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“Colorant Selection Mechanism” Construed Under § 112, ¶ 6, but “Aesthetic Correction Circuitry” Connotes Sufficient Structure to Avoid § 112, ¶ 6

September 13, 2006

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Last Month at the Federal Circuit - October 2006

Judges: Michel (dissenting), Friedman, Dyk (author)

[Appealed from: E.D. Tex., Judge Folsom]

In Massachusetts Institute of Technology v. Abacus Software, Nos. 05-1142, -1161, -1162, -1163 (Fed. Cir. Sept. 13, 2006), the Federal Circuit vacated and remanded the district court’s grant of SJ of noninfringement of U.S. Patent No. 4,500,919 (“the ’919 patent”), finding that the district court erred in its claim construction and improperly excluded Microsoft Windows (“Windows”) as an infringing product.

Massachusetts Institute of Technology (“MIT”), owner of the ’919 patent for a system for reproducing copies of a color original image, and its exclusive licensee, Electronics for Imaging, Inc. (“EFI”), sued Microsoft Corporation (“Microsoft”) and other defendants, alleging that their products, including Windows, infringed MIT’s ’919 patent. After the district court construed the claims, the parties stipulated to a final judgment of noninfringement.

On appeal, the Federal Circuit first agreed with the district court that the claimed “scanner” must have “relative movement between the scanning element and the object being scanned.” Against MIT’s urging, the Court held that the claimed “scanner” did not cover a camera used to photograph an image to be reproduced. The Court relied first on the specification, which only described one type of scanner that worked by moving an original image past a scanning element. Looking next to dictionary definitions, the Court recited two dictionaries that described scanning as including relative movement between a scanning device and an original. Based on this evidence, the Court upheld the district court’s construction of the term “scanner” as requiring relative movement between the scanning element and the object being scanned.

The Federal Circuit also agreed with the district court that the claimed “scanner” must involve placing the color original on or in close proximity to the scanner. The Court concluded that the district court properly relied on the ’919 patent specification, expert testimony, andtechnical references in concluding that a person of ordinary skill in the art at the time of the invention would have known of two general types of scanners, both of which required close proximity between the color original and the scanner. The Court thus agreed that the term scanner “should be defined by what was known in the art at the time.” Slip op. at 13.

The Court then found that the term “colorant selection mechanism” implicated 35 U.S.C. § 112, ¶ 6. The Court first noted that terms such as “mechanism,” “means,” “element,” and “device” typically do not connote sufficiently definite structure to invoke § 112, ¶ 6. Id. at 14. The Court then cited Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1360 (Fed. Cir. 2004), which states that § 112, ¶ 6, does not apply to “a term that is simply a nonce word or a verbal construct that is not recognized as the name of structure and is simply a substitute for the term ‘means for.’” Id. Based on the ’919 patent claims, which used the term “colorant selection means” synonymously with “colorant selection mechanism,” dictionary definitions, one of which defined “mechanism” as “means,” and the lack of any standard meaning of the term “colorant selection” in the art, the Court agreed with the district court that the term “colorant selection” did not connote a sufficiently definite structure to avoid § 112, ¶ 6.

Next, the Court disagreed with the district court’s conclusion that “aesthetic correction circuitry” should be construed under § 112, ¶ 6. The Court found that, in contrast to the term “mechanism,” dictionary definitions establish that the term “circuitry,” by itself, connotes structure. Moreover, the Court found that the claim language here did not merely describe a circuit, it added further structure by describing the operation of the circuit. Based on this analysis, the Court held that the claimed “aesthetic correction circuitry” did not implicate § 112, ¶ 6. However, the Court limited the meaning of “circuitry” to encompass only hardware, not including software, in light of the specification’s repeated description of employing only hardware and dictionary definitions of “circuitry.”

Finally, the Court found that the district court erred in refusing to allow MIT to update its preliminary infringement contentions. Over one year after MIT had served its preliminary infringement contentions, the district court issued an order noting for the first time that preliminary infringement contentions are deemed to be final and can only be amended by a showing of good cause. The district court relied on this order in refusing to allow MIT to amend its preliminary infringement contentions to include Windows. The Federal Circuit reversed, finding that MIT had not been given sufficient notice that its preliminary infringement contentions would be deemed final or that they could only be updated upon a showing of good cause.

In dissent, Judge Michel stated that “aesthetic correction circuitry” was correctly construed as a means-plus-function limitation because the limitation failed to recite sufficiently definite structure. Furthermore, Judge Michel exclaimed that excluding Windows as an infringing product was not an abuse of the trial court’s discretion because MIT itself urged, successfully, that discovery be delayed, and thus MIT’s reliance on uncompleted discovery was not an excuse for amending its infringement contentions.