Opinion
No. CV-S-04-1373-JCM-LRL, (Claim Construction).
September 26, 2005
REPORT RECOMMENDATION
This is a patent infringement action brought by Shuffle Master, Inc. against VendingData, Corp. The matter presently before the court is the construction of the term "set" in asserted claim No. 20 of United States Patent No. 6,655,684 (the "'684 patent") held by Shuffle Master.
On May 16, 2005, the court conducted a hearing pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). In addition to the evidence and arguments presented by the parties at the Markman hearing, the court has considered Shuffle Master's Opening Claim Construction Brief (#69), VendingData's Opposition Claim Construction Brief (#71), Shuffle Master's Reply Claim Construction Brief (#73), VendingData's Supplemental Claim Construction Brief Regarding New Federal Circuit Opinion (#91), and Shuffle Master's Supplemental Claim Construction Brief Regarding New Federal Circuit Opinion (#93). Based thereon, the undersigned submits this Report Recommendation.
BACKGROUND
Shuffle Master is a company that makes and sells commercial card shufflers for use in gaming facilities. Shuffle Master's '684 patent, titled "Device and Method for Forming and Delivering Hands from Randomly Arranged Decks of Playing Cards," relates generally to "an electromechanical card handling apparatus and method for creating or generating a plurality of hands of cards from a group of unshuffled cards wherein each hand contains a predetermined number of randomly selected or arranged cards." Opening Brief (#69), Exh. 1 ("`684 Patent") at col. 4:11-15. The apparatus allows a dealer to rapidly deliver successive hands of cards from a delivery tray to players without the need to shuffle the cards manually or deal the cards individually to players to form hands. Id. at 2. Preferably, a dealer places one or more decks of unshuffled cards into the card receiver. See generally '684 Patent col. 4-9. The device then moves cards, one at a time, from the top of the card receiver to randomly selected compartments, which are similar to shelves. Id. The process continues until each card-receiving compartment is filled. Id. To accomplish random distribution, the card-receiving compartments are vertically stacked on an elevator. Id. The elevator moves up and down so that each card in the group of unshuffled cards is placed randomly into one of the card-receiving compartments. Id. The number of compartments into which cards are placed may vary, depending on the number of hands required. Id. When enough compartments are filled to provide hands to all players and the dealer, the remaining cards from the deck are placed into a discard compartment. Id. The cards in each compartment are delivered at the same time to an external delivery tray. Id. The dealer then physically removes the hand from the delivery tray, after which the device sends another hand from one or more of the remaining compartments to the delivery tray. Id.Shuffle Master alleges that VendingData's '756 patent (the Poker One), also an apparatus and method for shuffling cards, infringes on its '684 patent. The Poker One utilizes a rapid, yet random ejection of individual cards from a deck. Opposition Brief (#71) at 3. In operation, a dealer physically places an unshuffled deck of cards into the input tray. Id. A computer-controlled motor moves the input tray up and down in a random pattern. Id. Based on mathematical concept of randomness, a stationary ejector expels cards one-by-one from the deck. Id. The ejected cards gather in the internal stack, one on top of another, until the internal stack holds a number of cards equivalent to at least two hands worth of cards for the game being played. Id. Then, the Poker One dispatches enough cards from the bottom of the internal stack, one-by-one, to the external delivery tray (or collector unit) to form a hand. Id. After a hand is formed in the delivery tray, the dealer physically removes the hand from the delivery tray for formation of another hand. Id.
The crux of the parties' dispute is whether the Poker One infringes a method set forth in the '684 patent. VendingData contends that, unlike the Poker One, the '684 patent does not contemplate an internal stack. Instead, the '684 patent shuffles by randomly distributing cards from the top of the input tray directly into compartments, and forms hands or parts of hands in those internal compartments. VendingData further contends that the Poker One hands are never formed internally. Rather, hands are formed in the delivery tray.
Independent claim 20 (the only asserted claim) addresses the method at issue. Claim 20 sets forth a "method for delivering hands of randomly mixed cards from an apparatus" comprising the following elements:
providing at least one deck of playing cards;
forming at least one set of cards within the apparatus from the at least one deck of playing cards;
delivering to a delivery tray from the at least one set of cards within the apparatus a first individual set of randomly mixed playing cards for a game;
delivering the first individual set of randomly mixed playing cards from the delivery tray of the apparatus, with all cards in the first individual set delivered at the same time, and then providing a second individual set of randomly mixed playing cards into the delivery tray.'684 Patent, col. 28:5-17. In other words, the method
for delivering hands is to load an area within an apparatus with at least one set of cards taken from the input deck, eliminating the need to first traditionally shuffle the deck. By taking cards from the deck and arranging them to form at least one set within the apparatus, cards may be delivered from the at least one set within the apparatus to form a first individual set in the delivery tray, followed by a second individual set, allowing for secure and rapid randomizing and delivery of successive hands from a delivery tray.
Opening Brief at 6-7.
The parties dispute the meaning of the term "set" in the phrase "forming at least one set of cards within the apparatus." Shuffle Master contends that the ordinary meaning of "set" is "a number of cards." Opening Brief at 3. Shuffle Master contends that its construction is supported by the dictionary's ordinary meaning of "set," the claim language itself, and the language of the unasserted claims. Relying largely on the specification and prosecution history, VendingData contends that a "set" of cards means "a hand or hands, or part of a hand or hands." Opposition Brief at 16.
Originally, the parties also disputed the meaning of the term "forming." Shuffle Master argued that forming means "providing" or "arranging," whereas VendingData argued that it means "creating." At the hearing, however, Shuffle Master stated that it didn't mind construing "forming" to mean "create," so long as all definitions which are consistent with the claimed invention are included as part of the definition, including the terms "arranging," "organizing," and "ordering." Thus, because the term "forming" is no longer in dispute and the parties agree that its ordinary meaning applies, no claim construction is necessary.
DISCUSSION
I. Legal Standard
Patent infringement analysis involves two steps: 1) "the proper construction of the asserted claim;" and 2) "a determination as to whether the accused method or product infringes the asserted claim as properly construed." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1581-82 (Fed. Cir. 1996) (citing Markman, 52 F.3d at 976). Claim construction is a matter of law for the court. In Markman, "[t]he Supreme Court also acknowledged that the Court's role was limited to interpreting the contents of the patent as a document, leaving to the jury the interpretation of the construction of the devices alleged to infringe the patent — and that the line drawn between these roles may be a fine one." Chad Indus., Inc. v. Automation Tooling Sys., Inc., 938 F. Supp. 601, 603-04 (C.D. Cal. 1996) (citing Markman, 517 U.S. at 379).
The purpose of claim construction is to determine the meaning given to each disputed term by a person of ordinary skill in the relevant art. Haynes Int'l, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1578 n. 4 (Fed. Cir. 1993). "It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of the record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history." Vitronics, 90 F.3d at 1582; see also Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). The intrinsic evidence "constitute[s] the public record of the patentee's claim, a record on which the public is entitled to rely." Vitronics, 90 F.3d at 1583. "Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language." Id. at 1582. Indeed, "[i]n most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term." Id. at 1583.
In examining the intrinsic evidence, the court must look first to the words of the claims themselves. See Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 619-620 (Fed. Cir. 1995); see also Vitronics, 90 F.3d at 1582. "In construing claims, the analytical focus must begin and remain centered on the language of the claims themselves." Nystrom v. Trex Co., Inc., 374 F.3d 1105, 1111 (Fed. Cir. 2004). "[T]he language of the claim defines the scope of the protected invention." Bell, 55 F.3d at 619. Words in a claim are generally given their customary and ordinary meaning. Vitronics, 90 F.3d at 1582. That is, "a court must presume that the terms in the claim mean what they say, and, unless otherwise compelled, give full effect to the ordinary and accustomed meaning of claim terms." Johnson Worldwide Ass'n, Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999); See also Affymetrix, Inc. v. Hyseq, Inc., 132 F. Supp. 2d 1212, 1218 (N.D. Cal. 2001) (words given ordinary and customary meaning unless clear from specification and prosecution history that inventor intended different meaning); Teleflex, 299 F.3d at 1325 ("In the absence of an express intent to impart a novel meaning to claim terms, an inventor's claim terms take on their ordinary meaning.").
"The claims, of course, do not stand alone. Rather, they are part of `a fully integrated written instrument,' Markman, 52 F.2d at 978, consisting principally of a specification that concludes with the claims. For that reason, claims `must be read in view of the specification, of which they are a part.' Id. at 979." Phillips v. AWH Corporation, 415 F.3d 1303, 1315 (Fed. Cir. 2005).
The specification contains a written description of the invention which must be clear and complete enough to enable those of ordinary skill in the art to make and use it. Thus, the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.Vitronics, 90 F.3d at 1582. "The specification is, thus, the primary basis for construing the claims." Phillips, 415 F.3d at 1315.
Although claims must be read in view of the specification, limitations from the specification are not to be read into the claims. Teleflex, supra at 1326. The court may also consider the prosecution history of a patent in its claim construction. Vitronics, 90 F.3d at 1582; see also Markman, 52 F.3d at 980. The prosecution history "contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims." Vitronics, 90 F.3d at 1582. "As such, the [prosecution history] is often of critical significance in determining the meaning of the claims." Id. at 1583. However, "an accused infringer cannot overcome the `heavy presumption' that a claim term takes on its ordinary meaning simply by pointing to the preferred embodiment or other structures or steps disclosed in the specification or prosecution history." Teleflex, 299 F.3d at 1327.
In the majority of cases, "an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term." Vitronics, 90 F.3d at 1583. In cases in which the intrinsic evidence unambiguously defines a term, "reliance on any extrinsic evidence is improper." Id.; see also Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1216 (Fed. Cir. 1995). Thus, where the intrinsic evidence is insufficient to enable a court to determine the meaning of a disputed term the court may rely on extrinsic evidence, which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. Technical dictionaries in particular may be helpful in enabling the court to better understand the technology involved in the invention. Vitronics, 90 F.3d at 1584 n. 6.
In Phillips v. AWH Corporation, supra, the court, sitting en banc, recently noted that the claim construction methodology adopted in Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002),
placed too much reliance on extrinsic sources such as dictionaries, treatises, and encyclopedias and too little on intrinsic sources, in particular the specification and prosecution history. While the court noted that the specification must be consulted in every case, it suggested a methodology for claim interpretation in which the specification should be consulted only after a determination is made, whether based on a dictionary, treatise, or other source, as to the ordinary meaning or meanings of the claim term in dispute. . . . In effect, the Texas Digital approach limits the role of the specification in claim construction to serving as a check on the dictionary meaning of a claim term if the specification requires the court to conclude that fewer than all the dictionary definitions apply, or if the specification contains a sufficiently specific alternative definition or disavowal.
* * *
Assigning such a limited role to the specification, and in particular requiring that any definition of claim language in the specification be express, is inconsistent with our rulings that the specification is "the single best guide to the meaning of a disputed term," and that the specification "acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication." Vitronics, 90 F.3d at 1582.Phillips, 415 F.3d at 1320-21. II. Construction of the '684 Patent
Neither party has pointed to extrinsic evidence, other than dictionary definitions of the word "set," to support its claim construction position. The parties agree that the Federal Circuit indulges a "heavy presumption" that a claim term carries its ordinary and customary meaning. Johnson, supra at 989; C.C.S. Fitness, Inc., v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Further, VendingData agrees that the term "set" should be given its "ordinary" meaning. Opposition Brief at 15. VendingData does not contend that the patentee "acted as his own lexicographer" to explicitly define the term as VendingData would have the court construe it, or that the patentee has disavowed or described the scope of coverage by using words or expressions that manifest exclusion or restriction. The court's task, therefore, is to determine the ordinary meaning of the word "set."
Initially, the court considers the context provided by the remainder of claim 20 and the other claims of the '684 patent. See, e.g., Abbott Lab. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1351 (Fed. Cir. 2003) ("The usage of disputed claim terms in the context of the patent claims as a whole informs the proper construction of the terms."); see also Vitronics, supra at 1582 ("we look to the words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention"). The term "set" appears more than once in claim 20. The third and fourth elements of claim 20 refer to delivery of an "individual set." Shuffle Master contends that its proposed construction is consistent with its different use of "set" and "individual set." Specifically, Shuffle Master contends that "[t]he use of the more specific term `individual set' for the delivery tray confirms that the more general term `set' is entitled to a broader scope consistent with the ordinary meaning of `set.'" Opening Brief at 12. VendingData argues that since claim 20 discloses a "method for delivering hands of randomly mixed cards from an apparatus," and claim 20 addresses the delivery of a "first individual set" or a "second individual set," an "individual set" must be one hand. Opposition Brief at 17-18. Thus, if an "individual set" is one hand, then "at least one set" means one or more hands (or parts of hands). Id.
The claim language supports VendingData's construction. First, the court is reluctant to construe "set" to mean one thing in one element and something quite different in another element of the same claim. "Certainly, the same word appearing in the same claim should be interpreted consistently." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F3d. 1298, 1310 (Fed. Cir. 1999) (citations omitted); see also Frank's Casing Crew Rental Tools, Inc. v. Weatherford Int'l Inc., 389 F.3d 1370, 1377 (Fed. Cir. 2004) ("[T]he same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that terms have different meanings at different portions of the claims.").
Secondly, a review of the prosecution history indicates that the term "individual" was not used to narrow the scope of the term "set." Rather, because the Patent Examiner had rejected claim 20 as being "anticipated by [the] Kelley [patent]," the term "individual" was simply used to distinguish the '684 patent from U.S. Patent No. 5,431,399 (the Kelley patent). Opening Brief, Exh. J ("File History") at 11. The Kelley patent discloses an apparatus that evenly divides a 52-card deck directly into four 13-card bridge hands, without forming any set between the deck and the outputted hands. See id. generally at Exh. L. It appears that the term "individual" was used in order to "more clearly define" that the '684 patent delivers individual hands, one at a time, whereas the Kelley patent is designed to form multiple hands at the same time. File History at 10. As explained to the Patent Examiner:
Kelley deals all of the hands at the same time into distinct shelves from which the hands are directly removed, each distinct shelf holding a distinct hand. These shelves are the equivalent of a delivery tray. The nature of the Kelley device requires that all hands be formed at the same time in the distinct shelves.
The present claim requires that sets of cards be formed inside the apparatus and then that individual sets of cards be provided to a delivery tray from the sets of cards (either with one set of cards being a complete hand or by sets of cards being combined to form a complete hand) and that subsequent hands be provided to the delivery tray after an earlier hand has been removed, providing a second individual hand into the delivery tray. . . .Id. at 14-15, see also Opening Brief at 14-16 (illustrating Kelley patent).
Finally, the fact that the claim language refers to "at least one" set is significant. The "at least one" language contemplates that there are one or more sets of cards within the apparatus. According to the specification, more than one "set" of cards can be contemplated within the apparatus only if the term "set" refers to the cards within each compartment. The specification explains that each card-receiving compartment is filled with the assigned number of cards for a hand or with discards. The "first individual set" (or hand) is delivered to the delivery tray from these compartments filled with cards. Because a hand is delivered to the delivery tray, and the cards in that hand come from the "at least one set" of cards within the apparatus, the cards in that compartment cannot simply refer to a "number of cards." If it did, then the method contemplated by claim 20 — "delivering hands of randomly mixed cards from an apparatus" — could not be accomplished.
Shuffle Master also contends that consideration of unasserted claim 36 strengthens the conclusion that the term "set" is used more broadly than urged by VendingData. Ordinarily, each claim in a patent has a different scope. See, e.g. Karlin Tech. v. Surgical Dynamics, 177 F.3d 968, 972 (Fed. Cir. 1999). Under the doctrine of claim differentiation, "when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement." SRI Intern. v. Matsushita Elec. Corp. Of Am., 775 F.2d 1107, 1122 (Fed. Cir. 1985). Claim 36, like claim 20, refers to activity within the apparatus. However, unlike claim 20, claim 36 uses the terms "first individual group" and "second individual group." Claim 37 specifies that each formed group of cards is a "hand of cards." Claim 36 is not particularly helpful. VendingData has not attempted to use the term "individual" in claim 36 to modify or limit claim 20's "at least one set." VendingData does not rely on the term "individual" to support its position that "set" means a hand or part of a hand. See Opposition Brief at 18-19.
Lastly, looking to the '684 patent specification and prosecution history, there is additional evidence supporting VendingData's construction of claim 20. Because the words in a claim are not meant to be considered in a vacuum, the particular use of those words in the patent cannot be ignored. See Toro Co. V. White Consol. Indus., 199 F.3d 1295, 1301 (Fed. Cir. 1999). The specification is "the single best guide to the meaning of a disputed term." Vitronics, supra at 1582. Contrary to Shuffle Master's contention, VendingData has not read limitations into claim 20 by relying on a preferred embodiment in the specification. See Zenith Lab., Inc., v. Bristol-Meyers Squibb Co., 19 F.3d 1418, 1423 (Fed. Cir. 1994). Rather, VendingData points to the specification as a whole to determine the ordinary meaning of the claim. Its references to the specification are not limited to how the terms are used in the preferred embodiments. See Generation II Orthodics, Inc., v. The Medical Tech., Inc., 263 F.3d 1356, 1367 (Fed. Cir. 2001) (a claim's scope cannot be limited by "importing a characteristic of a disclosed or preferred embodiment into that term"). For instance, the specification provides:
In one embodiment, an apparatus moves playing cards from a first group of unshuffled cards ["the at least one deck of playing cards"] into shuffled hands of cards, wherein at least one and usually all of the hands contains a random arrangement or random selection of a preselected number of cards. In one embodiment, the total number of cards in all of the hands is less than the total number of cards in the first group of unshuffled cards (e.g., one or more decks of playing cards). In another embodiment, all of the cards in the first group of unshuffled cards are distributed into hands.
'684 Patent at col.4:25-34 (emphasis added). Moreover, in addition to the specification's references to the broader fact that the '684 patent supports the delivery of hands from the apparatus, the specification contains repeated, specific references to the formation of hands within the apparatus. The following excerpts are illustrative:
Each slot or compartment [located within the apparatus] may therefore be identified or treated to receive individual hands or defined numbers of randomly selected cards or the slots may be later directed to deliver individual cards into a separate hand forming slot or tray. In the first example, a hand of cards is removed as a group from an individual slot. In the second example, each card defining a hand is removed from more than one compartment (where one or more cards are removed from a slot), and the individual cards are combined in a hand-receiving tray to form a randomized hand of cards.
* * *
Generally, the operation of the card handling apparatus of the present invention will form at least a fixed number of hands of cards corresponding to the maximum number of players at a table. . . .
* * *
Preferably, a vertical rack assembly or the carousel or partial carousel assembly has nine compartments. Seven of the nine compartments are for forming player hands, one compartment forms dealer hands and the last compartment is for accepting unused or discard cards.
* * *
When actuated, the second card moving mechanism empties a compartment by pushing the group of cards therein into a card receiving platform. . . . In this way, a complete hand is pushed out, with usually one hands at a time fed to the card receiving platform (or more properly, card retrieving platform). The hands are then, usually, manually retrieved by a dealer and placed at player positions.Id. at col. 4-5:61-4 (emphasis added), col. 6:22-26 (emphasis added), col. 13:46-51 (emphasis added), col. 20-21:65-6 (emphasis added); see also col. 5:45-48, col. 7:31-34. On the other hand, the specification contains no reference to the formation of "a number of cards" within the apparatus. Hence, the language of the specification does not support Shuffle Master's argument that to one skilled in the art, the term "set" means "a number of cards."
Additionally, because claims issue after an examination process, the particular use of claim language and the applicant's statements in the patent's prosecution history cannot be ignored. Toro, supra at 1299. Here, the prosecution history contains express representations made by Shuffle Master regarding the scope of the meaning of "set." Originally, the Patent Examiner rejected original claim 20 under 35 U.S.C. § 102(b) as being anticipated by the Kelley patent. In response, Shuffle Master amended claim 20 and dependent claims 21-26 to add many of the terms now at issue. All references to "hands" were changed to "sets of randomly mixed playing cards." Shuffle Master also advanced an argument to the Patent Examiner why the claim, as amended, was not anticipated by Kelley. Referring to the method disclosed by the '684 patent, Shuffle Master stated:
This method is impossible to perform with the Kelley apparatus. It is practiced in the present invention, for example by the formation of the complete or partial hands within the apparatus, then delivery of the complete hands or partial hands plus cards to complete the partial hands, into the delivery tray.
File History at 15 (emphasis added).
Shuffle Master contends that its statements in the prosecution history are insignificant because it never used "words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope." Opening Brief at 13-14 (emphasis in original). The court disagrees. Because VendingData has not relied on the prosecution history to support an interpretation that constricts the usual meaning of the terms or the meaning supplied in the written description, VendingData need not show that Shuffle Master expressly limited the scope of the term "set." See, e.g., Storage Techs. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 833 (Fed. Cir. 2003) (clear and unambiguous disavowal of claim scope required to depart from the meaning provided by the written description). Rather, Vending Data relies on the prosecution history to support an interpretation of claim terms that is consistent with both the specification and the usual meaning of the term. Indeed, VendingData concedes that the ordinary meaning controls.
Relying on Gemstar-TV Guide Int'l, Inc. v. Int'l Trade Comm'n, 383 F.3d 1352, 1375 (Fed. Cir. 2004), Shuffle Master contends that the use of the expression "for example" illustrates that it was merely giving examples of the differences between its patent and the Kelley patent. Citing to other portions of the prosecution history, VendingData contends that Shuffle Master did more than merely provide examples of what could comprise the "at least one set" of cards formed within the apparatus of claim 20. VendingData contends that Shuffle Master "unambiguously define[d]" the meaning of "set." Opposition Brief at 22. VendingData relies on the following statements made by Shuffle Master to the Patent Examiner:
The present claim 20 requires at least one set of cards to be formed in the apparatus and then a first individual set to be delivered to a delivery tray from the sets of cards ( either with one set of cards being a complete hand or by sets of cards being combined to form a complete hand ), subsequent removal of the first individual hand, and the forming of a second individual hand on that deliver tray.
* * *
The present claim requires that sets of cards be formed inside the apparatus and then that individual sets of cards be provided to a delivery tray from the sets of cards ( either with one set of cards being a complete hand or by sets of cards being combined to form a complete hand ) and that subsequent hands be provided to the delivery tray after an earlier hand has been removed, providing a second individual hand into the deliver tray ( either with one set of cards being a complete hand or by sets of cards being combined to form a complete hand ). . . .
File History at 14-15 (emphasis added). VendingData correctly notes that none of these statements uses the words "for example" or otherwise suggests that the parenthetical definitions were merely illustrative. According to Shuffle Master's unequivocal statements to the Patent Examiner, the "sets" formed in the apparatus either constitute a complete hand or part of a hand. Shuffle Master specifically inserted language ("either . . . or . . .") to alert one skilled in the art to the ordinary meaning it now asks this court to reject. See, e.g., Voice Techs. Group, Inc. v. VMC Sys., Inc., 164 F.3d 605, 615 (Fed. Cir. 1999) ("[T]he inventor cannot by later testimony change the invention and the claims from their meaning at the time the patent was drafted and granted."). Thus, the '684 patent specification, and the arguments made by Shuffle Master to the Patent Examiner in order to obtain issuance of claim 20, provide further support for VendingData's construction of the term "set."
Finally, the court notes that in advancing their respective constructions the parties point to dictionary definitions of the term "set." According to the Cambridge Advanced Learner's Dictionary, at "set" is defined as "a group of similar things that belong together in some way." Opening Brief, Exh. I. For instance: "We bought Charles and Mandy a set of cutlery as a wedding present . . . I always keep a tool set in the back of my car . . . The doctor said that he hadn't seen this particular set of symptoms before . . . We need to establish a new set of priorities." Id. The second definition defines "set" as "a number of items or pieces of equipment needed for a particular activity, especially playing a game: a chess/train/chemistry set." Id. (italics in original). Based on these definitions, Shuffle Master contends that "at least one set of cards" should be construed to mean "a number of cards." VendingData argues that Shuffle Master's construction of "an undefined, fluctuating, functionless number of cards" fails to comport with either of the above dictionary definitions of the term "set." Opposition Brief at 16. Specifically, VendingData argues that
Shuffle Master's view of a `number of cards' is not `a number of items or pieces of equipment needed for a particular activity, especially playing a game.' Logically, the number in a `set' must mean the number of items needed for someone to engage in the activity or to play the game. What are involved in this case are card games. A `set' of cards accordingly must be a hand or hands, or part of a hand or hands.
Because the intrinsic evidence provides a sufficient basis for construing the term "set" as used in claim 20, the court need not address the parties' disagreement over the dictionary definitions in question. See Phillips v. AWH Corp., supra.
The intrinsic evidence in this case compels the conclusion that VendingData's construction is most consistent with the ordinary meaning of the words in the claim and specification, and the patentee's statements during prosecution. Based on the foregoing, the court concludes that the word "set" as used in claim 20 means "a hand or part of a hand" of cards, such that the second element of claim 20 should be construed to mean "creating one or more discrete hands or discrete parts of hands within the apparatus from the at least one deck of playing cards."