the problem with the position of the Special Master and Hochstein is that Microsoft has never admitted that electricity or current flows between the gap in a transformer. In fact, Microsoft, through its expert, advances the exact opposite position:
Docket entry 488-2, ¶ 14 (emphasis added). Neither the Special Master nor Hochstein direct the Court's attention to anywhere in this record where Microsoft admitted that electricity or current flows between the gap in a transformer.
At the onset, the Court notes, as did the Special Master in his December 14, 2009,
Phillips, 415 F.3d at 1321.
Regarding the "battle of the dictionaries," the Special Master concludes, after a thorough discussion in his December 14, 2009, R & R, that "it is inappropriate to place any reliance on [the dictionary definitions proffered by the parties] for claim construction guidance." December 14, 2009, R & R at 27.
Microsoft offers the following dictionary definition of "electrically connected":
Everyone agrees that this definition, by its express terms, excludes electromagnetic induction from the scope of "electrically connected."
Hochstein, on the other hand, stresses Phillips' de-emphasis on dictionary definitions, but offers the following definition, which it contends contradicts Microsoft's proffered definition:
Hochstein argues that its definition, unlike Microsoft's definition, encompasses electromagnetic induction within the meaning of "electrically connected." The Special Master, however, rejected Hochstein's argument, concluding that "there is no contradiction" between the two definitions since:
December 14, 2009, R & R at 26-27 (underlined emphasis retained). Hochstein objects to the Special Master's conclusion
The Court does not agree, and finds Hochstein's rewriting of the dictionary definition to be flawed. The Court reads the terms "wire," "resistence," and "inductance or capacitance" as examples of directs paths, not as separate connections. However, even if Hochstein's reading is the correct/intended one, the definition remains ambiguous with regard whether electromagnetic induction is encompassed within the meaning of "electrically connected" since, as the Special Master found, Hochstein's definition "is more generic and does not specifically address electromagnetic induction or isolation transformers." December 14, 2009, R & R at 26.
The Court agrees with the Special Master's conclusions regarding the "battle of the dictionaries" in this case:
December 14, 2009, R & R at 27.
The Special Master considered the litigation conduct of Microsoft—specifically, the timing of its claim construction arguments, as extrinsic evidence in this matter. The Special Master believes that Microsoft's failure to raise the present non-infringement defense for several years is
December 14, 2009, R & R at 24 (citation omitted). Because of its importance to this discussion, the Court sets forth the Special Master's discussion of Microsoft's litigation conduct:
December 14, 2009, R & R at 21-24 (citations and footnotes omitted).
Microsoft objects to this entire discussion by the Special Master "as irrelevant and not proper extrinsic evidence at all." Microsoft's Objections to December 14, 2009, R & R at 15 (docket entry 520). As stated by Microsoft,
Id. at 16. Microsoft continues:
Id. at 17.
Markman, 52 F.3d at 980.
True, the three forms of extrinsic evidence listed by the Markman court (testimony, dictionaries, and treatises) do not constitute an exhaustive list of allowable extrinsic evidence. However, neither the Special Master nor Hochstein cite any legal authority that would permit the Court to consider a party's litigation conduct— namely, a party's silence regarding a potential
415 F.3d at 1314 (citations omitted). This list does not include litigation conduct.
The Court is unaware of any court that has considered a party's silence in this regard as evidence, nor does Harmon, in his treatise, mention litigation conduct in his discussion of allowable extrinsic evidence. See Harmon, Patents & the Federal Circuit, supra, at § 6.4, pp. 385-394 (discussing allowable extrinsic evidence). This is not a contracts case where the legal maxim "silence is acceptance," might apply. See Restatement (Second) of Contracts § 69 (1981).
Microsoft's failure to raise the present non-infringement defense earlier is not proper extrinsic evidence. The Court sustains Microsoft's third objection regarding its litigation conduct.
The evidence in this case consists of intrinsic evidence, and extrinsic evidence in the form of expert testimony, dictionary definitions, and, purportedly, Microsoft's litigation conduct.
With regard to the intrinsic evidence, the disputed term "electrically connected" is used seven times in the patent. In five of the seven uses, the term is used consistently in a narrow manner to describe a specific type of connection—one by an electrically conductive wire or line.
The two remaining uses of the term appear in the title of the patent, "Apparatus and Method for Electrically Connecting Remotely Located Video Games." Hochstein argues that the disputed term is used in the title to describe a connection utilizing electromagnetic induction, and therefore the title's use of the term is inconsistent with how the term is used elsewhere. Microsoft, on the other hand, argues that the title is not relevant to the definition, but in any event the term is not used in the title to describe a connection by means of electromagnetic induction; rather, the manner in which the term is used in the title is fully consistent with how it is used elsewhere. The Special Master "strongly favors" Hochstein's position, but concludes:
December 14, 2009, R & R at 12-13.
In his April 4, 2010, Supplement to the December 14, 2009, R & R, the Special Master states that, "upon further reflection, [he is] inclined to give [the title] a little more weight." April 4, 2010, Supplement to December 14, 2009, R & R at 3. The Court is not so inclined. The way in which the title is worded is ambiguous because it does not say to what the "remotely located video games" are being electrically connected. Given the context of the patent, the Special Master asserts that remotely located video games are being connected to each other, a connection that must involve electromagnetic induction. Microsoft argues the title could mean that each remotely located game is "electrically connected" to the video game communicator, a connection that would not involve electromagnetic induction. It is not possible to conclude with ample certainty which interpretation was intended. The title is ambiguous in its use of the disputed term. In any event, the Court is not permitted to rest its claim construction analysis on the title. See Pitney Bowes, 182 F.3d at 1312-1313.
The Court reiterates that it need not evidence supports its conclusion.
The extrinsic evidence consists of (1) the parties' technical experts, Dr. Macedonia for Microsoft, and Dr. Matheson for Hochstein, (2) dictionary definitions, and (3) the litigation conduct of Microsoft. Taking these three sources in reverse order, the Court does not give any weight to the litigation conduct of Microsoft because no one has cited any authority whatsoever that permits the Court to consider this.
The dictionary definitions are minimally helpful and, in any event, are not entitled to great weight in accordance with Phillips. One definition (Microsoft's) unequivocally excludes electromagnetic induction from the scope of "electrically connected." It is not clear from the other definition— the one offered by Hochstein—whether electromagnetic induction is encompassed within the meaning of "electrically connected" since the definition "is more generic and does not specifically address electromagnetic induction or isolation transformers." December 14, 2009, R & R at 26.
With regard to expert testimony, the Special Master and Hochstein assert that Dr. Macedonia admitted, before the dispute shifted from radio waves to electromagnetic induction, that "electrically connected" encompasses electromagnetic induction. For the reasons stated above, the Court does not agree. In the end, the Court is left with the rival opinions of two experts who stay true to the litigation positions of their respective clients.
For the reasons stated above, the Court construes the term "electrically connected" to exclude "electromagnetic induction" from its scope. This is because, as the Special Master correctly found in his December 14, 2009, R & R, the patent consistently uses the term "electrically connected" in a narrow sense to describe a specific type of connection that does not involve a gap, the patent never uses the term "electrically connected" to describe a connection by means of electromagnetic induction, and the patent consistently uses terms other than "electrically connected," such as "connected" (without the "electrically" qualifier) or "coupled," to describe connections over a gap in a transformer. Moreover, the extrinsic evidence in this case, even if admissible, does not aid the
Hochstein's Motion for Reconsideration is denied; this case is dismissed.
IT IS SO ORDERED.
Special Master's Report and Recommendation, June 30, 2009, p. 14 (emphasis in original).
Microsoft asserts that "electrically connected" is an example of a term covered by the Federal Circuit's observation in Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir. 2005) (en banc):
The Court agrees. Nevertheless, the Court will conduct a comprehensive analysis.
The Court agrees with Microsoft that the Special Master's analysis regarding capacitors should be disregarded because the record is undeveloped with regard to whether capacitors and transformers are analogous in the sense asserted by the Special Master and Hochstein.
