*4 DYK, Circuit Judge. Massachusetts Institute Technology (“MIT”) and Electronics for Imaging, Inc. (“EFI”) appeal stipulated from the final judgment of noninfringement of the Unit- ed States District Court for the Eastern District of Texas. MIT and urge EFI (on the district court’s claim construction which the stipulated judgment of non-in- based) fringement was was erroneous. Appellants also urge the district court’s granting order Microsoft’s motion Rooklidge, LLP, William C. Howrey to exclude Windows as an infringing prod- Irvine, California, argued for plaintiffs-ap- uct was erroneous. We grant vacate the pellants. With him on the brief was Rus- of summary judgment and remand for fur- B. Hill. sell Of counsel on the brief was ther proceedings because hold that Crunk, Tom Los Angeles, California. district court erred its construction of Jeffrey Sanok, D. Crowell & Moring “aesthetic correction circuitry,” and erred LLP, DC, of Washington, for de- argued excluding Windows as an infringing appellants fendants-cross Corp. Corel product. We decline to address claim con- Corel Inc. himWith on the brief was Rich- struction implicated by issues not judg- McMillan, ard Jr. Of counsel on the brief ment. We cross-appeals dismiss the since means connected display successful, b. if cross-appeals, receiving appear- scanner for judgment. We scope expand correc- aesthetic signals and ance question whether to reach decline interactively circuitry for tion parties’ denied properly district aesthetically desired introducing on the summary judgment motions for appearance said into the district alterations since marking statute issues ap- modified produce signals finally decided whether court has signals; and pearance dis-We the claims. statute bars marking they insofar as appeals as moot miss mechanism c. colorant selection granted that were orders arise from appear- modified receiving said Electronics, (“Fry’s”) Inc. Fry’s favor of selecting cor- and for signals ance (“Arcsoft”) both Aresoft, Inc. because signals reproduction responding voluntarily dis- been parties those repro- of said representing values this action. missed from in said produce ducing colorants colorimetrieally- medium BACKGROUND reproduction. matched “ (the 4,500,919 pat- Patent No. U.S. *5 added). 15, Id., (emphases 11.31-47 col. ent”) system processing a color discloses dispute claim pertinent construction The originals. of color copies producing for language. emphasized involves the reproduction “color discloses The invention embodiment, (a) of the step In disclosed number a small use[ ] which processes] [by scanner] the is scanned in image “[an] four, in colorants, various usually three appearance in ... and terms stored colors mixtures, match the or less to more Green values, example [‘Red RGB for 1, 22- 11. patent, col. original.” the ’919 Id., 3, “ap- 11.42-44. col. These Blue’].” problem designed to address 25. It sig- “appearance are pearance values” the sys- editing conventional color to common 1(a). into claim nals” referred namely, “the exact combination tems— (b), signals are step appearance In is not required for the match colorants means,” “display to a TV or other sent way, measure- related, any simple dis- displayed on image [the and “[t]he original.” made on the which can ments Id., 3, col. 11.44-46. play means].” per- The invention 11.32-36. Id. col. for the match a colorimetric image “is (a) scanning steps: three basic forms can be used reproduction, final (b) interac- displaying image; color Id., 3, 11.53- col. appearance.” (c) judge its tively editing image; the scanned im- the TV “manipulates An operator 54. im- displayed accurately reproducing appearance interactively age terms only patent, ’919 1 of the age. Claim values, introducing corrections aesthetic appeal, in this describes claim issue at Id., changes as desired.” and such other steps three as follows: of claim language In the 11. col. 59-63. a color system reproducing 1. A circuitry” allows 1(b), “aesthetic correction selected using a in a original medium “aesthetically alterations” these desired colorants, reproduction multiplicity of sig- appearance into be “introduced] [the] order: serial system comprising signals.” produce modified nals to from said producing a.a scanner for (c), the “colorant step, step the final tris- a set of three original color (“CSM”) receives mechanism” depen- selection signals appearance timulus cal- signals” and appearance “modified original; on colors said dent density 3, 2003, culates images, required “[i]nk as construing various terms for a colorimetric match with 1. the corrected The district court issued a claim con- ” Id., 4,11. images.... col. 12-14. struction largely order adopting magis- recites, claim 1 trate’s CSM corre- recommendations on September “select[s] sponding reproduction Three claim signals represent- terms are relevant to appeal: “scanner,” ing values [of ... “colorant produce colorants] selection mechanism,” colorimetrically-matehed and “aesthetic correction reproduction.” cir- cuitry.” ink “computed density images are used ... to control the amount of colorant The court held that the term “scanner” delivered page to the final point.” at each is not a means-plus-function limitation. Id., 4,11.15-21. concluded, The district however, the scanner first, includes two limitations:
MIT, the assignee of patent, it must have “relative movement between granted an exclusive license to EFI. the scanning object element and the being Plaintiffs and EFI filed an original scanned,” second, the “color original” complaint on December alleging that the scanner scans “placed must be that 92 directly defendants and contribu- or in close proximity to the scanner.” torily infringed and induced 25, 2002, ’919 patent. On April The court construed “colorant the.term shortly patent before the ’919 expired, selection mechanism” as a means-plus- plaintiffs an amended complaint, filed as- limitation, function and held that the recit- serting infringement against a total of ed functions “receiving said modified 23, 2002, August defendants. On appearance signals” and “selecting corre- district court issued a control sponding reproduction docket or- signals represent- *6 (“DCO”) der that required ing MIT to make values of said reproduction colorants to preliminary infringement contentions, produce in- in said medium a colorimetrically- a cluding list of reproduction.” so-called In- matched “Accused The court con- cluded that (infringing products) strumentalities” by the structure that performs September these 2002. MIT functions is components its the pre- served of the (ICM).” “ink liminary infringement correction module contentions on Au- gust 2002. The Accused Instrumen- Finally, the court held that “aesthetic talities included various types image of correction circuitry” a means-plus-func- is software, editing computer systems, digi- tion limitation, that the function recited cameras, scanners, tal and color repro- “introducing aesthetically altera- desired systems. duction MIT did not list Win- tions appearance into signals said to pro- dows as an Accused Instrumentality but appearance duce signals,” modified and stated that it believed that Microsoft that the that perform structures this func- infringed Windows “seek would relat- tion are components the comprise five ed discovery.” J.A. at 4497. the (“CTM”). the Color Translation Module of plaintiffs course litigation, settled with Following the claim ruling, construction some defendants and dismissed their the district issued orders that two others, against claims only until four re- pertinent First, appeal. to this on Microsoft, Corel, Roxio, mained: 10, September the district court MGI Software. granted Microsoft’s motion to exclude Following hearing, a Markman a magis- Windows as product an accused on the judge trate “Report issued and Recom- ground that had been listed mendation” claim on July construction on as an Instrumentality Accused when MIT decline We of those issues. resolution the infringement preliminary
submitted
limit our consideration
that invitation
hear-
the Markman
prior to
contentions
under
judgment
by the
presented
to issues
ing.
opportunity
is not an
appeal
An
review.
29, 2004, the dis-
Second,
September
on
every rul-
appellate court
the
bring before
sides’ motions
both
trict court denied
disagrees
parties
which one
ing with
MIT’s com-
regarding
summary judgment
ruling has
the
regard to whether
without
statute, 35
marking
U.S.C.
with the
pliance
judgment.
the final
way impacted
any
only
damages
when
permits
§
which
does not
patent
case
The fact
this
marked or
articles are
infringing
regime.
legal
a different
invoke
infringement.
on notice of
infringer is
above,
here
judgment
described
As
10, 2004,
“stip-
parties
November
On
non-infringe-
judgment
stipulated
ais
non-
judgment of
entry of final
ulate[d]
the district
based on
by
parties
ment
patent] based
[the
stipulated
The
claim construction.
court’s
at 1.
J.A.
construction.”
claim
the Court’s
only
question
presents
judgment
dis-
to the
“stipulated
also
parties
adverse
constructions
the claim
whether
of Defendants’
prejudice
without
missal
will
thus
correct.
were
We
patentee
invalidity and unenforce-
counterclaims”
issues de-
claim construction
not consider
stipulations,
on these
ability. Based
that the
patent holder
in favor of the
cided
judgment of
a final
entered
district court
incorrect,
infringers contend were
accused
and dismissed
defen-
non-infringement
perti-
that are
address issues
nor will we
November
counterclaims on
dants’
invalidity.
claims
only to dismissed
nent
is thus
judgment
stipulated
claim con-
court’s
Revising the district
construction
entirely on the claim
based
af-
respects
structions
these
plaintiffs.
to the
adversely
issues decided
non-infringement.1
judgment
fect
Corel,
Microsoft,
timely appealed
construc-
to the
respect
Even
juris-
We have
cross-appealed.
and Roxio
is based
judgment
on which
tion issues
1295(a)(1).
§
28 U.S.C.
diction under
mechanism
with the
perceive problem
As
litigated.
been
has
case
which
DISCUSSION
*7
Trading
Inc. v. Sonic
Trading,
in Lava
(Fed.Cir.2006),
LLC,
1351 appropriate for a court to consider the ment the scanning between element and determining object accused device when what being as- scanned.” construed.”). pect of the claim should be Under such circumstances it is appropri- Moreover, the stipulated judgment does ate for us to look to dictionary definitions identify many which of the claim con- of the terms. Phillips, See 415 F.3d at rulings dispositive. struction are While it (“Dictionaries 1322 comparable sources highly undesirable to consider these is- are often useful to assist in understanding abstract, sues here as in Lava Trad- the commonly understood meaning of ing, proceeded we have to do so. words and have been used by both our
court and Supreme claim Court A interpretation.”). Dictionary definitions of “scan” and'“scanner” at the pat- time the parties dispute meaning application ent was filed in 1982 confirm the claim term “scanner.” The first ele these terms require move- relative recites, ment of 1 pertinent part, ment a scanning between element and an “a producing scanner for from color said object being scanned. For example, the original a set of three appear tristimulus version Webster’s Third New In- ance signals dependent on the colors in ternational Dictionary defines “scan” as said original.” patent, 15,11. 34-36 “to cause a narrow beam of light to ... added). (emphasis (an object) traverse in order to translate light modulations into a corresponding i electrical current.” Subsequent dictionary The district court concluded that definitions include the same limitation. scanner must have “relative movement be- The 1984 edition of McGraw-Hill Dictio- tween the scanning object element and the nary and Technical Terms of Scientific being scanned.” agree. We defines “[a]ny “scanner” as device that ex- amines an region point area or point “Claims must be read view of the systematic manner, a continuous repeated- specification, of they part.” which ly until sweeping across the entire area or Phillips Corp., v. AWH region is covered.” The definition (Fed.Cir.2005) (en banc) (internal version Webster’s is identical to the omitted). quotations Indeed, specifica definition in the 1968 version. Thus the tion is “[ujsually ... dispositive” and “is definitions, both before and after re- the single guide best to the meaning of a quire movement. relative disputed case, however, term.” Id. In this the specification does define the term MIT argues that “flying spot scanners” *8 “scanner” either explicitly or implicitly. in existed 1982 (although not in referenced The most that can be said is that the specification) the and lacked the relative specification is not inconsistent with a rela movement limitation. urges MIT tive requirement. movement specifi The person to a ordinary of in skill a that cation only scanner, discloses one type of a scanner required would not have relative 299,” “Hell Model which is a drum scanner scanner,” movement. “flying spot a that a two original rotates dimensional im spot light, “[a] moving either controlled of age past scanning patent, a element. ’919 mechanically electrically, or scans the im- 5,11.40-43. col. The drum operates scanner age field transmitted.” Electronics by original the moving past a scanning (3d and Nucleonics Dictionary 249 element, ed.1966) requires and thus added); “relative move- (emphasis see McGraw-
1352
“scanner,”
it was understood
a
as
Techni-
that
Dictionary
Hill
of Scientific
(5th ed.1994)
between
relative movement
(defining
required
Toms 784-85
cal
object being
used
and the
scanning element
“[a]
scanner” as
scanner
a
“flying-spot
transmission,
Patent
Plaintiffs assert that
film and slide
U.S.
scanned.
television
(the
recogni-
4,037,249
patent) used
“Pugsley”
writing, and character
No.
electronic
con-
camera
tion,
spot
light,
to refer to
moving
a
of
“scanner”
a
which
the term
electrically, scans
mechanically
person
or
that in 1982 a
trolled
reveals
and thus
field,
light reflected
camera
image
and the
art viewed
ordinary
the
skill
the
a
However,
field is
image
speci-
from or transmitted
of scanner.
type
as a
generate
elec-
by phototube
a
picked up
patent explicitly
Pugsley
fication of
dictionary
(which
of com-
A
signals”).
tric
a
distinguishes between
camera
point
movement)
“flying spot”
“[a]
a
defines
a
puting
require relative
does not
beam that
does)
the end of an electron
light
or
(which
it
that
when
states
scanner
and forth
high speed
at
back
is movable
images
separate
three
“it is usual to form
Galland, Dic-
Frank.
a field.”
J.
across
scanning
origi-
or
by photographing
(1982). This
tionary
Computing
(empha-
1. 27
patent, col.
nal.” Pugsley
Patent
is disclosed in U.S.
type
scanner
added).2
sis
“
(the
2,790,844
filed on
patent”),
’844
No.
operates
that
that a camera
conclude
We
33-44,
4, 11.
patent,
May
1954. ’844
a scanner
movement is not
without relative
flying
that
argues
MIT
because
63-65.
patent.
’919
meaning of the
within the
movement,
has no mechanical
spot scanner
incon-
example of a scanner that is
it is an
ii
relative
the district court’s
sistent with
district court also concluded
the me-
Although
limitation.
movement
1(a)
in
in claim
must
that the “scanner”
scan-
components
flying spot
of a
chanical
“
...
or
original’
‘color
placing
volve
fixed,
oper-
may
ner
remain
scanner
Here
to the
proximity
in close
scanner.”
across the
by sweeping
light
beam
ates
explicitly
does not
again
specification
object to be scanned. See McGraw-Hill
including
define “scanner” as
implicitly
or
33-44,
definition;
63-
patent,
col. 11.
Al
requirement.
proximity”
a “close
agree with the district court
65. We
single disclosed
though the
scanner
scanning ele-
qualifies as a
beam
light
limitation, we do
includes this
specification
ment,
spot scanner
flying
and thus that the
disclosed em
the claim to the
not confine
the scan-
with movement between
operates
1353
obligation
give
This follows from our
that did not require
proximity,
close
but as
ordinary
words of a claim “their
above,
and cus we noted
a camera that lacks the
tomary
...
meaning,
is the mean
[which]
relative movement limitation is not a scan-
ing that the
would
to a per
[words]
ner. We conclude that the term scanner
ordinary
question
son
skill
the art in
in 1982 should be construed to include a
invention, i.e.,
at the time
as of the
requirement of
proximity.
close
filing
patent
effective
date of the
applica
(inter
Phillips,
tion.”
understood the term to
Chisum
reproduction signals representing values of
(2003 ed.).
§ 18.03[2][g]
on Patents
In
reproducing
produce
colorants to
said
determining
meaning
of a
within
term
said medium a colorimetrieally-matched
art,
pertinent
it
appropriate
to de
reproduction.”
operation
termine the mode of
of the de
patent
vice at the time the
application was
phrase
“colorant
selection
filed.3
mechanism” is presumptively
subject
¶
to 112 6
it
Here,
because
does not contain the
the district court
(relying on
Fitness,
term “means.” CCS
Inc.
specification,
the ’919
v.
expert
testimony,
references)
Corp.,
Brunswick
288 F.3d
technical
1369
concluded that in
(Fed.Cir.2002). However,
1982 a
person
ordinary
skill in
limitation
the art
lacking the term
may
“means”
general
have known of two
overcome
types of
scanners,
the presumption against means-plus-func
drum scanners and flatbed scan-
tion
ners. Both
treatment
if it
require
these scanners
is shown that
close
“the
proximity between
term fails to
original
sufficiently
the color
‘recite
defi
the scanner.
nite
We see no basis for
structure’ or else
disturb-
recites ‘function
ing this conclusion
agree
reciting
that the term without
sufficient structure for
”
scanner should be
performing
defined
what was
that function.’
(quoting
Id.
Inc.,
known in the art
at the time.
XL Sys.,
Plaintiffs Watts v.
232 F.3d
(Fed.Cir.2000)).
argue that in 1982 cameras were scanners
Inc.,
Sobering Corp.
Amgen
v.
SuperGuide Corp.
F.3d
Enterprises,
also
v. DirecTV
(Fed.Cir.2000),
we concluded
(Fed.Cir.2004)
(hold
879-880
"polypeptide
claim reference to
ing
digital
that claimed invention included
type" did not include later-discover
IFN-^O
ed
technology that was known to those skilled in
species
that were unknown at
IFN-^O
patent application);
the art at the time of the
application.
Kopykake
time of the
And in
Kopykake Enterprises
We
can
“mechanism”
generic
is over
term like
here
fines a
presumption
clusion that
to
selec
structure
avoid
phrase “colorant
add sufficient
that the
sometimes
come and
¶
as a
Greenberg
be construed
in
v. Ethi
example,
should
For
tion mechanism”
112 6.
ge
The
Inc.,
limitation.
1355 ¶ The district found that the func- ture to 112 avoid 6 treatment. We tions of the “colorant agree. selection mecha- nism,” as recited in claim are “receiving In contrast “mechanism,” the term modified appearance signals” said and “se- dictionary definitions establish that lecting corresponding reproduction signals itself, term “circuitry,” by connotes struc-
representing values of reproduction said ture. Webster’s Third New International produce colorants to in said medium a (1968 ed.) Dictionary, 408-09 (defining colorimetrically-matched reproduction.” “circuit” as complete “the path of an elec- The court further held that the corre- tric current including any displacement sponding components are the structures of current” and “circuitry” as “the detailed (ICM).” the “ink correction module MIT plan (as of an electric circuit or network does argue not if means-plus-function a radio receiver)”); or television see also treatment was appropriate, the district Linear Corp. Tech. Impala v. Linear court erred in its conclusions regarding Corp., (Fed.Cir.2004) 1320 the function and corresponding structure (“Technical dictionaries, which are evi- Therefore, of the term. the district court’s dence of the understandings persons construction will govern proceed- further arts, skill in the technical plainly indicate ings. the term ‘circuit’ connotes struc- ture .... The Dictionary Computing 75 (4th ed.1996) defines ‘circuit’ as ‘the combi-
C nation aof number of electrical devices 1(b) Claim of the patent ’919 re that, and conductors when interconnected cites, “display means connected to the to form a conducting path, fulfill some scanner for receiving the appearance sig ”); desired function.’ Random House Web- nals and aesthetic correction circuitry ster’s Unabridged Dictionary def. 9 for interactively introducing aesthetically (2d ed.1998) (defining circuit as “the com- desired appearance alterations into said plete path current”); of an electric Rudolf signals produce appearance modified Graf, F. Modem Dictionary Electronics signals.” patent, 11. 37-41 (7th ed.1999) 116 (defining “circuit” as added). (emphasis The phrase, “aesthet “[t]he interconnection of a number of de- ic circuitry correction interactively in vices paths one more per- closed troducing aesthetically desired alterations form a electrical desired or electronic func- appearance into said signals produce tion”); appearance modified signals,” does prior two of our cases we concluded “means,” contain the term and is there “circuit,” the term combined with a presumptively fore not a means-plus- description circuit, of the function of the Nonetheless, function limitation. the dis connoted sufficient structure to one of or trict court held presumption that the was ¶ dinary skill the art to avoid 112 6 proceeded overcome and to define the Linear, treatment. See at F.3d function and related structure. (“[W]hen the structure-connoting term urges that the term “aesthetic cor- coupled ‘circuit’ with a description of the circuitry” rection connotes sufficient struc- operation, circuit’s sufficient structural structure,” denoting as a nition noun structure defined in terms func- determined that Here, "connector” had a performed, reason- it "connecting.” tion Id. ably meaning well-understood as a name for term "mechanism” is defined a structure. 382 F.3d at particularizes 1360-61. That function that structure. *12 term evidence that the claim conveyed per ply ample to meaning generally will be art, § 112 ordinary in the structure. designates sons of skill ¶ Apex apply.”); will not presumptively has not conclude that Microsoft We Inc., 325 F.3d Computer, Inc. v. Raritan presumption the that the “aesth- overcome (Fed.Cir.2003) (“[T]he 1364, 1373 term ‘cir not a circuitry” limitation is etic correction appropriate identifier such as cuit’ with limitation. means-plus-funetion ‘interface,’ ‘logic,’ cer ‘programming’ “circuitry” meaning urges structural Microsoft tainly identifies some art.”). ordinary skill in the The hardware whereas to one of should be limited to merely language here too does not include urged below that it should circuit; it further struc describe a adds conclude both hardware and software. We of the by describing operation ture the correction circui that the term “aesthetic “appearance input circuit. The circuit’s is clearly limited to hardware. try” is scanner; signals” produced by the its ob is the parties agree that the CTM jective “interactively introdúcete] is to circuitry” correction of the ’919 “aesthetic into said aesthetically desired alterations Summary As of the Invention patent. the appearance signals”; output and its im- operator the views an explains, when appearance signals.” patent, “modified screen, original scanned on a TV age of the description 11.29-41. This col. “manipulate[ can the TV operator ] the of the circuit is sufficient to operation in image interactively appearance terms of ¶112 6. avoid values, corrections introducing aesthetic contrary, arguing In to the the dissent changes as desired.” ’919 such other appears misapprehend strength to the the patent, col. 3 11.59-62. The CTM is presumption applies the when the input “to the device that is used correct appear term “means” does not the image on the screen. errors” TV World, Lighting claim. As we stated embodiment, composed it is preferred at have seldom held “[W]e modules, of five each of which corrects using term that a limitation specific type of error. ‘means’ must be considered to be specification compo- describes the form,” means-plus-function and “the cir- compo- nents of the CTM as hardware cumstances must be to overcome [unusual] ” (“The id., 8,11. nents. col. 36-38 next See .... presumption So too the dissent by a form step conversion LC1C2 cannot erroneously suggests that claims given implementation hardware means-plus-function treatment un- avoid transformation, by followed the LC1C2 specific claim term denotes a less the id., Module, 35.”); col. 8 11. Color Balance considering But whether a “[i]n structure. (“The operate 48-51 next two modules claim term recites sufficient structure to coordinates, polar so that ¶ chrominance application avoid of section in a signals must be converted C1C2 required the claim term to denote to Polar hardware Cartesian Coordinate Instead, specific structure. we have held (“Af- id., Converter, 36.”); 11. 7-10 that it if the claim term is used is sufficient Correction, hue and saturation Special ter parlance by persons in common or of skill by form structure, are converted back C1C2 pertinent designate art to hardware Polar Cartesian Coordinate if term covers a broad class of even Converter, 39, passage storage or if structures and even the term identifies Although specification by display.”). their function.” Id. at the structures Here, per- sup- suggests computations dictionaries that certain 1359-60. technical formed the CTM can be accomplished originals. two-dimensional MIT contends software,6 either hardware that the district court should have adopted reference specification’s does not alter the a narrower construction “sys- of the term repeated description of the circuit itself tem comprising order,” in serial for pur- involving specifica- hardware. poses of the invalidity analysis. Because require tion references do not that “cir- the construction of these terms would not cuit” interpreted to include software. affect judgment review, under we de- *13 Dictionary 1982, definitions of circuit in cline to address them. patent filed,
when application did not include software.7 See McGraw-Hill II Dictionary and Technical of Scientific (2d ed.1978) Terms 299 “circui- (defining Microsoft urges an alternative try” as complete “[t]he combination of cir- ground for partial affirmance of the judg cuits used an electrical or electronic ment of non-infringement. Microsoft con piece or system equipment”). We con- tends that the district court properly clude that “circuitry” the term claim is granted Microsoft’s motion to exclude limited to hardware. an as infringing product. The district granted ¶ court the motion on the
Having decided that 112 6 does ground that preliminary MIT’s infringe apply the “aesthetic correction circui- ment contentions should treated fi try” be as limitation and that the term does not nal, and thus MIT permitted should not software, include leave it to we the district subsequently to add new products accused court to define term par- with further except showing on a good cause. ticularity. (“DCO”) The docket control order set a D 3, 2002, September deadline asserting preliminary conclusion, contentions agree that the district defined required properly as construed the claim disclosure follows: terms “colorant selection mechanism” and “scan- [T]he “Disclosure of Asserted Claims ner” in the respects described above. and Preliminary Infringement Conten- However, its construction of the term tions” shall ... contain each accused “aesthetic circuitry” was correction errone- apparatus, product, device, process, ous. method, act, or other instrumentality (“Accused
Microsoft and contend Corel that Instrumentality”) of each op- district court in construing erred term posing party party which the “colorimetric to permit match” a specific aware. This identification shall be as tolerance, the term “scanner” not to re- specific possible, as product, Each [sic] quire “Color filters,” device, Mixture Curve apparatus must be identified the term original” “color require not to by number, name or model if known. 10, (“It patent, er,” See '919 11. 25-29 has House Unabridged Random Webster’s proven hybrid analog- convenient to use a 1814, (2d ed.1998), Dictionary def. 1 digital computer perform compu- said mechanical, “hardware” defined as "the tation, any computation but known form of electronic, magnetic, and electrical devices ”). can be used.... 872, comprising computer system,” Id. at def. 5. 7. "Software” is programs defined as “the operation used to direct comput- of a on rules 3-6 court relied The district preliminary- served its
J.A. at 810. MIT Rules.8 Rule 3-6 Judge and 3-7 of Ward’s 29, August infringement contentions ‘Prelimi- party’s [sic] that 2002, provides “[e]ach claim construction order The court’s shall be nary Infringement Contentions’... July 2003. On November issued on party’s final contentions deemed to be DCO, the court issued amended Rule 3-7 exceptions].” immaterial [with pre- parties update their requiring modifica- provides “[a]mendment light contentions liminary infringement Infringe- Final Preliminary or tion of the order Novem- of the claim construction ..., than ex- other ment Contentions (later extended to December ber 3-6, may be permitted in P.R. pressly 2003). accompanying the In an order Court, which only by made order of the DCO, noted for the district court amended showing only upon a shall be entered origi- months after the the first time—nine good cause.” The court concluded Prac- under the “Rules of nal DCO-—that *14 for the good failed to show cause MIT had the Honorable T. John Ward of tice Before Accused delay adding in as an (“Judge District of Texas” the Eastern Instrumentality. Rules”) infringement preliminary Ward’s Circuit, the Fifth the law of Under final, to be contentions are deemed here, af- district courts are governs which only by order of the court can be amended interpreting in forded broad discretion Nonetheless, good of cause. showing on a However, district their own orders.9 22, 2003, attempted to on December provide clear notice of obligated court is to infringement disclo- update preliminary requirements of its orders. Federal 83(b) include Microsoft sures to Windows. provides: Rule of Civil Procedure 26, January to exclude Windows on moved any in judge may regulate practice A 2004, granted law, court and the district manner consistent with federal §§ 10, 2072 adopted 2004. rules under 28 U.S.C. September motion on length of Califor- urges did two cases Northern District 8. The dissent that the district court Dissenting rely Judge interpreting J.A. 4968-69. Fi- Ward’s rules. nia Rule 3-7. quoted Judge Op. at But the court here nally, 1366. the court concluded that the for- "[f]or length, reasons, Ward's rules at and its conclusion going the Court finds that Plaintiffs “good explicitly on the cause” standard relies good lengthy have not set forth cause for their Judge in Rule 3-7 of Ward’s enunciated delay seeking infringement to amend their Rules, interpreted exception to which it as an Micro- contentions to include all versions of finality party’s preliminary infringe- of J.A. at 4970. Under these soft Windows.” ment contentions. circumstances, the court we think it clear that Judge rules conclude that relied on Ward's 3-6, Quoting the court stated "[e]ach Rule infringement preliminary contentions MIT’s 'Preliminary Infringement party’s Conten- be deemed final. should party’s ... be to be that tions’ shall deemed (emphasis contentions ...J.A. at 4967 final Indus., Co., Inc. v. W. Bend See Nat’l Presto Judge original). noted that The court then ("On (Fed.Cir.1996) n. 2 76 F.3d 1188 provides Local Patent Rule 3-7 for an Ward’s procedural unique to the areas matters not exception: or modification of "Amendment exclusively assigned to the Federal that are Preliminary Infringement or Final Con- Circuit, regional circuit shall be the law of the exceptions] may ... tentions immaterial [with Orleans, applied.”); City New Macklin v. Court, only by order of tire which be made of (5th Cir.2002) ("We 240 review showing good only upon a shall be entered handling of the district court's administrative (emphasis original). at cause.” J.A. case, including its enforcement of the local Noting "Judge adopted Ward the North- scheduling orders for abuse rules and its own Patent Local ern District of California's discretion.”). Rules,” proceeded at the court to discuss and local of the district. rules Plaintiffs’ Infringement Contentions, 2- at (Feb. 2004). No sanction or disadvantage may other respect, imposed be for any noncompliance with appears urge that, dissent even though law, requirement not federal federal the district stayed discovery, MIT rules, or the local district rules unless be should held culpable for its failure alleged violator has been furnished obtain the earlier discovery that would particular case with actual notice permitted it to add Windows as an requirement. product prior accused to the Markman hearing. respect, With 83(b). “no excuses” Fed.R.CivJP. provision cannot reasonably be read as We conclude that MIT provided was not obligating MIT to conduct the discovery preliminary sufficient notice that its purposes framing final infringement contentions be would deemed contentions when the district court had they final only could updated be explicitly stayed discovery in very upon a showing good cause. The Au- same order. gust 23, DCO did not give notice that preliminary infringement contentions Because MIT was not on actual notice would deemed final. The district court a showing good cause required did not Judge state that Ward’s rules add “Accused Instrumentalities” to its govern. Nor did it state that a preliminary infringement contentions, the *15 “good cause” standard govern district court erred in barring the addition products addition of new prelimi- to MIT’s of Windows as an infringing product. nary infringement contentions. appears dissent suggest that Ill even if the district court here in erred Both MIT and defendants Micro relying on Judge rules, Ward’s its order soft and Corel contend that the district justified under the provi- “no excuses” court erred in denying their motions for sion. The “no excuses” provision stated summary judgment under marking that party is not “[a] excused from the statute. Microsoft’s Corel’s cross-ap requirements of the Docket Control Order in peals respect improper since a it fully because has not completed its in- ruling favorable would not broaden the vestigation of the case” justify cannot scope of judgment. Bailey See v. Dart J.A. at exclusion. sug- The dissent Mich, Corp. Container gests that MIT purported justify updat- (Fed. Cir.2002) (“It only necessary ing its contentions to include appropriate to file a cross-appeal when for a single Windows unpersuasive rea- party seeks to enlarge its own rights namely, that the district court unex- son— judgment under the or to lessen the rights pectedly construed “aesthetic correction adversary of its judgment.”). under the circuitry” means-plus-function as a term. cross-appeals are therefore dismissed. Dissenting Op.
See at 1365. On the con- To the extent jurisdiction that we trary, MIT relied primarily theory on the marking issues, consider the statute it discovery needed into Windows’ decline address them because those products interaction with other before it have not questions finally by been resolved could determine whether infring- the district court. ed. Opposition See Plaintiffs’ to Micro- soft’s Motion to Exclude Windows as an We also have no authority to ad Additional Accused Product and Strike arguments dress two other raised MIT. appeal part We dismiss MIT’s statute. district
First, that the argues MIT motion for sum- Fry’s moot. granting erred when non-infringement mary judgment infring- VACATED-IN-PART', that an determined DISMISSED- improperly
it completely assembled requires IN-PART, ing sale REMANDED district Second, argues the MIT system. COSTS Fry’s Arcsoft’s granting court erred un- summary judgment partial motion for No costs. it concluded when statute marking der the appel- EFI sent to the that certain letters dissenting. MICHEL, Judge, Chief infringe- notice of actual give failed to lees majori- dissent from respectfully I 287(a). Both these under ment section of the dis- remand-in-part ty’s vacatur and rulings in fa- reached conclusions were the bases of the decision trict court’s agreed to MIT Fry’s and Arcsoft. vor of construing incorrectly trial court’s so prejudice, parties dismiss both circuitry” “aesthetic correction claim term are moot. U.S. rulings challenges to those in the exclu- erring 112 and section under Mall v. Bonner Co. Bancorp Mortgage infringing product, as an sion Windows 18, 25, 115 S.Ct. 513 U.S. P’ship, the com- years two after suggested first (“Where (1994) re- mootness L.Ed.2d 233 I view was filed. believe plaint losing party ... settlement sults from language, “aesthetic correction specific remedy legal voluntarily forfeited his has correctly construed as circuitry” was appeal.”). ordinary process! ] by the limitation. Nor means-plus-function “may” limit rulings argues these majority by the cases relied on do the award, this does not but damages their a different dis- require, much less support, rul- particular of the affect mootness Moreover, I believe that exclud- position. See proceedings. ings stage at this *16 infringing product an as ing Windows at 47. Plaintiff-Appellant Reply Brief for discretion of the trial court’s abuse in the future relies If court the district successfully, urged, MIT itself because respect damages rulings to limit with these discovery delayed. that will party, that reliance to a non-dismissed may then be ruling give rise to new (if appropriate). otherwise
appealed
I.
correctly interpreted
The district
CONCLUSION
circuitry” as a means-
correction
“aesthetic
in its construc-
erred
The district court
despite the absence
plus-function
cir-
tion of the term “aesthetic correction
pres-
“means for”
view
the term
decision
cuitry”
patent
’919
because the
language
functional
ence of
exclude
motion to
grant
Microsoft’s
sufficiently definite
fails to recite
limitation
Instrumentality.
Accused
as an
structure,
requires.
our precedent
court’s
the district
Accordingly,
vacate
application
against
presumption
judgment
non-in-
summary
grant of
112,
6
overcome.
paragraph was
of section
remand
patent
fringement of the
record,
Indeed,
I find it overcome
on this
consistent
proceedings
for further
law.
as a matter of
dismiss Microsoft’s
opinion.
this
We
‘cir-
“the term
agree that
parties
district
from
cross-appeals
Corel’s
structure”
some
cuitry],’ by itself connotes
motions for sum-
their
court’s denial of
Inc. v.
Apex,
art.
marking
to one skilled
concerning the
judgment
mary
1361
Inc.,
Raritan Computer,
1364,
325 F.3d
presumption that a limitation lacking the
(Fed.Cir.2003)
added).
1373
(emphasis
term
subject
‘means’ is not
to section 112
issue, however,
¶
whether
the “aesth-
6 can be overcome if it is demonstrated
etic
circuitry”
correction
limitation “re-
the ‘claim term fails to recite suffi
sufficiently
cite[s]
structure,” id.
ciently
”) (internal
definite
added);
definite structure.’
quo
at 1372 (emphasis
accord Linear
omitted).
tations
Indeed,
112,
section
Tech. Corp.
Impala
v.
Corp.,
Linear
379 paragraph 6 is rooted in the definiteness
1311,
F.3d
(Fed.Cir.2004),
1319
which is
requirement
112,
of section
paragraph 2:
required
112,
to avoid
paragraph
section
6 “Congress
provided
has
this statute [sec
in a claim using
language,
functional
even
112,
tion
paragraph
as a specific
6]
instruc
in the absence of “means for.”
tion on interpretation of
type
of claim
This “definite
requirement
structure”
which
might
otherwise
be held to be indefi
well-established in
precedent.
our
“To in nite.” Data Line Corp.
Techs.,
v. Micro
112,
voke this statute
Inc.,
[section
paragraph
1196,
813 F.2d
1201 (Fed.Cir.1987);
6],
alleged
means-plus-function claim accord
Works,
Jonsson v. Stanley
903 F.2d
’
element must not recite a definite
812,
struc
(Fed.Cir.1990);
819
see also Laitram
ture
performs
which
the described func
Rexnord,
Corp.
Inc.,
v.
1533,
1536
tion.” Cole v. Kimberly-Clark Corp., 102 (Fed.Cir.1991)
(“Absent
112(6),
section
524,
F.3d
(Fed.Cir.1996);
531
see also B.
claim language
requires
which
only a
Med.,
Braun
Labs.,
Inc. v. Abbott
124 F.3d means for performing a function might be
1419,
(Fed.Cir.1997) (“Because
1424
indefinite.”).
would,
Such a claim
'
limitation ...
does not
recite definite
course, be invalid
under section
para
structure in support
function,
of its
it is
graph 2. Although
Apex
Linear,
both
subject to the requirements of 35 U.S.C.
relied on dispositively and exclusively by
¶
§
”);
....
Personalized Media
the majority,
found sufficiently definite
Commc'ns,
v.
Comm’n,
LLC
Int’l Trade
structure in the claim language, both are
(Fed.Cir.1998) (“In
F.3d
de
distinguishable from
case,
the instant
ciding whether either presumption [‘means which the claim language is dramatically
for’ with stated
presumes
function
different.
section
paragraph 6 applies, while no
In Apex, a number of claim limitations
‘means for’ with stated function presumes
using the term “circuit” were at issue.
that section
paragraph 6 does not
*17
One such representative claim with the
apply]
rebutted,
has been
the focus re
representative limitations was:
mains on whether
the
properly
construed
recites
sufficiently definite
a first interface circuit for receiving key-
structure to avoid
112,
§
the ambit of
board and cursor control
signals
device
¶ 6.”);
Inc.,
Watts v. XL Sys.,
232 F.3d
from workstation;
the
(Fed.Cir.2000) (“[T]he
880
focus re
an on-screen programming
that
circuit
mains on whether the claim ...
recites
produces
signals
video
for display on the
sufficiently
structure.”);
definite
CCS Fit
monitor;
video
ness, Inc. v.
Corp.,
Brunswick
288 F.3d
(Fed.Cir.2002) (“Life
1369
a programmed logic
Fitness
coupled
circuit
to
can rebut
this presumption if
the
it demon
first
interface that
transmits
the
strates that the claim term
keyboard
fails to ‘recite
and cursor control
sig-
device
sufficiently
”);
definite structure.’
Lighting
nals to
programmable
the
switch and
World, Inc. v.
Inc.,
Lighting,
Birchwood
controls the
programming
on-screen
cir-
(Fed.Cir.2004)
382
(“The
F.3d
cuit to produce
signals
the video
upon
signals
appearance
into said
alterations
input from
predefined
of a
the detection
signals;
appearance
modified
produce
to
workstation,
pro-
the
the
a user
operating
further
circuit
11.38-41. Unlike
logic
grammed
patent,
de-
control
whatsoev-
or cursor
have no evidence
keyboard
we
Apex,
detect
here
to
an
is such
on-screen
the
correction”
received while
that “aesthetic
signals
er
vice
connote
A.Q. that it would
video
producing
“appropriate”
circuit
programming
skilled
to one
structure
sufficiently
and to con-
definite
monitor
the video
on
signals
Indeed,
correction”
“aesthetic
in re-
in the art.
switch
programmable
the
trol
language.
solely functional
may
itself
control
keyboard or cursor
the
sponse to
evidence
no
we
shown
example,
were
For
detected; and
signals
device
suggest
any technical dictionaries
disposed be-
circuit
interface
a second
structure
sufficiently definite
the artisan
and the
switch
programmable
the
tween
or even
circuitry”
correction
for “aesthetic
key-
supplying
computer for
selected
from
experts
did
a term. Nor
list such
signals
control device
cursor
and
board
art
that one skilled
opine
either side
programmable
through
routed
correction
“aesthetic
understand
would
computer.
selected
switch
sufficiently definite
circuitry” to connote
Patent
1368; United States
at
ex-
Microsoft’s
structure. While
circuit
14, 24.
1. 53—col.
5,884,096, col.
No.
that one
stated
Anthony Johnson
pert
circuit”
“interface
that the
holding
term
understood
the art
skilled in
limitation,
means-plus-function
not a
mean
circuitry” to
correction
“aesthetic
“the term ‘circuit’
explained
in-
operator
an
allows
“hardware that
as ‘inter-
such
identifier
appropriate
ap-
changes into
teractively introduce
certainly
‘logic,’
face,’
and
‘programming’
ap-
to create modified
signals
pearance
to one
meaning
some structural
identifies
connote
does
signals,” this
pearance
Apex,
art.”
ordinary skill in
un-
structure,
merely some
but
definite
added). More-
(emphases
at 1373
F.3d
record
hardware
specified
structure.
circuit”
that “interface
over, we elaborated
opinion
reflect the
does not
appeal
be-
structure
sufficiently definite
connotes
Paxton, regarding
Bradley
expert,
MIT’s
circuit”
“interface
“interface”
cause
cir-
correction
of “aesthetic
meaning
computing
defined
electronics
are
Rather,
portion of
paltry
in the
cuitry.”
specific
so as to
dictionaries
“connoted
record, he
appellate
testimony
his
ordinary skill
to one of
structures
the fact
“circuitry” and
merely discusses
then remanded
at 1374.
art.”
We
Id.
compo-
a lot of
“[c]ircuitry contains
devel-
for further
district court
case to the
im-
This fails
nents, including wires.”
analy-
similar
the record
opment
cor-
to “aesthetic
structure
part definite
terms.
remaining “circuit”
sis
components
circuitry” because
rection
“adjectival qualification”
every
unstated.
arrangements
their
id.,
sufficiently definite
(“A.Q.”),
connotes
Schreiber, explained
inventor, William
*18
“circuit,” but rather
for the term
structure
circuitry” means
correction
that “aesthetic
”
in
A.Q., as demonstrated
“appropñate
art “hardware
one
to
skilled
dictionaries.
by technical
Apex
to
operator
system
by the
used
software
limita-
contrast,
“circuitry” claim
ap-
By
into
alterations
desired
introduce
following
only the
this
Again,
case
image.”
tion
recites
signals of an
pearance
structure, but
nothing more:
a
not elucidate
does
definite
structure,
generic
suggests some
merely
for interac-
circuitry
correction
aesthetic
of
arrangement
unspecified
namely, some
desired
aesthetically
tively introducing
unidentified
components
hardware
or soft-
Similarly, a these representative dictionary definitions that “circuit” connoted concerning limitations “some “circuit” structural meaning recited: to one of ordinary skill in the art,” Apex, 325 F.3d (emphases at 1373 A circuit for controlling a switching volt- added), Linear relied on these dictionary age regulator, (1) the regulator having definitions, Apex, and certain non-function- switch coupled circuit an input receive al, operational claim language to state: voltage and including pair synchro- “Thus, when the structure-connoting term nously switched switching transistors ‘circuit’ is coupled with a (2) description of the an output circuit including an circuit’s operation, sufficient structural output terminal and an output capacitor meaning generally will conveyed per- coupled thereto for supplying current at sons of ordinary art, skill in § a regulated load, voltage to a the control ¶ 6 presumptively will not apply.” Linear, circuit comprising: 379 F.3d at (citing Apex, 325 F.3d at a first circuit for monitoring signal 1373) added). (emphases In its holding, from output terminal to generate a however, required Linear also expert testi- first signal; feedback mony as to whether descriptions these a second circuit for generating a first operation the circuit’s conveyed sufficient signal control during a first state of structure to an artisan: “We hold that operation, circuit the first signal control because the term ‘circuit’is used in each of being responsive to the first feedback the disputed limitations ... with a recita- signal vary duty cycle tion of respective operation circuit’s switching transistors to maintain the sufficient suggest detail to structure per- output terminal at regulated voltage; sons ordinary art, skill ‘cir- ‘circuitry’ cuit’ and limitations of such a third circuit for generating a second claims are means-plus-function limita- signal control during a second state of ....” tions Id. at (emphasis 1320-21 add- circuit operation to cause both switching ed). Thus, any operational language transistors to be simultaneously OFF suffices. for a period of if a time sensed condition of the regulator indicates that the cur- Linear therefore extended the reasoning rent supplied to the load falls below a Apex such that the use of “circuit” threshold fraction of coupled maximum rated with a description of the circuit’s output current for regulator, where- operation may connote “sufficient structur- *19 by operating efficiency of regulator the meaning,” al id. at to one skilled in at output low current levels improved. Linear, the art. In description this the of compo- circuit the identifies description “for monitor- operation was
first circuit’s cir- of arrangement conveys the or to terminal nents output the signal from a ing the art skilled to one components signal.” Id. cuit first feedback a generate ele- the circuit’s opera- could draw circuit’s that he so of the second description sequence. a first control and their generating “for tion ments was opera- circuit state of during a first signal on relied Linear sum, Apex and both descrip- Similarly, the 1316. Id. at tion.” to de- in the claim information additional operation circuit’s third the tion of a whole as the limitation termine whether signal control a second generating “for struc- circuit sufficiently definite conveyed operation of circuit state during a second components ture, i.e., or elements to be switching transistors cause both to relied Apex to an artisan. sequence, their Importantly, simultaneously OFF.” Id. accompany- of an definitions dictionary on expert on testimo- however, relied Linear suf- A.Q. suggested that “appropriate” ing descrip- these whether ny to determine one skilled to structure ficiently definite conveyed operation the circuit’s tions of testimony expert on relied art. Linear the the skilled to one structure sufficient opera- of the description claim’s the that the ordinary skill of persons “That art. struc- definite connoted the of circuit tion ar- structural the understand art would dictionary a Here, have neither we ture. from components of circuit rangements cor- that “aesthetic to establish definition qualifying coupled ‘circuit’ term A.Q. suggest to appropriate is an rection” recognized 1 was of claim language testimony expert nor structure definite (em- witness,” at 1320 id. expert Linear’s description of accompanying that one skilled added), that opined who phasis circuit, any, if connotes of operation understanding have an “would in the art par- structure-sequence circuit definite draw, structural able to of, so an artisan eomponents-to circuit ticular de- elements the circuit arrangements of arrange- paper could draw he that add- (emphases Id. claims.” by the fined needed. components of the ment Linear, merely not ed). Thus, it was operation descriptions of particular sufficient connoted that circuit of the II. testimony expert structure, but also belated MIT’s court denied conveyed sufficient district descriptions that these infringing art because attempt one skilled add structure case, the of the draw[ ] struc- be able to At the outset “would the artisan device. circuit ele- Docket Control proposed arrangements' provided tural proposed This Id. 2002. ments.” on June Order Infringe Preliminary stated order only the Here, description face we to the prior were due Contentions ment operates it function, not of how circuit’s allow did not hearing. It Marlcman carry or circuits devices with other supplemental amended Moreover, as- even function. out Ex “No also contained It contentions. cir- description had a we suming “A party stated: which provision, cuses” interactively intro- “for operation, cuit’s requirements from the excused not alterations aesthetically desired ducing it Order because Control Proposed Docket produce signals appearance said into investigation completed fully not has patent, signals,” appearance modified has party another ... or because the case evi- 38-41, no were shown MIT did its disclosures.” made to conclude from which dence *20 object to the “No Excuses” clause. Yet in means-plus-function limitation, which nar- response proposed order, to the MIT did term, rowed the claim should expand- request no occur discovery until ed the set of potentially infringing devices after the Markman hearing.1 such that MIT would only have been able proposed amended the Docket Control Or identify as an Windows in- allegedly der to include requested MIT’s stay of fringing device the limitation had after discovery until after the Markman hear been so narrowed. Indeed, utterly MIT ing. After the Markman hearing and dis explain fails to how construction of this covery, MIT attempted “update” in its limitation aas means-plus-function limita- fringement contentions. Microsoft then tion could have apprised first MIT that moved to exclude Windows as an addition might Windows infringe. Moreover, it is al accused device and strike updat MIT’s difficult to why understand MIT could not ed contentions. The court have prior contended to the Markman granted because, said, the motion it to do hearing software—alleged- Windows— otherwise would have “significant caused ly infringed, given that in its Markman delay that avoided,” could have been Mass. brief argued MIT that “aesthetic correc- Inst. are, v. Tech. Abacus No. 01- tion circuitry” includes “hardware or Softw soft- (E.D.Tex. 2004) (order at 10 Sept. ware”—not only hardware, as Microsoft granting exclude), motion to especially giv argued. Fourth, to add this new accused en that “Microsoft did not have the oppor product years two litigation into tunity to consider its drafting have caused undue delay and prejudice to arguments.” construction I Id. Microsoft—and all parties other in this agree. complex litigation against 214 defen- dants —because claim construction oc- had First, had MIT not requested stay curred, invalidity contentions had been discovery until after the Markman hear- served, depositions taken, had been expert it ing, would have discovered Windows as reports served, had been Fifth, etc.2 add- an allegedly infringing device prior to the ing an entirely new accused product was Markman hearing. Second, MIT request- not an “update”' materially changed the ed the stay —it discovery even though it theories the case. knew, already based on the trial court’s June proposed order, scheduling Moreover, I disagree that MIT did not that incomplete investigation of its case— have actual notice that it would not be able i.e., uncompleted discovery not an “update” its infringement —was contentions excuse for deviation from the scheduling based on incomplete discovery. The ma- order, including the deadline for infringe- jority states that “MIT was not provided ment Third, contentions. it is difficult to with sufficient notice that its preliminary fathom how the district court’s construc- infringement contentions would be deemed tion of “aesthetic correction circuitry” as a final” because MIT was not notified that 1. Proposed Plaintiffs' Scheduling appeal Confer- its briefs that "[t]he district court did Agenda, ence "Plaintiffs, MIT stated: permit howev- discoveiy needed until after er, believe parties that the duplica- can avoid ruling” disingenuous. Markman tive and discovery wasteful requests by the imposing Court following limitations: No Paxton, 2. example, For Bradley expert, MIT's discovery may individualized be served until deposed was February 2003. Microsoft’s after the Court ruling.” issues its Markman expert report by Anthony Johnson sub- deny does not requested that MIT support mitted of Markman brief on stay discovery. arguments MIT’s February *21 case, including the issue the issues Judge “rel[y]” on would Judge Craven early settle- to facilitate infringement, three misleading of on This Rules.
Ward’s complex (3) large, in (2) ment, finality, especially (1) notice, points: case. Ward’s Rules. Judge notice with provided First, MIT was to did need court Second, district the its “update” to allowed not be it would
that
infringe-
preliminary
its
MIT that
notify
incom-
on
based
infringement contentions
“final,”
be deemed
contentions
ment
“No Excuses”
through the
discovery
plete
states,
the district
because
majority
the
as
explicitly
clause
The no excuses
clause.
No-
“final.”
them
deemed
never
court
excused
not be
it would
that
MIT
notified
char-
Judge Craven
did
her order
where
scheduling
the
of
requirements
the
from
as
contentions
infringement
MIT’s
acterize
fully completed
it
ha[d]
“because
order
court, apply-
Rather, the district
“final.”
Incomplete
the case.”
of
investigation
its
to allow
clause, refused
excuses
ing
no
its
that
infer,
the real reason
I
discovery,
product
infringing
allegedly
to add an
MIT
infringement
its
update
to
wanted
MIT
Indeed,
discovery.
incomplete
on
based
is one
discovery
Incomplete
contentions.
contem-
to
seems
clause
the no excuses
no excuses
by
noticed
explicitly
reason
as we
a situation
obviate—such
plate—and
do so.
not allowed
was
that MIT
clause
an
to add
attempt
belated
have here: a
scheduling
23, 2002
Indeed,
August
incomplete
on
product based
infringing
infringe-
preliminary
that
required
order
clause
no excuses
The
discovery.3
September
by
filed
contentions
ment
no uncertain
possibility
a
such
quashed
for
a deadline
order set
This same
2002.
may
reasons
other
while
terms.
February
of
briefs
Markman
opening
showing of
a
upon
plaintiffs
allowed
have
fil-
delay between
five-month
This
2003.
in-
introduce additional
cause
good
conten-
infringement
preliminary
of
ing
prelim-
beyond
fringement contentions
briefs
opening Markman
of the
tions
discovery
contentions,
incomplete
inary
of this
purpose
that
strongly suggests
not such reason.
explicitly
was
par-
allow
was to
frame
time
extended
respective theories
develop their
ties
ma-
with the
Third,
disagree
I further
strategies,
case, litigation
Mag-
characterization
jority’s and MIT’s
infringing
allegedly
with the
constructions
Judge
Craven’s use
Judge
istrate
MIT thereaf-
Allowing
mind.
products in
granting
Rules
Patent
Local
Ward’s
in contra-
its contentions
“update”
ter
to exclude
motion
Microsoft’s
it
allowed
notice would
of this
vention
majority states
product.
infringing
provi-
of these
very purpose
to subvert
“govern[ed]”
was
Judge
Craven
Moreover,
order.
scheduling
sions
on those
“relied”
Rules
Judge Ward’s
Dead-
Early
Mediation
March
is inaccurate.
This
Rules.
fur-
order
scheduling
in the same
line set
construction
its claim
issued
court
in-
purpose
implies
ther
its
MIT served
July
2003.
order
combined
deadline
contention
fringement
Asserted Claims
Disclosure
Updated
narrow
towas
clause
the no excuses
their
finalize
could not
covery,” "Appellants
appellate briefs
its
repeatedly stated
they ob-
after
until
infringement contentions
discovery
the reason
incomplete
product’s
accused
discovery
con-
into
its
delay
"updating”
tained
arbitrarily
manufacturing meth-
tentions, viz.,
district
as well as
"the
code
source
infringement con-
final
Appellants into
forced
ods.”
infringement dis-
complete
without
tentions
and Preliminary Infringement Contentions
Maj.
orders.”
Op. at 1358. In
footnote,
re Defendant Microsoft Corporation on it then
cites
case that holds that abuse of
*22
22,
on
2003,
Microsoft
December
attempt-
discretion is the standard of review. Upon
ing to add
as an
prod-
infringing
reaching
conclusion,
its
however, the ma-
uct for the first time
filing
since
com-
jority simply states that the “district court
on
plaint
December
2001. Yet in her
erred.” That appears to be de novo re-
November
2008 Order granting the mo- view, rather than review for abuse of dis-
tion
entry
of a revised Docket Control
cretion.
Indeed,
judge’s
discretion is at
Order, Judge Craven stated that she was
its broadest on matters of trial manage-
using Judge Ward’s Local Patent Rules as ment.
“guidance.” In her September 10, 2004
“[Rjulings which rested largely in the
Order granting Microsoft’s motion to ex-
sound discretion of the court
... may be
clude Windows
as
infringing product,
made the basis for
only
reversal
where it
Judge
again
Craven
cited Judge Ward’s
is made to appear not merely that
rules. Yet it does not appear that she
ruling might have been the
way
other
but
viewed these rules
binding
as
on her or on
that, made,
as
there was a grave
seri
the parties. Rather,
it appears that she
”
ous
abuse
discretion ....
Fulenwider
used them to justify
explain
part
Wheeler,
v.
(5th
262 F.2d
Cir.1959).
grant
motion,
Microsoft’s
In particular, “[t]he Civil Rules endow the
same way that
cited
she
case law to justify
trial
judge
formidable case-manage
explain
(as
her
do).
decision
all courts
ment authority.” Rushing v. Kan. City S.
error,
I see no
other,
constitutional or
Co.,
Ry.
(5th Cir.1999)
exclusion of Windows as an infringing
product. majority equivocates on the
standard it uses to determine that
exclusion was reversible. The majority
states that “district courts afforded
broad discretion in interpreting their own