Static Control Components, Inc. v. Lexmark International, Inc.

502 F.Supp.2d 568 (2007)

STATIC CONTROL COMPONENTS, INC., Plaintiff/Counterclaim Defendant,
v.
LEXMARK INTERNATIONAL, INC., Defendant/Counterclaim Plaintiff,
v.
Ner Data Products, Inc., et al., Counterclaim Defendants.

Nos. Civ.A. 5:02-571, Civ.A. 5:04-84.

United States District Court, E.D. Kentucky, Central Division at Lexington.

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

VAN TATENHOVE, District Judge.

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.^[1] 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].

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 up-front 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 conclude 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 electro-photographic 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 Remanufacturers have done over and over again with regard to their proposed claim construction 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")
1. A cartridge for an electrophotographic                       This is a preamble that merely states the
machine, comprising:                                            purpose of or intended use of the cartridge.
C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d
1340, 1350 (Fed.Cir.1998). Therefore, the
preamble is not a claim limitation requiring
construction. Id.; see also NTP, Inc. v. Research
In Motion, Ltd., 418 F.3d 1282, 1305-06
(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 sump for carrying an initial quantity of                      Intrinsic evidence is sufficient to know what
toner;                                                          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? See http://www.m-w.com/
dictionary/sump. 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 any 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
sum 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; said encoder wheel                                implies that the claim limitation must be read
positioned for mating coaction with a code                      as requiring a combination of a cartridge and
wheel reader when said cartridge is in a home                   printer to have effect. While a cartridge may
position in an electrophotographic machine;                     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, to effect rotation of said shaft,                 proposed construction imposes a directional
paddle and encoder wheel;                                       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.
said encoder wheel configured for indicating,                   The Court finds no substantive difference
in conjunction with said coded wheel reader,                    between the parties' proposed constructions,
one or more cartridge characteristics to said                   and thus finds that this claim is not legitimately
machine.                                                        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                     a construction or suggests that one
said encoder wheel includes;                                    is necessary in their joint construction brief.
[R. 919 at 6].)

means on said encoder wheel for coaction                        This is a means-plus-function limitation pursuant
with said code wheel reader on said machine                     to 35 U.S.C. § 112, ¶ 6. The means for
to indicate a component of resistance to paddle                 coaction covers slots, windows, notches, or
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 normal rotational operation                      rotation, the encoder wheel rotates with and
in said machine by drive means in said                          in the same direction as the paddle." This is
machine, said section is read by said code                      unnecessary, 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 is functioning as
intended, 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
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 a component of resistance to paddle                     speak for itself. SCC's proposal is
movement 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.
the amount of toner remaining in said sump.
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
cartridle
and said component of resistance is measured                    SCC proposes the construction that limits the
by the lac between drive means travel and                       claim to require that "the electrophotographic
encoder travel.                                                 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 electrophotographic
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 slots 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 increments to encoded slots 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.
uantit of toner remaining in said sump.
32. A cartridge for an electrophotographic                      This is a preamble that merely states the
machine, comprising:                                            purpose of or intended use of the cartridge.
C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d
1340, 1350 (Fed.Cir.1998). Therefore, the
preamble is not a claim limitation requiring
construction. Id.; see also NTP, Inc. v. Research
In Motion, Ltd., 418 F.3d 1282, 1305-06
(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.
a sump for carrying a quantity of toner;                        See claim 1 above.
a toner a lator mounted in said sump; and                       Parties agree: No construction is necessary.
a single encoded wheel rotating in relation to                  SCC proposes the construction: "the encoded
said toner agitator, said encoded wheel including               wheel rotates with and in the same direction
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 preselected cartridge characteristics.                     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 preselected cartridge
characteristics, 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 cartridge for an imaging apparatus,                 See claims 1 and 35 above.
the improvement comprising a wheel
having coding representing one or more preselected
cartridge characteristics.
B.U.S. Patent No. 5,707,743 ("Developer Roller")
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 outer surface of oxidized                 SCC's construction is that the claim should be
polydiene of a lower alkane.                                    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.
C.U.S. Patent No. 5,758.233 ("Locatins. Surfaces")
1. A toner cartridge for an imaging apparatus                   This is a preamble that merely states the
comprising                                                      purpose of or intended use of the cartridge.
C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d
1340, 1350 (Fed.Cir.1998). Therefore, the
preamble is not a claim limitation requiring
construction. Id.; see also NTP, Inc. v.
Research In Motion, Ltd., 418 F.3d 1282,
1305-06 (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 controlled                      that the specification informs that a controlled
amounts from said toner hopper mounted                         amount is not "excessive." Col. 9,

together as a first unitary assembly                            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, a cleaner chamber for cleaning                           for use during cleaning of untransfered toner
untransfered toner from said photosensitive                     from the photosensitive roller. The chamber
roller, 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 photosensitive roller into contact.
locating surfaces 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." Transmatic, Inc. v. Gulton Indus.,
53 F.3d 1270, 1278 (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
structural 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 unobstructed            Court can only assume that "not impeded by
for serving as a vertical and front to                          any structure" is merely a superfluous synonym
rear locator,                                                   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 downward Pressing members                         a downward vertical force," improperly makes
from said imaging apparatus,                                    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 (e.g., 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 roller member in                               SCC's construction — "an imaging apparatus
said 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.
D.U.S. Patent No. 5,768,661 ("Wing-like Guides")
1. A toner cartridge for an imaging apparatus                   This is a preamble that merely states the
comprising                                                      purpose of or intended use of the cartridge.
C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d
1340, 1350 (Fed.Cir.1998). Therefore, the
preamble is not a claim limitation requiring
construction. Id.; see also NTP, Inc. v. Research
In Motion, Ltd., 418 F.3d 1282, 1305-06
(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
controlled amounts 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 toned by toner                 The parties agree and the Court concurs that
delivered by said developer roller,                             this limitation is construed as follows: "a
photosensitive roller (e.g., a photoconductor
drum) is toned by toner that is delivered by
the developer roller."
said cartridge having curved planar members                     "[A] flat structure that deviates from planarity
on opposite sides of said cartridge"for guided                  in a smooth, continuous fashion," SCC's
movement by slots in said imaging apparatus,                    construction of "curved planar members," is a
said planar members being substantially                         superfluous synonym of clear terms, which
continuous for being guided by substantially                    under some circumstances (which are currently
continuous 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 unclaimed
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 unclaimed 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 thin at their initial                 The Court adopts Lexmark's construction,
locations 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
member of a larger thickness 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 significantly thinner 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                    Construction: unitary means single, but
said planar member is plastic molded as a                       "indivisible" could be too limiting and is thus
unitary member including the body of said                       rejected as a construction.
cartridge from which each said planar member
extends.
E.U.S. Patent No. 5,802,432 ("Pin/Spring Assembly")
1. A toner cartridge comprising                                 Parties agree: No construction is necessary,
a first unitary element comprising hand grip                    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."
Comark Commune. v. Harris Corp.,
156 F.3d 1182, 1186 (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 35 U.S.C. § 112, ¶ 6. The structure
each side of said hopper, and means 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 left side of said second unitary member                    construction is necessary. [R. 919 at 25].
and said left side wall,                                       Lexmark proposes that "left side" should
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                    Id. (the immediately preceding row, regarding
of the right side of said second unitary member                "left side")
and said right side wall,

said stud of the left side of said cartridge                    "Left side" speaks for itself. The Court can
positioned in said housing of said left side so                 only assume (but does not find or hold) that
as to be held by said housing of said left side,                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 right side of said cartridge                   Id. (the immediately preceding row, regarding
positioned in said housing of said right side so                "left side")
as to be held by said housing of said right
side.
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
unobstructed for resting on a roller member                     SCC's proposed construction of "not impeded
in said imaging apparatus.                                      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."
F.U.S. Patent No. 5,874,172 "Developer Roller"
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 an outer surface of oxidized                 SCC's construction is that the claim should be
segments of the polydiene diol.                                 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).
G.U.S. Patent No. 5,875,378 ("Homier Exit Agitator")
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 move gently 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 on                     to mean "attached to the exit surface."
one side of said exit surface and a second                      The claim does not require the attachment of
pivot member on an opposite side of said exit                   the pivot members to the exit surface, and is
surface and normally located proximate said                     accordingly construed to not require such.
exit surface except when moved by said paddle                   See 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.
H.U.S. Patent No. 5,995,772 ("Encoded Cartridge Wheel")
1. A cartridge for an electrophotographic                       Parties agree: No construction is necessary.
machine, comprising:
a sump for carrying an agitator rotatably                       The claim is construed as follows: "the agitator
mounted 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 coupled to a first end of                     Coupling occurs via a shaft mounted in the
said agitator; and                                              sump. Beyond that, SCC's proposed construction
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 coding means                         "[C]oding means" is a means-plus-function
representing cartridge characteristic information.              limitation pursuant to 35 U.S.C. § 112, ¶ 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
a component of resistance 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 coding                See Claim 35 of the '169 Patent, supra; see
means includes a coding representing                            also the '772 Patent, Col. 5, lines 52-58.
preselected cartridge characteristic information.
5. The cartridge of claim 1, wherein said                       See claim 1 above, in which coding indicators
coding means comprises a plurality of coding                    are referenced. Claim 5 is not a means-plusfunction
indicators.                                                     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 slots.                                                       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 windows.                                                     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 notches.                                                     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 juxtaposed.                  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 sumo 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 plate rotating in relation to                  The Court finds that the Counterclaim Defendents'
said toner agitator,                                            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 coding means                       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 coding                      are referenced. Claim 15 is not a meansplus-function
indicator.                                                      limitation under § 112, ¶ 6
though.
16. The cartridge of claim 14, wherein said                     Id. at Claim 15.
coding means comprises a plurality of coding
indicators.
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
notches in said encoded late.
20. The cartridge of claim 16, wherein said                     See claim 12 above.
coding indicators are juxtaposed around an
axis of rotation of said encoded plate.1
[1 "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 plate
having coding means representing preselected
cartridge characteristic information.
23. The cartridge of claim 21, wherein said                     See claim 1 above, in which coding indicators
coding means comprises a plurality of coding                    are referenced. Claim 23 is not a meansplus-function
indicators.                                                     limitation under § 112, ¶ 6
24. The cartridge of claim 23, wherein said                     See claim 17 above.
coding indicators comprise a plurality of
openings in said encoded plate.
25. The cartridge of claim 23, wherein said                     See claim 9 above.
coding indicators comprise a plurality of
notches in said encoded date.
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 quantity of toner carried 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 mounted or rotation into,                           See claim 1 above.
through and out of engagement with toner
carried within said sum"
an encoded plate coupled 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 code indicating
means configured for representing cartridge
characteristic information" 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, effects rotation of                  [R. 949 at 117]. While SCC might
said agitator and encoded plate.                                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 plurality of openings 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.
determining a rotational position of said                       Claim 39 is not an asserted claim in this case;
drive mechanism;                                                accordingly, no construction is necessary.
[See R. 1008 at 32].
determining a relative position of encoded                      Claim 39 is not an asserted claim in this case;
plate; and                                                      accordingly, no construction is necessary.
[See 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.
I.U.S. Patent No. 6.009,291 ("Photo Drum Clutch")
1. An apparatus for electrophotographic imaging                 Parties agree: No construction is necessary.
comprising
a photosensitive roller assembly 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. 1008].
a gear integral with said assembly for receiving                "Meshing gear" is a gear in a printer, unclaimed
torque from a meshing gear 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 uniform frictional drag element 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 eased to be claimed.
2. An apparatus for electrophotographic imaging                 Lexmark: "No construction necessary."
comprising                                                      SCC/Remanufacturers: No response.
Accordingly No construction necessary.
a photosensitive roller assembly 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 meshing gear to cause said
rotation of said assembly during imaging, said
rotation transmitting torque to said stud and
a coil spring clutch 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.
J.U.S. Patent No. 6.160.073 ("Sealant Material")
1. A toner cartridge comprising pliable polyorganosiloxane      The specification clearly speaks of two types
sealant comprising structural                                   of copolymer. The first is a wax that is not
units of the formulae:                                          fit for use as a sealant. See 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 C1-C6                     copolymer useful as a sealant has the consistency
alkyl (ii) each R1 is independently selected                    of a paste or pliable caulk." (emphasis
from the group consisting of a C2-C14 alkyl                     added)). The second copolymer, the only copolymer
and a C15-C60 alkyl, with the proviso that                      useful as a sealant according to the
from about 70% to about 100% of all R1                          specification, is the subject of claim 1. Col. 13,
groups are C15-C60 alkyl, and (iii) × 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 substance" 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 sealant." 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 E.I. du Pont de Nemours
& Co. v. Phillips Petroleum Co., 849
F.2d 1430, 1433 (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.
K.U.S. Patent No. 6,300.025 ("Photoconductor Drum")
1. A photoconductive member comprising: a                       Parties agree: No construction is necessary.
conductive substrate,
and a charoe aenerationlayer on said substrate                  The parties' competing constructions, and
comprising a thorough mixture of                                thus dispute, boil down to whether the elements
phthalocuanine pigment, voluvinulbutural, a                     of the substrate "are only physically
methul or vhenul polusiloxane, and a phenolic                   combined and chemical interaction between
resin,                                                          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." http://mw1.merriamwebster.comIdictionarylmixture.
(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.
Phillips, 415 F.3d at 1322-23.) 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
must not 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
L.U.S. Patent No. 6 397 015 "Encoded Cartridge Wheel"
1. An encoded device for a toner cartridge                      The Court finds that the Counterclaim Defendants'
comprising a plate....                                          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 preprogrammed indicia positioned                     Construction: "preprogrammed indicia" include
at locations defined in relation to a                           slots, windows, or openings
clock face,
said preprogrammed indicia including a start                    Construction: "a referenced point of origin
indicia ...                                                     from which measurements are made." Fig. 7
... positioned at about a 6:00 o'clock position                 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 least one measurement indicia located between                Id. (the immediately preceding claim construction).
about 200 degrees and about 230 degrees                         Measurement indicia also speaks
from said 6:00 o'clock position.                                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 about
a 5:00 o'clock position 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 slot.                             (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 '169 Patent, supra; see
comprising at least one preselected cartridge                   also '015 Patent, Col. 5, lines 47-53.
characteristic indicia 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 preselected cartridge
characteristic indicia 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 slot.                                               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 sump for carrying
a supply of toner and
an agitator rotatably mounted in said sump,                     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 coupled 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 preprogrammed
indicia positioned at locations defined in relation
to a clock face,
said preprogrammed indicia including a first                    Calling slots "narrow openings" is not helpful
slot ...                                                        (i.e. not "Constructive" in any meaningful
way). The Court finds no substantive dispute
over this claim limitation.
... positioned at about a 6:00 o'clock position                 See claim 1 above.
and having a first extent, and
a measurement slot positioned at between                        See claim 1 above.
about 200 degrees and about 230 degrees 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 preselected cartridge
characteristic indicia 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 sump for carrying
a supply of toner and an agitator rotatably
mounted in said sump, said agitator
having a first rotating end and a second
rotating end, said plate being adapted for
coupling 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 coupled to
a torque sensitive coupling.
17. An encoded wheel for a toner cartridge                      See claim 1 above.
comprising a disk having indicia positioned
at locations on said disk, said indicia including
a start indicia, and at least one measurement
indicia located between about 200 degrees
and about 230 degrees from said start indicia.

18. The encoded device of claim 17, wherein                     Calling slots "narrow openings" is not helpful
each said indicia comprises a slot.                             (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 preselected cartridge
characteristic indicia 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 preselected cartridge
characteristic indicia 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 slot.                                               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 sump for carrying
a supply of toner and an agitator rotatably
mounted in said sump, said agitator
having a first end and a second end, said disk
being coupled to said first end of said agitator
and a torque sensitive coupling being coupled
to said second end of said agitator.
M.U.S. Patent No. 6.459.876 ("Dual Paddle Toner 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 push                   a limitation, namely a "pressure" requirement,
the toner 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 toner reservoir having a second portion                    The Court construes this claim to permit
in which the toner therein is not engaged by                    contact between the first paddle and toner in
said first paddle during each revolution of                     the second portion of the toner reservoir.
said first paddle about the fixed first axis;                   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 push the toner 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 means for insuring that said second                   to 35 U.S.C. § 112, ¶ 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 in combination with the mating structure
of the first paddle 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 means 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 means 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 means 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 push
the toner 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 toner reservoir having a second portion                    See claim 1 above.
in which the toner therein is not engaged by

said first addle during each revolution of
said first saddle about the fixed first axis;
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 "addle"
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 a second toner moving                  The claim is construed as follows: "the first
element for enact tins only the toner in                        paddle has a second toner moving element
said third portion of said toner reservoir                      that — during each revolution of the first paddle
during each revolution of said first paddle                     about its axis — engages only the toner in
about the fixed first axis;                                     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
1 above.
and said toner moving element of said second                    "At the same time" does not inform the plain
paddle also simultaneously 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 means 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 means 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 means 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 means 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:
each of said end walls having a circular                        The only evidence SCC gives for its proposed
shape of the same radius;                                       construction, "each end wall is round and the
same size and shape," is general dictionary
definitions that could 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
rotatable 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 means 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 means 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. C.R. Bard,
in the toner reservoir to aid in removing                       Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1350
toner from a portion of the toner reservoir                     (Fed.Cir.1998). Therefore, the preamble is
that the main paddle cannot remove the                          not a claim limitation requiring construction.
toner including:                                                Id.; see also NTP, Inc. v. Research In Motion,
Ltd., 418 F.3d 1282, 1305-06 (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 a volume greater than the volume                          sweeps more toner than that swept by the
swept by the portion of said outer toner moving                 portion of the outer toner moving bar between
bar between said support arms;                                  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 addle through the toner reservoir.
N.U.S. Patent No. 6,487,383 ("J-Seal")
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 surface of said developer rolls,                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 means for biasing said sealing member                         This is a means-plus-function limitation pursuant
toward the surface of said rotary member                        to 35 U.S.C. § 112, ¶ 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 elastically contracting said                     The Court concurs that, given the nature of
rotary member; 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. Nevertheless,
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, inter alia, 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 surface of said developer roll,
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 means for biasing said sealing member                         See claim 1 above.
toward the surface of said rotary member
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 elastically cont[] acting said                   See claim 10 above.
rotary member;
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 surface of said developer roll,
said ridges running at an angle of about 100
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 means for biasing said sealing member               See claim 1 above.
toward the surface of said rotary member
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.

NOTES

[1] 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].