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In Static Control, the district court criticized one side's "exhortation to attach a synonym to self-defined and simple words" because it invited "a meaningless result that mocks the notion of construction."
Summary of this case from Maxill Inc. v. Loops, LLCOpinion
Nos. Civ.A. 5:02-571, Civ.A. 5:04-84.
May 18, 2007
Mark T. Banner, Timothy C. Meece, Binal J. Patel, Matthew P. Becker, Michael L. Krashin, Christopher B. Roth, all of Banner Witcoff, Ltd., Chicago, IL, Steven B. Loy, Hanly A. Ingram, of Stoll Keenon Ogden PLLC and Andy Copenhaver, Hada Haulsee of Womble Carlyle Sandridge, Lexington, KY, for Defendant/Counterclaim Plaintiff Lexmark International, Inc.
ORDER
The Court takes up for consideration the claims of fourteen patents at issue in this suit that have contested constructions for the purpose of construing those claims. The parties have filed a joint claim construction brief [R. 919]; opening briefs [R. 966 (Static Control, Pendl, and Wazana), 949 (Lexmark)]; responses to the opposing parties' opening brief [R. 1007, 1010]; and replies [R. 1023, 1025].
There were originally sixteen patents at issue in this suit; however, the Court determined that two of Lexmark's design patents were invalid and thus only fourteen patents in suit are currently relevant for purposes of claim construction. [R. 1008].
I. BACKGROUND
Briefly, the status of the parties is as follows: Lexmark is a large producer of printers and toner cartridges for its printers. SCC is "a leading supplier to toner cartridge remanufacturers." [R. 172 at 16, Case No. 5:02-571]. The remanufacturers, which include the other Counterclaim Defendants in this case, take used toner cartridges, repair them, refill the toner, et cetera and resell the cartridges to enduser consumers. SCC sells to the remanufacturers parts and supplies for reworking the used toner cartridges, such as replacement parts, toner, and microchips. [R. 1].
Lexmark and SCC first began litigation in this Court in 2002 when Lexmark filed suit against SCC, alleging, inter alia, that SCC's sale of "SMARTEK" microchips infringed on Lexmark's copyrighted "Toner Loading Programs." [R. 1, Case No. 5:02-571]. In 2004, SCC filed a declaratory-judgment action, alleging, inter alia, that its new "re-engineered" microchips did not infringe on any of Lexmark's copyrights. [R. 1, Case No. 5:04-84]. The cases were ultimately consolidated with Case No. 5:04-84 as the lead case, and all citations in this Order refer to that lead case unless otherwise noted. [R. 140]. Lexmark filed a Counterclaim/Third Party Complaint to the 2004 litigation initiated by SCC, in which it alleged patent claims against SCC and the Counterclaim Defendant remanufacturers to this case. [R. 67]. These patent claims in Lexmark's Counterclaim form the basis of the claim construction process in which the Court currently engages.
The primary, though not only, theory on which Lexmark alleges direct patent infringement against the remanufacturers and active inducement of patent infringement against SCC is predicated on Lexmark's use of single-use restrictions on the majority of its cartridges at issue. These "restricted" cartridges have been commonly referred to as "Prebate cartridges" for the reasons that follow: Lexmark runs what it called at one time its "Prebate Program" and what now is referred to as the "Lexmark Return Program." [R. 594 at 3, n. 4]. In that program, Lexmark's customers buy printer cartridges at an upfront discount in exchange for the customer agreeing to use the cartridge only once and then return the empty cartridge only to Lexmark. According to Lexmark, Lexmark offers "`[r]egular' toner cartridge[s] for those customers who do not choose the Prebate/Cartridge Return Program toner cartridge[s] with [their] terms." [R. 2 at 8]. Therefore, "Prebate" is temporally the reverse of a rebate.
Over the years, the precise language of Lexmark's Prebate terms printed across the top of Prebate cartridge boxes has varied. [See, e.g., R. 573 at 3]. However, currently the terms read:
RETURN EMPTY CARTRIDGE TO LEXMARK FOR REMANUFACTURING AND RECYCLING
Please read before opening. Opening this package or using the patented cartridge inside confirms your acceptance of the following license agreement. This patented Return Program cartridge is sold at a special price subject to a restriction that it may be used only once. Following this initial use, you agree to return the empty cartridge only to Lexmark for remanufacturing and recycling. If you don't accept these terms, return the unopened package to your point of purchase. A regular price cartridge without these terms is available.
[R. 594, 3-4 (Lexmark has provided the Court with a demonstrative cartridge and cartridge box with the above Prebate language, as Lexmark represented that it would at Record 519 at 9, n. 13)]. Including English, these terms are printed in six different languages. Id.
Lexmark's second theory of direct patent infringement is predicated on the idea that the first sale of cartridges in foreign nations does not exhaust Lexmark's patents on those cartridges in the United States. See Jazz Photo Corp. v. Int'l Trade Comm'n, 264 F.3d 1094, 1105 (Fed. Cir. 2001) (citing Boesch v. Graff, 133 U.S. 697, 701-703, 10 S.Ct. 378, 33 L.Ed. 787 (1890)). Accordingly, Lexmark argues that regardless of whether a single use restriction reads on its cartridges, the Counterclaim Defendant remanufacturers of printer cartridges infringe upon the patents that read upon cartridges originally sold overseas by reselling them without license in the United States.
II. DISCUSSION
A. Principles of Claim Construction
The current exercise the Court undertakes is that of claim construction. Title 35 U.S.C. § 112 requires that the written description of the invention, or "specification," in the patent, "shall con-clude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." "It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004) (citing Aro Mfg., Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)). Determining the scope and meaning of a claim is solely a matter of law for the Court to decide. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).
Claim construction has two practical implications. First, construing the claim enables a fact finder to determine whether a patent may be invalid for failing to meet requirements of patentability. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001). The Court has already held that nine of the fourteen patents considered here are valid. [R. 1008 at 6-7]. In response to Lexmark's motion for validity on the nine patents, the opposing parties offered not even a scintilla of argument, let alone evidence, that any given claim was invalid for whatever reason. Id. This was despite the fact that the opposing parties knew precisely those ninety-three claims which Lexmark alleges were infringed. Id. Therefore, validity is only at issue with regard to the remaining five patents. The second function of claim construction is to determine whether an alleged infringer infringed on a patent by doing that which is covered by any of the patent's claims. Amazon.com, Inc. 239 F.3d at 1351.
The courts, especially the Court of Appeals for the Federal Circuit, have developed a body of law that instructs on how claims should be construed. The language of the claim itself is of paramount importance:
We begin our claim construction analysis, as always, with the words of the claim. The claim language defines the bounds of claim scope. "The claims define the scope of the right to exclude; the claim construction inquiry, therefore, begins and ends in all cases with the actual words of the claim." "The language of the claim frames and ultimately resolves all issues of claim interpretation."Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002) (citations omitted). That is not to say that the words of the claim are construed without reference to additional information.
One case, Phillips v. AWH Corp., is particularly well known for outlining the process of claim construction. 415 F.3d 1303 (Fed. Cir. 2005). First, "[t]he words of a claim `are generally given their ordinary and customary meaning,'" which is the "meaning that the term would have to a person of ordinary skill in the art in question at the time of . . . the effective filing date of the patent application." Id. at 1312 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). "In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Phillips, 415 F.3d at 1314 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)). When determining the meaning of claim terms and phrases, intrinsic evidence, consisting of the patent itself, including the specification and claims therein, and the prosecution history, if submitted, is the "the most significant source of the legally operative meaning of disputed claim language." Vitronics Corp., 90 F.3d at 1582. The specification is usually dispositive to the claim construction analysis. Id. The Court may also utilize extrinsic evidence, such as expert testimony and general or trade dictionaries, to assist in construction, but such evidence is subordinate to and may only be used to clarify intrinsic evidence. Phillips, 415 F.3d at 1317-18. Typically, repeated words or phrases in the patent are construed to have the same meaning. Id. at 1314.
A patent claim is introduced with a preamble. For instance, Claim 1 of Lexmark's Patent No. 5,634,169 begins with the preamble, "A cartridge for an electrophotographic machine," followed by the transitional term, "comprising," and then by the body of the claim. [R. 966, Attach. 1]. A preamble may or may not contain language that limits the claimed invention. Whether the preamble limits is an issue that the Federal Circuit addressed in Pitney Bowes, Inc. v. Hewlett-Packard Co.:
If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is "necessary to give life, meaning, and vitality" to the claim, then the claim preamble should be construed as if in the balance of the claim. Indeed, when discussing the "claim" in such a circumstance, there is no meaningful distinction to be drawn between the claim preamble and the rest of the claim, for only together do they comprise the "claim". If, however, the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention's limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.182 F.3d 1298, 1305 (Fed. Cir. 1999) (citations omitted).
Issues of claim construction additionally arise due to Paragraph 6 of Title 35 U.S.C. § 112. That section provides that:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The Federal Circuit has held when the Court should find that an inventor has invoked the means-plus-function format:
The use of the word "means" "triggers a presumption that the inventor used this term advisedly to invoke the statutory mandate for means-plus-function clauses." This presumption may be overcome in two ways. First, "a claim element that uses the word `means' but recites no function corresponding to the means does not invoke § 112, P 6." Second, "even if the claim element specifies a function, if it also recites sufficient structure or material for performing that function, § 112, P 6 does not apply." A claim term recites sufficient structure if "the `term, as the name for structure, has a reasonably well understood meaning in the art.'" The mere use of the word "means" after a limitation, without more, does not suffice to make that limitation a means-plus-function limitation.Allen Eng'g Corp. v. Bartell Indus., 299 F.3d 1336, 1347 (Fed. Cir. 2002) (citations omitted).
B. The Parties' Arguments with Regard to the Claims in Issue
Lexmark argues that all of the terms or phrases that have been marked jointly for construction are "simple and strait forward" and that no further construction of the terms is required or appropriate for "[a] person of ordinary skill in the relevant art" to know precisely what the claim limitations mean. [R. 949 at 5]. According to Lexmark, the unnecessary nature of claim construction in this matter is exacerbated by the Counterclaim Defendants failure to "yet provide their invalidity and non-infringement contentions, despite numerous Court orders to do so." Id. at 34.
The Counterclaim Defendants rebut Lexmark's argument by stating that the Court must resolve disputed claim constructions. By letting terms speak for themselves, the Counterclaim Defendants argue that Lexmark is improperly attempting to allow the jury to implicitly conduct its own claim construction. [R. 1007 at 1-3]. They continue, "Lexmark has defaulted. It has not advocated constructions of the disputed claim terms." Id. at 4. The Court disagrees. Rather, the Court believes that there is no real dispute with regard to many, if not most, of the claim limitations at issue.
A simple illustration should demonstrate the lack of real conflict in the current case: assume a claim limitation is the term "dog." One party argues that, based on intrinsic evidence, a "dog" must be construed as "weighing less than 50 lbs." Accordingly, that party argues that its accused dog is non-infringing because the accused dog weighs 30 lbs. This would be an exercise in construction. However, arguing that "dog" ought to be construed as "canine" is no construction at all. The terms are mere synonyms that leaves the Court to wonder what the point is. Under what circumstance would an accused dog infringe but an accused canine would not? Ultimately, there is no dispute in the first instance regarding the claimed term. This is exactly what SCC and the Remanufac-turers have done over and over again with regard to their proposed claim constructions. For example, they merely call a "sump" a "receptacle," or they call the "left side" the "region to the left of the center line."
The Court has nevertheless gone through the claim construction process as listed below in the following manner: with regard to some of the Counterclaim Defendants' proposed constructions, a practical effect of the construction, with potential infringement implications, is implicitly ascertainable, though admittedly speculative. Nevertheless, the Court has construed these terms. In other instances, this is not the case, and the Court reiterates that there is really no dispute at all. The Counterclaim Defendants' exhortation to attach a synonym to self-defined and simple words invites a meaningless result that mocks the notion of construction.
Finally, the Court addressed the necessity of a claim construction hearing in this matter at the Final Pretrial Conference on April 24, 2007. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). All the parties agreed that a claim construction hearing was unnecessary in this matter, except that the parties were amiable to a hearing if the Court thought it appropriate. The Court concurs with the parties that a hearing on claim construction is unnecessary, as this issue has been heavily briefed in writing on the record.
C. Construction
The Court below construes the terms or phrases in claims over which the parties disagree. The parties filed a joint claim construction brief at Record No. 919. In that brief, in table format, the parties listed the relevant claim limitation and then underlined terms over which there was dispute as to construction. In the next column, Lexmark submitted its proposed construction, and in a third column, SCC and the Remanufacturers submitted their proposed construction. In the below chart, the Court makes its own constructions of the claims, utilizing the above principles of claim construction and considering the parties' proposals. The Chart below is keyed to the parties' joint claim construction brief. [R. 919]. For instance, the parties listed some claim limitations which the parties agreed need no construction. The Court assumes this was done to put other claim limitations in context, and accordingly, the Court has duplicated the claim limitations for which "no construction [is] necessary" below: CLAIM LIMITATION COURT'S CONSTRUCTION A. U.S. Patent No. 5,634,169 ("Cartridge with Encoded Wheel") cartridge for an electrophotographic machine, C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340 1350 Id.; see also NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 1305-06 sump for carrying an initial quantity of toner, See http://www.m-w.com/ dictionary/sump. any said encoder wheel positioned for mating coaction with a code as requiring a combination of a cartridge and wheel reader home position in an electrophotographic machine; to effect rotation of said shaft paddle and encoder wheel; said encoder wheel configured for indicating in conjunction with said coded wheel reader one or more cartridge characteristics to said machine. means on 35 U.S.C. § 112 normal rotational operation in said machine by drive means in said machine, is functioning as intended, a component of resistance to paddle movement the amount of toner remaining in said sump. measured by the lag between drive means travel and encoder travel. slots increments to encoded slots cartridge for an electrophotographic machine, C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340 1350 Id.; see also NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 1305-06 a sump for carrying a quantity of toner; encoded wheel rotating in relation to said toner agitator, preselected cartridge characteristics. preselected cartridge characteristics, cartridge for an imaging apparatus preselected cartridge characteristics. B. U.S. Patent No. 5,707,743 ("Developer Roller") outer surface of oxidized polydiene of a lower alkane C. U.S. Patent No. 5,758,233 ("Locating Surfaces") toner cartridge for an imaging apparatus C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340 1350 Id.; see also NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 1305-06 controlled amounts first unitary assembly a cleaner chamber for cleaning untransfered toner from said photosensitive roller, photosensitive locating surfaces Transmatic, Inc. v. Gulton Indus. 53 F.3d 1270 1278 unobstructed front to rear locator downward pressing members from said imaging apparatus e.g. roller member in said imaging apparatus D. U.S. Patent No. 5,768,661 ("Wing-like Guides") A toner cartridge for an imaging apparatus C.R. Bard, Inc. v. M3 Sys., Inc. 157 F.3d 1340 1350 Id. see also NTP, Inc. v. Research In Motion, Ltd. 418 F.3d 1282 1305-06 controlled amounts toned by toner e.g. curved planar members slots in said imaging apparatus substantially continuous unclaimed unclaimed thin at their initial locations member of a larger thickness significantly thinner Construction: unitary means single, but unitary E. U.S. Patent No. 5,802,432 ("Pin/Spring Assembly") hand grip Comark Communs. v. Harris Corp. 156 F.3d 1182 1186 35 U.S.C. § 112 means left side Id. right side left side left side left side right side Id. right side right side. unobstructed said imaging apparatus. F. U.S. Patent No. 5,874,172 ("Developer Roller") an outer surface of oxidized segments of the polydiene diol. G. U.S. Patent No. 5,875,378 ("Hopper Exit Agitator") move gently on one side of said exit surface an opposite side of said exit surface See H. U.S. Patent No. 5,995,772 ("Encoded Cartridge Wheel") rotatably mounted coupled coding means cartridge characteristic information. 35 U.S.C. § 112 a component of resistance '169 Patent, supra preselected cartridge characteristic information coding indicators slots windows notches juxtaposed plate rotating in relation to said toner agitator coding means coding indicator coding indicators notches juxtaposed fn1 fn1 plate coding means preselected cartridge characteristic information. coding indicators openings notches quantity of toner carried mounted for rotation coupled code indicating means cartridge characteristic information effects rotation of said agitator and encoded plate plurality of openings determining a rotational position See determining a relative position See I. U.S. Patent No. 6,009,291 ("Photo Drum Clutch") photosensitive roller assembly meshing gear uniform frictional drag element a photosensitive roller assembly meshing gear coil spring clutch J. U.S. Patent No. 6,160,073 ("Sealant Material") pliable polyorganosiloxane The specification clearly speaks of two types sealant See 1 6 useful as a sealant 2 14 15 60 1 15 60 substance sealant. E.I. du Pont de Nemours Co. v. Phillips Petroleum Co. 849 F.2d 1430 1433 K. U.S. Patent No. 6,300,025 ("Photoconductor Drum") a charge generation layer on said substrate comprising a thorough mixture of phthalocyanine pigment, polyvinylbutyral, a methyl or phenyl polysiloxane, and a phenolic resin http://mw1.merriam-webster.com/dictionary/mixture. Phillips 415 F.3d at 1322-23 must not L. U.S. Patent No. 6,397,015 ("Encoded Cartridge Wheel") plate preprogrammed indicia start indicia at about a 6:00 o'clock position least one measurement indicia located between Id. about 200 degrees and about 230 degrees from said 6:00 o'clock position about a 5:00 o'clock position slot. '169 Patent, supra preselected cartridge characteristic indicia preselected cartridge characteristic indicia slot. sump for carrying a supply of toner an agitator rotatably mounted in said sump, coupled preprogrammed indicia slot at about a 6:00 o'clock position at between about 200 degrees and about 230 degrees preselected cartridge characteristic indicia sump for carrying a supply of toner an agitator rotatably mounted in said sump coupling coupled indicia start indicia at least one measurement indicia located between about 200 degrees and about 230 degrees slot preselected cartridge characteristic indicia preselected cartridge characteristic indicia slot sump for carrying a supply of toner an agitator rotatably mounted in said sump coupled M. U.S. Patent No. 6,459,876 ("Dual Paddle Toner Agitator") push the toner toner reservoir having a second portion in which the toner therein is not engaged by said first paddle during each revolution of said first paddle about the fixed first axis push the toner means 35 U.S.C. § 112 in combination with the mating structure of the first paddle means means means push the toner toner reservoir having a second portion in which the toner therein is not engaged by said first paddle during each revolution of said first paddle about the fixed first axis a second toner moving element for engaging only the toner in said third portion of said toner reservoir during each revolution of said first paddle about the fixed first axis simultaneously means means means means each of said end walls having a circular only shape of the same radius could means means C.R. Bard, Inc. v. M3 Sys., Inc. 157 F.3d 1340 1350 a portion of the toner reservoir that the main paddle cannot remove the toner Id. see also NTP, Inc. v. Research In Motion, Ltd. 418 F.3d 1282 1305-06 a volume greater than the volume swept by the portion of said outer toner moving bar between said support arms N. U.S. Patent No. 6,487,383 ("J-Seal") surface of said developer rolls means said rotary member 35 U.S.C. § 112 elastically contracting said rotary member inter alia surface of said developer roll means said rotary member elastically contacting said rotary member surface of said developer roll means said rotary member
1. A This is a preamble that merely states the comprising: purpose of or intended use of the cartridge. , (Fed. Cir. 1998). Therefore, the preamble is not a claim limitation requiring construction. , (Fed. Cir. 2005). It would be inappropriate to construe the preamble to mean that the electrophotographic machine is part of claimed invention's purpose being for use in the machine. a Intrinsic evidence is sufficient to know what a "sump" is without external reference to Merriam-Webster Online for gloss. Why a "receptacle"? [R. 919 at 4]. Why not a reservoir or pit or well? Merely picking synonyms for words is not necessarily claim construction. "Receptacle" is no more defined than "sump." Furthermore, it is fantastical to the Court to believe that calling a "sump" a "receptacle" would have practical effect to infringement issues in this case (or validity issues, if such issues were still relevant regarding this patent). This limitation is construed as follows: "a sump carries a quantity of toner." a shaft mounted for rotation in said sump, Parties agree: No construction is necessary. and a paddle mounted thereon in such a manner that when said shaft rotates, said paddle rotates therewith, into, through and out of engagement with toner carried within said sump; an encoder wheel mounted on said shaft, externally The Counterclaim Defendants' construction of said sump; implies that the claim limitation must be read when said cartridge is in a printer to have effect. While a cartridge may require a printer to execute its intended function and (and vice versa), the invention is structurally complete without the printer (See claim 1). Accordingly, this is not like a method claim, and the Court finds that there is really no dispute over the plain meaning of "said encoder wheel positioned for mating coaction with a code wheel reader." SCC does not offer a construction of "home position," and thus the Court finds that that part of the limitation is not in substantive dispute, as the limitation speaks for itself. [R. 919 at 5]. a torque sensitive coupling connected to said The meaning of "rotation of said shaft, paddle shaft for connection to a drive means in said and encoder wheel" is self-evident. To the machine, when said cartridge is installed in extent that the Counterclaim Defendants' said machine, , proposed construction imposes a directional limitation on that rotation, such that the elements rotate in the "same direction," said claim is construed to have no directional or conjointly rotational limitation. , The Court finds no substantive difference , between the parties' proposed constructions, and thus finds that this claim is not legitimately in dispute, except that the Court notes that "coded wheel reader" is not a claimed element here. 2. A cartridge for an electrophotographic No construction is necessary. (Neither party machine in accordance with claim 1, wherein proposes a construction or suggests that one said encoder wheel includes; is necessary in their joint construction brief. [R. 919 at 6].) said encoder wheel for coaction This is a means-plus-function limitation pursuant with said code wheel reader on said machine to , ¶ 6. The means for to indicate a component of resistance to paddle coaction covers slots, windows, notches, or dle movement through the portion of said reflective material and equivalents thereof. sump having toner therein to give an indication of the amount of toner remaining in said sump. 4. A cartridge for an electrophotographic Parties agree: No construction is necessary. machine in accordance with claim 1, including a section of said encoder wheel containing coded information indicating said one or more characteristics of said cartridge; said section positioned on said encoder wheel SCC's proposed construction is: "in normal so that during rotation, the encoder wheel rotates with and in the same direction as the paddle." This is said section is read by said code unhecessary, and irrelevant, gloss on how wheel reader prior to said paddle entering normal rotation ought to be. The Court said toner material in said sump. therefore construes "normal rotational operation" to mean that "when the section positioned on the encoder wheel said section is read by said code wheel reader. . . ." 5. A cartridge for an electrophotographic The Court fails to see any practical difference machine in accordance with claim 4, said encoder between SCC's proposal, "an indication of coder wheel including another section on said resistence to paddle movement through the encoder wheel configured for coaction with toner," and letting the limitation, "to signify a said code wheel reader on said machine to component of resistence to paddle movement," signify speak for itself. SCC's proposal is through the portion of said sump found to be superfluous and this limitation is having toner therein to give an indication of found to not be in substantive dispute. 6. A cartridge for an electrophotographic Parties agree: No construction is necessary. machine in accordance with claim 5, wherein: said encoder wheel is connected to one side of said torque sensitive coupling, by said shaft, and at one end of said cartridge, the other side of said torque sensitive coupling Parties agree: No construction is necessary. being adapted for connection to said drive means and at the opposite end of said cartridge, and said component of resistance is SCC proposes the construction that limits the claim to require that "the electrophotographic machine measures the component of resistence." Although this may be a practical reality, it is improper to read in limitations on an unclaimed device, the electrophotographic machine, here. This is not a method claim, and therefore, the claim should be construed such that: "the component of resistance is capable of being measured by the lag between drive means travel and encoder travel." 23. A method of determining characteristics Parties agree: No construction is necessary. of a replaceable cartridge for an electrophoto-graphic machine, said cartridge including a sump for holding toner therein and a paddle mounted for rotation within said sump, an encoder wheel mounted externally of said sump and connected to said paddle for rotation therewith, said wheel having a plurality of slots therein, some of said slots being coded for indicating characteristics of the cartridge when rotated by drive means for reading by a code wheel reader on said machine, comprising the steps of: rotating said wheel and determining the home Claim 23 is not an asserted claim in this case. position of said wheel and the position thereon [See R. 1008 at 32]. Thus, no construction is of encoded representing bits relative necessary. to the paddle in said sump of toner by counting drive means increments from a predetermined start or home position; recording and Claim 23 is not an asserted claim in this case. stop window trailing edge; [See R. 1008 at 32]. Thus, no construction is necessary. subtracting an incremental count of said drive Parties agree: No construction is necessary. means as if no toner were in said sump from an actual incremental count to selected predetermined positions of said paddle in said sump containing toner to determine delay being measured in known distances traveled by said paddle under no toner to actual toner contained conditions; and determining from said difference the Parties agree: No construction is necessary. quantity of toner remaining in said sump. 32. A This is a preamble that merely states the comprising: purpose of or intended use of the cartridge. , (Fed. Cir. 1998). Therefore, the preamble is not a claim limitation requiring construction. , (Fed. Cir. 2005). It would be inappropriate to construe the preamble to mean that the electrophotographic machine is part of the claimed invention, rather than the claimed invention's purpose being for use in the machine. See claim 1 above. a toner agitator mounted in said sump; and Parties agree: No construction is necessary. a single SCC proposes the construction: "the encoded said encoded wheel in- wheel rotates with and in the same direction cluding coding for determining a quantity of as the toner agitator. This proposal is rejected, toner in said cartridge. because "rotating in relation to said toner agitator" is construed to have no limits on direction of rotation (i.e. the encoded wheel and agitator do not have to rotate conjointly). 35. The cartridge of claim 34, wherein said "Preselected cartridge characteristics" is construed wheel further comprises encoding for one or as "static information about the cartridge." more Lexmark argues that "static" is not a limitation here, because for example, information about the amount of toner in the cartridge is not static-it changes as toner is used. [See R. 949 at 106]. This argument has no merit, because the specification specifically classifies "the amount of toner remaining" information as something different than "preselected cartridge characteristics." Col. 5, lines 31-41 (". . . for conveying . . . to the machine information concerning cartridge characteristics including continuing data . . . concerning the amount of toner remaining within the cartridge and/or such as for example, cartridge type or size, toner capacity, toner type, photoconductive drum type, etc.) (emphasis added). This evidence in the specification shows that preselected cartridge characteristics refer to static information. 36. A toner , See claims 1 and 35 above. the improvement comprising a wheel having coding representing one or more 1. An endless developer member comprising Parties agree: No construction is necessary. a body of polycaprolactone ester toluene-diisocyanate Parties agree: No construction is necessary. polyurethane, a conductive filler, and polydiene, of a lower alkane said member having an SCC's construction is that the claim should be . construed to mean that the surface layer of oxidized polydiene of a lower alkane has a thickness of 50-200 microns. Lexmark's joint construction proposal is that "`outer surface' should be construed to mean `the outside, exterior boundary.'" [R. 919 at 13]. The specification indicates that 50-200 microns is a desired result: "By the correct combination . . . a surface layer thickness of approximately 50-200 microns . . . can be produced." Col. 4, lines 57-62. However, nothing suggests that 50-200 microns is an implicit limitation. Accordingly, the claim limitation is construed to mean an outer surface layer of oxidized polydiene of a lower alkane without regard to thinkness. 1. A This is a preamble that merely states the comprising purpose of or intended use of the cartridge. , (Fed. Cir. 1998). Therefore, the preamble is not a claim limitation requiring construction. , (Fed. Cir. 2005). It would be inappropriate to construe the preamble to mean that an imaging apparatus is part of the claimed invention, rather than the claimed invention's purpose being for use in the apparatus. a toner hopper and a rotatable developer A "controlled amount" speaks for itself, except roller which receives toner in that the specification informs that a controlled from said toner hopper mounted amount is not "excessive." Col. 9, together as a lines 50-52. The Counterclaim Defendants urge the adoption of a construction, "advantageous amount," but that is no more defined than "controlled," and thus the Court rejects that construction. If the Court were to follow the Counterclaim Defendants' proposal, then the Court's construction would itself require construction. Neither party suggests or proposes that a "controlled amount" ought to be defined as a certain range of measurement and thus neither does the Court. Regarding SCC/Reman.'s proposed construction of "first unitary assembly," nothing suggests that "unitary" in this context means "indivisible." SCC's word choice of "indivisible" is bootstrapped from a general dictionary, when the specification informs that the limitation of "unitary" is more akin to a requirement of being "attached together." Col. 8, Lines 24-30. Furthermore, the claim limitation itself defines what a "first unitary assembly" is. Lexmark's construction embodies this meaning, and thus the Court adopts that construction as follows: "a toner hopper and a rotatable developer roller are mounted together as a first unitary assembly and the developer roller receives toner in controlled amounts from the toner hopper." a rotatable photosensitive roller having a central Construction: a cleaner chamber is included shaft, for use during cleaning of untransfered toner from the photosensitive roller. The chamber and a cover member extending around does not have to actually do the cleaning and above said hopper mounted together as a itself, because if that were the case, then the second unitary assembly, construction would exclude Lexmark's preferred embodiment. See Figs. 1 and 2, Nos. 27, 73. The "cleaning blade" actually scrapes toner from the photoconductor drum. Col. 4, line 65-Col. 5, line 4. The Court agrees with Lexmark that "a chamber for cleaning" has an analogous meaning to "a laundry room for washing clothes." [R. 949 at 64]. Because SCC's proposed construction might be read to require the cleaner chamber to actually perform the task of the blade, that construction is rejected. a resilient member connected between said Parties agree: No construction is necessary. first unitary assembly and said second unitary assembly, to pull said developer roller and said roller into contact, on opposite sides of said This is a structural claim element and SCC's cartridge, said locating surfaces each comprising, proposed construction improperly imports unnecessary functional limitations, namely that the surfaces "firmly position the toning mechanisms of [the] cartridge when the cartridge is installed." , , (Fed. Cir. 1995). While this may in fact be the purpose of the locating surfaces, the only limitation with regards to "locating surfaces" is that the surfaces must be comprised of at least those struetural elements that follow this claim provision. Col. 18, Lines 21-29. said central shaft of said photosensitive roller Without any indication to the contrary, the extending so that said central shaft is Court can only assume that "not impeded by for serving as a vertical and any structure" is merely a superfluous synonym , for "unobstructed." "Not impeded by any structure" places excessive reliance on a general dictionary, when the specification ought to be dispositive here. While SCC and the Remanufacturers argue that the Court "must construe disputed terms," simply swapping words with synonyms is not construction. Therefore, the Court finds that the claim limitation is not in dispute at all. an elongated surface in the center of said SCC's proposed construction, "an imaging apparatus cartridge having an upper surface unobstructed that includes a structure that applies for receiving a downward vertical force," improperly makes , the imaging apparatus part of the claim. Rather, the construction should be and hereby is the limitation's plain meaning: "an upper surface is unobstructed for receiving downward pressing members from the imaging apparatus (, printer)." Therefore, the claim states the purpose of the "upper surface" but does not require that the upper surface to be in receipt of "downward pressing members" to have effect. a flat ledge on a side of said hopper unobstructed Like the limitation directly preceding above, for resting on a SCC's construction, "an imaging apparatus . that includes a cylindrical body revolving around a fixed axis-is inappropriate for its importation of the structure of the printer into the claim. As such, the Court merely construes this claim limitation as not claiming the imaging apparatus's structure. 1. This is a preamble that merely states the comprising purpose of or intended use of the cartridge. , , (Fed. Cir. 1998). Therefore, the preamble is not a claim limitation requiring construction. ; , , (Fed. Cir. 2005). It would be inappropriate to construe the preamble to claimed invention, rather than the claimed invention's purpose being for use in the apparatus. a toner hopper, Parties agree: No construction is necessary. a developer roller which receives toner in Construction: a developer roller receives toner from said toner hopper, in controlled amounts from the toner hopper. and A "controlled amount" speaks for itself, except that the specification informs that a controlled amount is not "excessive." Col. 9, lines 13-26. The Counterclaim defendants urge the adoption of a construction, "advantageous amount," but that is no more defined than "controlled," and thus the Court rejects that construction. If the Court were to follow the Counterclaim Defendants' proposal, then the Court's construction would itself require construction. Neither party suggests or proposes that a "controlled amount" ought to be defined as a certain range of measurement and thus neither does the Court. a photosensitive roller which is The parties agree and the Court concurs that delivered by said developer roller, this limitation is construed as follows: "a photosensitive roller (, a photoconductor drum) is toned by toner that is delivered by the developer roller." said cartridge having "[A] flat structure that deviates from planarity on opposite sides of said cartridge for guided in a smooth, continuous fashion," SCC's movement by , construction of "curved planar members," is a said planar members being substantially superfluous synonym of clear terms, which continuous for being guided by under some circumstances (which are currently slots, unknown to the Court) might serve to unjustly limit the claim. The Counterclaim Defendants construction of "slots in said imaging apparatus," which is "an imaging apparatus that includes slots," is inappropriate because it limits an apparatus (e.g. a printer). The Court understands the "substantially continuous slots" to be illustrated by the unclaimed space formed by guides in a printer, Fig. 10, No. 293, 297. The Court sees no reason to import SCC's construction of "connected" because that begs the question, "connected to what?" It would certainly be inappropriate to somehow suggest that the members must be connected to the unclaimed slots. Rather, the claim itself makes clear that the purpose of the claimed "substantially continuous" members are to be guided by substantially continuous slots. Accordingly, having rejected the Counterclaim Defendant's constructions to the extent they may have any practical consequence, the Court finds that there is no substantive dispute over this limitation. said planar members being The Court adopts Lexmark's construction, of entry into said slots and said which arguably is no different that SCC's. planar members being continuous with a However, SCC proposed construction falls at locations victim to the aforementioned problem of "synonym spaced from said initial locations so that entry gloss," which tends to make meanings in said slots is facilitated by said initial locations more ambiguous than clear. Lexmark largely being than the simply states the claim itself, because there width of said slots. is really no substantive dispute over the meaning of this claim. 2. The cartridge as in claim 1 in which each said planar member is plastic molded as a "indivisible" could be too limiting and is thus member including the body of said rejected as a construction. cartridge from which each said planar member extends. 1. A toner cartridge comprising Parties agree: No construction is necessary. a first unitary element comprising The term appears to speak for itself, except at the top front end; a cleaner chamber at that SCC's construction would require the the rear end; and left and right side walls, hand grips to be "along the width of the each said side wall having a housing for loosely cartridges with holes that provide room for receiving a stud positioned in said housing; the fingers of a person to grasp." Lexmark said element having openings near said chamber claims that this construction improperly imposes to mount a photosensitive roller, limitations. Nevertheless, SCC's construction is supported by Lexmark's preferred embodiment, and even though claims are not limited to the preferred embodiment, the specification may support SCC's construction (even though the specification is only evidence of a claim limitations, rather than limiting itself). The Federal Circuit has stated, "We recognize that there is sometimes a fine line between [properly] reading a claim in light of the specification, and [improperly] reading a limitation into the claim from the specification." , , (Fed. Cir. 1998). The Court believes to adopt SCC's construction would fall in the later category, and accordingly, Lexmark's construction — "a hand grip at the top of the toner cartridge that allows a user to handle it" — is hereby adopted. a second unitary member comprising a toner This is a means-plus-function limitation pursuant hopper, a post and a stud extending from to , ¶ 6. The structure each side of said hopper, and to mount for performing the function is construed a developer roller for rotation to receive toner (from the specification) to be a gear plate and from said hopper, equivalents thereof. Fig. 14; Col. 12, lines 64-66 ("[Gear Plate] has a . . . hole for shaft of developer roller.") Accordingly, SCC's construction is inappropriate and rejected. a first spring connected between said post of SCC and the Remanufacturers submit that no the of said second unitary member construction is necessary. [R. 919 at 25]. and said left side wall, Lexmark proposes that "left have its "plain and ordinary meaning," but does not address this claim limitation in its opening brief [R. 949 at 77] or response brief [R. 1010 at 34]. Given Lexmark's assertion that "right side" requires "no further construction," with respect to the limitation listed three rows below, the Court finds that the parties are in substantial agreement that "no construction is necessary." a second spring connected between said post (the immediately preceding row, regarding of the of said second unitary member "left side") and said right side wall, said stud of the of said cartridge "Left side" speaks for itself. The Court can positioned in said housing of said so only assume (but does not find or hold) that as to be held by said housing of said , SCC's construction, "region to the left of the and center line," is merely a superfluous synonym for "left side." SCC chides Lexmark for "regurgitating" the claim language, but all SCC's "construction" does it slap lipstick on the proverbial pig. While SCC and the Remanufacturers argue that the Court "must construe disputed terms," simply swapping words with synonyms is not construction. Therefore, the Court finds that the claim limitation is not in dispute at all. said stud of the of said cartridge (the immediately preceding row, regarding positioned in said housing of said so "left side") as to be held by said housing of said 2. The cartridge as in claim 1 further comprising The Court finds there is no construction dispute a flat ledge on the side of said hopper over the limitation "unobstructed," as for resting on a roller member SCC's proposed construction of "not impeded in by any structure" is not enlightening. Why SCC finds it necessary for the Court to construe the word "imaging apparatus" as a "printer" here, in light of the myriad uncontested uses of the word "imaging apparatus" elsewhere, is anyone's guess. Nevertheless, it is hereby adjudged that "imaging apparatus" here means "printer." 1. An endless developer member comprising Parties agree: No construction is necessary. a body of polycaprolactone ester toluene-diisocyanate Parties agree: No construction is necessary. polyurethane, ferric chloride filler, a polydiene diol selected from the group consisting of polyisoprene diol and polybutadiene diol, and antioxidant which electrically stabilizes said member, said member having SCC's construction is that the claim should be construed to mean that the surface layer of oxidized polydiene diol has a thickness of 50-150 microns. Lexmark's joint construction proposal is that "`outer surface' should be construed to mean `the outside, exterior boundary.'" [R. 919 at 28]. The specification indicates that 50-150 microns is a desired result: "The desired electrical properties . . . are . . . a coating thickness of approximately 50-150 microns." Col. 2. lines 37-44. However, nothing suggests that 50-150 microns is an implicit limitation. Accordingly, the claim limitation is construed to mean an outer surface layer of oxidized polydiene diol (without regard to thinkness). 1. A toner cartridge comprising a cylindrical Parties agree: No construction is necessary. hopper having an opening for delivering toner out of said hopper said hopper having a lower wall extending from a bottom of said hopper to a location substantially above the bottom of said hopper to define a bottom of said opening, a paddle rotatable in said hopper to stir toner "softly changing position" (SCC's proposal) such that some toner will toward does nothing to construe "move gently toward said opening, said opening." The Court finds that "move gently" speaks for itself, and absent any indication to the contrary, SCC's proposed construction is superfluous; thus, this claim is not in dispute. an exit surface to deliver toner from said Parties agree: No construction is necessary. hopper on the side of said lower wall opposite said hopper, said exit surface sloping downward during normal operation of said cartridge, an agitator member extending across said SCC's proposes that both phrases be construed exit surface having a first pivot member to mean "attached to the exit surface." and a second The claim does not require the attachment of pivot member on the pivot members to the exit surface, and is and normally located proximate said accordingly construed to not require such. exit surface except when moved by said paddle Fig. 9, No. 65. around said first pivot member and said second pivot member, and an extension on said agitator member Parties agree: No construction is necessary. extending past said lower wall into the path of said paddle in said hopper when said paddle is rotated. 1. A cartridge for an electrophotographic Parties agree: No construction is necessary. machine, comprising: a sump for carrying an agitator The claim is construed as follows: "the agitator in said sump for engagement with a is mounted in the sump in a manner such toner; that it can be rotated." SCC's proposed construction, "supported to rotate with the encoded device," is inappropriate because it could impose an extraneous limitation that the agitator and the encoded device must rotate conjointly. an encoded device to a first end of Coupling occurs via a shaft mounted in the said agitator; and sump. Beyond that, SCC's proposed construction struction of "fastened to" is a synonym that itself could require construction and does not enlighten the self-evident meaning of "coupled." a torque sensitive coupling connected to a Parties agree: No construction is necessary. second end of said agitator, which is connectable to a drive mechanism of said machine; said encoded device having "[C]oding means" is a means-plus-function representing limitation pursuant to , ¶ 6. Although the word "means" is not followed by function, it is apparent that the function here is "coding." The claim could equally read, "means for coding." Because the means is not followed by sufficient structure or material for performing the coding, this claim falls within § 112, ¶ 6. The structure/material for performing the coding, also the "coding indicators", is ostensibly (from the specification) "radially extending . . . slots or windows," Col. 8, lines 31-34, 43-44, or "reflective material," Col. 20, line 64-65, or notches and equivalents of the aforementioned. Cartridge characteristic information is construed as "information about the cartridge." Though it may not be necessary to construe this phrase, Lexmark states that it "has no issue with . . . [the] proposed construction . . . but notes that it adds nothing of value . . . ." [R. 949 at 103]. 2. The cartridge of claim 1, wherein said SCC's construction, "to indicate resistence to coding means includes coding readable to indicate agitator movement through the toner," appears to agitator to be no different than the plain meaning movement through a portion of said sump of the "to indicate a component of resistance having toner therein to give an indication of to agitator movement through a portion an amount of toner remaining in said sump. of said sump having toner therein." Accordingly, the Court finds that this claim is not in dispute. To the degree that SCC may argue otherwise, SCC has failed to show that language. 4. The cartridge of claim 1, wherein said See Claim 35 of the ; see coding means includes a coding representing also the `772 Patent, Col. 5, lines 52-58. . 5. The cartridge of claim 1, wherein said See claim 1 above, in which coding indicators coding means comprises a plurality of are referenced. Claim 5 is not a means-plus- . function limitation under § 112, ¶ 6 though. 7. The cartridge of claim 5, wherein said Calling slots "narrow openings" is not helpful plurality of coding indicators comprise a plurality (i.e. not "constructive" in any meaningful of . way). The Court finds no substantive dispute over this claim limitation. 8. The cartridge of claim 5, wherein said Calling windows "openings" is not helpful (i.e. plurality of coding indicators comprises a plurality not "constructive" in any meaningful way). of . The Court finds no substantive dispute over this claim limitation. 9. The cartridge of claim 5, wherein said Calling notches "v-shaped indentations" is not plurality of coding indicators comprise a plurality helpful (i.e. not "constructive" in any meaningful of . way). The Court finds no substantive dispute over this claim limitation. 12. The cartridge of claim 5, wherein said Construing "juxtaposed" as "placed side by plurality of coding indicators are . side is not helpful in construction and is potentially overly limiting. The Court finds no substantive dispute over this claim limitation. 14. A cartridge for an electrophotographic Parties agree: No construction is necessary. machine, comprising: a sump for carrying a quantity of toner; Parties agree: No construction is necessary. a toner agitator mounted in said sump; and Parties agree: No construction is necessary. a single encoded The Court finds that the Counterclaim Defendants' , proposed construction of "plate," "a smooth flat piece of material," adds nothing to the construction. Why could the plate not be knurled? Intrinsic evidence may shed light on that point, but the Counterclaim Defendants merely stripped a definition out of the dictionary. That definition may comport with the preferred embodiment, but the parties know that the preferred embodiment is not limiting; only the claims themselves are. "Rotating in relation to said toner agitator" is construed to have no limits on duration (i.e. not limited to the times when the agitator "passes through the toner") and has no limits on direction of rotation (i.e. the plate and agitator do not have to rotate conjointly). said encoded plate including See claim 1 above. for determining a quantity of toner in said cartridge. 15. The cartridge of claim 14, wherein said See claim 1 above, in which coding indicators coding means comprises at least one are referenced. Claim 15 is not a means-plus-function . limitation under § 112, ¶ 6 though. 16. The cartridge of claim 14, wherein said Id. at Claim 15. coding means comprises a plurality of . 17. The cartridge of claim 16, wherein said The parties agree and the Court concurs: coding indicators comprise a plurality of "the coding indicators include a plurality of openings in said encoded plate. openings in the encoded plate." 18. The cartridge of claim 16, wherein said See claim 9 above. coding indicators comprise a plurality of in said encoded plate. 20. The cartridge of claim 16, wherein said See claim 12 above. coding indicators are around an axis of rotation of said encoded plate. "Coding means" limitation is not present in claims 20 or 21 of this patent.] 22. A cartridge for an imaging apparatus, See claims 1, 4, and 14 above. the improvement comprising an encoded having representing 23. The cartridge of claim 21, wherein said See claim 1 above, in which coding indicators coding means comprises a plurality of are referenced. Claim 23 is not a means-plus-function . limitation under § 112, ¶ 6 though. 24. The cartridge of claim 23, wherein said See claim 17 above. coding indicators comprise a plurality of in said encoded plate. 25. The cartridge of claim 23, wherein said See claim 9 above. coding indicators comprise a plurality of in said encoded plate. 32. The cartridge of claim 22, wherein said The parties agree and the Court concurs: encoded plate further comprises coding for "coding for determining a quantity of toner determining a by carried by the cartridge." said cartridge. 33. A replaceable cartridge for an electro-photographic Parties agree: No construction is necessary. machine, said cartridge comprising: a sump for carrying a quantity of toner; Parties agree: No construction is necessary. an agitator into, See claim 1 above. through and out of engagement with toner carried within said sump; an encoded plate to said agitator, See claim 1 and 14 above. said encoded plate being positioned for mating coaction with an encoded plate reader and said encoded plate including configured for representing ; and a torque sensitive coupling connected at a The Court agrees that "the torque sensitive first end to said agitator and having a second coupling [must] be such that when the cartridge end for connection to a drive mechanism in is installed in a printer [the coupling] said machine, which when said cartridge is results in some type of rotation of both elements." installed in said machine, [R. 949 at 117]. While SCC might . describe what actually happens in its proposed construction — namely that the coupling causes "the encoded plate [to] rotate[ ] with and in the same direction as the agitator as it passes through the toner" — the proposed construction is overly limiting and rejected. 34. The replaceable cartridge of claim 33, See claim 17 above. wherein said code indicating means comprises a in said encoded plate. 39. A method of determining said quantity Claim 39 is not an asserted claim in this case; of toner in said cartridge of claim 33, comprising nevertheless, the parties agree that no construction the steps of: is necessary. of said Claim 39 is not an asserted claim in this case; drive mechanism; accordingly, no construction is necessary. [ R. 1008 at 32]. of encoded Claim 39 is not an asserted claim in this case; plate; and accordingly, no construction is necessary. [ R. 1008 at 32]. measuring the lag between said rotational Claim 39 is not an asserted claim in this case; position of said drive mechanism and said nevertheless, the parties agree that no construction relative rotational position of said encoded is necessary. plate. 1. An apparatus for electrophotographic imaging Parties agree: No construction is necessary. comprising a mounted for It is the law of the case that this term is not rotation in said apparatus, indefinite. The Counterclaim Defendants failed to raise its indefiniteness contention when Lexmark moved for summary judgement that this claim is valid. [R. 10081. a gear integral with said assembly for receiving "Meshing gear" is a gear in a printer, unclaimed torque from a to cause said in this limitation. The claim is construed rotation of said assembly during imaging, and to reference meshing gear for the sole purpose of defining the purpose of "a gear integral with said assembly. . . ." a in contact The Court adopts, in part, SCC's construction: with said assembly at a location which receives "a mechanism in which one end of a torque from said gear integral with spring is prevented from rotating, thereby, as said assembly, said drag element applying is conventional, permitting the spring to wind friction forces which oppose said rotation. tight or unwind depending on the rotation of a shaft on which the spring is wound." Lexmark argues that this construction imports limitations from the specification. The Court disagrees, and finds that the specification is merely confirmative evidence that the claim is limited in the manner in which SCC proposes (absent a grease requirement). See Fig. 12, in which the coil spring clutch is the only frictional drag element disclosed anywhere (see Claim 2, regarding the coil spring clutch). SCC also argues that the specification regarding grease — "The drag from element is uniform because of the grease" — requires the mechanism to be in combination with grease. Col. 9, lines 58-61. The Court disagrees. "Uniform" describes "frictional drag," not "element." The structure itself must not be greased to be claimed. 2. An apparatus for electrophotographic imaging Lexmark: "No construction necessary." comprising SCC/Remanufacturers: No response. Accordingly, No construction necessary. mounted for See claim 1 above. rotation in said apparatus on a central shaft, said assembly having a stud surrounding said central shaft, a gear integral with said assembly for receiving See claim 1 above. torque from a to cause said rotation of said assembly during imaging, said rotation transmitting torque to said stud, and a wound around said stud, Construction: "a mechanism in which one end the direction of winding of said spring being of the spring is prevented from rotating, that which unwinds said spring during said thereby, as is conventional, permitting the rotation. spring to wind tight or unwind depending on the rotation of a shaft on which the spring is wound." This is a verbatim recital of the definition of "coil spring clutch" in the specification. Col. 2, lines 51-55. The Court rejects Lexmark's argument that construing a term according to its definition outlined in the specification, at least under these circumstances, improperly imports limitations into the claim. Lexmark's argument degrades the high evidentiary weight that should be afforded the specification to determine limits embodied in the claim itself. Nevertheless, "grease" is irrelevant to the claim limitation. Cf. Claim 1 above. 1. A toner cartridge comprising comprising structural of copolymer. The first is a wax that is not units of the formulae: fit for use as a sealant. Col. 12, line 32 — Col. 13, line 35; Col. 8, line 19-21 [Formula Deleted; See R. 919 at 46] ("Rather than a wax, which is the consistency of the previously described copolymer, the wherein (i) each R is independently a C-C copolymer has the consistency alkyl (ii) each R1 is independently selected of a paste or pliable caulk." (emphasis from the group consisting of a C-C alkyl added)). The second copolymer, the only copolymer and a C-C alkyl, with the proviso that useful as a sealant according to the from about 70% to about 100% of all R specification, is the subjec of claim 1. Col. 13, groups are C-C alkyl, and (iii) x represents lines 38-39. Otherwise the word "sealant" from about 0 to about 99.5 mole percent, would lose meaning in the claim. A "pliable and y represents from about 0.5 to polyorganosiloxane " might be waxy about 100.0 mole percent of the silicone copolymer, or a paste or pliable caulk, but the specification based on total moles of the silicone makes clear that it is limited to a "pliable copolymer. polyorganosiloxane " The sealant version has the consistency of a paste or pliable caulk, so the claim is construed as follows: "polyorganosiloxane having the consistency of a paste of pliable caulk." This is not inconsistent with , , (Fed. Cir. 1988), because the Court does not impose a consistency requirement; rather "sealant" should be construed to have effect, and that effect is that the sealant is not the wax copolymer outlined in the specification. 1. A photoconductive member comprising: a Parties agree: No construction is necessary. conductive substrate, and The parties' competing constructions, and thus dispute, boil down to whether the elements of the substrate "are only physically combined and chemical interaction between , or among them does not occur" (Counterclaim Def.s' version) or whether "each chemical component in the layer essentially retains its own properties" (Lexmark's version). The Court adopts Lexmark's construction. There is no basis for foreclosing chemical interaction between the chemicals, when a mixture merely requires that the chemicals "retain their own properties." (Although the dictionary is a disfavored source of evidence in light of intrinsic evidence, when the intrinsic evidence does not favor one interpretation or another per se, the dictionary may be consulted as a source of external evidence. , .) Lexmark's construction is additionally consistent with the specification. Although the specification states that "mixtures are shown not to generate any new chemically cross-linked materials," [R. 1025 at 15 (citing Col. 4, 65-67)], the specification, and more importantly, the claim itself, does not indicate that a chemical interaction be had; rather, the critical limitation is that the chemicals retain their own properties. said polyvinylbutyral, said polysiloxane, and Parties agree: No construction is necessary. said phenolic resin being a binder for said pigment, the amount by weight of said phenolic resin Parties agree: No construction is necessary. being in the range of 1 to 20 percent of the total weight of said polyvinylbutyral, said polysiloxane, and said phenolic resin 1. An encoded device for a toner cartridge The Court finds that the Counterclaim Defendants' comprising a . . . . proposed construction of "plate," "a smooth flat piece of material" adds nothing of a constructive value. Why could the plate not be knurled? Intrinsic evidence may shed light on that point, but the Counterclaim Defendants merely stripped a definition out of the dictionary. That definition may comport with the preferred embodiment, but the parties know that the preferred embodiment is not limiting; only the claims themselves are. . . . having positioned Construction: "preprogrammed indicia" include at locations defined in relation to a slots, windows, or openings clock face, said preprogrammed indicia including a Construction: "a referenced point of origin . . . from which measurements are made." Fig. 7 . . . positioned SCC's construction, "at or approaching exactly and the 6:00 o'clock position of a clock face," is not a satisfying way to narrow the word "about." "About" is sufficient here, because any given numerical value — 20 mm past the 6 o'clock position, for instance — can both be called "about" or "approaching exactly." at (the immediately preceding claim construction). Measurement indicia also speaks . for itself. Calling it a "point" adds nothing of value for construction purposes. 2. The encoded device of claim 1, wherein See claim 1 above. said start indicia is positioned between and said 6:00 o'clock position. 3. The encoded device of claim 1, wherein calling slots "narrow openings" is not helpful each said indicia comprises a (i.e. not "constructive" in any meaning way). The Court finds no substantive dispute over this claim limitation. 5. The encoded device of claim 1, further See Claim 35 of the ; see comprising at least one also `015 Patent, Col. 5, lines 47-53. positioned between said start indicia and said at least one measurement indicia. 6. The encoded device of claim 1, further See Claim 5 above. comprising at least one positioned between said start indicia and said at least one measurement indicia in a clockwise direction from said 6:00 o'clock position. 8. The encoded device of claim 1, wherein calling slots "narrow openings" is not helpful each of said at least one measurement indicia (i.e. not "constructive" in any meaning way). comprises a The Court finds no substantive dispute over this claim limitation. 10. The encoded device of claim 1, wherein See claim 1 of the `169 patent above. said toner cartridge includes a and The claim is construed as follows: "the agitator is mounted in the sump in a manner such that it can be rotated." SCC's proposed construction, "supported to rotate with the encoded device," is inappropriate because it could impose an extraneous limitation that the agitator and the encoded device must rotate conjointly. said agitator having a first end and a second Coupling occurs via a shaft mounted in the end, said plate being to said first end sump. Beyond that, SCC's proposed construction of said agitator and a torque sensitive coupling of "fastened to" is a synonym that being coupled to said second end of said itself could require construction and does not agitator. enlighten the self-evident meaning of "coupled." 11. An encoded device for a toner cartridge See claim 1 above. comprising a plate having positioned at locations defined in relation to a clock face, said preprogrammed indicia including a first Calling slots "narrow openings" is not helpful . . . (i.e. not "constructive" in any meaningful way). The Court finds no substantive dispute over this claim limitation. . . . positioned See claim 1 above. and having a first extent, and a measurement slot positioned See claim 1 above. from said 6:00 o'clock position, said measurement slot having a second extent, said first extent being greater than said second extent. 13. The encoded device of claim 11, further See claim 5 above. comprising at least one positioned between said first slot and said measurement slot. 14. The encoded device of claim 11, wherein See claim 10 above. said toner cartridge includes a and , said agitator having a first rotating end and a second rotating end, said plate being adapted for to said first rotating end of said agitator. 15. The encoded device of claim 14, wherein See claim 1 of the `772 patent above. said second end of said agitator is to a torque sensitive coupling. 17. An encoded wheel for a toner cartridge See claim 1 above. comprising a disk having positioned at locations on said disk, said indicia including a , and from said start indicia. 18. The encoded device of claim 17, wherein Calling slots "narrow openings" is not helpful each said indicia comprises a . (i.e. not "constructive" in any meaningful way). The Court finds no substantive dispute over this claim limitation. 20. The encoded device of claim 17, further See claim 5 above. comprising at least one positioned between said start indicia and said at least one measurement indicia. 21. The encoded device of claim 17, further See claim 5 above. comprising at least one positioned between said start indicia and said at least one measurement indicia in a clockwise direction from said start indicia. 23. The encoded device of claim 17, wherein Calling slots "narrow openings" is not helpful each of said at least one measurement indicia (i.e. not "constructive" in any meaningful comprises a . way). The Court finds no substantive dispute over this claim limitation. 24. The encoded device of claim 17, wherein See claim 10 above. said toner cartridge includes a and , said agitator having a first end and a second end, said disk being to said first end of said agitator and a torque sensitive coupling being coupled to said second end of said agitator. 1. A toner cartridge comprising: Parties agree: No construction is necessary. a toner reservoir having toner therein; Parties agree: No construction is necessary. a first paddle rotatable in said toner reservoir Parties agree: No construction is necessary. about a fixed first axis; said toner reservoir having a first portion in "Exerts pressure on the toner" does nothing which the toner therein is engaged by said to construe "push the toner," except to imply first paddle to agitate the toner and to a limitation, namely a "pressure" requirement, out of said toner reservoir during beyond the claim. "Push the toner" each revolution of said first paddle; speaks for itself, and the Court finds that this limitation is not substantially in dispute. a second paddle pivotally supported on said Parties agree: No construction is necessary. first paddle for pivotal movement about a second axis substantially parallel to the fixed first axis in response to each revolution of said first paddle about the fixed first axis; said The Court construes this claim to permit contact between the first paddle and toner in the second portion of the toner reservoir. ; While said contact may not be a desired result, nothing about the limitation suggests that contact between the first paddle and toner in the second portion of the toner reservoir cannot or does not ever happen. Because SCC's proposed construction suggests otherwise, it is rejected. and said second paddle including a toner moving See claim 1 above. element for moving through said second portion of said toner reservoir in response to each revolution of said first paddle through said toner reservoir to engage the toner in said second portion of said toner reservoir to agitate the toner and to out of said toner reservoir during each revolution of said first paddle. 5. The toner cartridge according to claim 4 This is a means-plus-function limitation pursuant including for insuring that said second to , ¶ 6. The structure paddle trails said first paddle during each for performing the function is a stepped pivot revolution of said first paddle through said shaft and support arms as well as equivalents toner reservoir. thereto. The Counterclaim Defendants construction is rejected, because it requires "support arms on the second paddle that are longer than the radius of the inner surface of the longitudinal wall." Rather, said support arms should be longer than the radius of the inner wall. [R. 949 at 137-38]; Fig. 2. Under the Counterclaim Defendants' construction, with reference to Fig. 2, the support arms at Nos. 41 and 42 would have to be longer than support struts, illustrated at No. 29, which run the length of the "mating structure." This construction would be in error. 6. The toner cartridge according to claim 3 See claim 5 above. including for insuring that said second paddle trails said first paddle during each revolution of said first paddle through said toner reservoir. 7. The toner cartridge according to claim 2 See claim 5 above. including for insuring that said second paddle trails said first paddle during each revolution of said first paddle through said toner reservoir. 8. The toner cartridge according to claim 1 See claim 5 above. including for insuring that said second paddle trails said first paddle during each revolution of said first paddle through said toner reservoir. 10. A toner cartridge comprising: Parties agree: No construction is necessary. a toner reservoir having toner therein Parties agree: No construction is necessary. a first paddle rotatable in said toner reservoir Parties agree: No construction is necessary. about a fixed first axis; said toner reservoir having a first portion in See claim 1 above. which the toner therein is engaged by said first paddle to agitate the toner and to out of said toner reservoir during each revolution of said first paddle; a second paddle pivotally supported by said Parties agree: No construction is necessary. first paddle for pivotal movement about a second axis substantially parallel to the fixed first axis in response to each revolution of said first paddle about the fixed first axis; said See claim 1 above. ; said second paddle having a toner moving Parties agree: No construction is necessary. element for moving through said second portion of said toner reservoir in response to each revolution of said first paddle through said toner reservoir to engage the toner in said second portion of said toner reservoir to agitate the toner and to push the toner out of said toner reservoir during each revolution of said first paddle; said first paddle having a first toner moving Parties agree: No construction is necessary. element for engaging only the toner in said first portion of said toner reservoir; said toner reservoir having a third portion Parties agree: No construction is necessary. adjacent said second portion and remote from said first portion; said first paddle having The claim is construed as follows: "the first paddle has a second toner moving element that — during each revolution of the first paddle about its axis — engages only the toner in ; the third portion of the toner reservoir." Because SCC's construction potentially improperly limits the claim as requiring that the second toner moving element not contact any toner in any other portion of the toner reservoir, that construction is rejected. See claim I above. and said toner moving element of said second "At the same time" does not inform the plain paddle also moving through meaning of "simultaneously." It is mere said third portion of said toner reservoir in gloss, and absent a reason why "at the same response to each revolution of said first paddle time" has any significance beyond letting the through said toner reservoir to engage word "simultaneously" stand on its own, the the toner in said third portion of said toner Court finds that this limitation is not actually reservoir to agitate the toner and to push the in dispute. toner out of said toner reservoir during each revolution of said first paddle. 14. The toner cartridge according to claim See claim 5 above. 13 including for insuring that said second paddle trails said first paddle during each revolution of said first paddle through said toner reservoir. 15. The toner cartridge according to claim See claim 5 above. 12 including for insuring that said second paddle trails said first paddle during each revolution of said first paddle through said toner reservoir. 16. The toner cartridge according to claim See claim 5 above. 11 including for insuring that said second paddle trails said first paddle during each revolution of said first paddle through said toner reservoir. 17. The toner cartridge according to claim See claim 5 above. 10 including for insuring that said second paddle trails said first paddle during each revolution of said first paddle through said toner reservoir. 18. A toner cartridge comprising: Parties agree: No construction is necessary. a toner reservoir having toner therein; Parties agree: No construction is necessary. said toner reservoir including a plurality of Parties agree: No construction is necessary. walls; said plurality of walls including: a pair of Parties agree: No construction is necessary. substantially parallel end walls; and a longitudinal wall extending between Parties agree: No construction is necessary. said end walls and joined to each of said end walls; The evidence SCC gives for its proposed ; construction, "each end wall is round and the same size and shape," is general dictionary definitions that impose extraneous limitation on the claim. It appears pointless to swap the word "circular" for "round," etc., and the Court finds that this claim limitation is not in substantive dispute. said longitudinal wall including: a first portion Parties agree: No construction is necessary. having a curved shape extending longitudinally from one of said end walls toward the other of said end walls, said curved shape of said first portion having the same radius as the circular shape of each of said end walls but terminating prior to completion of the circular shape of each of said end walls; a second portion extending from said first Parties agree: No construction is necessary. portion toward the other of said end walls; and a third portion extending from said second Parties agree: No construction is necessary. portion to the other of said end walls; said first portion of said longitudinal wall Parties agree: No construction is necessary. having a substantially greater length than said second portion of said longitudinal wall; said second portion of said longitudinal wall Parties agree: No construction is necessary. having a substantially greater length than said third portion of said longitudinal wall; a first paddle rotatable in said toner reservoir Parties agree: No construction is necessary. about a fixed first axis, said first paddle being rotatably supported by said end walls; said first paddle having a clearance from each Parties agree: No construction is necessary. of said end walls and said longitudinal wall during rotation of said first paddle through said toner reservoir; a second paddle pivotally supported on said Parties agree: No construction is necessary. first paddle for pivotal movement about a second axis substantially parallel to the fixed first axis in response to rotation of said first paddle about the fixed first axis; each of said second portion and said third Parties agree: No construction is necessary. portion of said longitudinal wall including: a curved portion having the same shape as said curved shape of said first portion of said longitudinal wall but of less circumference; and a non-curved portion closer to the fixed Parties agree: No construction is necessary. first axis than said curved portion of each of said second portion and said third portion of said longitudinal wall; said curved portion of each of said second Parties agree: No construction is necessary. portion and said third portion of said longitudinal wall having the same radius as the circular shape of each of said end walls; said longitudinal wall having an exit port Parties agree: No construction is necessary. formed therein; said second paddle having a toner moving Parties agree: No construction is necessary. element for moving through said toner reservoir having said second and third portions of said longitudinal wall, said toner moving element of said second paddle engaging said second and third portions of said longitudinal wall of said toner reservoir to engage the toner therein to agitate and push the toner out of said toner reservoir through said exit port; and said first paddle having a first toner Parties agree: No construction is necessary. moving element for engaging the toner in said toner reservoir along said first portion of said longitudinal wall of said toner reservoir during each revolution of said first paddle to agitate and push the toner out of said toner reservoir through said exit port. 25. The toner cartridge according to claim See claim 5 above. 24 including for insuring that said second paddle trails said first paddle during each revolution of said first paddle through said toner reservoir. 26. The toner cartridge according to claim See claim 5 above. 18 including for insuring that said second paddle trails said first paddle during each revolution of said first paddle through said toner reservoir. 28. An auxiliary paddle for use in a toner This is a preamble, the contested portion of reservoir of a toner cartridge of a laser printer which merely states the purpose of or intended in cooperation with a main paddle revolving use of the auxiliary paddle. in the toner reservoir to aid in removing , , toner from (Fed. Cir. 1998). Therefore, the preamble is not a claim limitation requiring construction. including: ; , , (Fed. Cir. 2005). The "purpose" portion of this preamble is not essential to "give life" to the claim. a pair of substantially parallel support arms Parties agree: No construction is necessary. for pivotal support by the main paddle for pivotal movement relative to the main paddle during each revolution of the main paddle; an outer toner moving bar for engaging the Parties agree: No construction is necessary. toner to be moved out of the toner reservoir; said outer toner moving bar being supported The Court adopts the Counterclaim Defendants' by said support arms and extending beyond construction: "the portion of the outer an outer side of one of said support arms to toner moving bar outside the support arms sweep sweeps more toner than that swept by the portion of the outer toner moving bar between ; the support arms." Lexmark's argument that "volume" could refer to anything other than "volume of toner," given the context of this claim and the patent, is unpersuasive. [R1010 at 81]. and a stop pin supported by said support Parties agree: No construction is necessary. arms and extending beyond an outer side of each of said support arms for engaging the main paddle to control when said auxiliary paddle begins sweeping the volume in the toner reservoir during each revolution of the main paddle through the toner reservoir. 1. A sealing member for an image forming Parties agree: No construction is necessary. apparatus including a frame member, a developer roll and a blade member, structured so as to prevent leakage of toner in the image forming apparatus, said sealing member being made from a flexible, low modulus material and comprising: a rotary seal portion for sealing a space "[S]urface of said developer roller" speaks for formed between the frame member and the itself; however, the Court specifically construes developer roll, said rotary seal portion incorporating this limitation by rejecting the Counterclaim ridges set at an angle across its face Defendants' proposed construction, adjacent to the , which is "exterior of rotating cylinder immersed said ridges being from about 0.05 to about 0.5 in toner for a portion of its revolution millimeters in height and running at an angle and exposed external to the developer unit to the developer roll process direction so as to for the other portion of the cycle." This push toner away from the edge of said developer construction would add much uncalled-for roll as said developer roll rotates; limitation to the claim, such as immersion in toner for a portion of the revolution. But it also appears that the Counterclaim Defendants are limiting the developer roller in its construction, when the subject of this limitation is a rotary seal portion, which is merely adjacent to the surface of the roller. To limit the roller itself simply exceeds the subject of this limitation. a blade seal portion for sealing a space Parties agree: No construction is necessary. formed between the frame member and the blade member; and a for biasing said sealing member This is a means-plus-function limitation pursuant toward the surface of to , ¶ 6. The biasing and said blade member structure can be a "cantilever beam, cantilever springs or a foam strip" and equivalents thereto. Fig. 4; Fig. 5; 3:4-6; 7:10-21. However, "equivalents" are any means "which hold[ ] the seal against the rotary member without impairing the rotation of the rotary member." Col. 7, lines 10-22. 10. A process cartridge detachably mountable Parties agree: No construction is necessary. to an image forming apparatus, said process cartridge comprising: a frame member; Parties agree: No construction is necessary. a developer roll mounted on said frame member; Parties agree: No construction is necessary. said developer roll constituting process means; a blade member The Court concurs that, given the nature of ; and the patent, with regard given to the specification and claim itself, that the use of the word "contracting" is a typographical error, and the claim should be read as using the word "contacting." (emphasis added). See, e.g, Col. 3, lines 14-15. It is absurd to read into the patent that the rotary member is contracted by the blade member. See Fig. 3, Nos. 10e and 10d. The use of the words "rotary member" is additionally not indefinite, nor could a reasonable person so find. The preferred embodiment may be seen at Fig. 3, No. 10d. Never-theless, any indefiniteness arguments with regard to the claims in issue in the `383 patent are moot, for the Counterclaim Defendants failed to raise indefiniteness contentions in response to a motion for summary judgment by Lexmark on, , the `383 patent's validity. [R. 1008]. a sealing member to prevent leakage of toner Parties agree: No construction is necessary. from the cartridge, said sealing member being made from a flexible, low modulus material, said sealing member comprising: a rotary seal portion for sealing a space See claim 1 above. formed between the frame member and the developer roll, said rotary seal portion incorporating ridges set at an angle across its face adjacent to the , said ridges being from about 0.05 to about 0.5 millimeters in height and running at an angle to the developer roll process direction so as to push toner away from the edge of said developer roll in use; a blade seal portion for sealing a space Parties agree: No construction is necessary. formed between the frame member and the blade member, and a for biasing said sealing member See claim 1 above. toward the surface of and said blade member. 19. A process cartridge detachably mountable Parties agree: No construction is necessary. to an image forming apparatus, said process cartridge comprising: a frame member; Parties agree: No construction is necessary. a developer roll mounted on said frame member; Parties agree: No construction is necessary. said developer roll constituting process means; a blade member See claim 10 above. , a sealing member to prevent leakage of toner Parties agree: No construction is necessary. from the cartridge, said sealing member being made from a flexible, low modulus material, said sealing member comprising: a rotary seal portion for sealing a space See claim 1 above. formed between the frame member and the developer roll, said rotary seal portion incorporating ridges set at an angle across its face adjacent to the , said ridges running at an angle of about 10° to the developer roll process direction so as to push toner away from the edge of said developer roll in use; a blade seal portion for sealing a space Parties agree: No construction is necessary. formed between the frame member and the blade member, and a for biasing said sealing member See claim 1 above. toward the surface of and said blade member. Having considered the parties' claim construction pleadings, it is hereby ORDERED that said claim limitations in issue are construed or the issues pertaining thereto otherwise disposed of in accordance with the above table.