United States District Court, D. Massachusetts
CRANE SECURITY TECHNOLOGIES, INC. and VISUAL PHYSICS, LLC, Plaintiffs,
ROLLING OPTICS AB, Defendant.
MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION
Leo T. Sorokin United States District Judge
In this intellectual property dispute, the plaintiffs Crane Security Technologies, Inc., and Visual Physics, LLC, allege that the defendant Rolling Optics AB infringed five of their patents: Patent Nos. 7, 468, 842 (the ’842 patent), 8, 120, 855 (the ’855 patent), 8, 111, 462 (the ’462 patent), 8, 009, 360 (the ’360 patent), and 8, 254, 030 (the ’030 patent). Rolling Optics counterclaims for, among other things, declarative judgment of invalidity and non-infringement of the five asserted patents. Before the Court are the parties’ briefs on claim construction. The court held a hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and heard argument and technology tutorials, on December 11, 2015.
The parties dispute the proper construction of numerous claims. The five patents generally relate to optical systems that project synthetic images. These systems, which are embedded into the new United States $100 bill, are useful as anti-counterfeiting measures because they are difficult to reproduce. All of the patents at issue are either a continuation-in-part or divisional from one patent, U.S. Patent Number 7, 333, 268 (the ’268 Patent). The ’268 patent covers a synthetic magnification micro-optic system, comprising a planar array of image icons and a planar array of image icon focusing elements. This is essentially the structure of the optical system in the patents at issue.
More particularly, in the patents at issue the optical system is composed of three main components, which are stacked. On the bottom are icon elements, which are the image that the user will see (dollar sign) (labeled 4). These images, which may be microscopic, are arranged in an array and, combined, make up a larger image. Above the array are focusing elements (lenses) (labeled 1), which focus the icon elements into a larger, “synthetic” image which we see. In between the icon array and the focusing elements is an optical spacer or substrate (labeled 5).
It is possible to manipulate the synthetic image by altering the spacing between individual icon elements, individual focusing elements, or both. Such manipulation results in making the synthetic image appear to move or lie above or below the optic system.
Icon elements are formed as three-dimensional structures with physical relief. As shown in Figure 37(a) of the ’842 patent, this physical relief can take the form of “depressions” or “voids” (labeled 872), or raised areas (labeled 874). The relief is below the substrate (labeled 866). The voids can be filled with another material.
Claim 57 of the ’842 patent is representative of the system that the patents claim, generally. It claims:
A synthetic optical image system, comprising an array of focusing elements, and an image system including an array of microstructured icon elements designed to collectively form an image, wherein the array of focusing elements and the image system cooperate to form a synthetic optical image and, wherein the microstructured icon elements are either incorporated into an icon layer, or in a coating layer formed on a substrate, and wherein the layer is formed of either or both of positive icon image elements in which the positive image icon elements are formed as depressions or voids in the layer and background areas in the layer are formed as raised areas in the layer or of negative icon image elements in which the negative image icon elements are formed as raised areas in the layer and background areas in the layer are formed as depressions or voids in the layer. [Doc. No. 78-2 at 69:8-24]
The ’842 patent expands on the ’268 patent as a continuation-in-part; the ’855, ’462, ’360, and ’030 patents are all divisional of the ’268 patent and claim various applications of it. For present purposes, it is enough to say that each patent asserts different claims relating to the same optical image system. To the extent the patents at issue differ in a manner material to claim construction, the Court addresses such differences, below.
II. LEGAL STANDARD
“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.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The “construction of a patent, including terms of art within its claim, is exclusively within the province of the court.” Markman, 517 U.S. at 372. A claim’s words “are generally given their ordinary and customary meaning.” Phillips, 415 F.3d at 1312 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). This “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313. The “person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Consequently, in construing a claim the Court may consider “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id. at 1314 (quoting Innova/Pure Water, Inc., 381 F.3d at 1116).
1. Claim Construction
At the claim construction hearing, Rolling Optics clarified its argument as to the construction of the following terms: “microstructured icon elements, ” “icon elements . . . formed as depressions or voids, ” “recesses forming voids, ” “shaped voids or recesses, ” and “shaped posts.” As the Court understands Rolling Optics’ clarification, Rolling Optics contends that these claim terms do not reach icon elements that form synthetic images by the contrast between icon elements and the surrounding material. Instead, in Rolling Optics’ view, these claim terms encompass only icon elements that form synthetic images by the physical relief of the icon elements themselves. The Court rejects this argument because it fails both as a matter of law and as a matter of fact. Rolling Optics’ approach fails as a matter of law because it inappropriately reads a limitation into the claims that is not provided for by the claim language. See Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1324 (Fed. Cir. 2003). Furthermore, as a matter of fact, Rolling Optics’ argument fails because it is premised upon the notion that the patentees during patent prosecution disavowed an apparatus containing printed icons without physical relief - a point Crane concedes - but also that the patentees disavowed an apparatus with printed icons that do contain physical relief. To the extent Rolling Optics contends that the patentees disclaimed an apparatus with printed icons that do have physical relief, the Court disagrees for reasons that follow.
In addition, Rolling Optics makes an overarching argument that when the patents in suit issued the applicants did not contemplate forming icon elements through printing. In support, Rolling Optics makes much of Pr392, a provisional patent application to which the ’268 parent patent claims priority. Pr392 discusses making synthetic images through magnification of “micro-images, ” and states that conventional printing of these “micro-images” cannot provide for sharply-defined synthetic images. Accordingly, Pr392 purported to advance the state of the art by “microprinting” image icons which, in turn, provide higher resolution synthetic images. Although Pr392 did not define “microprinting, ” the thrust of Rolling Optics’ argument is that there is evidence in the record to suggest that the patentees contemplated using microprinted image icons which, in reality, amount to image icons made by using ink to fill recesses in a layer. Therefore, the argument goes, the microprinted icon elements purportedly contemplated in the patents at issue are distinguishable from the printed icon elements that Crane believes the patents cover. The language of the patents does not establish Rolling Optics’ theory. Nevertheless, we consider this overarching argument in construing the following claims.
A. “Microstructured Icon Elements” (’842 Patent claims 57, 58 59)
Each of claims 57 through 59 of the ’842 patent refer to a structure that contains “microstructured icon ...