`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF WISCONSIN
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`E-IMAGEDATA CORP,
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`Plaintiff / Counter-Defendant,
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`Defendant / Counter-Plaintiff.
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`CLAIM CONSTRUCTION ORDER
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`I.
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`Introduction
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`Plaintiff e-ImageData Corp holds the rights to three relevant patents: U.S. Patent
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`Nos. 8,537,279 (the ‘279 patent) (ECF No. 1-1); 9,179,019 (the ‘019 patent) (ECF No. 1-2),
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`and 9,197,766 (the ‘766 patent) (ECF No. 1-3). These patents relate to machines used to
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`digitally display a microform image (e.g., microfilm or microfiche). e-Image sells a line
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`of machines that use the patented technology.
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`Defendant Digital Check Corp, which does business as ST Imaging and will be
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`referred to here as ST Imaging, is a competitor of e-Image and also sells machines that
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 1 of 19 Document 38
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`Case No. 16-CV-576
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`v.
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`DIGITAL CHECK CORP
`doing business as
`ST Imaging,
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`e-ImageData Corp. Exhibit 2005
`Page 1 of 19
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`digitally display microform images. In this lawsuit e-Image alleges that ST Imaging’s
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`machines infringe upon e-Image’s patents. Preliminary to the resolution of the merits of
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`a patent infringement suit it is necessary for the court to construe the meanings of
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`disputed terms in the relevant patent claims. See Markman v. Westview Instruments, 517
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`U.S. 370, 372 (1996).
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the
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`invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp.,
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`415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water
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`Filtration Sys., 381 F.3d 1111, 115 (Fed. Cir. 2004)). “[T]he words of a claim ‘are generally
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`given their ordinary and customary meaning.’” Id. (quoting Vitronics Corp. v.
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`Conceptronic, 90 F.3d 1576 (Fed. Cir. 1996)). In the patent context, “the ordinary and
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`customary meaning of a claim term is the meaning that the term would have to a person
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`of ordinary skill in the art in question at the time of the invention, i.e., as of the effective
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`filing date of the patent application.” Id. at 1313.
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`Sometimes the meaning of a term
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`is clear based upon the accepted
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`understanding of common words. Phillips, 415 F.3d at 1314. But oftentimes the court
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`must look beyond the plain words to understand how someone skilled in the relevant
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`art would understand the disputed claim language. Id. In doing so, the court considers
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`the context of the terms, including the other claims. Id. Differences among claims might
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`prove useful in discerning the meaning of particular claim terms. Beyond the claims,
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 2 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 2 of 19
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`“highly relevant to the claim construction analysis” is the patent specification. Id. at
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`1315. Moreover, in construing a claim a court must also consider whether the patentee
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`self-defined a term within the patent or intentionally disclaimed or disavowed an aspect
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`of the claim. Id. at 1316.
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`Beyond the patent itself, the history of the patent’s prosecution before the Patent
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`and Trademark Office (PTO) may help the court in understanding how the PTO and the
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`inventor understood the patent. Phillips, 415 F.3d. at 1317. However, in relying upon the
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`prosecution history, the court must be mindful that the history does not necessarily
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`represent conclusions as to the meaning of the patent but instead might reflect ongoing
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`negotiations between the PTO and the inventor. Id.
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`Courts may also consider extrinsic evidence, including testimony of an expert or
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`the inventor, dictionaries, or learned treatises, when construing a claim. Phillips, 415
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`F.3d at 1317-19. However, such extrinsic evidence is “less significant than the intrinsic
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`record” of the patent itself and its prosecution history and is unlikely be helpful unless
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`considered in the context of the intrinsic evidence. Id. (quoting C.R. Bard, Inc. v. U.S.
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`Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). “It is well settled that the role of a
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`district court in construing claims is not to redefine claim recitations or to read
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`limitations into the claims to obviate factual questions of infringement and validity ….”
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`Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1331 (Fed. Cir. 2011).
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 3 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 3 of 19
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`The parties agree as to how three relevant terms should be construed:
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`Term
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`Claims
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`Stipulated Construction
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`“the first shaft”
`“the support structure”
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`“first carriage”
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`“the first motor shaft”
`Claim 6 of the ’019 Patent
`Claim 49 of the ’766 Patent “the microform media
`support structure”
`“first movable
`support structure”
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`’279
`Claim 44 of the
`Patent; claims 1, 22, 24,
`32, 41, 63, and 64 of the
`’019 Patent
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`The parties dispute how six other relevant terms should be construed:
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`“a second movable support structure”
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`“second carriage”
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`(claims 7, 10, 11, 14, 23, 32, 41, 63, 64, and 81 of the ’019 Patent)
`e-Image’s Proposed Construction
`ST Imaging’s Proposed
`Construction
`“a movable support structure,
`separate and distinct from the first
`carriage”
`“diffusing element”
`(claim 40 of the ’019 Patent)
`e-Image’s Proposed Construction
`ST Imaging’s Proposed
`Construction
`“frosted glass”
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`“a device that spreads or scatters light
`to create a more uniform illumination
`source”
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`“lead member”
`(claim 44 of the ’279 Patent; claims 1, 2, 3, 14, 22–24, 27, 32, 41, 43, and 63 of
`the ’019 Patent)
`e-Image’s Proposed Construction
`ST Imaging’s Proposed
`Construction
`“a component that guides and
`drives a mechanically coupled
`device”
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`“guiding element”
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 4 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 4 of 19
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`“drive mechanism”
`(claims 1, 2, 5, 7, 9, 10, 15, 32, 41, 44, and 63 of the ’019 Patent)
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`e-Image’s Proposed Construction
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`ST Imaging’s Proposed
`Construction
`“mechanism that applies force to
`“parts connected to a motor for
`drive the lead member”
`moving a component”
`“digital microform imaging apparatus”
`(claim 44 of the ’279 Patent; claims 1, 41, 63, 64, and 91 of the ’019 Patent;
`claims 41 and 49 of the ’766 Patent)
`e-Image’s Proposed Construction
`ST Imaging’s Proposed
`Construction
`The preamble is not limiting.
`The preamble limits the claims.
`“at least somewhat maintain focus while adjusting zoom”
`(claim 19 of the ’019 Patent)
`e-Image’s Proposed Construction
`ST Imaging’s Proposed
`Construction
`Plain and ordinary meaning
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`“keep the image generally focused while
`adjusting zoom”
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`Aside from the term “digital microform imaging apparatus,” which appears in
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`all three patents, the other disputed terms appear only in the ‘019 patent. The parties
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`agree that the terms should be construed consistently throughout the patents in suit.
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`(ECF No. 22 at 9-10 (all pagination reflects the ECF pagination).) Therefore, the ‘019
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`patent will be the focus of this court’s analysis.
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`The parties submitted briefs setting forth their proposed constructions of the
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`disputed claim terms (ECF Nos. 20, 22) and responding to each other’s proposed
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`constructions (ECF Nos. 23, 24). In addition, the court held a claim construction hearing
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`on August 31, 2016, at which each side presented its views as to certain disputed terms.
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`(ECF No. 37.) The matter is now ready for resolution.
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 5 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 5 of 19
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`II.
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`“Second carriage”
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`The parties agree that “first carriage” means the “first movable support
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`structure.” However, they disagree as to what “second carriage” means. e-Image argues
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`that the term refers simply to “a second movable support structure.” ST Imaging
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`contends that it means “a movable support structure, separate and distinct from the
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`first carriage.”
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`e-Image contends that the claim language does not require the carriages to be
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`separate and distinct from other carriages. It proposes that the term “second” does not
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`preclude connected or stacked carriages. It argues that ST Imaging’s proposed
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`construction would exclude all of the examples of the invention that e-Image included
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`in the patents’ specifications, including the preferred example or embodiment.
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`ST Imaging argues that the novel feature of e-Image’s invention is that the two
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`carriages be able to move independently, moving the lens or moving the sensor. If the
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`carriages were not separate and distinct from each other, they would not be
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`independently movable. Thus, e-Image’s construction would effectively obviate the
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`allegedly novel feature of the present invention.
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`The court finds that e-Image’s proposed construction logically follows from and
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`is most consistent with the parties’ stipulated construction of “first movable support
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`structure.” Because the parties agree that “carriage” means a “movable support
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`structure,” the dispute comes down to what “second” means. But “second” is not a
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 6 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 6 of 19
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`term that requires any further clarification in this context. Even if it did, ST Imaging’s
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`proposal that “second” should be read as “separate and distinct from the first carriage”
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`does not follow. Objects can be characterized as having a relationship between each
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`other as “first” and “second” but not necessarily be wholly separate and distinct from
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`each other.
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`Moreover, ST Imaging’s proposed construction adds elements – separateness
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`and distinctness from the first carriage – not necessarily called for in the claim language.
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`Finally, the court agrees with e-Image that the construction proposed by ST Imaging
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`lacks clarity. By adding the words “separate and distinct,” the meaning of which are not
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`self-evident, ST Imaging is simply adding more terms that would need construing.
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`III.
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`“Diffusing element”
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`The device embodied in the ‘019 patent operates by illuminating microform
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`media. To more evenly illuminate that microform media, the light is diffused. Thus,
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`claims 40 and 62 identify “a diffusing element … located between a light source and the
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`microform media support structure.”
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`e-Image proposes that the term “diffusing element” be construed to mean “a
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`device that spreads or scatters light to create a more uniform illumination source.” It
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`argues that its construction is the ordinary meaning of the term as evidenced by
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`dictionary definitions, which it contends is consistent with how the term “diffusing
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 7 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 7 of 19
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`element” is used in the patents. It contends that it has merely rephrased the description
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`of the term from the specification to make it more understandable to a jury.
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`ST Imaging contends that, before consulting a dictionary, the court should look
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`to the intrinsic record to see how the patentee construed the term. It argues that
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`“diffusing element” must be construed to be “frosted glass,” which is a suggested
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`embodiment of the term in the specification (“Diffuse window 40 can be a frosted glass
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`which diffuses the light emanating from array 36, thereby creating a more uniform
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`illumination source.” (‘019 patent at 5:3-5)).
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`There is nothing about the term “diffusing element” that suggests that it must be
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`frosted glass to the exclusion of any other material that might diffuse light. Although
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`the patent states that the diffuser “can be a frosted glass” (emphasis added), there is no
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`reason to conclude that, in articulating this embodiment, e-Image disavowed all other
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`embodiments. See Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014).
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`Thus, the court rejects ST Imaging’s proposed construction of the term.
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`It is clear from the context of the patent that light is what is being diffused.
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`Moreover, the intrinsic evidence states that “diffusing” is intended to “create[] a more
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`uniform illumination source.” (‘019 patent at 5:4-5.) This is consistent with the common
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`and ordinary sense of the verb form of “diffuse” as applied to light. See, e.g., Oxford
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`English Dictionary, http://www.oed.com/view/Entry/52531 I. 1. b. (defining diffuse as
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 8 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 8 of 19
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`“to cause (light) to spread evenly, resulting in a reduction in intensity.”); (see also ECF
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`No. 20 at 17 (similar definitions from other dictionaries)).
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`That might suggest that no further construction of “diffusing element” is
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`necessary. See Cognex Corp. v. Microscan Sys., 2013 U.S. Dist. LEXIS 139687, 4 (S.D.N.Y.
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`Sept. 16, 2013) (holding that “tapered diffuser” required no construction). However,
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`“diffusing” is a term that may not be readily understood by jurors. Thus, the court finds
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`that reference to a dictionary definition for construction is appropriate. See CFM Corp. v.
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`Dimplex N. Am. Ltd., 2004 U.S. Dist. LEXIS 7065, 14-15 (N.D. Ill. Apr. 22, 2004) (relying
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`upon dictionary definitions to construe “diffusing surface” as “a surface that disperses
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`and softens light”); see also Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d
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`1309, 1316 (Fed. Cir. 2006) (discussing Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed.
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`Cir. 2005)) (noting that a court may consult a dictionary to elucidate claims).
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`The court generally agrees with e-Image that its proposed construction
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`accurately describes “diffusing element” as used in the patent. The court further finds
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`the proposed construction will assist the jury in understanding the claim. However, the
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`court will omit “scatter” from the construction proposed by e-Image. “Scatter” in both
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`its lay and scientific senses suggests a lack of uniformity. See, e.g., Oxford English
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`Dictionary, http://www.oed.com/view/Entry/172150 3. a. (defining “scatter” as, “To
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`throw about in disorder in various places.”); 5. e. (defining “scatter” in the context of
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`physics as, “To throw back (light) brokenly in all directions. More widely, to deflect,
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 9 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 9 of 19
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`diffuse, or reflect (radiation, particles, or the like) in a more or less random fashion.”)
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`This is inconsistent with the latter portion of e-Image’s proposed construction—“…to
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`create a more uniform illumination source”—which the court finds essential to the
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`construction of “diffusing element.”
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`Therefore, consistent with the common and ordinary meaning of the verb
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`“diffuse” when used in the context of light, and consistent with the intrinsic evidence,
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`the court construes “diffusing element” as “a device that spreads light to create a more
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`uniform illumination source.”
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`IV.
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`“Lead member”
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`The term “lead member” is used throughout the claims in the ‘019 patent. e-
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`Image urges the court to construe the term as “guiding element.” ST Imaging proposes
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`that it be construed as “a component that guides and drives a mechanically coupled
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`device.”
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`According to e-Image, although the specification references lead screws that
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`serve a dual function of guiding and driving elements, it goes on to provide that the
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`guiding and driving functions can be separated:
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`The lead screws serve a dual function of providing guiding elements as
`well as drive elements for lens and sensor carriages. It is contemplated
`that the present invention can include alternate designs which can
`separate these two functions of guiding and driving using, for example,
`rails or unthreaded rods or a combination thereof for guiding, and a belt
`or rack and pinion arrangement or a combination thereof for driving.
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`(‘019 patent at 6:24-31). Thus, the claims use the broader term “lead member.”
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 10 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 10 of 19
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`e-Image also points out that claim 1 of the ‘019 patent recites “a first elongated
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`and substantially straight lead member.” Claim 36 recites “[t]he apparatus of claim 1
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`wherein the first lead member includes a first lead screw.” Because dependent claim 36
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`explicitly recites “lead screws,” construing “lead member” in claim 1 as limited to the
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`function of a lead screw (both guiding and driving) would render claim 36 superfluous.
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`According to ST Imaging, the lead member must do more than merely guide.
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`(ECF No. 22 at 13.) It contends that the construction of “lead member” as an element
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`that solely guides was explicitly disavowed in the prosecution of the ‘019 patent. The
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`application initially referred to the element as a “guide member” but was amended to
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`substitute “lead member” for “guide member.” (See ECF No. 22 at 14.) This reflects that
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`e-Image understood that the terms “guide” and “lead” have separate and distinct
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`meanings. It argues that the specification requires that the lead element both guide and
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`drive.
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`The amendment upon which ST Imaging’s argument relies was a preliminary,
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`pre-examination amendment and not done in response to any action taken by the
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`USPTO. See 37 C.F.R. § 1.115. As explained by e-Image, the amendment came about
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`when it recognized what it refers to as a “typo” in the application. Claims 2, 4, 15, 33, 42,
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`44, 46, 47, 62, 64 referred to a “guide member.” (ECF No. 22-4 at 124, 125, 126, 129, 133,
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`136.) Claims 23, 24, 25, 27, 28, 33, 37, 42, 64 referred to “lead member.” (ECF No. 22-4 at
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`127, 128, 129, 132, 137.) In fact, not only was there apparent inconsistency among claims,
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 11 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 11 of 19
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`there was an apparent inconsistency within certain claims. Claims 33, 42, 64 used both
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`“guide member” and “lead member” to describe the same element. Thus, because
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`different terms are presumed to have different meanings in patents, see Chi. Bd. Options
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`Exch., Inc. v. Int'l Sec. Exch., LLC, 677 F.3d 1361, 1371 (Fed. Cir. 2012), if e-Image wanted
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`the terms to mean the same thing, amendment was necessary.
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`The court has no reason to conclude that the amendment was anything other
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`than what e-Image says it was – a correction of an inconsistency in the patent language.
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`The court certainly has no basis for concluding that the amendment was a disavowal of
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`the term “guide” in reference to the “lead member” element.
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`As to e-Image’s argument that the specification discusses alternative designs
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`where guiding and driving functions are separated, ST Imaging says these alternative
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`designs were not claimed. (ECF No. 24 at 8; ‘019 patent at 6:27-31). Thus, they are not
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`within the scope of “lead member” as that term is used in the claims.
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`Read in its entirety, it is clear that the specification contemplates “lead screws” to
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`be a means by which driving and guiding functions are performed primarily by a single
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`element. The fact that the claims do not refer to “lead screws” is itself a strong
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`indication that the claims are not limited to this embodiment. But the specification
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`makes it clear that guiding and driving may be separated—strong intrinsic evidence
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`that “lead member” is not limited to a device that both drives and guides.
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 12 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 12 of 19
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`In sum, the court does not agree with ST Imaging’s contention that, by choosing
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`“lead member” over “guide member,” the claimed element must both guide and drive.
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`The court finds that “lead member” means merely “guiding element.” Although the
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`“lead member” may be capable of driving a component—for example, when the lead
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`member is a lead screw— it is not required to do so.
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`V.
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`“Drive Mechanism”
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`e-Image’s proposed construction of the term “drive mechanism” is “parts
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`connected to a motor for moving a component.” ST Imaging’s proposed construction is
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`a “mechanism that applies force to drive the lead member.”
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`e-Image’s construction derives from its view that the lead member can, but need
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`not, drive a component. It points to the same language in the specification of the ‘019
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`patent that it relied upon for its proposed construction of “lead member”—namely, that
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`part of the specification which states that “the present invention can include alternate
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`designs which can separate these two functions of guiding and driving, using, for
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`example, … a rack and pinion arrangement … for driving.” (‘019 patent at 6:27-31.)
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`Using a rack and pinion arrangement, the motor is attached to the pinion, which causes
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`the component to be driven. The lead member is not driving and is not connected to the
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`drive mechanism.
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`ST Imaging’s construction derives from its contention that the lead member must
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`drive a component. Because the lead member does not create its own force to perform
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 13 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 13 of 19
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`the driving function, “a force must be applied to cause the lead member to drive the
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`mechanically coupled device.” That force comes from the drive mechanism, which
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`drives (and therefore must be connected to) the lead member.
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`The court’s rejection of ST Imaging’s proposed construction of “lead member”
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`undermines ST Imaging’s argument regarding the construction of “drive mechanism.”
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`As discussed above, the lead member need not be capable of driving a component. An
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`embodiment described in the specification provides that the drive mechanism is
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`connected to and drives the lead member to move a component (See ‘019 patent at 6:7-
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`9.) However, the Federal Circuit has “repeatedly warned against confining the claims to
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`those embodiments.” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). In fact,
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`the court “expressly rejected the contention that if a patent describes only a single
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`embodiment, the claims of the patent must be construed as being limited to that
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`embodiment.” Id. (Gemstar-TV Guide Int’l, Inc. v. ITC, 383 F.3d 1352, 1366 (Fed. Cir.
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`2004)).
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`Certain claims here describe a device where the drive mechanism is independent
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`of the lead member and the lead member is not driven. For example, claims 41 and 63
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`refer to a drive mechanism and lead member as separate components. (‘019 patent at
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`11:30-33, 47-49; 13:40-43, 57-59.) The drive mechanism is connected to the carriage but
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`not the lead member. (‘019 patent at 11:37-40, 53-57; 13:47-49, 63-67.) Because it is not
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 14 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 14 of 19
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`connected to the lead member, the drive mechanism could not apply force to the lead
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`member, as required under ST Imaging’s proposed construction.
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`VI.
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`Preamble and “digital microform imaging apparatus”
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`The phrase “digital microform imaging apparatus” appears in the preamble of
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`every independent claim of the patents. e-Image contends that the phrase limits the
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`claims. ST Imaging argues it does not.
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`According to e-Image, the specifications are replete with references to the
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`invention as a digital microform imaging apparatus, including the title of the patent
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`itself and the “Summary of the Invention.” The phrase is used to describe the preferred
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`embodiments. It is essential to understanding the limitations of the claims. In short, the
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`essence of the invention is a digital microform imaging apparatus and, as such, the
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`phrase limits the claims.
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`ST Imaging contends that the preamble does not recite essential structure or
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`steps. Deletion of the preamble would not affect the structural definition or operation of
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`the apparatus itself. The preamble merely states the purpose or intended use of the
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`invention and does not define any limitations. Thus, the phrase does not limit the
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`claims.
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`In the opinion of Judge Dyk of the Court of Appeals for the Federal Circuit, the
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`question of whether a preamble should be construed as limiting has been a question
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`that the Federal Circuit has struggled to resolve. Am. Med. Sys. v. Biolitec, Inc., 618 F.3d
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 15 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 15 of 19
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`1354, 1363 (Fed. Cir. 2010) (Dyk, J., dissenting) (urging the Federal Circuit to address the
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`issue en banc and advocating for a rule that a preamble acts to limit the claim). He
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`characterized the Federal Circuit’s case law on the subject to be “rife with inconsistency,
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`both in result and in the articulation of the test,” id., a view seconded by Donald
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`Chisum, who referred to case law on the matter as “difficult to reconcile,” id. at 1364
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`(quoting Donald S. Chisum, Chisum on Patents § 8.06[1][d] (2010)). Nonetheless, absent
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`further clarification from the Federal Circuit or the Supreme Court, this court must
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`wade into the case law as it currently exists and attempt to discern whether “digital
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`microform imaging apparatus” in the preamble limits the claims that follow.
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`“Generally, the preamble does not limit the claims.” Allen Eng'g Corp. v. Bartell
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`Indus., 299 F.3d 1336, 1346 (Fed. Cir. 2002). “However, the preamble may be limiting
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`‘when the claim drafter chooses to use both the preamble and the body to define the
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`subject matter of the claimed invention.’” Id. (quoting Bell Communications Research, Inc.
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`v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995)).
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`“Whether to treat a preamble term as a claim limitation is ‘determined on the
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`facts of each case in light of the claim as a whole and the invention described in the
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`patent.’” Am. Med. Sys. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (quoting
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`Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003)). If the claim
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`preamble gives “‘life and meaning’ and provide[s] further positive limitations to the
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`invention claimed,” the preamble limits the claim. Id. Stated another way, “a preamble
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 16 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 16 of 19
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`
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`limits the invention if it recites essential structure or steps, or if it is necessary to give
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`life, meaning, and vitality to the claim. Conversely, a preamble is not limiting where a
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`patentee defines a structurally complete invention in the claim body and uses the
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`preamble only to state a purpose or intended use for the invention.” Catalina Mktg. Int'l
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`v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal citations and
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`quotation marks omitted). “If the preamble ‘is reasonably susceptible to being
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`construed to be merely duplicative of the limitations in the body of the claim (and was
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`not clearly added to overcome a [prior art] rejection), [the court does] not construe it to
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`be a separate limitation.’” Am. Med. Sys., Inc., 618 F.3d at 1359 (quoting Symantec Corp. v.
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`Computer Assocs. Int'l, Inc., 522 F.3d 1279, 1288-89 (Fed. Cir. 2008)).
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`The patents are clear that the inventors were addressing the particular matter of
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`digital microform imaging. The term “digital microform imaging apparatus” (a term
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`used so often in the patents the drafter chose to initialize it as “DMIA”) is used
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`throughout every aspect of the patents, including the specification. It is also identified
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`as the “field of the disclosure” and is the title for each patent. Cf. Poly-America, L.P. v.
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`GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004). To conclude that the
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`preamble does not limit the claims “would be divorced from reality.” See GE Co. v.
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`Nintendo Co., LTD., 179 F.3d 1350, 1362 (Fed. Cir. 1999). Consequently, “the claim
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`preamble in this instance does not merely state a purpose or intended use for the
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`claimed structure. Rather, those words do give ‘life and meaning’ and provide further
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 17 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 17 of 19
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`
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`positive limitations to the invention claimed.” Id. (quoting Corning Glass Works, 868 F.2d
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`at 1257). The court concludes that the preamble “digital microform imaging apparatus”
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`limits the claims.
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`VII. “At least somewhat maintain focus while adjusting zoom”
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`e-Image proposes that the court should construe “at least somewhat maintain
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`focus while adjusting zoom” to mean “keep the image generally focused while
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`adjusting zoom.” It argues that the proposed construction will be easier for the jury to
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`understand. (ECF No. 23 at 30.) ST Imaging asserts that e-Image’s proposed
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`construction “fails to provide any additional clarity to an already straight forward
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`term.” (ECF No. 22 at 23.) It contends that no construction is necessary.
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` The court does not find that “keep the image generally focused” while adjusting
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`zoom is any more understandable than “at least somewhat maintain focus” while
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`adjusting zoom. “Generally” and “somewhat” are largely synonymous, and the court
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`does not find either to be more readily understandable than the other. Nor is the court
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`presented with any reason for concluding that a lay person’s understanding of this
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`straightforward term would be any different from the understanding of a person of
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`ordinary skill in the art (much less that e-Image’s proposed construction would remedy
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`any such concern). Consequently, it is unnecessary for the court to construe this claim.
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`See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362-63 (Fed. Cir.
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`2008); see also United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir.
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 18 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 18 of 19
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`1997) (“Claim construction is a matter of resolution of disputed meanings and technical
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`scope, to clarify and when necessary to explain what the patentee covered by the claims,
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`for use in the determination of infringement. It is not an obligatory exercise in
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`redundancy.”).
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`VIII. Conclusion
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`Based upon the foregoing, the disputed terms in the patents at suit are construed
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`as follows:
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`• “second carriage”: a second movable support structure;
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`• “diffusing element”: a device that spreads light to create a more uniform
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`illumination source;
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`• “lead member”: guiding element;
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`• “drive mechanism”: parts connected to a motor for moving a component;
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`The court further concludes that “digital microform imaging apparatus,” as used
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`in the preamble, limits the claims.
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`Finally, the term “at least somewhat maintain focus while adjusting zoom” is
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`clear without further construction.
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`SO ORDERED.
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`Dated at Milwaukee, Wisconsin this 4th day of November, 2016.
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`_________________________
`WILLIAM E. DUFFIN
`U.S. Magistrate Judge
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`Case 2:16-cv-00576-WED Filed 11/04/16 Page 19 of 19 Document 38
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`e-ImageData Corp. Exhibit 2005
`Page 19 of 19
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