# Honeywell International, Inc. v. United States

> United States Court of Federal Claims · June 14, 2005 · 66 Fed. Cl. 400

URL: https://www.frixlaw.com/law-library/cases/6653926

## Case

- **Full name:** HONEYWELL INTERNATIONAL, INC., and Honeywell Intellectual Properties, Inc. v. The UNITED STATES, and Lockheed Martin Corp., Defendant-Intervenor
- **Court:** United States Court of Federal Claims
- **Decided:** June 14, 2005
- **Citations:** 66 Fed. Cl. 400; 2005 U.S. Claims LEXIS 165; 2005 WL 1415442
- **Precedential status:** Published
- **Opinion:** Opinion of the court by Braden
- **Judges:** Braden
- **Cited by:** 8 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/6653926

## Opinion text

MEMORANDUM OPINION AND ORDER CONSTRUING CERTAIN CLAIMS OF UNITED STATES PATENT NO. 6,467,914
BRADEN, Judge.
In the decade following the United States Supreme Court’s unanimous affirmance of the landmark en banc decision in Markman v. Westview Instruments, Inc., 52 F.3d 967, 978-79 (Fed.Cir.1995) (“Markman F), aff'd, 517 U.S. 370 , 116 S.Ct. 1384 , 134 L.Ed.2d 577 (1996) (“Markman IF), the United States Court of Appeals for the Federal Circuit has devoted a great deal of effort to provide federal trial courts with a workable analytical framework to construe the meaning of a patent’s claims that is faithful to 35 U.S.C. § 112 and affords the court an opportunity to consider relevant, but reliable, evidence, in a wide range of diverse and increasingly complex applications of mechanical, electrical, chemical, computer, pharmaceutical, bio, and nano technology.
From the court’s reading of controlling appellate precedent, intrinsic evidence has been endorsed as most relevant and reliable to establish the metes and bounds of the property right conveyed by the privilege of the patent grant. Extrinsic evidence has been determined to be useful to identify the *403 academic and industry credentials of “one skilled in the art,” akin to the “reasonable man” in the tradition of tort law. If the court must resort to extrinsic evidence to avoid determining that a claim is indefinite, only the most probative and reliable of such evidence should be considered-and, with caution.
In this case, the court determined that it was unnecessary to consider extrinsic evidence to construe the language of the patent claims at issue, in most instances. See Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed.Cir.1998) (internal citations omitted) (“The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.”). In only one claim, where extrinsic evidence was considered, the court was able to construe the disputed term by referring to prior art and was not dependent on technical treatises, technical dictionaries, nor the parties’ experts.
In light of the multitude of issues addressed herein, an outline of this Memorandum Opinion and glossary of selected acronyms follow:
OUTLINE
I. THE RELEVANT TECHNOLOGY.
A. Night Vision Aids.
1. The Electromagnetic Spectrum.
2. Night Vision Goggles.
B. Cockpit Displays.
1. Cathode Ray Tubes.
2. Liquid Crystal Displays.
3. Color.
C. Characteristics And Types Of Optical Filters.
D. The ’914 Patent.
II. FACTUAL AND PROCEDURAL BACKGROUND.
III. DISCUSSION.
A. Jurisdiction.
B. Standing.
1. Plaintiff.
2. Intervenor.
C. Controlling Appellate Precedent Concerning Construction Of Patent Claims.
1. A Federal Trial Judge Must First Attempt To Construe Ambiguous Claim Terms Utilizing Intrinsic Evidence.
a. Claim Language.
b. Specification Explanation And Definition.
c. Prosecution History.
2. Only In Limited Circumstances May A Federal Trial Judge Construe Claim Terms Utilizing Extrinsic Evidence.
a. Prior Art.
b. Technical Treatises And Technical Articles.
c. Expert Testimony.
d. Scientific Or Industry Specific Dictionaries.
e. Inventor Testimony.
3. A Federal Trial Court Should Construe Claims To Preserve A Patent’s Validity Only Where All Other Tools Of Claim Construction Are Exhausted.
4. The Import Of Phillips v. AWH Corp., 376 F.3d 1382 (Fed.Cir.2004).
D. Construction Of Certain Claims Of United States Patent No. 6,467,914.
1. “Display System.”
a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
*404 b. The Government’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
c. Intervenor Lockheed Martin’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
d. Specific Precedent Governing Construction Of A Patent’s Preamble.
e. The Court’s Construction Of “A Display System For Use In Association With A Light Amplifying Passive Night Vision Aid And A Local Color Display, Including A Local Source Of Light, Comprising” In This Case.
2. “Local” And “Color Display.”
a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
b. The Government’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
c. Intervenor Lockheed Martin’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
d. The Court’s Construction Of “Local Color Display” In This Case.
i. In The Preambles To Claim 1 And Claim 2.
ii. In Claim 1(a).
iii. In Claim 2(a).
3. “Local” And “Source of Light.”
a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
b. The Government’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Brief.
c. Intervenor Lockheed Martin’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Brief.
d. The Court’s Construction Of “Local Source Of Light” In This Case.
4. “Optical Filter” And “Filter.”
5. “Filters” And “Filtering.”
6. “Filters Light From The Local Color Display.”
a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
b. The Government’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Briefs.
c. Intervenor Lockheed Martin’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
d. The Court’s Construction Of “Filters Light From The Local Color Display” In This Case.
7. “Notch Filter.”
*405 a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Briefs.
b. The Government’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
c. Intervenor Lockheed Martin’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
d. The Court’s Construction Of “Notch Filter” In This Case.
8. “Passes.”
9. “Color Band[s].”
a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
b. The Government’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
c. Intervenor Lockheed Martin’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
d. The Court’s Construction Of “Color Bands” In This Case.
10. “Predetermined Color Bands.”
11. “Red Color Band.”
a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
b. The Government’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
c. Intervenor Lockheed Martin’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
d. The Court’s Construction Of “Red Color Band” In Thi s Case.
12. “Predetermined Red Color Band.”
13. “Substantially Blocks.”
a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
b. The Government’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
c. Intervenor Lockheed Martin’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
d. The Court’s Construction Of “Substantially Blocks” In This Case.
14. “First,” “Second,” “Third,” “Fourth,” And “Filter.”
15. “Blue Color Band.”
a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
*406 iii. Post-Claim Construction Hearing Briefs.
b. The Government’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
c. Intervenor Lockheed Martin’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
d. The Court’s Construction Of “Blue Color Band” In This Case.
16. “Green Color Band.”
a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
b. The Government’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
c. Intervenor Lockheed Martin’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
ii. At The Claim Construction Hearing.
iii. Post-Claim Construction Hearing Briefs.
d. The Court’s Construction Of “Green Color Band” In This Case.
17. “Narrowband Of The Red Color Band.”
IV. CONCLUSION.
GLOSSARY OF SELECTED ACRONYMS
AGC Automatic Gain Control
ANVTS Aviators’ Night Vision Imaging System
CIE Commission International l’Eclairage or International Commission on Illumination
CRT Cathode Ray Tube
IEEE Institute of Electrical and Electronics Engineers, Inc.
IPL Instrument Panel Lighting
JEDEC Joint Engineering Display and Electronic Committee
LCD Liquid Crystal Display
MCP MicroChannel Plate
nm Nanometer
NVG Night Vision Goggles
NVIS Night Vision Imaging System
RGB Red Green Blue
SED Spectral Energy Distribution
A Wavelength or the distance between successive peaks of an electromagnetic wave.
nu, v Frequency or the number of complete cycles of electromagnetic radiation completed each second.
* sis * * * *
I. THE RELEVANT TECHNOLOGY.
In 1973, a second-generation of Night Vision Goggles (“NVG”) was developed by the United States Army to provide helicopter pilots with a brighter view at night of underlying terrain to allow them to fly at low levels. See January 24, 2005 Technology/Industry Primer (“Jt.Primer”) at 3; 1 see also November 22, 2004 Direct Testimony and Expert Report of Dr. Harry Lee Task (“PMX35”) U 8 at 4. NVGs, however, were very sensitive to cockpit lighting, warning lights, displays, and particularly to light of longer wavelengths in the visible spectrum and infrared radiation. See Jt. Primer at 6-8; see also PMX 35 119 at 4. In particular, *407 NVGs’ sensitivity to red light created numerous problems that were known prior to the October 10, 1985 filing of the patent at issue in this case, including the fact that nearby light sources in a cockpit could overwhelm the sensor elements and interrupt NVG functioning or amplify reflections from the cockpit lights, causing the pilot to see confusing images. Id.
Many techniques were developed by the military and private companies to try to solve the incompatibility between the NVG and aircraft lighting and cockpit displays. See PMX 35 HU 8-12 at 4-6. In the 1980’s, the United States Army began to utilize an Aviation Night Vision Imaging System (“AN-VTS”) goggles with a third-generation image intensifying tube that was much more sensitive to light, i.e., ranging from approximately 450 nanometers (“nm”) to 930 nm, instead of 400 nm to 700 nm. See Jt. Primer at 3; see also PMX 35 Till 9-13 at 4-7. As a result, the visible range below 580 nm could be used for cockpit lighting and display since light in that range, in large part, was invisible to NVGs and allowed the pilot to see outside the aircraft. See PMX 35 1113 at 6-7.
A. Night Vision Aids.
1. The Electromagnetic Spectrum.
The electromagnetic spectrum (“spectrum”) describes the range of electromagnetic waves that transports energy, both in electric and magnetic fields. See Jt. Primer at 3. Energy from cosmic rays have the shortest wavelengths; electrical oscillations have the longest wavelengths. Id. “Visible spectrum” or light is the portion of the spectrum located between the ultraviolet light region and the infrared region, as depicted below:
[[Image here]]
Id. at 4.
Light is characterized by wavelength and frequency. Id. Wavelength, referred to by the symbol lambda, [: sj:
LOCKHEED MARTIN’S COUNSEL: [Honeywell’s counsel] in his initial brief indicated that the preamble did not need to be construed because it simply discussed the purpose, if you will, of the invention. I *433 believe he has moved away from the arguments from what I heard today, would indicate that he understands that the preamble does need to be construed[.]
TR at 184.
^ ^ ^ ^ ^
LOCKHEED MARTIN’S COUNSEL: Your Honor, we were discussing the preamble, and you can see from the prosecution history — ... the preamble was considered to be a limitation on the claim by Honeywell. Because it’s a limitation, it needs to be construed____ [W]e have an extract from the prosecution history where we deal with this issue of indefiniteness that we talked about before____ [T]he words “in association with” to be “in combination with.”
THE COURT: Well, this was the patent examiner who felt it was indefinite.
LOCKHEED MARTIN’S COUNSEL: Yes, this is the patent examiner finding that it was----[I]ndefiniteness is one of the first things you look for when you’re looking at patent issue, and here they found indefiniteness, and a change was made in the preamble to indicate that the — basically changed it so the preamble read “in combination with a night vision goggle and a local display, a display system comprising.”
TR at 186-87.
LOCKHEED MARTIN’S COUNSEL: Also, Honeywell tried to argue around the Patent Office’s prior art rejections, and successfully did it by claiming that its display system that was described in the body of the claim was distinct from prior art systems. That’s the type of thing that brings the preamble into play as a claim limitation.
TR at 188.
$ :¡c $ $ * $
LOCKHEED MARTIN’S COUNSEL: [T]he night vision aid and the local color display were essential limitations because, as the patent acknowledges, the claimed novelty of the invention is the combination of filters which make up the display system, with the night vision goggle, and the local color display, and the only reference to night vision goggles and local color display is found in the preamble. The preamble also needs to be — ... construed because the preamble is necessary to give life, meaning, and vitality to the claims.
TR at 189.
LOCKHEED MARTIN’S COUNSEL: So turning to the specification, there are two pieces of the specification that are relevant to the definition of the display system, and both of those are consistent with the definition that — ... in the specification that needs to be considered when looking at the definition of display system, and it is the statement in the specification that you find under the heading “Background of the Invention,” which states: “This invention relates to electronic passive night vision aids and to a system for operating such night vision aids in conjunction with a local display such as a cockpit display.” My point in quoting this is that this statement supports the interpretation that we have been discussing and it shows that there are three parts to this invention: night vision aids, a system for operating those aids, and local displays. So it is a night vision aid and a system that operates those night vision aids in conjunction with a local display such as a cockpit display____ [T]he summary of the invention in the 914 patent, and it provides that, and I quote: “In accordance with the present invention, an ANVIS aid such as an ANVIS goggle set is provided with an optical filter. A second optical filter blocking light in an opposite sense from the first optical filter is placed over the displays which may otherwise present light that would interfere with the ANVIS.” So again what we see here is we see a reference to the ANVIS aid in the night vision goggles, a local display, and the filters, each of them forming their own separate functions.
TR at 196-99.
sfc ifc s¡s sfc sfc
THE COURT: I’m not sure I read that that way in 44, because it says the present invention basically includes the goggles *434 that have a filter, and then there is a second optical filter blocking light in the opposite direction. I don’t read it the way you do. What am I missing?
LOCKHEED MARTIN’S COUNSEL: Well, it says you have with the present invention an ANVIS, such as goggles.
THE.COURT: Got it.
LOCKHEED MARTIN’S COUNSEL: Which is provided with an optical filter.
THE COURT: Got it.
LOCKHEED MARTIN’S COUNSEL: Which [are] going to be part of the system.
TR at 198-99.
5jC 5¡« ifc }|C J»;
LOCKHEED MARTIN’S COUNSEL: I am attempting to show that the display system is in fact separate from the local color display, and the night vision goggles, I have a couple more slides along those lines that I would like to show the Court. The first is slide No. 58, and in this slide Honeywell is arguing in response to an action from the Patent Office that its claimed display system was distinct from prior art display systems that were cited when the Patent Office rejected its complaints.
THE COURT: Remind me what year this was that the PTO had this rejection____
GOVERNMENT’S COUNSEL: It’s September 9, 1986, and I know we were referring to — I believe Lockheed is also referring to Bates Nos. D000108 to 109, I believe.
THE COURT: Okay. Now, I have on my chronology, see I just did my own little thing, November 13, 1989, I said PTO issued a notice of allowability, and they did that after this episode—
GOVERNMENT’S COUNSEL: Right, right.
THE COURT: —in response. Okay.
GOVERNMENT’S COUNSEL: That would be right.
LOCKHEED MARTIN’S COUNSEL: So in order to show that their claimed display system was distinct from prior art display systems they argued to the Patent Office. It says, “In order to enable highly sensitive night vision ANVIS goggles to be operated in an environment having full color displays, it is necessary to provide a technique to protect the ANVIS goggles from relatively high intensity light produced by the local cockpit displays.” And it goes on and states, “The present invention accomplishes that by filtering the display light with optical filters and providing an additional optical night vision aid. The filter for the night vision aid is adapted to block light from the preferred range of frequencies, thereby effectively blocking out light from the display.” So again what this tells us is there is a display, the display is generating light, and their invention says let us filter that light so that we can keep offending light from reaching the night vision goggles. If we turn to slide 59, and here we have — again this is from Exhibit 7, the 914 file history, and the Bates number here is D000110. Honeywell makes another statement to the Patent Office which shows that its display system is operationally separate from the local color display. Here it says, “It is respectfully submitted that the prior art neither shows nor suggests that a multiple monochromatic tube color display be provided with separate filters in order to provide enhanced filtration of multi-color displays.” So again what they are saying is is that their invention is to provide this enhanced filtration. This is the filtration that would filter out the offending light from reaching the night vision goggles.
THE COURT: I would read that that their enhancement would be the multiple monochromatic tube color display, which includes — no, no, no — which is provided together with, okay, separate displays, and it’s different than what you said.
LOCKHEED MARTIN’S COUNSEL: Well, I would say I was reading it. “Respectfully submit that the prior art neither shows nor suggests that a multiple monochromatic tube color display be provided with separate filters.”
THE COURT: What I am saying back to you is what they are saying is that the prior art didn’t talk about—
*435 LOCKHEED MARTIN’S COUNSEL: That’s correct.
THE COURT: —multiple monochromatic tube color display, but we are now. We meaning—
LOCKHEED MARTIN’S COUNSEL: I think if we read this whole thing in context, what I have done is extract something here, we see the whole contact saying—
THE COURT: Right.
LOCKHEED MARTIN’S COUNSEL: — that they were dealing with a piece of prior art that had multiple monochromatic displays, and in those monochromatic displays the displays were providing different colors, different primary colors that could be combined, and Honeywell tried to distinguish the prior art by saying, wait a minute, we’re not just providing multiple monochromatic displays, we are providing a special filter, separate filters, and those separate filters are to give enhanced filtration of multi-color displays in order to achieve the night vision compatibility goal of the invention.
THE. COURT: Let me go back and ask something that may be intuitive to you but not necessarily to me. Was the prior art basically tubes that they put filters on, but tubes that did something else, project the real color?
LOCKHEED MARTIN’S COUNSEL: That’s correct.
THE COURT: Okay.
LOCKHEED MARTIN’S COUNSEL: What the prior art was you had a prior art display which consisted of three monochromatic tubes, each generating a primary color, red, blue, and green.
THE COURT: Okay.
LOCKHEED MARTIN’S COUNSEL: And through the electronic signals that went into those tubes you can manipulate the intensity of the color.
THE COURT: And that was the way they wanted to address the issue of the redness?
LOCKHEED MARTIN’S COUNSEL: Right, and those three tubes together could give you a full color display____
TR at 208-13.
iii. Post-Claim Construction Hearing Briefs.
After the claim construction hearing, Lockheed Martin advised the court that one of ordinary skill in the ,art would construe the preamble phrase “display system for use in association with” to mean “two or more filters which are used in combination with a night vision aid, such as night vision goggles (‘NVG’), and a local color display, to make the color display compatible with the night vision aid.” 4/1/05 Int. Brief at 10. Lockheed Martin maintained that Honeywell “claimed only a filtering system that would render a full color display compatible with NVG.” Id. Stated another way, Lockheed Martin contended that Honeywell claimed only: “A (a display system) for use in association with B (a night vision aid) and C (a local color display), comprising: D (a first optical filter or a plurality of filters) and E (a second optical filter or a fourth optical filter).” Id. Honeywell did not claim: “A, comprising: B, C, D, and E.” Id.; see also 4/15/05 Int. Brief at 3-8.
In the court’s judgment, Lockheed Martin’s post claim construction hearing brief best described the dispute over the term “display system.” Lockheed Martin argued that Honeywell’s construction asserted that “display system consists of the entire cockpit.” 4/1/05 Int. Brief at 10. Stated differently, the filters in Honeywell’s display system “may make the local color display [not only] compatible with the NVG, [but also] producing red, green, and blue color bands generated by the three light sources that combine to make a full color image.” Id. Lockheed Martin argued that “nothing in the claims, the specification[,] or the file history indicate that Honeywell’s display system performed any role in the production of the color emitted by the display.” Id. at 11.
d. Specific Precedent Governing Construction Of A Patent’s Preamble.
The United States Court of Appeals for the Federal Circuit has instructed federal *436 trial courts that whether a preamble is treated as a limitation is determined “on the facts of each case in light of the claim as a whole and the invention described in the patent.” Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823 , 831 (Fed.Cir.2003); see also Corning Glass Works v. Sumitomo Elec. U.S.A., Inc. 868 F.2d 1251 , 1257 (Fed.Cir.1989) (reviewing the “entirety of the patent [is necessary] to gain an understanding of what the inventors actually invented and intended to encompass by the claim.”); Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed.Cir.1995) (A claim preamble has the “import that the claim as a whole suggests for it. In other words, when the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.”).
Where the written description “consistently uses” specific terms to refer to the “invention as a whole, ... [the] preamble of each claim serves as a convenient label [or descriptive name] for the invention as a whole.” Storage Tech., 329 F.3d at 831 (citing IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed.Cir.2000)) (merely giving a descriptive name to the claimed invention does not limit the scope of the claim). Where the preamble “defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention,” it is not limiting. See Rowe v. Dror, 112 F.3d 473, 478 (Fed.Cir.1997). On the other hand, where there is no “meaningful distinction to be drawn between the claim preamble and the rest of the claim, for only together do they comprise the ‘claim.’ ... [T]he preamble ... is said to constitute or explain a claim limitation.” Pitney Bowes, 182 F.3d at 1305 .
In addition, where claim language derives an antecedent basis from the preamble, it may be considered as a necessary component of the claimed invention. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.Cir.2002) (quoting Pitney Bowes, 182 F.3d at 1305 ) (“In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning and vitality’ to the claim.”).
e. The Court’s Construction Of “A Display System For Use In Association With A Light Amplifying Passive Night Vision Aid And A Local Color Display, Including A Local Source Of Light, Comprising” In This Case.
In this case, the court has decided to construe all of the operative preamble language common to both Claim 1 and Claim 2 of the ’914 patent, i.e., “A display system for use in association with a light amplifying passive night vision aid and a local color display including a local source of light,” as necessary to understanding the ’914 patent and therefore as a limitation thereof. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed.Cir.2003) (“When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.”).
The court begins with “system” in the aforementioned phrase modified by the adjective “display” to describe the general purpose or function of the system. The prepositional phrase “for use in connection with,” applies to two other nouns that are objects of this phrase, i.e., “aid” and “display.” “Light amplifying,” “passive” and “night vision” are adjectives modifying “aid.” Likewise, “local” and “color” are adjectives modifying “display,” when it is used as a noun. The placement of the terms “night vision aid” and “local color display” in the prepositional phrase prior to the verb “comprising” advised one of ordinary skill in the art that the claimed system may include or be used together or in combination with a “night vision aid” and a “local color display.” See ’914 patent, col. 5,11. 22-28.
From the use of the verb “comprising,” the court also construed the preamble language common to both Claims 1 and 2 as “presumptively open-ended,” i.e., encompassing display systems that include a first optical filter, as described, and a second optical filter, as described. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371-72 (Fed.Cir. *437 2005) (Where a claim uses the “word ‘comprising’ transitioning from the preamble to the body [it] signals that the entire claim is presumptively open-ended____ Because the patentee invoked this open-ended treatment ... the scope of [the] claim ... encompasses all [display systems] satisfying the elements set forth in [each] claim.”); see also Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336 , 1347 (Fed. Cir.2001) (“When a patent claim uses the word ‘comprising’ as its transitional phrase, ... [it] creates a presumption that the body of the claim is open. In the parlance of patent law, use of[the] transitional phrase ‘comprising’ creates a presumption that the recited elements are only a part of the device, and that the claim does not exclude additional, unreeited elements.”); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.1997) (“‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added.”); Manual of Patent Examining Procedure § 2111.03 (8th ed.2001) (“MPEP”). In addition, the court has determined that the ’914 patent optical filters are “essential elements” thereof and that a night vision aid and local color display may be included or used together or in combination with these filters. See ’914 patent, col. 5,1. 31. Claim 2 encompassed all display systems “comprising” a plurality of three filters, as described, and a fourth filter, as further described. See ’914 patent, col. 6,11. 12-28.
Therefore, the court construes the operative preamble language as follows:
A system comprised of optical filters that can be used in combination with an aid, with light amplifying, passive, and night vision qualities, and a display of colors that includes a source of light perceptible by the night vision aid.
See Pitney Bowes, 182 F.3d at 1306 (“If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.”).
Since the court has determined that the preamble language common to Claims I and 2 is unambiguous and not contradicted by the specification, the court rejects Honeywell’s entreaty that it consider extrinsic evidence to interpret this claim, including the Ieee Dictionary and the testimony of the experts. See, e.g., 12/23/04 Honeywell Brief at 9-11; 4/1/05 Honeywell Brief at 12; 4/15/05 Honeywell Brief at 1.
2. “Local” And “Color Display.”
The term “local color display” appears in the preamble to Claim 1: “A display system for use in association with ... local color display including[.]” ’914 patent, col. 5, 11. 31-32. The preamble to Claim 2 also utilizes the same language. See ’914 patent, col. 6, 11. 11-13. In addition, in Claim 1(a), the ’914 patent discusses “local color display” in the first two lines: “a first optical filter that filters light from the local color display[.]” ’914 patent, col. 6, 11. 1-2. Claim 2(a)(1) also discusses “local color display” as “a plurality of filters at the local color display[.]” ’914 patent, col. 6,1.15.
The parties have proposed the following competing constructions of the term “local color display:”
[[Image here]]
Honeywell Markman Slides 60, 68; Gov’t Markman Slide 008 (bold added by parties).
a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
Honeywell’s pre-hearing brief requested a separate construction of the word “local” and the term “color display,” because “[t]he problem addressed by the ’914 patent is interference between a full color display and a night vision aid ... [and][s]ueh interference occurs *438 only when the full color display is operated in the vicinity of the night vision aid[,] ... [accordingly, the court was advised that] the most appropriate construction for local is located in the vicinity of the night vision aid.” See 12/23/04 Honeywell Brief at 11 (quoting ’914 patent, col. 2, 11. 1-3) (emphasis in original) (“[A] night vision aid such as AN-VIS goggles [is to] be operable while a full color display is presented in the vicinity of the goggles[.]”).
Honeywell criticized the Government’s proposed construction of “local, as incorporated in its construction of local color display, [because] [ffirst, in the context of the patent, local means in the vicinity of the night vision aid, not in the vicinity of an operator or observer.” Id. at 12 (emphasis in original) (citing Dr. Tannas). Second, the court was warned that the Government’s proposed construction “introduces an unnecessary and extraneous requirement, namely that the local color display be ‘within a defined area, such as a cockpit.’ Nothing in the language of the claims requires this limitation.” Id. (emphasis in original). Honeywell insisted that “[t]he claims are broad enough to encompass a local color display that is used in the vicinity of a night vision aid, but necessarily not in a defined area, such as a cockpit.” Id. (emphasis in original). Moreover, Honeywell cited the specification as instructing that “ ‘the present invention can be used by other viewers in association with environments other than an aircraft cockpit’ without placing any limitation on the type of environment in which the invention can be used.” Id. (citing ’914 patent, col. 2, 11. 49-59) (emphasis in original).
ii. At The Claim Construction Hearing.
At the claim construction hearing, Honeywell’s counsel pointed out that the term “local” appears “twice in the preamble, first, to modify color display, to make it a local color display, and second, to modify source of light, to make it a local source of light.” TR at 224. Honeywell’s counsel further explained:
HONEYWELL’S COUNSEL: The normal rule for claim terms is that the same term gets the same construction each time it appears in the claim. Therefore, Honeywell took the approach to define local for all purposes. The only exception to that rule is where the specification or elsewhere in the intrinsic evidence the patentee clearly indicated that the term should have a different meaning in different contexts, and because we didn’t see that in the claim, we defined local by itself to have the same meaning in each phrase. The Defendants, on the other hand, construed local color display and local source of light.... They say that local is in proximity to an operator or observer within a defined area such as a cockpit. But Honeywell’s position is local is simply located in the vicinity of the night vision aid.
THE COURT: Why does it make a difference to you?
HONEYWELL’S COUNSEL: I’m not sure why it makes a difference. We tried to define the term as we thought it — in accordance with the meaning given to it in the patent. Local does have a unique meaning in the patent. The whole patent is talking about the relationship between the light emitted from a display, and the night vision aid, and the light interferes with the night vision aid. The invention solves that problem. So local has the meaning of location, where are things located.
THE COURT: In relationship to something.
HONEYWELL’S COUNSEL: In relationship to something. I think the key here is the relationship between where the display is located in relation to the night vision aid. The operator, well, yes, the operator might be wearing night vision goggles, so that might be the same definition, but it might not in all cases. For example, if the display is located in the rear of the aircraft where there are no night vision goggles, but there is an operator viewing the display, then it wouldn’t make sense to define local for local color display as being near an operator because that is not what’s meant by the patent.
THE COURT: So if the operator is someplace totally different, then you don’t—
*439 HONEYWELL’S COUNSEL: That’s right.
THE COURT: Obviously your patent is not going to be relevant—
HONEYWELL’S COUNSEL: That’s right.
THE COURT: —to that fellow in the back seat.
HONEYWELL’S COUNSEL: Precisely. It’s just as simple as that. We tried to define it as we understood the patent. So the first issue is ... does local have a different meaning in those two phrases. Honeywell’s answer to that is no, it has the same meaning. The second issue is does local, is that in relation to the night vision aid or the operator or the observer? And Honeywell’s answer to that is it’s in relation to the night vision aid. And the third question is, is local limited to a defined area such as a cockpit? And we think the term is not so limited____ I don’t think Defendants have pointed to any place in the intrinsic evidence to indicate that the term should have a different meaning and a different—
THE COURT: But how does it harm you if I construe the language the way that the Defendant wishes to have it construed?
HONEYWELL’S COUNSEL: I think it’s — I’m not sure what they are trying to accomplish by “in proximity to an operator” or—
THE COURT: Well, ... I’m just asking you does it make any difference to you.
HONEYWELL’S COUNSEL: Not that I know of, but I don’t want to have it misconstrued because I don’t know what’s coming down the pike. And within a defined area though, such as a cockpit, I think that does harm us, because I don’t think the invention is limited to cockpit applications.
THE COURT: Give me an example.
HONEYWELL’S COUNSEL: An example would be — we gave the example later in our presentation of a foot soldier carrying a PDA and wearing night vision goggles, so there is light from the display.
THE COURT: All right, I need a PDA definition here.
HONEYWELL’S COUNSEL: Personal computer, like a palm pilot or—
THE COURT: Oh, okay, got it. All right. So he’s carrying a palm pilot with his goggles on.
HONEYWELL’S COUNSEL: Right, and he’s in a open area. There is no confined area such as a cockpit____Like a handheld GPS as an example, Your Honor.
THE COURT: Okay, so?
HONEYWELL’S COUNSEL: I mean, in this case we’re not aware of any such—
THE COURT: But that circumstance has nothing to do with your patent.
HONEYWELL’S COUNSEL: Well, as far as we know reading the claims, it would have something to do with the patent.
THE COURT: Why? You don’t have the two pieces that you’re looking for, the display system.
HONEYWELL’S COUNSEL: The display would be the PDA, the palm pilot with the screen that’s lite, and light coming out of that-display.
THE COURT: And you’re saying ... there is no filter on that, and there is nothing inside the machine that—
HONEYWELL’S COUNSEL: Well, you certainly could put the night vision filter concept in a PDA. There is nothing in the claim that says you couldn’t. Just because the example is given in the patent of a cockpit and a pilot—
THE COURT: That’s a much broader reading of display[.]
HONEYWELL’S COUNSEL: I don’t think—
THE COURT: The display was the box. I mean, I’m pretty sure that’s exactly the way you defined it. Here is the display.
HONEYWELL’S COUNSEL: We were talking about display system being—
THE COURT: Yes.
HONEYWELL’S COUNSEL: —a comprehensive system.
THE COURT: Right.
HONEYWELL’S COUNSEL: That included the display, and the night vision aid, and the filters. But the local color display is just that. It’s a color display. It has to *440 have more than one color. It has to display information to a viewer, and local places it in the vicinity of a night vision aid. But other than that the claim isn’t limited. It doesn’t say cockpit display. It isn’t necessarily an instrument that’s in an airplane.
THE COURT: Well, that went to ... my question about who was the person that’s skilled in the art.
HONEYWELL’S COUNSEL: Well, the history of the invention definitely goes back to aircraft and aviation.
THE COURT: I don’t have any trouble with that, but I guess I — I’m having difficulty foreseeing whatever claims you may want to assert that may not even be in this case that are broader.
HONEYWELL’S COUNSEL: But technology expands. Somebody invented the personal computer, but nowadays we put computers in everything from dishwashers to microwaves to television. They are all ubiquitous, but that doesn’t mean that the core invention of the computer isn’t in these various devices. If the claim doesn’t say cockpit, it’s not limited to a cockpit.
TR at 225-31.
THE COURT: [B]ut one does have some sense about when privilege is given up for a time period from the public to someone, what do they get for that period, and it cannot be the universe. It’s got to be something less than the universe, in my view.
HONEYWELL’S COUNSEL: Well, I think we’ve heard many times from opposing counsel the claims are king, and we agree with that principle, the claims are king.... And one of the concepts that comes out of Federal Circuit case law, the Rennashaw case, for example, stresses the importance that you have to find a word in the claim to define before you can engage in claim construction, and here we’re trying to engage in construing the claim “local.”
THE COURT: Yes.
HONEYWELL’S COUNSEL: And local certainly pertains to location, and where things are located in relationship to one another, but I don’t believe there is anything in the claim that limits the invention to a cockpit.
THE COURT: Okay.... My local was not in relation to cockpit, it was a relationship to the pilot itself. I mean, without the pilot there is no — none of the rest of this makes much difference.
HONEYWELL’S COUNSEL: But I think it does as Mr. Brafman’s example pointed out because the night vision aid could be hooked up remote to a remote viewer, and he could be viewing the area outside whatever confined area he happens to be in.
TR at 236-38; see also TR at 248.
í¡degree of light unsuitable for passage by an optical filter, such that the invention is fit for the intended purpose
Honeywell Markman Slide 180; Gov’t Mark-man Slide 066 (bold added by parties).
a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
In Honeywell’s pre-hearing brief, the court was advised that “[a]s used in the patent, substantially blocks means to obstruct the passage of light sufficiently to permit the night vision aid to be used for the intended purpose.” 12/23/04 Honeywell Brief at 34 (citing PMX 37 (Tannas Suppl. Report) H 2 at 2; Webster’s at 235 defining “block”). In all three claims utilizing the term “substantially blocks,” Honeywell argued that “the objective of the substantially blocking is to permit the night vision aid to work ... without being disrupted by light from the local color display.” 12/23/04 Honeywell Brief at 35 (citing ’914 patent, col. 2, 11. 5-7) (“[T]o permit light which originates at the full color display from overwhelming the night vision aid.”). The court further was advised that the “benchmark” for determining whether light is “substantially blocked is whether the night vision aid can be used for its intended purpose.” 12/20/04 Honeywell Brief at 36 (emphasis added).
ii. At The Claim Construction Hearing.
At the claim construction hearing, Honeywell argued that “substantially blocks” is “talking about what night vision goggles do.” TR at 702.
HONEYWELL’S COUNSEL: So Plaintiff’s construction is that it obstructs the passage, of light sufficiently to permit the *473 night vision aid to be used for its intended purpose.
TR at 704.
$ ^
THE COURT: Is your noun the same for all of the ...
HONEYWELL’S COUNSEL: The noun is different ... in ours [construction of “substantially blocks”], we’re saying it’s the night vision aid, to render night vision aid suitable. And in the second, in Defendant’s construction, they are saying it renders the invention suitable.
THE COURT: Is there a difference?
HONEYWELL’S COUNSEL: Well, we think there is a difference, Your Honor. I don’t know how — this is one of those where we’re just trying to do what we think the claim says. I’m not sure why — what the significance of what the issue is, but it’s one we didn’t reach agreement on. I think the claim example here, it’s quite clear substantial blocking — this is claim 2, substantial blocking that is associated with the fourth filter which is on the night vision aid. So the whole notion is that you’re blocking to make the night vision aid work the way it’s supposed to work. The— likewise, here, you are substantially blocking — this is in claim 1, to make the night vision aid work. And then substantial blocking up here. It all seems — the whole invention is associated with preventing interfering with the night vision aid. So I’m not sure what it means when they say, you know, the — render the entire invention suitable for its intended purpose, versus a night vision aid. So since we don’t know what they’re getting at, and we do think the claim itself, the whole substantial blocking aspect was relating to the proper functionality of the night vision aid, that’s why we have focused on that in our construction. And perhaps we’ll learn more from the Defendants and why they think that’s incorrect. But there’s no requirement — substantially blocked imposes no particular requirement on the colors that are displayed on the local color display itself. It’s all — it’s all surrounding what’s happening for the functionality of the night vision aid in both claims. Here even in claim 1, in 1(a), we have substantially blocks the light. But, again, that blocking, going back to figure 1, which there’s no—
TR at 704-06.
HONEYWELL’S COUNSEL: So in any event, the — the substantial blocking, again, if you look at figure 1, remember, the whole notion of why we’re doing this blocking is to permit the night vision aid to operate as it’s intended to, at the same time that it, again, doesn’t — without interfering with the display itself[.]
THE COURT: So the pilot can look at the display and look straight out into the ... window?
HONEYWELL’S COUNSEL: Right. So there are three areas we disagree on. We already touched on one. I haven’t got much more to say on it other than the fact that the third one, which is what we just covered — substantially blocks requires that the night vision aid or the entire — whether substantially blocks requires the night vision aid or the entire invention to be used for its intended purpose. That’s the question. We think that intended purpose is a perfectly good way to characterize this term. But we think the perfectly good ought to be looked at in the context of the night vision aid.
THE COURT: Well, your construction ... you’re using the word obstruct the passage of light sufficiently, which to me means “a lot of.”
HONEYWELL’S COUNSEL: Actually, I think it might be the other way around. We’re not trying to quantify it. Our second issue—
THE COURT: You’re not.
HONEYWELL’S COUNSEL: No. The quantification is does it work for its intended purpose. In other words — but there’s no quantification of this in the patent, nor should there be. If the thing works and it’s doing what it’s supposed to do, then so be it.
THE COURT: Let’s back up ... [i]s there a finite amount of light that needs to be either blocked or obstructed?
*474 HONEYWELL’S COUNSEL: The reality—
THE COURT: Do we know?
HONEYWELL’S COUNSEL: Well, I think — I don’t think there’s a number that exists.
THE COURT: Could you put a number there?
HONEYWELL’S COUNSEL: There certainly have been — there are certainly numbers of things that have been done, well after the patent, to try to figure out well, how good does it have to be, you know, and so forth. That wasn’t in existence at the time of the patent. That wasn’t in the inventor’s head. In the inventor’s head was I am going to make something which is unsuitable suitable. Our view is that’s sort of self-explanatory in the end, frankly, if this thing makes its way into a $500 million aircraft with a several hundred thousand dollar display, it must be there because it’s doing its job. And I — we don’t think there’s really any more that needs to be said about that in these patents. One might come up with another patent that has all sorts of other things and tests and parameters, but that’s not what this patent is all about. This patent tells you you’re going to do this and make it, and it’s going to do what it’s supposed to do.
THE COURT: Let’s go back to the idea of the engineer looking at this and wants to make one of these things, or make something better than what you have.. How does that person know that a — a person skilled in the art know how much [light] to block?
HONEYWELL’S COUNSEL: Well, you know, frankly, there’s no — you have to see if it works. There’s nothing in the rules or the law that says you can’t do routine experimentation. Not everything in the world is set down and quantified. But if it’s doing its job, if it’s blocking — if it didn’t work adequately without the filters and it does work adequately with the filters, it’s substantially blocking and it’s achieving its intended purpose.
THE COURT: Well, is the amount blocked each time different? In other words—
HONEYWELL’S COUNSEL: Well, I think — I guess, the reality is if the display has a changing image, what’s actually blocking is going to vary with what’s in the — what the output is of the display.
THE COURT: Of the display.
HONEYWELL’S COUNSEL: I think as a general matter the filter properties are not going to change, you know. So that’s an implementation area. But, again, this is not a patent that’s designed to sort of figure out exactly how you implement, nor do you have to. But the invention here is the notion of striking a compromise, it’s block some light that makes the night vision goggles suitable and, you know, permit enough so you can see color in the display.... There are really three issues. The first one, I think we’ve actually touched on the first one a little bit here, because the claim talks about substantially blocks. We’ve talked about obstructing passage sufficient to work for its intended purpose. And the Defendants have added in the word, a large degree. Well—
THE COURT: Go back ... It seems to me — obstructed to me is kind of a measure. It seems to me that you’re — it implies to me that you are blocking more in your definition than they are in theirs.
HONEYWELL’S COUNSEL: That’s funny, because I certainly hadn’t intended that, Your Honor. We say obstructs it sufficiently to make it work. They say obstructs a large degree. I guess our view is it doesn’t make much sense to go from substantially to large degree. You’re substituting one word of degree for another one, ... they’re trying to import a large measure of blockage in there. And it may not have to be a large amount. It just has to be substantial enough to do the job. So we think [the defendants are] the ones who are putting in a measure of degree of blockage that’s just not there. And it really doesn’t make much sense to take one relative term of degree and swap it out for another one. Claim construction doesn’t sort of compel you to sort of say let’s change every word in the claim and come up with a synonym for it. Because it’s not particularly helpful to go from one syn- *475 onyxn to another, ... there’s nothing that’s compelling. Large degree, for example, is not anywhere in the claim. It may well be ... one of many definitions of substantially[.] But I don’t think that means ... we haven’t gone in the claim and every word you find substitute a dictionary definition. And oftentimes dictionary definitions don’t shed any light on things.
TR at 707-12.
^ ^ ^
HONEYWELL’S COUNSEL: [T]he claim language itself says substantially blocks. And in their construction, they then convert that. I think their large degree of is probably their synonym for substantially. So what they’re doing is saying let’s take substantially, which is a matter of degree in the claim, and let’s stick in a large degree in lieu of that word in our construction. And I don’t think that necessarily sheds a lot of light on the subject. And frankly, whether it’s a large degree or an adequate degree or a — is — all that really matters is is it doing the job.
THE COURT: Would it be the same if they had you eliminate the words a large degree so it would be to render light unsuitable?
HONEYWELL’S COUNSEL: I have a problem with that part of the construction, too____they have substituted blocks ... if you were to figure out where that came from, the light — the unsuitable for passage is a dictionary definition — one dictionary definition for the word blocks. I can block the door and render it unsuitable for passage, right. In the context of a filter and light, it’s just not the appropriate definition because — actually filters don’t render light unsuitable for passage. That’s not what [filters] do. So it’s just the wrong definition. Filters do block. Or they can absorb or they can reflect. There’s all sorts of ways filters work. They don’t render light unsuitable for passage. It’s just not technically correct. It doesn’t do anything for the light. It either sort of turns it into heat or redisburses it. So we don’t think it’s a proper choice for a dictionary definition in this case. So for that reason we— we think that the more proper — the notion of blockage is obstructs the passage.
THE COURT: All right.
HONEYWELL’S COUNSEL: We agree it obstructs the passage, but doesn’t render the light unsuitable. And ... the last point, substantially blocks requires that the night vision aid — or doesn’t require the night vision aid or the entire invention to be used for its intended purpose. I’m not quite sure where the [Government is going with that. But the claim itself to us seems to suggest that the substantially blocked terminology is being used in the context of the night vision aid____
THE COURT: Are you going to move to the difference between [defendants’] use of the word invention and your use of the word night vision aid? Because your invention is larger than just — or more than just the aid itself.
HONEYWELL’S COUNSEL: Well, the invention is ... what the filter is doing ... it’s the filter that is substantially blocking. And that’s the filter on the night vision aid to render the night vision aid unsuitable. I don’t know that that’s a huge issue for us. I just think that what we’ve proposed is correct____ I don’t want to muddy up the issue into ... I don’t know what [defendants are] suggesting we have to prove when they say the invention is used by — I guess I don’t understand — I don’t think they’ve helped us any here.
TR at 707-16.
iii. Post-Claim Construction Hearing Briefs.
In post hearing briefing, Honeywell reaffirmed that “substantially blocks” appears in three claims to describe the “function of three different filters,” ie., 1.) the first optical filter in Claim 1; 2.) the second optical filter in Claim 1; and 3.) the fourth filter in Claim 2. See 4/1/05 Honeywell Brief at 47 (citing ’914 patent, col. 6, 11. 5, 8-9, 26). Therein, Honeywell contended that the term “substantially blocks” has the same meaning in each of the claims, ie., “obstructs the passage of light sufficiently to permit the night vision aid to be used for its intended purpose.” Id. Each term has the same *476 meaning each time that it is used, i.e., “obstruct the passage of light sufficiently to permit the night vision aid to be used for its intended purpose.” 4/1/05 Honeywell Brief at 47. When “block” is used in context with the claim, Honeywell asserts that it is clear that “light is being rendered unsuitable and that the ‘obstruction’ is an optical filter.” Id. at 36 (citing ’914 patent, claim 1, ie., “optical filter ... that substantially blocks light.”). Honeywell further advised the court that the “objective of the substantial blocking is to prevent light from the local display from interfering with the night vision goggles ... [ie.,] the appropriate benchmark for measuring the degree to which light must be blocked is whether the night vision aid works for its intended purpose.” Id.; see also 4/15/05 Honeywell Brief at 23 (emphasis added) (“no quantitative test is required for those skilled in the art to understand the meaning of substantially blocks or determine the limits of the claim.”).
Honeywell also attacked defendants’ interpretation of “substantially” to require that the offending light is to be blocked “to a large degree.” 4/1/05 Honeywell Brief at 47. To which Honeywell appropriately asked the rhetorical question: by how large a degree? Id. at 48. Although Honeywell conceded that no quantifiable answer is provided by the Government, the court was informed that the ’914 patent “implicitly defines substantially blocks by describing the objective of filtering light for the display ‘to prevent light which originates at the full color display from overwhelming the night vision aid.’ ” Id. at 48 (citing ’914 patent, col. 2,11. 6-7). Therefore, “substantially” should be construed as “requiring the night vision aid to function for its intended purpose.” Id. (citing Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed.Cir.1984)) (“[The] court must determine whether the patent’s specification provides some standard for measuring that degree.”). Honeywell also urged that “in the context of the ’914 patent, ‘substantially’ should be construed as requiring the night vision aid to function for its intended purpose ..., ie., if the filters do not block light for the display sufficiently to allow night vision goggles to be used in the cockpit, then the claim is not infringed.” 4/1/05 Honeywell Brief at 48.
Finally, Honeywell challenged defendants’ proposed construction of “such that the invention is fit for the intended purpose” to render the claim “vague and indefinite.” 4/1/05 Honeywell Brief at 48. Honeywell asserted, however, without citation, that “the ’914 patent imposes no such requirement.” Id. On one hand, Honeywell argued that “[t]he objective of substantially blocking ‘light from the local color display’ pertains solely to the night vision aid.” Id. On the other, Honeywell argued that “one of the objectives of the [’914 display system] invention is to allow the full color display in a NVIS compatible cockpit” — an “objective not invoked by the substantially blocks.” Id. (emphasis in original). Nevertheless, the court was advised that the objective of allowing a full color display in a NVTS compatible cockpit is “achieved by ... the requirement for a color display and a red color band.” Id. (emphasis added) (citing Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed.Cir.2004)) (holding that patentees are not required to include in each claim all of the “advantages or features described as significant or important in the written description.”); Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1367 (Fed.Cir.2003) (“[W]hen the written description sets out two different problems present in the prior art, is it necessary that the invention claimed, and thus each and every claim in the patent, address both problems? We conclude ... the answer is no.”).
b. The Government’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
Prior to the claim construction hearing, the Government argued that the “ ‘ordinary meaning’ of ‘substantially blocks’ is clear from intrinsic evidence ... the claim terms ... read in light of the specification, ie., “filtration must ‘be very efficient’ so light from the display will be nearly completely blocked.” See 1/14/05 Def. Joint Brief at 36-37 (citing ’914 patent, col. 1, 11. 1-54). Since the purpose of the optical filter “is to allow *477 the use of a color display in connection with an NVG ... ‘substantially’ means ‘to a larger degree ... such that the invention is fit for its intended purpose.’” 1/14/05 Def. Joint Brief at 37 (citing ’914 patent, col. 3, 11. 8-11) (“[T]he purpose of the optical filter is to allow the use of a color display in the connection with an NVG.”).
The Government, however, appeared so uncertain about the persuasiveness of this argument that it resorted to a dictionary definition and expert testimony in support before even mentioning the prosecution history in passing, that it attempted to reinforce by the disfavored testimony of the inventor. Compare 1/14/05 Def. Joint Brief at 36-37 (citing Webster’s and Dr. Task) with 1/14/05 Def. Joint Brief at 38 (“This purpose is evident from ... the prosecution history and repeated by the inventors.”) (citing ’914 Wrapper D000109; Ex. 5 Cohen 7,11.16-18).
On the other hand, the Government persuasively argued that the word “overwhelm” is not defined in the patent, discussed in the prosecution history, and apparently is not a common term used by one skilled in the art. Therefore, to define “substantially blocks” by reference to “overwhelm” could render Claim 1(a), Claim 1(b) and Claim 2(b) indefinite. See 1/14/05 Def. Joint Brief at 38.
ii. At The Claim Construction Hearing.
At the claim construction hearing, the Government summarized the three significant differences in the parties’ construction of the term “substantially blocks.”
GOVERNMENT’S COUNSEL: [T]he biggest difference ... is the invention versus night vision aid____[W]e believe that [our construction] provides a workable test as one reading the patent would understand it____[0]ne skilled in the art ... in night vision goggle compatible, will understand what the invention as a whole was meant to do.
THE COURT: I was surprised that both sides decided they wanted to construe this. Do you want to shed some light as to why?
GOVERNMENT’S COUNSEL: Why construe this at all? ... Well, Your Honor, I think it becomes necessary because, first of all, substantially ... has different meanings depending on the application and depending how the specification shows you should use it.
THE COURT: Okay.
GOVERNMENT’S COUNSEL: Second of all, substantially has different meanings depending on what the purpose of the invention is. So we wanted to make clear what the purpose of the invention was. Also we want to give Your Honor sort of a context for deciding this in terms of what someone would understand substantially blocked to mean.
THE COURT: Okay.
GOVERNMENT’S COUNSEL: Substantially blocked was used in the claims. Your Honor was right to point out that there are three times it’s used. We don’t believe it’s always used in conjunction with the goggles.... [Y]ou can see that from 1(a). It says the filter passes light comprised of predetermined color bands, including predetermined red color band, and substantially blocks light associated with color bands other than that predetermined color band. That filter is on the display.
TR at 717-18.
$ $ $ $ $
GOVERNMENT’S COUNSEL: The filter in part A is the filter on the display.... This filter in part B is the filter on the goggles. Both of them must substantially block, whatever that means, whatever we decide that to mean.
THE COURT: Right. But they’re two different items.
GOVERNMENT’S COUNSEL: Two different items. Two different things. We think that draws the invention in as a whole as opposed to just the night vision aid____[T]here’s nothing in the claim that tells you exactly what substantially means and what it doesn’t. It doesn’t give you a whole lot of context. But the specification uses substantially blocked only once. And, again, it’s not extremely helpful. But what it does tell you is that the other filters, 23, 25, ... probably 24 may need to be in there as well, and that refers to figure 3, *478 which — ... 23 and 25 are the filters that— you know, it says 25 being a notch filter. The other filter 23, 25,1 think that’s probably a typo. I think they probably meant to refer to one or the other. Substantially blocks light in a predetermined red color band. So that’s the one use of it in the specification____
THE COURT: Let me ask you something totally different. Is substantially blocks in one sense redundant if you use the word notch?
GOVERNMENT’S COUNSEL: No, Your Honor. Because it has to block light or substantially block light of—
THE COURT: But I thought that’s what [it] did, when we were looking at what a notch was, the notch did block within that range.... Do you remember what I’m talking about?
GOVERNMENT’S COUNSEL: I do exactly know what you’re talking about.... Filters don’t have to be 100 percent blocking or passing.
THE COURT: So the notch itself is not a total block.
GOVERNMENT’S COUNSEL: You could have a notch that only blocks at 50 percent.
THE COURT: Okay.
GOVERNMENT’S COUNSEL: I think that what this does is it adds in it must substantially block, whatever substantially means. Now, we think there’s context for this given in the specification, because it says filtration of the objectionable light must be very efficient because small amounts of light within the active frequency range of the night vision goggle will overwhelm the aid. So' it ties it to very efficient blocking. The blocking must be very efficient.
THE COURT: I thought that was an unusual use of words, too____ [F]iltering needs to be efficient.
TR at 719-22.
Hs Hí Hí * * 4*
GOVERNMENT’S COUNSEL: Now, the term substantially blocks isn’t used in the prosecution history [or] in any of the art. We believe that it’s a common word without special meaning. A dictionary definition is appropriate. The renders light unsuitable for passage comes straight out of [Webster’s] dictionary. They use [Webster’s] dictionary as well, a different definition. We believe ours is appropriate because it’s a transitive verb, and because it says that the filter substantially blocks light. So if the filter is acting on the light and needs to render the light unsuitable for passage.... Now, getting to ... substantially in patent law is a term of magnitude or approximation.... If you look at claim 3, [it] says substantially 5 to 20 nanometers wide. We haven’t even discussed claim 3 ____ But substantially is used there as an approximation term. Approximately 5 to 20 nanometers wide. But it can also be used as magnitude. Now what you do to determine which one is you look at the specification and how it’s used in the specification. The specification says it must be very efficient. Okay. Well, what does very efficient mean. That’s a matter of degree as well. So that leads you to the conclusion that substantially means to a large degree. Now, [Honeywell’s counsel] has said well, that’s just substituting one— one word for another.... But we think that it’s actually clarifying between the two uses of substantially in patent law, which is that it’s signifying a large degree. Now, I would also point out that [Honeywell’s] construction suffers from the same fault, which is they use sufficiently. That’s a matter of degree as well ... substantially necessarily has a sort of mushy definition. And so sufficiently large degree, ... [defendants’ construction] is more appropriate because of the very efficient language. You understand that it has to be, to a fairly high degree, a blockage. That’s why we inserted that language there. And I don’t think it’s redundant ... [or] useless to make that construction. Now, I want to also talk briefly about how one of skill in the art would understand what substantially block means, because I think that goes to the invention as a whole.
THE COURT: That’s why you use the word invention in your definition.... As opposed to just the night vision aid.
*479 GOVERNMENT’S COUNSEL: That’s correct, Your Honor. We believe the law is clear that when you’re construing substantially, you look to the purpose of the invention. And so substantially has to mean that whatever it does, it achieves the purposes of the invention. I think that’s pretty much common sense, but it’s also the law. So you need to look at the invention as a whole. Now, what’s the purpose of the invention as a whole? Is it to have a workable night vision aid? Yes. But there’s more to it than that. Because it’s also you have to have a color display— THE COURT: You’ve got to be able to read at the same time.
GOVERNMENT’S COUNSEL: That’s readable, usability within the same environment as the night vision aid. So that adds a little bit more complexity to the whole question. I — I think it’s going to come out later, and again, I don’t want to get into it too much, but I think that the— the night vision aid being workable is not a usable distinction. And — a usable measure of what substantially blocks is. If you look at the invention as a whole, there were known ways to measure compatibility between a color display and a night vision goggle in 1985. And I’ll give you two of them right here.
THE COURT: In terms of quantitative — ■ quantified?
GOVERNMENT’S COUNSEL: There’s both a quantitative and a qualitative way to do it. The quantitative way to do it is you measure overlap, you look at the curve that the filtered light is putting out. And you look at the curve that the sensitivity of the goggle is. Then you do sort of a mathematical integration under the overlap. Because they’re going to overlap ... the area under that had to be under a certain amount____[I]t was called ANVIS radiance.... [Tjhat’s actually how the military measures compatibility today. But it was coming out in 1985 ... is even talked about in the prosecution history as one of the ways [the military was] looking at making things compatible and measuring whether things are compatible.
^ ^ ^ $
THE COURT: Well, could they have put a measurement into the claim? ... Or is this one ... where you don’t need to because the person skilled in the art automatically is going to know what that number is?
GOVERNMENT’S COUNSEL: [S]omeone skilled in the art would understand. Now, I’m not saying that they adopted it. As I’m going to say here, there are two measurements. We think they give about the same answer.
THE COURT: And what type of skill would the person have to have to know both of these measurements?
GOVERNMENT’S COUNSEL: These were known in the field in 1985. And by the field, I mean the field of night vision goggle compatible lighting and displays.
THE COURT: Okay.
GOVERNMENT’S COUNSEL: It was being developed by the military. They were really the ones that were looking for how to do all of this. Now the qualitative measurement, as I was getting to, is what you would do is ... put a user in a cockpit with the goggles on in a dark hangar, simulating night. And you put a chart with a whole bunch of lines, a contrast chart on the far wall of the hangar. With the lights off. Then you turn on the cockpit lights. And he would be looking through the goggles at this chart. If there was any degradation of performance, they didn’t pass this test____ [T]he first one was designed to sort of mimic the second, but you can get a quantitative measurement rather than qualitative. Now the reason I bring this up is that these were tests that were known at the time. Again, it goes back to definiteness. And a claim has to be understood, the metes and bounds have to be understood by those skilled in the art. And we believe these were out here and they were understood. And, therefore — and these measure whether the invention as a whole—
THE COURT: And the patent examiner would know all that just by looking at this? He would have understood that these two measurements—
*480 GOVERNMENT’S COUNSEL: I think he would have learned by reviewing the prosecution history.... I’m assuming, because I don’t know what the examiner was reviewing____ [T]he problem with — with focusing on whether the NVGs operate is problematic. First of all, ... it’s contrary to the stated purpose of the invention, which comes out at the very beginning of the [’914] patent language, ... [and] says [that] it is desired that a night vision aid be operable while a full color display is ... presented in the vicinity of the goggles. And in particular, to operate them in an environment in which a full color display is illuminated. So you’ve got to have a workable goggle and workable display. If you just focus on the goggle, you can just turn off the display. Or you can cover it up so it’s not readable during daylight. That’s a big problem. Because if you put too thick of a filter over the top of it, you can’t read it during the day.... But the problem is Honeywell can’t tell you what the test for goggles working for an intended purpose is. They’re going to say, well, you look at the patent and the patent says it won’t overwhelm the goggles. What does overwhelm mean? And they’ll give you a list of things. Now, my problem with that is that if you’ve got five different tests and you meet three of them, do you fall within or without the claims. And that’s the real problem here. So our view is that, if you only look at the goggles, the claims become indefinite because you can’t — there’s no accepted, in 1985, measure for whether a goggle works for its intended purpose. That’s why you need to look at the invention as a whole____[T]he prosecution history ... comes out of the same article that we were discussing earlier with the Kelly chart, which is by two gentlemen named Breitmaier and Reetz. And if you recall, Your Honor, ... Ferdinand Reetz was the gentleman who drafted that document that described the rationale behind the military standard... [that] comes from a — the 10th European Rotoreraft Forum that — ... is August 28th through 31st, 1984---- [I]t’s part of Defendant’s Exhibit 36 ... DE 1621[.]
THE COURT: Okay.
GOVERNMENT’S COUNSEL: Now, do you see the spectral radiance limitations in ... the middle of the page? It talks about defining a new quantity called ANVIS radiance, defined in the units of AR. It’s the amount of energy emitted by a light source that is visible through the ANVIS defined as the integral of the curve generated by multiplying the spectral radiance of the light source by the relative spectral response of the ANVIS. That’s what I was talking about before, the two curves. When you multiply the two curves together, you get some — some function. And then what this shows you is that ANVIS radiance is you integrate from 450 to 930 the — that function.
THE COURT: And why do you want to know that?
GOVERNMENT’S COUNSEL: Because ... that’s a measure of how much light is getting through____ And so if you integrate under it, that gives you the area under the curve.
THE COURT: So under ... is what you’re telling me is that you could actually determine whether it was substantially blocked or not by utilizing this formula?
GOVERNMENT’S COUNSEL: There was a standard set — and it’s in here that the military says [its] — okay.... They wanted to use — helicopter pilots wanted to use these goggles. The problem was ... defoliated trees, trees with no leaves on them are very dark, don’t reflect very much light at all. And you want to fly on nights where there’s no full moon. You want no moon at all because you want the other guy not to see you coming____Now the problem is ... you don’t want anything to show up brighter than tree bark and starlight. So what they did is calculated what the radiance was of tree bark and starlight and came up with a number.... That ends up being this number here. It says that the cockpit lights should be no brighter than the outside scene when viewed through the ANVIS. The ANVIS radiance of the cockpit lights should not exceed 1.7 times 10 to the negative 10 AR when the cockpit is lighted to an acceptable level. So that was a standard that *481 was known ... you could use that to determine whether a display was compatible with your night vision goggle.
THE COURT: Okay. And how does that affect the substantially blocks?
GOVERNMENT’S COUNSEL: We believe that that is one measure that one of skill in the art would use to determine—
THE COURT: To determine whether it’s substantially blocked.
GOVERNMENT’S COUNSEL: Whether it was substantially blocked. If it met that standard, it would be substantially blocked____This was known, this is a test that was known—
THE COURT: At the time of the patent.
GOVERNMENT’S COUNSEL: — in 1985. And—
THE COURT: Why wasn’t it referenced then? Does it need to be?
GOVERNMENT’S COUNSEL: Well, I don’t know. I think it was referenced in that it was inserted in the prosecution history.
THE COURT: Okay.
GOVERNMENT’S COUNSEL: So it was before the Patent Office____The examiners presumed to have considered everything in the prosecution history.... So it was at least familiar with this. As I said, there was another measure that was being used at the time that was this qualitative measurement, you sat in the cockpit and looked at the chart. But I think that the idea was that those were approximations. I don’t think Honeywell is going to give you a test such as this that is going to give you ... what can the night vision goggle be used for. What is the intended purpose of the night vision goggle. Well, it’s to look outside. Well, what is preventing the intended use from happening? Is it a 10 percent reduction in view? Is it a 20 percent reduction in view? They don’t know. We don’t know. So you ... need to look at the whole thing.
TR at 722-37 (emphasis added).
iii. Post-Claim Construction Hearing Briefs.
The Government’s post-hearing claim construction brief argued, again without citation to authority, that the “ordinary meaning of ‘substantially blocks’ ... is to render a large degree of light unsuitable for passage by an optical filter, such that the invention is fit for the intended purpose.” 4/1/05 Gov’t Brief at 44. Moreover, in this regard, the Government advised the court that it is necessary to consider “some extrinsic evidence to determine the degree of blocking that would have been considered ‘substantial’ at the time of the invention ... because the claims ... [¿a, the specification and prosecution history] context provides little information as to the meaning of the term ‘substantially.’” Id. The Government conceded, however, that the specification’s use of “blocks” implies that an optical filter was acting on “incident light to obstruct or prevent its passage.” Id. (citing ’914 patent, col. 3,11. 22-24).
c. Intervenor Lockheed Martin’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
Lockheed Martin’s proposed construction of “substantially blocks” was the same as that of the Government. See 1/14/05 Def. Joint Brief at 36-38.
ii. At The Claim Construction Hearing.
Lockheed Martin also adopted the Government’s proposed construction of “substantially blocks” at the claim construction hearing. See TR at 737.
iii. Post-Claim Construction Hearing Briefs.
Likewise, in Lockheed Martin’s post-claim construction briefs, the Government’s proposed construction of “substantially blocks” also was adopted. See 4/1/05 Int. Brief at 48; see also 4/15/05 Int. Brief at 24.
d. The Court’s Construction Of “Substantially Blocks” In This Case.
In Claim 1(a), a first optical filter is described as a notch filter that “substantially blocks” light associated with color bands. *482 See ’914 patent, col. 6, 1. 5. The court construes the verb “blocks” as preventing light from a color display from reaching the night vision aid and “substantially” to mean in a sufficient amount to enable the night vision aid to function. See ’914 patent, col. 2,11. 6-7 (“It is ... desired to prevent light which originates at the full color display from overwhelming the night vision aid.”); see also ’914 patent, col. 2,11. 13-15 (“[T]he first optical filter is placed over displays, which may otherwise present light that would interfere with the ANVIS.”); Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed.Cir. 2001) (quoting Pall Corp. v. Micron Seps., Inc., 66 F.3d 1211, 1217 (Fed.Cir.1995)) (“We note that like the term ... ‘substantially’ is a descriptive term commonly used in patent claims to ‘avoid a strict numerical boundary to the specified parameter.’ ”); Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1056 (Fed.Cir.1988) (The term “ ‘substantially5 ... must be interpreted in light of the specification and prosecution history[.]”).
In Claim 1(b), a second optical filter is described as a notch filter that “substantially blocks” light associated with color bands. See ’914 patent, col. 6,11. 8-9. Here, too, the court construes the verb “blocks” as preventing light from a color display from reaching the night vision aid and “substantially” to mean in a sufficient amount to enable the night vision aid to function. Id.
In Claim 2(b), a fourth filter located at the night vision aid works with other filters to “substantially block” at least a narrowband of the red color band from being admitted into the night vision aid. The court construes the verb “block,” at a minimum, as preventing light from the narrowband of the red color band from entering the night vision aid. The use of the verb “being admitted” renders the term “substantially blocks” unnecessary surplusage, since if the light at issue is prevented from being admitted into the night vision aid, ipso facto, such light also is substantially blocked.
14. “First,” “Second,” “Third,” “Fourth,” And “Filter.”
Claim 1(a) includes the term “first optical filter” twice. See ’914 patent, col. 6, 11. 1-2. Claim 2(b) includes the term “second optical filter” twice. See ’914 patent, col. 6, 11. 7-8. Claim 2(a)(1) includes the term “first filter.” See ’914 patent, col. 6, 1. 6. Claim 2(a)(2) includes the term “second filter.” See ’914 patent, col. 6, 1. 18. Claim 2(a)(3) includes the term “third filter.” See ’914 patent, col. 6, 1. 20. Claim 2(a)(4) includes the term “fourth filter” twice. See ’914 patent, col. 6, 11. 23-24.
The parties have proposed the following competing constructions of “First,” “Second,” “Third,” “Fourth,” and “Filter:”
[[Image here]]
Honeywell Markman Slide 188; Gov’t Mark-man Slide 075 (bold added by parties).
The court has not repeated the parties’ arguments here since, as a matter of law, it is settled that the use of “first,” “second,” “third” is clearly “not a serial or numerical limitation, [because] the claim does not follow a consecutive order.... The claim is thus clearly not using the ordinals-first, second, third-to show a consecutive numerical limit but only to distinguish or identify the various members of the group.” Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1373 (Fed.Cir.2005); see also 3M Innovative Properties Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed.Cir.2003) (“The use of the terms ‘first’ and ‘second’ as common patent-law convention to distinguish between repeated instances of an element or limitation.”). Accordingly, the court declined to construct “first,” “second,” “third,” etc., to impose a serial limitation on a claim, but rather identify the various members of a group.' See Gillette, 405 F.3d at 1373-74 .
*483 15. “Blue Color Band.”
The term “blue color band” appears in the Preamble to Claim 2. See ’914 patent, col. 16, 1. 13. In addition, “blue color band” appears in Claim 2(a)(1). See ’914 patent, col. 16,1.17.
The parties have proposed the following competing constructions of “blue color band:”
[[Image here]]
Honeywell Markman Slide 190; Gov’t Mark-man Slide 079 (bold added by parties).
a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
In Honeywell’s pre-hearing brief, the court was advised that “[i]n the context of the patent, blue color band means a range of wavelengths with the blue region of the visible spectrum.” 12/23/05 Honeywell Brief at 36 (emphasis in original) (citing Tannas Initial Report 11 17; Tannas Rebuttal Report H18). This construction was represented as being consistent with the specification wherein the “blue color band 53 is the light emitted by a monochromatic display transducer, such as a CRT, in the blue region of the visible spectrum.” 12/23/04 Honeywell Brief at 37 (citing ’914 patent, col. 4,11. 40-43) (“the local source of light 50 comprises ... blue 53 color bands sourced from monochromatic display transducers, such as for example three monochromatic cathode ray tubes[.]”); see also id. at ’914 patent, col. 4, 11. 46-47 (“Each color band 51-53 provides a monochromatic image in one primary color for the full color display.”). Honeywell argued that it is improper to define “blue color band” using specific wavelengths. See 12/23/04 Honeywell Brief at 37. In the alternative, if the court were to define “blue color band” by wavelength, Honeywell asserted that the defendants’ proposed ranges are incorrect, referencing U.S. Patent No. 4,390,637, wherein the following wavelengths for the blue color band emitted by a cathode ray tube were represented to be 430-460 nanometers, as opposed to the defendants’ proposed 455 — 492 nanometers. Id. (citing USPTO Patent No. 4,390,637, col. 5, 11. 20-22). Based on this prior art, and other extrinsic evidence, Honeywell warned the court that defendants have specified a lower limit for the blue color band that excludes the wavelengths emitted by a blue CRT, which the ’914 patent provides as “an example of a blue color band.” 12/23/04 Honeywell Brief at 38 (citing ’914 patent, col. 4,11. 40-43).
ii. At The Claim Construction Hearing.
HONEYWELL’S COUNSEL: Our position, for the same reasons we described previously, is that it’s just not appropriate to put wavelength ranges. And now I have this same concern that I’m — that once you start using these ranges which came from the same source, I don’t know what they mean or how they get interpreted. I’m not so sure — I have now come to the conclusion they don’t shed much light on the subject. I’m not sure if anybody is any better off trying to figure out what’s red, green or blue based upon these numbers, because we’re all interpreting the actual numbers differently. But we do think, once again, there is, as you remember from all of the arguments — literature I showed Your Honor has RGB, red, green, blue. So the same sort of data that’s out there to define or empirically establish red is out there to empirically establish green and blue. So I think in the end these issues are going to — I think ought to resolve themselves the same way, however that is. And for that reason, we haven’t said a whole lot about this. Again, as you’ll see, the specification, in the same area it does talk about the green and blue bands the same way it talks about the red band. And by the way, just to — I didn’t address [Government’s counsel’s] point before, but I’m happy to do it. These are not — there are no such things as monochromatic CRTs, but you can get pretty close. If you look at the — they are in a sense one color, which is what is meant by that, but they’re not monochromatic in the Kelly chart sense. Because there is no such thing as a phosphor that looks like that. They all have a spike and a wavelength around them. So this is perhaps not *484 the most artful language, but those skilled in the art would certainly understand there is no such thing as a monochromatic CRT, at least I don’t think there is.
TR at 686-87.
HONEYWELL’S COUNSEL: And that is because, if you look, they have selected a range of 455 to 492, for example, for blue. If you look at the Kelly chart — and by the way, there’s absolutely — there’s only one Kelly chart. So whatever is in the intrinsic evidence, whatever — it’s got to be a bad copy, because there aren’t different versions of the Kelly chart. And that’s what’s referenced in the Breitmaier and Reetz thing. So whether it looks like 620 or not, it’s just not 620. Because it says it’s the Kelly chart. And blue on the Kelly chart starts at around 460 and ends at 480. And their construction is 455 to 492. So once again, 492 extends all the way out to about here. So once again, you know, we have lots of experts disagreeing on those ranges. This came out of [Mcgraw-Hill] again. This is the Kelly chart, yet a different one. And JEDEC would be different still.
TR at 688-89.
iii. Post-Claim Construction Hearing Briefs.
After the claim construction hearing, Honeywell conceded that the “blue color band” could be construed as “light that can be characterized ... between approximately 455 and 492 nanometers.” 4/1/05 Honeywell Brief at 47. Although Honeywell changed its position regarding the nanometer ranges that the defendants designated for “blue col- or band,” Honeywell, nevertheless, maintained that if “blue color band” is to be construed by specific wavelengths, the court should specify a “dominant wavelength for the same reasons argued regarding the ‘red color band.’ ” Id.
b. The Government’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
The Government advised the court that “blue color band” means “a range of color in the range from 455 and 492 nanometers.” 1/14/05 Def. Joint Brief at 39 (citing Ex. 30 Mcgraw Hill at 701-02). The Government challenged Honeywell’s construction based on extrinsic patents and phosphor references as providing “no metes or bounds.” 1/14/05 Def. Joint Brief at 39. The Government also noted that Honeywell’s reliance on a numerical indication of acceptable wavelengths from phosphor references is an impermissible use of extrinsic evidence, since the ’914 patent contains no mention of specific phosphors, but, relies on such sources to expand the claim terms — to the point of indefiniteness. Id.
ii. At The Claim Construction Hearing.
GOVERNMENT’S COUNSEL: We’ve, again, shown what one of ordinary skill in the art would understand, which is definite wavelength boundaries____ [W]e believe this is known to those skilled in the art. The analysis is exactly the same as with red.
TR at 692.
# # * * * ❖
GOVERNMENT’S COUNSEL: And, again, blue, 455 to 492, bleu, 455 to 492. The brief — and Mr. Gotts didn’t turn to this, but their brief cites two things, one is the Westinghouse phosphor guide, we’ve discussed that to death. And then the U.S. patent 4,390,637, they say that shows different ranges than ours. I don’t care. It’s extrinsic. It doesn’t matter. And finally, I don’t know what their construction is anymore. The one that was popped up there, the one they had before that was in the briefs, the blue region and green region, again the same problem with the red color bands. It’s unworkable, it’s indefinite. Or if it is definite, we should decide where the boundaries are.
THE COURT: But the PTO didn’t bounce it for that reason.
GOVERNMENT’S COUNSEL: No, because we think that one of skill in the art, *485 when they look at blue ... color bands, something clicks in their mind and they know what the wavelength boundaries are. But you and I maybe don’t, and so we need to go to the dictionary. The PTO, the examiner is either one of skill in the art or he educates himself to skill in the art. So he didn’t bounce it for that same reason. He knew—
THE COURT: As someone who works with color in patents.
GOVERNMENT’S COUNSEL: Possibly. Or again, he can educate himself just as well as we can.
THE COURT: Okay.
GOVERNMENT’S COUNSEL: So I don’t know what their new definition is that they’re going to come up with, the same way they come up with the red one. I don’t know if they are. If they don’t, I think that’s wrong and indefinite. If they do come up with a new one, if it’s anything like the red one, I again think it’s wrong. That’s all I have.
TR at 693-94.
iii. Post-Claim Construction Hearing Briefs.
Although Honeywell changed its position after the claim construction hearing to agree with the Government that the nanometer range of “blue color band” was “between approximately 455 and 492 nanometers,” Honeywell continued to seek a construction that designated a dominant wavelength. 4/1/05 Gov’t Brief at 47. Likewise, the Government continued to argue that Honeywell’s assertion that peak wavelength should be adopted as the “proper measure” was erroneous. 4/1/05 Gov’t Brief at 48; see also id. at 34 .
c. Intervenor Lockheed Martin’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
Lockheed Martin adopted the Government’s proposed construction of “blue color band.” See 1/21/05 Def. Joint Brief at 39.
ii. At The Claim Construction Hearing.
Lockheed Martin also adopted the Government’s position regarding the meaning of “blue color band” at the claim construction hearing. TR at 694.
iii. Post-Claim Construction Hearing Briefs.
After the claim construction hearing, Lockheed Martin continued to adopt the Government’s proposed construction of “blue color band.” See 4/1/05 Int. Brief at 50.
d. The Court’s Construction Of “Blue Color Band” In This Case.
The court construes “blue color band” as a range of color from 455 nm to 492 nm. For the reasons discussed in the court’s construction of “red color band,” however, the court has declined to designate a dominant or peak wavelength to the construction of “blue color band.”
16. “Green Color Band.”
The parties have proposed the following competing constructions of “green col- or band:”
[[Image here]]
Honeywell Markman Slide 190; Gov’t Mark-man Slide 079 (bold added by parties).
a. Honeywell’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
In Honeywell’s pre-hearing brief, the court was advised that “[i]n the context of the patent, green color band means a range of wavelengths within the green region of the visible spectrum.” 12/23/04 Honeywell Brief at 36 (emphasis in original) (citing Tannas Initial Report If 17, Tannas Rebuttal Report 11 18). The court was informed that this construction is consistent with the specification wherein the “green color band 52 is the light emitted by a monochromatic display *486 transducer, such as a CRT, in the green region of the visible spectrum.” 12/23/04 Honeywell Brief at 37 (citing ’914 patent, col. 4, 11. 40-43) (“[T]he local source of light 50 comprises ... green 52 ... color bands sourced from the monochromatic display transducers, such as for example three monochromatic cathode ray tubes[.]”); see also id. (citing ’914 patent, col. 4, 11. 46-47) (“Each color band 51-53 provides a monochromatic image in one primary color and for the full color display.”). Honeywell also argued that it is improper to define “green color band” using specific wavelengths. See 12/23/04 Honeywell Brief at 37. In the alternative, if the court were inclined to define “green color band” by wavelengths, Honeywell asserted that defendants’ proposed wavelengths are incorrect, referencing U.S. Patent No. 4,390,637, wherein the following wavelengths for the green color band emitted by a cathode ray tub is represented to be 500-570 nanometers, as opposed to defendants’ proposed 492-577 nanometers. Id. (citing U.S.P.T.O. Patent No. 4,390,637, col. 5, 11. 20-22). Based on this prior art, and other extrinsic evidence, Honeywell concludes that defendants have specified a lower limit that excludes the wavelengths emitted by the green CRT. See 12/23/04 Honeywell Brief at 37.
ii. At The Claim Construction Hearing. ,
Honeywell argued at the claim consideration hearing that “green color band” should be construed under the same parameters as “blue color band.” See TR at 685.
iii. Post-Claim Construction Hearing Briefs.
After the claim construction hearing, Honeywell changed its position to agree with the Government that the nanometer range of the “green color band” was “between approximately 492 and 577 nanometers.” 4/1/05 Honeywell Brief at 47. Honeywell continued to insist that the “green color band” should be construed by a dominant wavelength.
b. The Government’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
The Government advised the court that “green color band” means a “range of color in the range from 492 to 577 nanometers.” 1/14/05 Def. Joint Brief at 39 (citing Ex. 30 Mcgraw-Hill at 197).
ii. At The Claim Construction Hearing.
GOVERNMENT’S COUNSEL: [0]ne of skill in the art, when they look at ... green color bands, something clicks in their mind and they know what the wavelength boundaries are.
TR at 693.
iii. Post-Claim Construction Hearing Briefs.
After the claim construction hearing, the Government continued to press the court to construe “green color band” by peak wavelength. See 4/1/05 Gov’t Brief at 48; see also 4/15/05 Gov’t Brief at 23.
c. Intervenor Lockheed Martin’s Proposed Construction.
i. Pre-Claim Construction Hearing Brief.
Lockheed Martin’s proposed construction of “green color band” was the same as the Government. See 1/14/05 Def. Joint Brief at 39.
ii. At The Claim Construction Hearing.
Lockheed Martin supported the Government’s proposed construction of “green color band” at the claim construction hearing. See TR at 694.
iii. Post-Claim Construction Hearing Briefs.
Lockheed Martin’s proposed construction of “green color band” continued to be the same as that of the Government. See 4/1/05 Int. Brief at 50; see also 4/15/05 Int. Brief at 23.
*487 d. The Court’s Construction Of “Green Color Band” In This Case.
The court construes “green color band” as a range of color from 492 nm to 577 nm. For the reasons discussed in the court’s construction of “red color band,” however, the court has declined to designate either a dominant or peak wavelength to the construction of “green color band.”
17. “Narrowband Of The Red Color Band.”
The parties have agreed that the term “narrowband of the red color band,” as used in the claims of the ’914 patent, means “a narrow range of wavelengths within the red color band.” Jt. Stip. H 6.
IV. CONCLUSION.
For the reasons discussed herein, defendant-intervenor Lockheed Martin Corp. is hereby granted the right to intervene in this case pursuant to RCFC 24(a). In addition, the court has determined as a matter of law that the disputed claims discussed herein are to be construed consistent with this Memorandum Opinion and Order Construing Certain Claims of United States Patent No. 6,467,914.
IT IS SO ORDERED.
. Although counsel for all parties collaborated in preparing the January 24, 2005 Technology/Industry Primer, the parties agree that it is not evidence nor a stipulation as to fact or law. See Jt. Primer at 2. The court has obtained permission to reproduce the graphics that are copyrighted by HowStuffWorks.com.
. The '914 patent appears in the record as PMX 1 or DMX 1.
. The relevant facts and procedural background recited herein largely were derived from: the United States Patent No. 6,467,914 (" '914 patent”), granted on October 22, 2002 and issued from United States Patent Application Serial No. 06/786,269 (" '269 application”), originally filed on October 10, 1985, the prosecution history thereof, and prior art; Plaintiffs' December 18, 2002 Complaint ("Compl."); the United States ("Gov't” or "Government”); May 23, 2003 Motion To Issue Notice to Third-Party Lockheed Martin Corp. (“Lockheed Martin”); the Government’s June 16, 2003 Answer ("Gov’t First Answer”); Defendant-Intervenor's September 3, 2003 Motion to Intervene ("Int.Motion"); Plaintiffs' September 9, 2003 Response thereto ("PI. Reply to Int. Motion”); Defendant-Intervenor’s September 17, 2003 Answer ("Int.Answer"); Plaintiffs’ December 23, 2004 Opening Claim Construction Brief (“12/23/04 Honeywell Brief"); Defendants' January 14, 2005 Claim Construction Brief(" 1/14/05 Def. Joint Brief”); Plaintiffs’ January 21, 2005 Reply Claim Construction Brief ("1/21/05 Honeywell Brief”); Plaintiffs' April 1, 2005 Opening Post-Hearing Brief Regarding Claim Construction ("4/1/05 Honeywell Brief”); the Government’s April 1, 2005 Post-Hearing Claim Construction Brief ("4/1/05 Gov't Brief”); Defendant-Intervenor's April 1, 2005 Post-Mark-man Brief (“4/1/05 Int. Brief”); Plaintiffs’ Post-Hearing Reply Brief Regarding Claim Construction ("4/15/05 Honeywell Brief”); Government’s Post-Hearing Claim Construction Reply Brief (“4/15/05 Gov’t Brief”); Defendant-Intervenor’s April 15, 2005 Reply to Honeywell’s Opening Post-Hearing Brief Regarding Claim Construction ("4/15/05 Int. Brief”); April 15, 2005 Joint Stipulation ("Jt.Stip.”); Plaintiffs’ May 13, 2005 Amended Complaint ("Am.Compl.”); the Government’s May 31, 2005 Answer ("Gov’t Answer to Am. Compl.”); and Defendant-Intervenor's May 31, 2005 Answer ("Int. Answer to Am. Compl.”).
. Initially, Honeywell asserted that the Government infringed U.S. Patent Application Serial No. 06/786,268 (" '268 application”) and U.S. Patent No. 6,142,637 (" ’637 patent"). Honeywell, however, relinquished claims in the ’268 application and '637 patent. See 12/23/04 Honeywell Brief at 1, n.l; see also 5/13/05 Honeywell Motion.
. On January 12, 2005, without requesting leave, the Government and Lockheed Martin filed a joint brief prior to the claim construction hearing that clearly was produced and authored in large part by Lockheed Martin’s counsel. See 1/14/05 Def. Joint Brief; see also TR at 10-16. On January 26, 2005, the court issued a Memorandum Opinion and Order addressing jurisdictional and procedural issues raised by this unilateral action:
The public interest in having transparent judicial proceedings is particularly ill-served where a private party is in fact conducting and funding the Government's defense of a patent infringement case without the Government’s public recognition and specific authorization of such. Therefore, if the Government, in fact, has decided to allow Lockheed Martin to "assume and undertake the conduct and control” of this case, [pursuant to Contract No. F33657-00-C0018 page one and an unidentified one page attachment, see May 23, 2003 Motion for Notice to Third-Party, pursuant to RCFC(b) (Exhibit 2 at 2(i)(3)) ], then the Government should advise the court and parties ____On the other hand, if the Government, in fact, intends to continue to defend this case, the court expects each party to proceed independently, representing the best interests of each party's respective clients.
Honeywell Int’l, Inc. v. United States, 65 Fed.Cl. 809, 810-11 , 2005 WL 1415441 at *2 (Fed.Cl. *416 Jan. 26, 2005, amended and reissued on June 14, 2005) (Memorandum Opinion and Order).
Thereafter, the Government reaffirmed that it would conduct a separate defense, particularly since "Lockheed’s interest in the infringement issue are not co-extensive [with the Government]." TR at 5.
. The following Honeywell exhibits were admitted into evidence: PMX 1-57, 100-105, 110-112. The following Government and Lockheed Martin exhibits were admitted into evidence: DMX 1-38, DX 50-56.
. On February 25, 2005, Honeywell filed a Motion to file a corrected version of the December 23, 2004 Opening Claim Construction Brief. On March 14, 2005, Defendants opposed Honeywell's request to file a corrected brief. On March 17, 2005, Honeywell filed a reply together with Exhibits A-G. On March 24, 2005, the court entered an Order denying Honeywell’s February 25, 2005 Motion, but granted Honeywell leave to discuss any corrections in the post-hearing brief to be filed on April 1, 2005.
. The Invention Secrecy Act provides that “[wjhenever publication or disclosure by the publication of an application or by the grant of a patent on an invention in which the Government has a property interest might, in the opinion of the head of the interested Government agency, be detrimental to the national security, the Commissioner of Patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of the application or the grant of a patent therefor under the conditions set forth hereinafter. Whenever the publication or disclosure of an invention by the publication of an application or by the granting of a patent, *420 in which the Government does not have a property interest, might, in the opinion of the Commissioner of Patents, be detrimental to the national security, he shall make the application for patent in which such invention is disclosed available for inspection to ... the Secretary of Defense, and the chief officer of any other department or agency of the Government designated by the President as a defense agency of the United States.... If, in the opinion of ... the Secretary of a Defense Department, or the chief officer of another department or agency so designated, the publication or disclosure of the invention by the publication of an application or by the granting of a patent therefor would be detrimental to the national security, ... the Secretary of a Defense Department, or such other chief officer shall notify the Commissioner of Patents and the Commissioner of Patents shall order that the invention be kept secret and shall withhold the publication of the application or the grant of a patent for such period as the national interest requires, and notify the applicant thereof.” 35 U.S.C. § 181 .
An applicant may seek damages caused by the issuance of a Secrecy Order. See 35 U.S.C. § 183 (“An applicant ... whose patent is withheld as herein provided, shall have the right ... to apply to the head of any department or agency who caused the order to be issued for compensation for the damage caused by the order of secrecy and/or for the use of the invention by the Government, resulting from his disclosure.”). If full settlement of the matter is not achieved "the head of the department or agency may award and pay to such applicant ... a sum not exceeding 75 per centum of the sum which the head of the department or agency considers just compensation for the damage and/or use." Id.
. The governing statute provides that the specification "shall set forth the best mode contemplated by the inventor of carrying out his invention.” 35 U.S.C. § 112 . Section 112 also requires disclosure of specific instrumentalities or techniques that are the best way of carrying out the invention. Id.
. The United States Court of Appeals for the Federal Circuit recently observed in Nellcor Puritan Bennett, Inc. v. Masimo Corp., 402 F.3d 1364, 1367 (Fed.Cir.2005) that the Authoritative Dictionary of the Instruments of Electrical and Electronics Engineers Standard Terms 435 (7th ed.2000) lists eight different meanings for "filter” when this word is used as a noun.
. Claim 2(b) and Claim 3 include the term “narrowband of the red color band,” which the parties have agreed means "a narrow range of wavelengths within the red color band.” Jt. Stip. V 6.
. The court is mindful that in Modine Mfg. Co. v. U.S. Int’l Trade Comm'n, 75 F.3d 1545 , 1557 (Fed.Cir.1996), the United States Court of Appeals for the Federal Circuit held that "technical terms are not per se indefinite when expressed in qualitative terms without numerical limits ... [m]athematical precision should not be imposed for its own sake." The court, however, does not view “red color band” as a technical term, but rather as a synonym for wavelengths expressed within a range measure of nanometers. See, e.g., '914 patent, col. 4, 1. 13 ("colors at lower wavelengths (red)”).
In addition, as will be discussed below, after the claim construction hearing, Honeywell changed its position to agree to defendants’ proposed construction of "blue color band” and "red color band” by specific ranges of wavelengths. Therefore, Honeywell’s continued insistence that the court should not construe the "red color band” by a specific range of wavelengths, but may do so with regard to "blue color band” and “green color band," has no credible basis in logic.
. - The invention described in this patent "relates to glass for use as a color cathode ray tubes, and in particular, to X-ray absorbing glass for use as panels of color television tubes having a selective light absorption and a controlled chromaticity value.” 4,390,637, col. 1,11. 8-12.
. Although several federal trial courts have issued constructions related to the wavelength of the color red, these constructions have not been reviewed by the United States Court of Appeals for the Federal Circuit. See, e.g., Metrologic Instruments, Inc. v. PSC, Inc., 2003 WL 22077652 , at *2 (D.N.J.2003) ("Because laser light is usually measured in the range of 640-670 nanometers, ... the appropriate wavelength of the color red ____ [T]he high band-pass filter, which blocks ambient light with wavelengths above 640 nanometers, is also called the red pass filter. [The invention at issue] lies at 670 nanometers, in the visible region of the electromagnetic spectrum, at or near the color red."); Jena v. Bio-Rad Lab., 2002 WL 181699 , at *12 (S.D.N.Y.2002) (federal trial court relying on Eugene Hecht and Alfred Zajac, Optics (1974), stating that the low end of the red color range was 622 nm and the high end was 780 nm).
. On April 20, 2005, after the claim construction hearing, Honeywell moved for leave to supplement the record with: Dr. Darrel Hopper, "Draft Standard for Color Active Matrix Liquid Crystal Displays in U.S. Military Aircraft: Recommended Best Practices" (Doc. No. GVT032-0001-00740). Honeywell represented to the court that this document states that red is defined by a dominant wavelength and in the field of military cockpit display, a claimed wavelength of 610 nanometers is considered “red.” See 4/20/05 Honeywell Motion at 1-5 (citing GVT032-00034; GVT032-00037, Table 4). The court admitted this document into the record to create a complete record, but has not relied on it to construe "red color band” because the document was published in June 1994, almost a decade after the '914 patent issued and therefore is irrelevant. Moreover, the document is not a party admission against interest for several reasons, not the least of which is it is a "draft” and never formally was adopted by the Government for any purpose.

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/6653926. Public record. Not legal advice.