Canvs Corporation v. United States

In the United States Court of Federal Claims

No. 10-540 C

(E-Filed: March 31, 2016)

)

CANVS CORPORATION, )

)

Plaintiff, )

Patent case; claim construction

)

for U.S. Patent No. 6,911,652;

v. )

single term in dispute

)

THE UNITED STATES, )

)

Defendant. )

)

Joseph J. Zito, Washington, DC, for plaintiff.

Michel E. Souaya, Trial Attorney, with whom were Benjamin C. Mizer, Principal Deputy

Assistant Attorney General, and John Fargo, Director, Commercial Litigation Branch,

Civil Division, United States Department of Justice, Washington, DC, for defendant.

OPINION AND ORDER

CAMPBELL-SMITH, Chief Judge

This is a patent infringement action brought, pursuant to 28 U.S.C. §1498(a), by

CANVS Corporation (CANVS or plaintiff) against the United States, acting through the

Department of the Army (government or defendant).1 Compl., ECF No. 1. CANVS

1

Subsection 1498(a) of Title 28 provides:

Whenever an invention described in and covered by a patent of the United

States is used or manufactured by or for the United States without license

of the owner thereof or lawful right to use or manufacture the same, the

owner's remedy shall be by action against the United States in the United

States Court of Federal Claims for the recovery of his reasonable and entire

compensation for such use and manufacture.

28 U.S.C. § 1498(a) (2012).

alleges the government unlawfully used or manufactured an invention covered by

plaintiff’s U.S. Patent No. 6,911,652 (the ‘652 patent or patent-in-suit). The ‘652 patent

is directed toward a device optimizing the user’s ability to see in low-light conditions and

is particularly useful in military applications. Compl. ¶¶ 3, 15-19; see also ‘652 patent,

ECF No. 59-1. Claims four and five of the patent-in-suit survived summary judgment on

the ground that a genuine dispute of material fact remained as to whether the

“independent brightness adjustment” feature of the patent-in-suit was anticipated by the

prior art. CANVS Corp. v. United States, 114 Fed. Cl. 59 (2013), amended in part by,

116 Fed. Cl. 294 (2014).

Now before the court are the parties’ briefs on claim construction of the term “an

optical input structured to define a line of sight” (Disputed Term).

I. Background

Plaintiff’s ‘652 patent was filed with the United States Patent and Trademark

Office on February 20, 2003 and issued on June 28, 2005. The invention described by

the patent-in-suit is a “Low Light Imaging Device” which enhances the user’s ability to

see in low-light and no-light conditions through the use of a photon image intensifier and

a thermal imager. See, e.g., ‘652 patent at [57]. A detailed description of the invention

claimed by the ‘652 patent has been provided in previous decisions of this court. See

CANVS, 116 Fed. Cl. at 297-98; CANVS, 114 Fed. Cl. at 62-63.

The patent-in-suit consists of seven claims, including three dependent claims

which rely upon claim one. This court previously invalidated five of the seven claims by

partial summary judgment finding that they were anticipated by prior art, CANVS, 116

Fed. Cl. 294, leaving only claims four and five to be considered for infringement

purposes. Defendant has requested claim construction of the Disputed Term, “an optical

input structured to define a line of sight,” which appears in both claims four and five of

the ‘652 patent. Pl.’s 2d Claim Constr. Br. (Pl.’s 2d Br.), ECF No. 135; Def.’s 2d Claim

Constr. Br. (Def.’s 2d Br.), ECF No. 136; Def.’s Resp. 1, ECF No. 142. More

specifically, the Disputed Term, underlined below, appears in claim one – upon which

claim four depends – and in claim five.

Taken together with claim one, claim four provides:

1. A low light imaging device comprising:

a) an optical input structured to define a line of sight;

2

b) a thermal imaging assembly responsive to radiation signatures disposed within

said line of sight;

c) an image intensification assembly responsive to photons at least within said line

of sight;

d) said thermal imaging assembly structured to generate a real time thermal image

representative of said radiation signatures;

e) said image intensification assembly structured to generate a real time enhanced

photon based image;

f) an image adjustment assembly including a thermal image adjustment assembly

and a photon image adjustment assembly;

g) said thermal image adjustment assembly structured to adjust an intensity of said

thermal image;

h) said photon image adjustment assembly structured to adjust said image

intensification assembly so as to adjust an intensity of said enhanced photon based

image generated thereby;

i) said thermal image adjustment assembly and said photon image adjustment

assembly being structured to be operable independent from one another; and

j) an output image generation assembly structured to combine said thermal image

and said enhanced photon based image to generate a real-time, direct view output

image.

4. A low light imaging device as recited in claim 1 wherein said thermal

image adjustment assembly and said photon image adjustment assembly are

structured to be independently and separately adjusted relative to one

another.

‘652 patent, Claims 1, 4 (emphasis added).

Claim five of the ‘652 patent is an independent claim which provides:

5. A low light imaging device comprising:

a) an optical input structured to define a line of sight;

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b) a first imaging assembly structured to generate a thermal image corresponding

to radiation signatures disposed at least within said line of sight;

c) a second imaging assembly structured to generate an enhanced photon based

image upon detected photons disposed at least within said line of sight;

d) a first image adjustment assembly and a second image adjustment assembly,

said first and said second image adjustment assemblies being operable to adjust

said first and said second imaging assemblies so as to adjust an intensity of said

thermal image and said enhanced photon based image generated thereby;

e) an output image generation assembly structured to combine said thermal image

and said enhanced photon based image to generate a single output image.

‘652 patent, Claim 5 (emphasis added).

II. Procedural History

Plaintiff filed this action on August 11, 2010, alleging infringement of all seven

claims of its ‘652 patent by ten other night vision systems that were manufactured by or

for the United States without license. Compl. 1-2; CANVS Corp. v. United States, 110

Fed. Cl. 19, 25 n.3 (2013) (listing the ten accused devices). Plaintiff’s claims for eight of

the ten accused devices were later dismissed for failure to prosecute. CANVS Corp. v.

United States, 107 Fed. Cl. 100 (2012) (dismissing plaintiff’s claims with respect to

devices three through ten); CANVS, 110 Fed. Cl. 19 (denying reconsideration).

Defendant filed a motion for summary judgment arguing the “invalidity of all

claims of U.S. Patent No. 6,911,652 as anticipated under 35 U.S.C. § 102(e)(1) by U.S.

Patent No. 5,035,472 to Hansen.” Def.’s Mot. 1, ECF No. 59 (internal citations omitted).

The court granted defendant’s motion in part, CANVS, 114 Fed. Cl. at 59, invalidating

claims one through three and claim six as anticipated by the prior art. Granting

reconsideration in part, the court also invalidated claim seven finding it too was

anticipated by the same prior art. CANVS, 116 Fed. Cl. at 294.

The parties agreed that claim construction was not required before the court’s

decision on defendant’s motion for summary judgment. See Def.’s Mot. 2 (adopting

plaintiff’s position that claim construction is not necessary except for the first term of

claim three); see also Pl.’s Claim Constr. Statement, ECF No. 29-1. A schedule for

proceeding with claim construction was set following the court’s summary judgment

decision. Order, ECF No. 96. The parties filed a joint claim construction statement on

October 6, 2014, in which defendant identified fifteen terms needing construction. Jt.

Claim Constr. Statement, ECF No. 104 App’x B.

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While claim construction briefing was underway, defendant filed two motions to

stay proceedings pending an Inter Partes Review (IPR) by the Patent Trial and Appeal

Board (PTAB). See Def.’s 1st Mot. to Stay (Def.’s 1st Mot.), ECF no. 95; and Def.’s 2d

Mot. to Stay (Def.’s 2d Mot.), ECF No. 106. The court denied as premature defendant’s

first motion to stay for IPR because the United States Patent and Trademark Office

(USPTO) had yet to institute an IPR. CANVS Corp. v. United States, 118 Fed. Cl. 587,

589 (2014). The USPTO later issued a decision instituting IPR proceedings. Def.’s 2d

Mot. 2 (citing FLIR Sys., Inc., No. IPR2014–00773 (PTAB Oct. 23, 2014) (“[FLIR Sys.]

demonstrates a reasonable likelihood of prevailing in showing the unpatentability of

claims 1–7 of the ’652 patent.”), ECF No. 106 App’x). On December 19, 2014, the court

granted defendant’s second motion and stayed proceedings pending the IPR by the

PTAB, ECF No. 114.

The stay interrupted the parties’ briefing schedule. Plaintiff’s opening brief on

claim construction was filed prior to the stay, ECF No. 107, but defendant’s responsive

brief was not. In its brief, plaintiff maintained that no terms required construction. In the

alternative, plaintiff proposed a construction for each of the fifteen terms identified by

defendant. P.’s Claim Constr. Br. (Pl.’s 1st Br.), ECF No. 107.

Upon notice of the IPR’s resolution, the court lifted the stay, and the next month

defendant filed its responsive claim construction brief.2 Order, ECF No. 116; Def.’s

Claim Constr. Br. (Def.’s 1st Br.), ECF No. 117. Defendant narrowed its proposal for

construction to five terms – regarded as dispositive of the litigation – relating to the

optical input and line of sight. Compare Jt. Claim Constr. Statement, ECF No. 104

App’x B with Def.’s 1st Br. 2, 18-19, ECF No. 117. In its reply, plaintiff’s focused on

the phrases “optical input” and “line of sight” which were the only phrases in dispute in

the remaining five terms. Pl.’s Reply, ECF No. 118. 3

2

By Joint Status Report, the parties advised that:

The Inter Partes Review of the ‘652 patent in suit has concluded pursuant to

an agreement between Patent Owner CANVS and Petitioner FLIR as part

of a resolution of all disputes between those parties. The agreement

includes a withdrawal of the accusations regarding the Dual-Band

Universal Night Sight (DUNS) device made in this proceeding in the Court

of Claims… The PTAB made no final determinations with respect to

invalidity, and thus Claims 4 and 5 of the '652 patent remain valid and

asserted in this proceeding.

Jt. Status Rep., ECF No. 115.

3

To its reply brief plaintiff attached a new declaration, dated July 23, 2015 and

labeled exhibit N, from its expert, James B. Gillespie, a scientist with three decades of

5

In light of defendant’s new position, the court amended the hearing schedule to

clarify with the parties the extent of the construction deemed necessary. See Order, ECF

No. 124; Order, ECF No. 130. As clarified in the parties’ subsequent briefing, a single

dispositive term was identified for construction (Disputed Term). Def.’s Status Rep.,

ECF No. 132; See generally, Pl.’s 2d Br., ECF No. 135; Def.’s 2d Br., ECF No. 1364;

Def.’s Resp., ECF No. 142; Pl.’s Resp., ECF No. 143.5 Following the submission of

briefs, the parties offered oral argument only at the Markman hearing held on January 21,

2016; no expert witness testimony was presented.6 As explained more fully below, the

court adopts the following construction of the Disputed Term.

experience in the field of night vision technology and Director of Business Development

and Product Development for Northrop Grumman Corporation. See Gillespie Expert

Report 2-3 (Gillespie Rep.) (filed as Ex. C to Pl.’s 2d Br., ECF No. 107-3). Defendant

moved wither to strike Mr. Gillespie’s declaration or in the alternative, defendant moved

to file a responsive expert declaration and surreply brief. Def.’s Mot., ECF No. 119.

Plaintiff responded by withdrawing Mr. Gillespie’s declaration stating that it did not

oppose defendant’s motion to strike it, but it did oppose the filing of additional expert

reports and briefing. Pl.’s Resp., ECF No. 120. Defendant replied reasserting its motion

and requesting further briefing in the alternative. Def.’s Reply, ECF No. 121.

Thereafter, the court struck Mr. Gillespie’s declaration from the record. Order, ECF No.

122.

4

In its November 23, 2015 brief on claim construction, defendant requested

additional term construction. Compare Order, ECF No. 130, and Def.’s Status Rep., ECF

No. 132, with Def.’s 2d Br. 31, ECF No. 136 (“For the reasons stated herein, Defendant,

the United States, respectfully requests that the Court issue an order which adopts

Defendant’s proposed constructions of terms 1, 4, 5, 8 and 9 of the asserted claims of the

patent-in-suit.”). Plaintiff moved to strike those portions of defendant’s brief seeking

construction of terms 4, 5, 8 and 9, because the parties already had agreed to seek

construction of term 1 only (Disputed Term). Pl.’s Mot., ECF No. 137. Defendant

responded stating that it would not seek further construction. Def.’s Resp., ECF No, 138.

The court denied the motion to strike noting that defendant had asked for further

construction in its brief but then clarified in its response to the motion to strike that it

sought construction of term 1 only (Disputed Term). Order, ECF No. 139.

5

For the purposes of this order on claim construction, the court relies on the parties’

clarifying briefs (ECF Nos. 135, 136, 142, 143) and notes that the parties reference the

same set of exhibits throughout their briefs, Exhibits A-M (submitted with ECF Nos. 107,

117, 118, and 135).

6

Appearing for defendant were counsel of record, Michel E. Souaya, and counsel

from the Intellectual Property Division for the Department of Justice, Scott Bolton. Mr.

6

III. Legal Standards for Claim Construction

“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) (quoting Innova/Pure Water, Inc. v.

Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). “The

purpose of claim construction is to ‘determin[e] the meaning and scope of the patent

claims asserted to be infringed.’” O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,

521 F.3d 1351, 1360 (Fed. Cir. 2008) (quoting Markman v. Westview Instruments, Inc.,

52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370 (1996)). The

construction and meaning of patent claims are questions of law for the court. Markman,

517 U.S. at 388–90. Claim construction is reserved exclusively for claim terms in

dispute; the court is not required to construe every claim term of a patent. O2 Micro Int’l

Ltd., 521 F.3d at 1362; accord Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197,

1207 (Fed. Cir. 2010).

When construing patent claims, the court looks first to intrinsic evidence, then if

needed, to extrinsic evidence. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1362

(Fed. Cir. 2014) (“After considering this intrinsic evidence, a court may also seek

guidance from extrinsic evidence such as expert testimony, dictionaries, and treatises.”)

(citing Phillips, 415 F.3d at 1317-18). Intrinsic evidence includes the patent claims and

specification as well as the patent prosecution file history. This 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) (citing

Markman, 52 F.3d at 979). The purpose of consulting the prosecution history in

construing a claim is to "exclude any interpretation that was disclaimed during

prosecution." ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1580 (Fed. Cir.

1988). Accordingly, "where the patentee has unequivocally disavowed a certain meaning

to obtain his patent, the doctrine of prosecution disclaimer attaches and narrows the

ordinary meaning of the claim congruent with the scope of the surrender." Omega

Eng'g., Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003). Such a use of the

prosecution history ensures that claims are not “construed one way in order to obtain their

allowance and in a different way against accused infringers.” Chimie v. PPG Indus., Inc.,

Joel Lofgren from the Department of the Air Force also participated on the side of

defendant. Appearing for plaintiff were counsel of record, Joseph J. Zito, and Luiz Felipe

Oliveira. Johnathan Walkenstein, Chief Executive Officer of CANVS Corporation and

inventor of the patent in dispute, and Dr. Edward Currie from CANVS Corporation were

also in attendance and seated with plaintiff’s counsel.

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402 F.3d 1371, 1384 (Fed. Cir. 2005) (citing Southwall Tech., Inc. v. Cardinal IG Co., 54

F.3d 1570, 1576 (Fed. Cir. 1995).

Extrinsic evidence also can be considered when determining the meaning and

scope of patent claims. Such evidence is “external to the patent and prosecution history,

[and may] includ[e] expert and inventor testimony, dictionaries, and learned treatises.”

Markman, 52 F.3d at 980. In claim construction, the weight given to the extrinsic record

is “less significant than [that given to] the intrinsic record.” Phillips, 415 F.3d at 1317

(quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).

The court may look to extrinsic evidence to resolve the underlying factual issues that

inform the construction of a patent claim (“evidentiary underpinnings”), and make the

requisite findings. Teva Pharm. USA, Inc., 135 S. Ct. at 841-43.

The court need not rely on extrinsic evidence to learn how one of ordinary skill in

the art at the time of invention would construe a claim if such perspective can be

ascertained from the intrinsic record alone. V–Formation, Inc. v. Benetton Group

SpA, 401 F.3d 1307, 1310 (Fed. Cir. 2005) (“[The intrinsic record] usually provides the

technological and temporal context to enable the court to ascertain the meaning of the

claim to one of ordinary skill in the art at the time of invention."). In general, claim terms

are given the ordinary and customary meaning as would be given by one skilled in the art

at the time of invention, when reading the claim terms in the context of the specification

and prosecution history. See Phillips, 415 F.3d at 1313.

There are, however, two distinct exceptions. Thorner v. Sony Computer Entm't

Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Vitronics Corp., 90 F.3d at

1580). The first is the circumstance in which a patentee sets forth a definition by acting

as his own lexicographer (the lexicographer exception). The second is the circumstance

in which a patentee disavows the full scope of a claim term either in the specification or

during prosecution (the disavowal exception). Id.

Invoking the lexicographer exception provides the patentee with the ability to

create new meanings for the terms used in the patent. In order to be recognized as his

own lexicographer, the patentee must “clearly set forth” an alternative definition that

differs from the term’s ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288

F.3d 1359, 1366 (Fed. Cir. 2002).

In contrast, invoking the disavowal exception allows the patentee to narrow the

scope of a term. Without wording in the intrinsic evidence that reflects a clear disavowal,

a patentee is entitled to the “full scope of its claim language.” Home Diagnostics, Inc. v.

LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004).

8

Clarity of intent is needed for a patentee to invoke either the lexicographer or the

disavowal exception. “There are no magic words that must be used, but to deviate from

the plain and ordinary meaning of a claim term to one of skill in the art, the patentee

must, with some language, indicate a clear intent to do so in the patent.” Hill-Rom

Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1373 (Fed. Cir. 2014) cert. denied, 135 S.

Ct. 719 (2014).

When possible, claims are to be construed in a manner that maintains their

validity. But, “where claim language is clear [, the court] must accord it full breadth even

if the result is a claim [that] is clearly invalid.” Tate Access Floors, Inc. v. Interface

Architectural Res., Inc., 279 F.3d 1357, 1372 (Fed. Cir. 2002).

IV. Discussion

The Disputed Term to be construed by the court is found in claim one – on which

claim four depends – and in claim five of the ‘652 patent. Claims four and five are the

only remaining claims in plaintiff’s infringement action.

Disputed Term Plaintiff’s Proposed Defendant’s Proposed

Construction Construction

an optical input None necessary. The entrance aperture and

structured to define optical elements that determine

a line of sight But in the alternative: the imaging line of sight.

The entrance aperture(s) that Def.’s 2d Br. 17.

determine(s) the line of sight

between the low light imaging

device and external objects.

Or

One or more optical inputs

structured to define a single

line of sight between the

device and the tactical

environment. Pl.’s 2d Br. 3.

The parties’ dispute is two-fold. E.g., Def.’s Resp. 1. First, the parties disagree as

to the meaning of “an optical input.” Defendant asserts that these three words allow for

only a single, “entrance aperture.” Defendant asks that the court add the phrase “and

optical elements” when it construes the first part of the Disputed Term.

Plaintiff, on the other hand, argues that the Disputed Term needs no construction

beyond its ordinary meaning. Invoking long established principles of claim construction,

9

plaintiff posits that because the claim’s preamble ends with the word “comprising,” the

subsequent phrase “an optical input” must be open-ended. Thus, plaintiff reasons, the

first part of the Disputed Term allows for more than one optical input.

Second, the parties disagree as to the meaning of the phrase “line of sight” in the

second part of the Disputed Term. While the parties agree that it allows for only a single

line of sight, they dispute the definition of “line of sight” and in turn, the scope of claims

four and five. Relying in part on the report of its expert astrophysicist, Dr. Allen

Waxman, Ph.D., defendant asserts that, as used in the ‘652 patent, the phrase “line of

sight” impermissibly broadens the Disputed Term’s ordinary meaning. Def.’s 2d Br. 18-

21, 26 (quoting Waxman Expert Report 6 (Waxman Rep.) (filed as Ex. F to Pl.’s 1st Br.,

ECF No. 107-6)). Defendant’s argument about the meaning of the phrase “line of sight”

is closely tied to its argument about how many optical inputs are allowed by the ‘652

patent. Based on the definition of “line of sight” cited by Dr. Waxman in his report,

defendant contends that the Disputed Term in the ‘652 patent contradicts itself.

Defendant reasons that each optical input (if more than one were to be allowed) would

have “a [unique] line of sight,” and in contravention of that limiting claim language,

multiple optical inputs would produce multiple lines of sight.

Refuting defendant’s position, plaintiff contends that the court can determine the

ordinary meaning of the Disputed Term from the intrinsic evidence alone. Plaintiff

asserts that as construed, the Disputed Term allows for a single line of sight from

overlapping views of the “tactical environment,” generated by any number of optical

inputs.

The court addresses in turn the parties’ two points of disagreement.

A. “[A]n optical input” is part of an open-ended claim

Defendant asserts that “an optical input,” means that claims four and five allow for

a single optical input only. Def.’s 2d Br. 21. Defendant acknowledges the longstanding

presumption that if a claim preamble ends with the word “comprising,” the articles “a” or

“an” in the claim elements that follow are interpreted to mean “one or more.” But

defendant contends that here, the exception to this presumption applies, and as applied, it

limits the claims at issue to one optical input. Id.; Def.’s Resp. 2-3; Claim Construction

Hr’g Tr. 20 (Tr.), Jan. 21, 2106, ECF No. 152.

In Baldwin Graphic Systems, Inc. v. Siebert, Inc., the Federal Circuit referred to

this longstanding presumption as a rule that has extremely limited exceptions:

That “a” or “an” can mean “one or more” is best described as a rule, rather

than merely as a presumption or even a convention. The exceptions to this

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rule are extremely limited: a patentee must “evince[ ] a clear intent” to limit

“a” or “an” to “one.” The subsequent use of definite articles “the” or “said”

in a claim to refer back to the same claim term does not change the general

plural rule, but simply reinvokes that non-singular meaning. An exception

to the general rule that “a” or “an” means more than one only arises where

the language of the claims themselves, the specification, or the prosecution

history necessitate a departure from the rule.

512 F.3d 1338, 1342-43 (Fed. Cir. 2008) (emphasis added) (citations omitted).

To support its position that the Baldwin exception applies in this case, defendant

contends that more than one optical input would create more than one line of sight and

thus, would give rise to an ambiguity as to the scope of the claims. Def.’s Resp. 3. But,

as addressed below, see section IV.B, it is defendant’s own proposed claim interpretation

that brings about the ambiguity of which defendant complains. Defendant’s suggested

construction does not comport with Baldwin’s own teaching that the presumption of

open-endedness gives way only if there is intentional intrinsic language that is either

exclusive or restrictive. Defendant makes a bare argument without referring to any

particular language in the claims, specification, or prosecution history that would limit

the claims to a single optical input only.

Plaintiff, however, has identified specific language in the specification of the ‘652

patent suggesting that more than one optical input is allowed. Plaintiff points to language

in the specification providing: “The present invention is directed towards a low light

imaging device which includes preferably a single optical input which defines a line of

sight of the device.” Pl.s’ 2d Br. 7 (quoting ‘652 patent, Summary of the Invention, col.

2, [48-53]). The phrase “preferably a single optical input” neither limits nor effects a

disavowal of other embodiments; instead, it indicates that multiple optical inputs are

contemplated.

The construction defendant seeks would require the court to import a limitation

from a preferred embodiment into a claim; this is a disfavored practice. Def.’s Resp. 8;

Phillips, 415 F.3d at 1323 (“[W]e have expressly rejected the contention that if a patent

describes only a single embodiment, the claims of the patent must be construed as being

limited to that embodiment.”) (citing Gemstar-TV Guide Int’l, Inc. v. Int’l Trade

Comm’n, 383 F.3d 1352, 1366 (Fed. Cir. 2004)). “Even when the specification describes

only a single embodiment, the claims of the patent will not be read restrictively unless the

patentee has demonstrated a clear intention to limit the claim scope using ‘words or

expressions of manifest exclusion or restriction.’” Liebel–Flarsheim Co. v. Medrad, Inc.,

358 F.3d 898, 906 (Fed. Cir. 2004) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299

F.3d 1313, 1327 (Fed. Cir. 2002). The intrinsic evidence simply does not support

defendant’s position that an exception to the Baldwin rule applies here. In accordance

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with the Baldwin rule, the phrase “an optical input” is construed as open-ended and thus,

one or more optical input(s) are claimed.

B. “[L]ine of sight” can be construed based on intrinsic evidence alone

Although the parties’ briefs are somewhat convoluted on this point, the parties

clarified at oral argument that they agree that the Disputed Term claims a single “line of

sight.” Plaintiff explains that defendant repeatedly has mischaracterized CANVS’s

position about how many lines of sight are claimed in the second clause of the Disputed

Term (“a line of sight”). Plaintiff asserts that it never has sought to claim more than a

single line of sight. Pl.’s Resp. 1-2. Rather, plaintiff points out, it is defendant that has

made the argument that multiple optical inputs would result in multiple lines of sight.

The argument about these multiples turns on the dictionary definition defendant has put

forward for the phrase “line of sight.”

Relying on the extrinsic evidence of a dictionary definition provided as

background information in Dr. Waxman’s expert report, defendant asserts that in the field

of low-light imaging, the phrases “line of sight” and “field of view” have difference

meanings. The phrase “line of sight” is defined as “the straight line connecting the object

and the objective lens of the viewing device.” Def.’s 2d Br. 26 (quoting Waxman Rep.

6). The phrase “field of view,” however, is defined as “[t]he maximum area that can be

seen through a lens or an optical instrument.” Waxman Rep. 6. It is the meaning for

“field of view” that plaintiff seeks in claim construction. Defendant challenges such

construction, arguing that the ‘652 patent record does not contain a reasonably clear,

deliberate, and precise intent to depart from the ordinary meaning of the selected phrase,

as would be required if the patentee were acting as his own lexicographer. Absent that

intent, defendant asserts, the phrase cannot be construed to mean anything other than its

ordinary dictionary definition. Def.’s Resp. 9 (citing In re Paulsen, 30 F.3d 1475, 1480

(Fed. Cir. 1994)). But, defendant misses the mark.

The Federal Circuit has made clear that the ordinary meaning of words as gleaned

from the intrinsic record should not be set aside for a dictionary definition that plainly

contradicts the use of the words in the patent. Phillips, 415 F.3d at 1322-23 (Courts may

rely on dictionary definitions “so long as the dictionary definition does not contradict any

definition found in or ascertained by a reading of the patent documents.”) (quoting

Vitronics, 90 F.3d at l584 n.6); Novartis Pharm. Corp. v. Eon Labs Mfg., Inc., 363 F.3d

1306, 1310 (Fed. Cir. 2004) (“For more than 45 years we, and our predecessor court,

have looked to the intrinsic record to determine as a matter of claim interpretation which

of the available, relevant [dictionary] definitions should be applied to the claim term at

issue.”) (citing Liebscher v. Boothroyd, 258 F.2d 948, 951 (C.C.P.A. 1958) (“One need

not arbitrarily pick and choose from the various accepted definitions of a word to decide

which meaning was intended as the word is used in a given claim. The subject matter,

12

the context, etc., will more often than not lead to the correct conclusion.”); Inverness

Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1379 (Fed. Cir. 2002) (“[W]e

must determine whether the specification or prosecution history clearly demonstrates that

only one of the multiple meanings was intended.”); Texas Digital Sys., Inc. v. Telegenix,

Inc., 308 F.3d 1193, 1203 (Fed. Cir. 2002); Renishaw PLC v. Marposs SpA, 158 F.3d

1243, 1250 (Fed. Cir. 1998) (“[A] common meaning, such as one expressed in a relevant

dictionary, that flies in the face of the patent disclosure is undeserving of fealty.”).

The Federal Circuit also has made clear that extrinsic evidence for claim

construction, including expert testimony about a dictionary definition, does not determine

how a term is defined. Rather, what is dispositive is how that term is construed by one

skilled in the art at the time of invention and in view of the intrinsic evidence. Phillips,

415 F.3d at 1313-14 (citing Unitherm Food Sys., Inc. v. Swift–Eckrich, Inc., 375 F.3d

1341, 1351 (Fed. Cir. 2004) (proper definition is the “definition that one of ordinary skill

in the art could ascertain from the intrinsic evidence in the record”), rev’d on other

grounds, 546 U.S. 394 (2006)).

Defendant’s expert cited to “The Photonics Dictionary” in his expert report for the

different definitions of “line of sight” and “field of view,” Exhibit F 6, but he did not

provide a copy of the relevant excerpts with the report he prepared in 2014.7 To support

its legal argument, defendant relied on the different dictionary definitions noted in Dr.

Waxman’s expert report even though Dr. Waxman himself ultimately decided to “treat

the patentee’s use of the phrase ‘line of sight’ as being synonymous with the phrase ‘field

of view’ throughout the remainder of [his] report based on the use of this term in the

context of the patent specification.” Waxman Rep. 6 (emphasis added). Defendant has

misplaced its reliance.

Defendant seeks both to assert the dictionary definition of “line of sight” furnished

by its expert, Tr. 27; Def.’s 2d Br. 26, and to disavow its expert’s interpretation of the

phrase in the same manner as plaintiff, Tr. 23. Defendant’s conflicted position appears to

have been prompted by Dr. Waxman’s own determination that the intrinsic evidence was

7

Nor could defendant point to a record location at the claim construction hearing.

Tr. 27-28. Moreover, defendant provided no evidence that the definitions Dr. Waxman

cited from The Photonics Dictionary were the same at the time the patent was filed in

2003. Making an independent effort to obtain a copy of The Photonics Dictionary to

assess its relevance, the court found only a publication bearing that title and containing

those exact definitions on a website that allows its users to submit content. See The

Photonics Dictionary, http://www.photonics.com/edu/Dictionary.aspx (last visited Mar.

15, 2016).

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sufficient to instruct him as to how to define the Disputed Term. See Waxman Rep. 6;

Unitherm Food Sys., 375 F.3d at 1351 (The proper definition is the “definition that one of

ordinary skill in the art could ascertain from the intrinsic evidence in the record.).

Plaintiff argues that the Disputed Term needs no construction. Plaintiff adds that

if it does, defendant should not be “allowed to selectively pick and choose from [its] own

expert’s report the parts [it] like[s] and the parts [it doesn’t] like.” Tr. 38.

The court is of the view that the intrinsic record is sufficient to inform this claim

construction. Limiting a line of sight to a discrete imaginary line, as defendant has

proposed, is a strained claim construction that would render the device inoperable. Pl.’s

2d Br. 8-9; Tr. 15-16. “[T]he straight line connecting the object and the objective lens of

the viewing device” cannot define the line of sight when the specification expressly

speaks to a “line of sight through which a tactical environment may be viewed.”

Compare Def.’s 2d Br. 26 (quoting Waxman Rep. 6), with the ‘652 patent at col. 4, [3]

(emphasis added). Even if defendant’s definition were the more customary meaning

accepted in the field at the time of invention, it directly contradicts the intrinsic evidence

and thus, cannot stand. See Renishaw PLC, 158 F.3d at 1250.

Importantly, the court does not look to extrinsic evidence when the intrinsic

evidence is sufficient for determining how a person of ordinary skill in the art would

interpret, at the time of invention, a claim term. V–Formation, Inc., 401 F.3d at 1310.

The intrinsic record here needs no supplementation. As plaintiff has noted, a separate

element could be added to claims four and five of the ‘652 patent that could create a

distinct line of sight, Tr. 10 (such as a rear-facing camera Tr. 50), but the “line of sight”

iterated in those claims describing the element of “an optical input structured to define a

line of sight” is the same “line of sight” referred to as “said line of sight” in the later

elements of those two claims. As construed in the context of the specification and

claims, the tactical area to be viewed is conserved by the elements of the claim that refer

back to that “said line of sight,” such as the thermal imaging assembly (col. 6, [35]),

image intensification assembly (col. 6, [37]), first imaging assembly (col. 7, [28]), and

second imaging assembly (col. 7, [30]). Thus, one or more optical input(s) create a

single, overlapping line of sight.

Defendant puts forward yet another argument about the two disputed phrases in

the Term. Defendant asserts that if plaintiff relies on the Baldwin presumption to

characterize “an optical input” as an open-ended claim allowing more than one optical

input, then the same presumption must extend to the second indefinite article of the

Disputed Term, specifically the “a” preceding in “a line of sight.” Def.’s Resp. 3. As

reasoned, defendant maintains its position that the number of optical inputs tracks the

number of lines of sight.

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The Baldwin rule, however, does not lend the support defendant suggests. The

Baldwin rule does not effect further limitations in a claim. “While the term ‘comprising’

in a claim preamble may create a presumption that a list of claim elements is

nonexclusive, it ‘does not reach into each [limitation] to render every word and phrase

therein open-ended.’” Promega Corp. v. Life Techs. Corp., 773 F.3d 1338, 1350 (Fed.

Cir. 2014) (quoting Dippin' Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007)).

Because the phrase “structured to define a line of sight” is a limitation on the claim

element “an optical input,” the article “a” contained therein does not become open-ended

under the Baldwin rule. Instead, it instructs only a single line of sight.

Accordingly, the Disputed Term is construed to allow one or more optical input(s)

structured to define a single line of sight.8

V. Conclusion

For the reasons explained above, the Disputed Term of the ‘652 patent shall be

construed as stated.

The schedule for proceeding with expert reports set in the October 14, 2015 order

is SUSPENDED. The parties shall file a joint status report by Monday, May 2, 2016,

stating whether they intend to file dispositive motions following this order and if so, the

parties shall propose a briefing schedule.

IT IS SO ORDERED.

s/ Patricia Campbell-Smith

PATRICIA CAMPBELL-SMITH

Chief Judge

8

This construction is consistent with the Middle District of Florida’s finding in

another case in which CANVS asserted infringement of the same ‘652 patent. CANVS

Corp. v. Nivisys, LLC, No. 2:14-CV-99-FTM-38MRM, 2015 WL 6560621, at *2-3

(M.D. Fla. Oct. 29, 2015), ECF No. 134.

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