Holmberg v. United States

In the United States Court of Federal Claims

No. 14-284C

(Filed: January 12, 2016)

FOR PUBLICATION

************************************

*

LARRY HOLMBERG, *

*

Plaintiff, *

* Claim Construction; Markman v. Westview

* Instruments, Inc., 517 U.S. 370 (1996);

v. * Phillips v. AWH Corp., 415 F.3d 1303

* (Fed. Cir. 2005)

THE UNITED STATES, *

*

Defendant, *

*

and *

*

L-3 COMMUNICATIONS CORP. *

*

. Third-Party Defendant. *

*

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ORDER AND OPINION ON CLAIM CONSTRUCTION

DAMICH, Senior Judge

This case arises out of Plaintiff Larry Holmberg’s allegation that Defendant, the

United States, has violated 28 U.S.C. § 1498 through the use or manufacture of the

invention described in United States Patent Nos. 6,988,332 (“the 331 patent”) and

7,100,321 (“the 321 patent”). Specifically, the alleged violation arises from Defendant’s

use of an allegedly infringing product produced by Third-Party Defendant L-3

Communications Corp. (“L-3”). Both patents are entitled “Range Finder” and relate to a

device that can be mounted to a firearm that includes a display which conveys to the user

the distance of a target. This matter is presently before the Court on the parties’ briefs

regarding claim construction, which include third-Party Defendant L-3’s argument that

claims 12 and 1 of the ‘321 Patent are indefinite. A claim construction hearing was held

on September 16, 2015, where the Court considered the parties’ arguments with respect

to the intrinsic and extrinsic evidence. The Court decided that expert testimony was not

necessary, and the parties did not present expert witnesses.

After fully considering the parties’ arguments, the Court’s interpretation of the

disputed claim terms and phrases follows.

I. The Patented Technology

a. ‘331 Patent

The ‘331 patent teaches a range finder where the range finder is mounted to a

weapon. A portion of the display of the range finder is positioned in front of a portion of

the scope on a firearm. The range finder calculates the distance of a target and then

displays that distance to the user through the optics of the scope, allowing the user to

ascertain the distance of the target while still viewing it through the scope. The following

picture from the ‘331 patent illustrates this method – 202 is a liquid crystal display

(“LCD”) screen, 204 is the indicia of the distance of a target, and 806 is the end of a

scope:

b. ‘321 Patent

The ‘321 Patent also teaches a range finder. The ‘321 Patent is a continuation of

the application which became the ‘331 Patent. Both patents have the same specification

and the same drawings. For the purposes of the instant claim construction, there is no

substantive difference between the two patents beyond noting which claims came from

which patent.1

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Both patents in their summaries state that the embodiments are “a method” of

“using” or “operating” a range finder. The ‘321 patent, however, claims “[a] range finder

comprising. . .” while the ‘331 patent claims “[a] method of using a rangefinder.” ‘321

Patent, col. 1 ll. 55 & 62; col 6, 9; ‘331 Patent, col. 1 ll. 44 & 52; col 6 ll. 15.

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II. Claim Construction – Legal Standard

Claim construction is a question of law. Markman v. Westview Instruments, Inc.,

517 U.S. 370, 388-391 (1996). When the trial court uses only intrinsic evidence (such as

the patent claims and specification, and the patent prosecution history) to construe patent

claims, “the judge’s determination will amount solely to a determination of law, and the

Court of Appeals will review that construction de novo.” Teva Pharm. USA, Inc. v.

Sandoz, Inc., 135 S.Ct. 831, 841 (2015). When the trial court utilizes extrinsic evidence

to resolve a “subsidiary factual dispute that helps the court determine the proper

interpretation of the written patent claim,” the Court of Appeals will accept the district

court’s finding unless it was “clearly erroneous.” Id. at 841-843. Claim construction is

not subject to a burden of proof or evidentiary burden. E.g. Catalina Marketing Int’l, Inc.

v. Coolsavings.com, Inc., 289 F.2d 801, 807 (Fed. Cir. 2002).

Generally, a trial court need not construe claim terms whose meaning the parties

do not dispute. E.g. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,

1362 (Fed. Cir. 2006). Further, a court construing patent claim terms need not adopt the

constructions proposed by the parties, and should determine its own constructions if it

determines the parties’ proposals to be legally flawed. E.g. Praxair, Inc. v. ATMI, Inc.,

543 F.3d 1306, 1323-24 (Fed. Cir. 2008). But see Yoon Ja Kim v. ConAgra Foods, Inc.,

465 F.3d 1312, 1319 (Fed. Cir. 2006) (“While we may have the authority to adopt claim

constructions which have not been proposed by either party we should be hesitant to do

so.”). The disputed claim terms need only be construed sufficiently to resolve the

particular issues in the case at hand. E.g. Vivid Techs., Inc. v. Am. Science & Eng’g, Inc.,

200 F.3d 795, 803 (Fed. Cir. 1999).

“It is a bedrock principle of patent law that the claims of a patent define the

invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp.,

415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citation and internal quotation marks

omitted). Accordingly, “[c]laim construction begins and ends in all cases with the actual

words of the claim.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d

1249, 1254 (Fed. Cir. 2010) (citation and internal quotation marks omitted). However,

claim terms should not be construed one way during prosecution and another way during

claim construction in litigation. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384

(Fed. Cir. 2005).

As a general matter, “[w]hether a term appearing in a patent claim is subject to

limitations beyond its [ordinary] meaning is determined in the context of the invention

described in the specification, the prosecution history, and the prior art.” Norian Corp. v.

Stryker Corp., 363 F.3d 1321, 1326 (Fed. Cir. 2014); see also Teleflex, Inc. v. Ficosa N.

Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002) (“[C]laim terms take on their ordinary

and accustomed meanings unless the patentee demonstrated [in the intrinsic evidence] an

intent to deviate from the ordinary and accustomed meaning . . .”); Alloc, Inc. v. Int’l

Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003) (“[T]o determine claim meaning, a

court immerses itself in the specification, the prior art, and other evidence, such as the

understanding of skilled artisans at the time of the invention, to discern the context and

normal usage of the words in the patent claim.”).

To sufficiently construe the disputed claim terms, the level of ordinary skill in the

relevant art must first be determined. E.g. Phillips, 415 F.3d 1303. After the person of

ordinary skill in the art is defined, intrinsic evidence such as the patent specification and

file history is considered in order to construe the disputed terms. Id. If intrinsic evidence

is not sufficient to construe the disputed terms, extrinsic evidence such as dictionary

definitions and prior art is considered. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d

1576, 1584 (Fed. Cir. 1996).

III. Person of Ordinary Skill in the Art (POSA)

The Government argued that the POSA would have “a degree in electrical

engineering, optics, or physics, and two to three years of work experience in the art.”

Defendant’s Brief at 21 (“Def.’s Brief”). Plaintiff pointed out that the Government’s

definition of the POSA was so strict as to exclude the inventor and that the invention was

not directed to the inner-workings of the rangefinder. Pl.’s Reply at 2. Instead, the

Plaintiff argued that the POSA, like the inventor, need only have “several years of

experience as a sniper in the Army.” Id. Third-Party Defendant, L-3 defines POSA as

“one who would have had a degree in electrical engineering, optics, or physics, and 2 - 3

years of work experience in the field of the invention (rangefinders and weapons scopes).

Ex. 1, Schwartz, ¶10.” Third-Party Defendant’s Response (“3PD Response”) at 8 fn6.

Additionally, L-3 defines POSA as “a hypothetical person who is presumed to have

known the relevant art at the time of the invention.” Id. at 45 fn18.

The terms to be construed are words commonly used in the English language. It

is not evident to the Court that they have any particular, specialized meaning to a POSA

of any of the above definitions. Thus, the Court declined to hear expert testimony. As

the Federal Circuit has noted:

In some cases, the ordinary meaning of claim language as

understood by a person or ordinary skill in the art may be readily

apparent even to lay judges, and claim construction in such cases

involves little more than the application of the widely accepted

meaning of commonly understood words.

Phillips, 415 F.3d at 1314.

The Court intends to proceed in this fashion.

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IV. Discussion

The parties have asked the Court for claim construction on four separate terms

appearing in the ‘331 and ‘321 patents: “scope,” “displaying,” “viewable,” and

“readable.” The Court will address these terms in order.

A. “Scope”

The term “scope” appears in asserted claims 1 and 2 of the ‘331 patent and

asserted claims 1 and 12 of the ‘321 patent. Plaintiff argues that the term “scope” is a

generic term which requires no construction and should be ascribed its plain and ordinary

meaning, which is “viewing instrument.” Plaintiff’s Claim Construction Brief (“Pl.’s

Brief”) at 3. Defendant and Third-Party Defendant disagree and argue that the “scope”

should be defined as a shortened version of the word “telescope,” i.e., an optical

instrument with magnification properties.

Claim 1 of the ‘331 patent reads:

A method of using a range finder, the method comprising: coupling the

range finder to a weapon having an associated scope, the range finder and

the scope being physically separate operating devices; positioning at least

part of a display of the range finder in front of a select portion of the

associated scope; activating the range finder; determining the distance to a

target; and displaying the distance to the target through the optics of the

scope.

‘331 Patent, col. 6 ll. 15-26. Claim 2 reads “The method of claim 1, further comprising:

displaying the distance to the target outside the optics of the scope.” Id. at col. 6 ll. 27-29.

Similarly, claim 1 of the ‘321 patent reads “A range finder comprising: a range

finder circuit; a display electrically connected to the range finder circuit; and a mounting

structure to mount the range finder to a firearm such that a portion of the display is

viewable through [sic] scope coupled to the firearm.” ‘321 Patent, col. 6 ll. 9-15. Claim

12 reads “A range finder comprising; a range finder circuit; a display electrically coupled

to the range finder circuit; the display positioned such that a displayed distance is

readable through an existing scope mounted to a weapon.” Id. at col. 6 ll. 52-59.

For the reasons set forth below, the Court will adopt Plaintiff’s construction of the

term “scope” as meaning “a viewing instrument.”

a. The Claim Term Read in Light of the Specification

The starting point in claim interpretation is the ordinary and customary meaning

of the claim. (“We have frequently stated that the words of a claim are generally given

their ordinary and customary meaning.’’ Phillips, 415 F.3d at 1312 (internal quotation

and citations omitted)). But a claim is to be construed in light of the specification. (‘‘[I]t

is fundamental that claims are to be construed in the light of the specifications and both

are to be read with a view to ascertaining the invention.’’ Id. at 1316 (internal quotation

and citation omitted)).

After reviewing the patents-in-suit, the Court concludes that there is nothing in

the patents to show that Holmberg intended the term “scope” to be a shortened version of

the word “telescope.” As Plaintiff astutely points out, while the patents-in-suit contain

numerous uses of the “scope,” “telescope” is only used once in each patent – at the

beginning when referring to prior art. Pl.’s Brief at 7. Thus, from looking at the patents-

in-suit, it does not appear that Holmberg intended to act as his own lexicographer and

define “scope” to mean “telescope” or to imply any requirement of magnification.

b. Dictionary Definitions

A review of the proffered dictionary definitions sheds light on the ordinary and

customary meaning of “scope.” All three parties cite to the Merriam-Webster Collegiate

Dictionary, although for different editions, namely, 2000, 2001, and 2003. Tellingly, the

core definition of all three editions is “an instrument for viewing.” Merriam-Webster’s

Collegiate Dictionary (10th ed. 2000); Merriam-Webster’s Collegiate Dictionary (10th

ed. 2001); Merriam–Webster’s Collegiate Dictionary (11th ed. 2003). Furthermore, each

of these definitions gives examples of various kinds of scopes, namely, “telescope,”

“radarscope,” “microscope.” Before giving the set of examples, each definition inserts

“as.” For example, the 2001 edition (cited by the Government) states: “an instrument (as

a telescope or radarscope) for viewing.” Def.’s Response at 25 (quoting Merriam-

Webster’s Collegiate Dictionary (10th ed. 2001)). Thus, “scope” is the genus, and the

examples are species. In other words, a telescope is a kind of scope. This external

evidence bolsters the Court’s conclusion that the specification does not indicate that the

term “scope” in the claims means “telescope.” (“Within the class of extrinsic evidence,

the court has observed that dictionaries and treatises can be useful in claim construction.”

Phillips, 415 F.3d at 1312 (internal citations omitted)).

c. The phrase “optically adapt” is not limited to reversing magnification.

The only argument contra that gives this Court pause is the reference in the ‘331

patent to “optically adapted,” which—at least initially--suggests magnification, as in a

telescope. Specifically, Defendant and Third-Party Defendant argue that because the

specification of the ‘331 patent states that indicia displayed on the screen of the device

“is optically adapted so the user can read the conveyed distance through the scope,” this

must mean that “scope” is to be understood as meaning “telescope.” Def.’s Response at

22. It is argued that the adaptation is required because “the scope has magnification, and

the display of the range finder located in front of the scope is in a different depth of field

than the intended target” and that “without the optical adaptation described in the

specification, the indicia of the display would be out of focus.” Id. at 23. See also 3PD

Response at 14 (“In order to ‘reverse’ the magnification of the scope, the patent

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specification discloses that the rangefinder display is ‘optically adapted’ so that the

conveyed distance to the target can be read through the scope by the user.”).

The Court holds that both Defendants’ argument must fail because there is

nothing in the patent specification that compels the conclusion that “optically adapt”

would be synonymous with reversing magnification in this instance. “Optically adapt” is

a vague term which, as Plaintiff notes, could mean that the indicia is visually adapted in

the context of the two patents, including the size and orientation of the indicia rather than

only the magnification. Pl.’s Reply at 9-10. Thus, the Court is not persuaded that

“optically adapt” should be read as narrowly as Defendants would like. To do so would

be to read limitations from a preferred embodiment into the claims, a practice warned

against by the Federal Circuit. See Phillips, 415 F.3d at 1320 (noting that reading a

limitation from the written description into the claims is “one of the cardinal sins of

patent law”).

d. Holmberg’s references to prior art and the prosecution history does not

limit the term “scope” to mean “telescope.”

Defendant’s and Third Party Defendant’s arguments about prior art must also fail.

Defendant’s argument begins with an interpretation of the background section of the ‘331

patent:

Range finders can be a useful tool when hunting for game.

A ranger [sic] finder conveys the distance to an object (game

target). This information is helpful to a hunter because it allows a

hunter to determine if the target is beyond the range of a firearm

or bow. Knowing the distance to a target also aids the hunter in the

placement of the sight of the firearm or bow. For example, if the

target is a great distance from a firearm, a hunter can raise the sight

of the firearm over the target a select distance to compensate for

the trajectory of a projectile (bullet) fired from the firearm. The

distance found by the range finder can aid the hunter in

determining how much the sight should be raised over the target.

’331 Patent, Gov. Ex. 1 at A13, col. 1 ll. 16-27.

Defendant sees in this passage an implication that range finders are used in

situations where the hunter is far away from the target. Defendant also notes that the

background section distinguishes the invention from “telescopes incorporating range

finder circuits [that] are generally heavy bulky and expensive to purchase.” ’331 Patent,

Gov. Ex. 1 at A13, col. 1 ll. 28-32. Defendant concludes that “[g]iven these statements

about the prior art in the specification, the claim term ‘scope’ should be construed to

mean an optical instrument having magnification properties.” Def.’s Response at 22.

Defendant further argues that its proposed construction is consistent with the

prosecution history of the ‘331 Patent. Initially, the USPTO examiner rejected

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Holmberg’s application under 35 U.S.C. § 102(b) “as being clearly anticipated by Lorey

et al.” Id. at 23 (referencing U.S. Patent No. 4,993,833 (“the ‘833 Patent” or “the Lorey

patent.”) Indeed, the language – “telescopes incorporating rangefinders [sic] circuits are

generally heavy, bulky and expensive to purchase” – is taken from Holmberg’s response to

the USPTO rejection of his patent. Id.

Third-Party Defendant also keys in on this language, arguing that it is customary

to use the long form of a word before subsequently abbreviating it – in this case, the word

“telescope” was used in the background section before the term “scope” was used

subsequently throughout the patent; thus, it is argued that Holmberg understood that his

device contemplated only telescopes and each subsequent use of “scope” should be

interpreted to mean “telescope.” 3PD Response at 18.

While it is true that in his response to the rejection over the Lorey reference,

Holmberg noted that the invention taught in the ‘331 Patent was an upgrade over Lorey

(a patent which clearly anticipates a telescopic scope on a firearm), that does not mean, as

Defendants’ would like to believe, that Holmberg specifically equated scopes and

telescopes during prosecution. As Plaintiff correctly argues, the cited prior art provides

no basis for excluding non-magnifying scopes from the construction of “scope.” Pl.’s

Reply at 19. Holmberg was placed in the position of having to differentiate his invention

from the prior art, which just happened to relate to a telescopic sight. This does not mean

that Holmberg intended to limit the term “scope” in his patents to mean the same thing as

“telescope” in the Lorey patent. Indeed, the bone of contention between the applicant

and the examiner over the Lorey reference was whether the range finder was integrated

with the scope or separate from it. It was not whether either “scope” had magnification

properties.

e. POSA would not understand the term scope” to only refer to devices with

magnification properties.

Finally, the Court does not believe that a POSA would, when dealing with devices

to be attached to firearms, that “scope” must always mean “telescope.” This position is

supported by the unequivocal fact that several different types of sighting devices exist to

be coupled to firearms. One such device is certainly a telescopic sight (which can either

be a fixed magnification or of a variable magnification). Pl.’s Brief at 11; Def.’s

Response at 27. However, another such device is what Plaintiff refers to as a 1x

Riflescope – namely a sighting device which offers no magnification properties.

Although such devices may not be as common as telescopic sights, they undoubtedly

exist and in fact are used by the military because they offer specific advantages that a

telescope would not. Pl.’s Brief at 18; Transcript of Oral Argument at 9 (October 1,

2015) ECF No. 61. A 1x Riflescope, for example, allows a user to focus on a target with

one eye while allowing the user to keep his or her other eye open to survey the

surroundings, which can be useful in close combat situations.

Moreover, given the plain and ordinary meaning of “scope,” if POSA were asked

whether or not a weapon had a “scope” coupled to it, it is unlikely that that person would

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check the device for magnification properties before being able to answer. Rather, that

person would likely see that a viewing device was coupled to the weapon and answer in

the affirmative that a scope was attached to the weapon, regardless of whether the device

had magnification properties. Furthermore, some sights feature a variable zoom, starting

at 1x (no magnification) but allowing the user to adjust the sight such that it becomes a

telescopic sight. In this instance, the device can be both a 1x Riflescope or a telescopic

sight, depending on the preference of the user. Accordingly, a POSA would not define

“scope” to solely refer to devices with magnification capabilities.

The Court thus agrees with Plaintiff’s proposed construction that “scope” should

be defined as a “viewing instrument.”

B. “Displaying,” “Viewable,” and “Readable”

The parties also dispute the meaning of three additional terms “displaying,”

“viewable,” and “readable.” The phrase “displaying the distance to the target through

optics of the scope” appears in claim 1 of the ‘331 patent (emphasis added). The phrase

“a portion of the display is viewable through a scope coupled to the firearm” appears in

claim 1 of the ‘321 patent (emphasis added). The phrase “the display positioned such

that a displayed distance is readable through an existing scope mounted to a weapon”

appears in claim 12 of the ‘321 patent (emphasis added). The proposed construction of

the parties is as follows:

"Displaying the distance to the target through the optics of the scope" ('331Patent, claim 1)

Holmberg 's Construction United States' Construction L-3's Construction

No construction is necessary. Plain and ordinary meaning, Conveying the distance to a

The plain and ordinary meaning which is the measured distance target such that it is readable

of the term "displaying"(i.e. appearing on the display of the through a scope

"showing") should apply so the rangefinder is able to be read

full phrase is "showing the by the user while looking

distance to the target through through the scope.

the optics of the scope."

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"a portion of the display is viewable through the scope coupled to the firearm” ('321Patent,

claim 1)

Holmberg's Construction United States' Construction L-3's Construction

No construction is Plain and ordinary meaning, The claim term is indefinite:

necessary. The plain and which is the measured

ordinary meaning of the distance appearing on the Alternatively:

term "viewable" (i.e. display of the rangefinder a portion of the display

"capable of being viewed") is able to be read by the conveying the distance to a

should apply so the full user while looking through target is readable through a

phrase is "a portion of the the scope. scope mounted to the firearm

display is capable of being

viewed through the scope

coupled to the firearm."

“The display positioned such that a displayed distance is readable through an existing scope

mounted to a weapon” ('321Patent, claim 12)

Holmberg's Construction United States' Construction L-3's Construction

No construction is Plain and ordinary meaning, The claim term is

necessary. The plain and which is the measured distance indefinite.

ordinary meaning of the appearing on the display of the

term "readable" (i.e. rangefinder is able to be read

Alternatively:

"capable of being read") by the user while looking

should apply so the full through the scope. L-3 agrees with the

phrase is "the display government’s construction.

positioned such that a

displayed distance is

capable of being read

through an existing scope

mounted to a weapon."

The fundamental disagreement between the parties is that Defendant argues that

the three terms should all be ascribed the same definition while Plaintiff argues that all

three phrases should be ascribed separate meanings as they are three distinct phrases.

Additionally, as will be discussed infra, Third-Party Defendant believes that two of the

claims are indefinite.

Defendant argues that their constructions are based on the claim phrases in their

entirety rather than words in isolation, and cites to Phillips and Hockerson-Halberstadt,

Inc. v. Converse, Inc., 183 F.3d 1369 (Fed. Cir. 1999) for the proposition that claim

construction should interpret the entire claim in context, rather than a single element in

isolation. Def.’s Response at 32-33. In essence, Defendant believes that Plaintiff’s

proposed construction goes against the actual purpose of the invention – that is, to allow a

user to know the distance of a target. It is argued that if Plaintiff’s construction is

allowed, it would lead to an embodiment of the invention where it would be possible for

a user to “view” the indicia but not be able to “read” it, which Defendant argues is

antithetical to the intention.

The Court agrees with Plaintiff that the terms should be ascribed their plain and

ordinary meanings. There is a “general presumption that different terms have different

meanings” in the claims of a patent. Chicago Board Options Ex., Inc. v. Int’l Sec. Exch.,

LLC, 677 F.3d 1361, 1379 (Fed. Cir. 2012) (citing CAE Screenplates, Inc. v. Heinrich

Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000)). “Display,” “view,”

and “read” are three different words which should have three different definitions,

especially considering the claims in which they are found are not three identical claims.

For example, claim 1 of the ‘321 patent does not speak at all to a distance being viewable

– rather, all that it specifies is that a portion of the display (i.e., the LCD screen itself) is

capable of being viewed through the scope. This claim is silent as to the display of a

target distance, thus there is no reason to read the distance display into this claim as

Defendant seems to suggest should be done. There is no evidence to suggest that

Holmberg intended for all three terms to have the same meaning when writing them.

Accordingly, the Court will adopt Plaintiff’s proposed construction of the terms

“displaying,” “viewable,” and “readable.”

C. Indefiniteness

Third-Party Defendant L-3 also argues that the claims 12 and 1 of the ‘321 Patent

are indefinite because they claim multiple statutory classes – an apparatus and a method

of using an apparatus.2 L-3 cites to IPXL Holdings, LLC v. Amazon.com, Inc. for the

proposition that when a patent claim attempts to claim multiple statutory classes under 35

U.S.C. § 101, a patent claim can be found indefinite. 430 F.3d 1377, 1384 (Fed. Cir.

2005). L-3 argues that because both claims require a particular use of the range finder in

order for there to be infringement, L-3 has no way of knowing whether the product it is

selling to the government infringes Holmberg’s patents because infringement does not

occur until a range finder is put into a particular configuration. 3PD Response at 38. For

the reasons set forth below, L-3’s arguments must fail.

In Microsoft Corp. v. i4i Ltd. P’ship, the Supreme Court held, in affirming the

Federal Circuit, that invalidity required proof by clear and convincing evidence. 131 S.

Ct. 2238, 2243 (2011) (“In asserting an invalidity defense, an alleged infringer must

contend with the first paragraph of § 282, which provides that ‘[a] patent shall be

presumed valid’ and ‘[t]he burden of establishing invalidity . . . rest[s] on the party

asserting such invalidity.’ Under the Federal Circuit’s reading of § 282, a defendant

seeking to overcome this presumption must persuade the factfinder of its invalidity

defense by clear and convincing evidence.”) (internal citations omitted).

This argument is unique to Third-Party Defendant – the Government does not

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mention indefiniteness in its claim construction brief.

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L-3 first contends that Claim 12 of the ‘321 Patent claims both an apparatus and a

method because the limitation stating “the display positioned such that a displayed

distance is readable through an existing scope mounted to a weapon” requires a particular

use of the range finder by the operator. 3PD Response at 39. However, L-3’s argument

is unavailing because the claim does not speak to a method of using the range finder. The

limitation is a structural limitation – it speaks to where the display is positioned. It does

not actually require that someone read the distance through the scope (i.e., if the

limitation stated that the display is positioned such that a displayed distance is read by the

user through the scope). As a structural limitation, it only describes how the range finder

is constructed, not how an individual has to use it.

L-3’s argument about Claim 1 of the ‘321 Patent fails for the same reasons as

above. The limitation “a mounting structure to mount the range finder to a firearm such

that a portion of the display is viewable through the scope coupled to the firearm” is also

a structural limitation. It is not requiring a user to mount the range finder to a firearm, it

is saying that there must be part of the range finder that allows for it to be mounted to a

firearm. Holmberg is not claiming a method such as “mounting the range finder to a

firearm.”

Contrary to L-3’s arguments, it would not be impossible for someone to know

whether a different range finder might infringe the patents-in-suit. For example, Claim 1

of the ‘321 Patent would be infringed if a range finder had a mounting structure that

allowed it to be mounted to a firearm such that part of the display covers the scope.

Claim 1 would not be infringed by a range finder which allowed for mounting on a

firearm where no part of the display covered the scope.

The Court thus holds that L-3’s arguments fail to meet the clear and convincing

standard in order to find a claim indefinite. The noted claims are structural limitations of

the range finder and not method claims.

V. Conclusion

The disputed terms of the ‘331 and ‘321 patents have been interpreted by the

Court in this opinion and order. The Court will adopt the Plaintiff’s proposed

construction on all disputed terms. Additionally, the Court holds that claims 12 and 1 of

the ‘321 patent are not invalid due to indefiniteness.

s/ Edward J. Damich

EDWARD J. DAMICH

Senior Judge

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