Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 1 of 26
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
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`KONINKLIJKE PHILIPS
`ELECTRONICS NV, et al.,
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`Plaintiffs,
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`CASE NO. C03-1322JLR
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`v.
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`DEFIBTECH LLC, et al.,
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`Defendants.
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`ORDER
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`I. INTRODUCTION
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`This matter comes before the court on the parties’ request for construction of the
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`claim terms at issue in this patent infringement action. At the court’s direction, the
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`parties jointly chose a set of ten claim terms to comprise the “first round” of terms for
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`the court to construe. The court has reviewed the parties’ briefing and supporting
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`materials, and has heard oral argument from the parties at an October 11, 2005 Markman
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`hearing. This order memorializes the court’s claim construction for these first ten terms.
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`II. BACKGROUND
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`Plaintiff Koninklijke Philips Electronics NV (“Philips”) and Defendant Defibtech
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`LLC (“Defibtech”) manufacture portable defibrillators. The devices at issue are
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`automatic external defibrillators that people without medical training can use in
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`ORDER – 1
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`Philips Exhibit 2029
`Zoll Lifecor v. Philips
`IPR2013-00609
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`Page 1 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 2 of 26
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`emergencies. Because their users are presumptively untrained, the defibrillators must be
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`“smart” enough to deliver appropriate shocks to patients with a wide range of body
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`characteristics without input from the user. Moreover, because portable defibrillators
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`are rarely used, they must be able to remain functional through long periods of inactivity,
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`and to signal any malfunctions to users. Heartstream, Inc. (“Heartstream”) began
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`developing defibrillators with these characteristics in the early 1990s. Heartstream is
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`now a wholly-owned division of Philips.
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`Philips (or Heartstream) has been selling various portable defibrillators since
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`1996, and has obtained at least thirteen patents covering its technology. The court has
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`stayed consideration of four of those patents. The nine remaining patents cover “shock
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`delivery” and “self-test” technology. The three self-test patents govern tests that a
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`defibrillator performs on itself to ensure proper operation. Those patents are United
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`States Patent Nos. 5,800,460 (the “‘460 Patent”), 5,879,374 (the “‘374 Patent”), and
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`6,016,059 (the “‘059 Patent”). The six shock delivery patents address technology that
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`adjusts the waveform of a defibrillator’s shock based on results from an electrical test
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`that the defibrillator performs on the patient. The electrical test measures variances in
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`patient impedance that arise from differences in weight, body fat, and other factors. The
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`shock delivery patents are United States Patent Nos. 5,601,612 (the “‘612 Patent”),
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`5,607,454 (the “‘454 Patent”), 5,735,879 (the “‘879 Patent”), 5,749,905 (the “‘905
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`Patent”), 5,803,927 (the “‘927 Patent”), and 6,047,212 (the “‘212 Patent”). Philips
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`contends that Defibtech infringes each of the self-test and shock delivery patents.
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`Defibtech entered the automatic external defibrillator market in 2002. It admits to
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`studying Heartstream defibrillators and other products when designing its defibrillators,
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`but denies that it infringes any Philips patent.
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`ORDER – 2
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`Page 2 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 3 of 26
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`In the first step toward deciding Philips’ infringement allegations, the court must
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`now construe the meaning of the terms of the asserted patents.
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`III. ANALYSIS
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`Almost ten years ago, the Supreme Court in Markman v. Westview Instruments,
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`Inc. placed sole responsibility for construing patent claims on the court. 517 U.S. 370,
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`372 (1996). Subsequent authority established that the court construes claims purely as a
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`matter of law. Cybor Corp. v. FAS Tech., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998)
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`(applying de novo review to all claim construction issues, even “allegedly fact-based
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`questions”). Executing the Markman mandate requires a court to rank the importance of
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`various sources of evidence of claim term meaning and consider it accordingly.
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`Intrinsic evidence, which includes the patent and its prosecution history, is the
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`primary source from which to derive a claim’s meaning. Phillips v. AWH Corp., 415
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`F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). A patent is composed of three parts: (1) a
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`“written description,” an often lengthy exposition of the background of the invention, at
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`least one embodiment of the invention, and other written material that assists in
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`understanding how to practice the invention; (2) (in most cases) a set of drawings that
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`illustrates portions of the written description; and (3) the claims, which delimit the scope
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`of the invention. General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d
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`1272, 1274 (Fed. Cir. 1992). Together, these three components make up the patent’s
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`“specification.” Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1384
`1
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`(Fed. Cir. 1999); 35 U.S.C. § 112. The prosecution history exists independently of the
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`Although 35 U.S.C. § 112 includes the claims as part of a patent’s specification, many
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`courts and practitioners use the term “specification” to refer to all portions of a patent except
`the claims. In most cases, the context of the discussion reveals what portion of the specification
`is at issue.
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`ORDER – 3
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`Page 3 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 4 of 26
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`patent. It consists of the inventor’s application to the United States Patent and
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`Trademark Office (“PTO”) and all correspondence between the PTO and the inventor
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`documenting the invention’s progress from patent application to issued patent. Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
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`In its review of intrinsic evidence, the court should begin with the language of
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`both the asserted claim and other claims in the patent. Phillips, 415 F.3d at 1314; Biagro
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`Western Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1302 (Fed. Cir. 2005) (“It is
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`elementary that claim construction begins with, and remains focused on, the language of
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`the claims.”). The court’s task is to determine the “ordinary and customary meaning” of
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`the terms of a claim through the eyes of a person of ordinary skill in the art on the filing
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`date of the patent. Phillips, 415 F.3d at 1313 (quoting Vitronics, 90 F.3d at 1582).
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`The court must read claim language, however, in light of the remainder of the
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`specification. Id. at 1316 (“[T]he specification necessarily informs the proper
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`construction of the claims.”). The specification acts as a “concordance” for claim terms,
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`and is thus the best source beyond claim language for understanding claim terms. Id. at
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`1315. The inventor is free to use the specification to define claim terms as she wishes,
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`and the court must defer to an inventor’s definition, even if it is merely implicit in the
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`specification. Id. at 1316 (“[T]he inventor’s lexicography governs.”), 1320-21 (noting
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`that a court cannot ignore implicit definitions). The court should “rely heavily” on the
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`specification in interpreting claim terms. Id. at 1317. In doing so, however, it must walk
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`a tightrope between properly construing the claims in light of the written description and
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`the “cardinal sin” of improperly importing limitations from the written description into
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`the claims. Sci Med Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d
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`ORDER – 4
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`Page 4 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 5 of 26
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`1337, 1340 (Fed. Cir. 2001); Phillips, 415 F.3d at 1323 (citing Comark Communications,
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`Inc. v. Harris Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998)).
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`Although a patent’s prosecution history is also intrinsic evidence, it is “less useful
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`for claim construction purposes,” because it usually “lacks the clarity of the
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`specification.” Id. at 1317. The prosecution history is useful, however, in determining
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`when an inventor has disavowed certain interpretations of his or her claim language. Id.
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`Finally, the court can consider extrinsic evidence, “including expert and inventor
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`testimony, dictionaries, and learned treatises.” Id. (citing Markman v. Westview
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`Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995)). Extrinsic evidence is usually “less
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`reliable than the patent and its prosecution history” as a source for claim interpretation.
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`Id. at 1318. The court thus need not admit extrinsic evidence, but may do so in its
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`discretion if intrinsic evidence does not disclose the meaning of a claim term. Id. at
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`1319; Vitronics, 90 F.3d at 1583 (“[W]here the public record unambiguously describes
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`the scope of the patented invention, reliance on any extrinsic evidence is improper.”).
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`In this case, court declines to rely on the sole extrinsic evidence the parties have
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`put before it: dictionary definitions of the claim terms. For each disputed claim term,
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`the court has begun with a view of its ordinary meaning formed from the undisputed
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`portions of the parties’ proposed claim constructions. The court has then looked to the
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`intrinsic evidence to elucidate that meaning. In each of these claim terms, the intrinsic
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`evidence is sufficient to either confirm that the inventors used the term in its ordinary
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`sense or to reveal the precise departure from ordinary meaning that the inventors had in
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`mind. The court thus declines to discuss the dictionary definitions of these claim terms,
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`consistent with the Phillips court’s recognition that it is not necessary to do so. 415 F.3d
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`at 1318-1319.
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`ORDER – 5
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`Page 5 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 6 of 26
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`With this general framework in mind, the court turns to the ten claims-in-suit.
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`Seven terms are from the self-test patents. Three are from the shock delivery patents.
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`A.
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`Construing Terms in the Shock Delivery Patents
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`The six shock delivery patents share a common genealogy. All six originated in
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`the same abandoned patent application (Ser. No. 101,837). Four of them (the ‘612
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`Patent, the ‘879 Patent, the ‘905 Patent, and the ‘212 Patent) are continuation
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`applications or divisional applications from that application. This four-patent subgroup
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`shares a common written description. The other subgroup contains the two remaining
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`patents, which issued from a continuation-in-part of the original application. This
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`subgroup shares a written description that expressly incorporates the written description
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`of the other four shock delivery patents. When the court cites the written descriptions of
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`these patents, it will generally cite only a single patent from each subgroup.
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`1.
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`“Adjusting” means “modifying.”
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`The term “adjusting” appears in eight of the claims-in-suit, and in each, the
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`surrounding language strongly supports Defibtech’s argument that the term simply
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`means “modifying.” Philips proposes that the term means “correcting or modifying to
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`reflect actual [patient] conditions.” Inserting Philips’ definition into the claims-in-suit
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`demonstrates the flaws in its construction. For example, Claim 1 of the ‘612 patent
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`covers a method that includes monitoring a “patient-dependent electrical parameter” and
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`“adjusting a discharge parameter of a later phase of the multiphasic waveform as a
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`function of a value of the electrical parameter during an earlier phase.” The claim
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`language itself dictates precisely what type of “adjusting” the claim contemplates.
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`Philips’ construction is surplusage, as the claim language dictates waveform adjustment
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`according to a patient-dependant electrical parameter. Philips’ less specific “modifying
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`ORDER – 6
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`Page 6 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 7 of 26
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`to reflect actual [patient] conditions” language would read out or needlessly broaden the
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`specific language of the claim.
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`The same contextual analysis applies to the remaining claims that use “adjusting.”
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`Every “adjusting” claim contains specific language that informs the reader what type of
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`adjusting falls within the invention. Claim 15 of the ‘454 Patent discloses “adjusting the
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`title of the waveform based on the value of the monitored electrical parameter,” and
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`Claim 53 covers “adjusting a waveform parameter based on a value of the monitored
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`parameter.” Claims 1 and 13 of the ‘879 Patent address “adjusting a discharge
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`parameter based on the measured patient impedance” and “adjusting waveform tilt based
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`on a value of the monitored electrical parameter.” The remaining claims are similar in
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`that they unambiguously disclose the parameter that will dictate the necessary
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`“adjusting.” Philips’ proposed construction is inappropriate in light of this unvarying
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`pattern of using the term “adjusting” followed by specific instructions. The parties agree
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`that “adjusting” means “modifying,” but Philips insists that the term has qualifying
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`language built into it. This proposal conflicts with the claim language, which contains
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`its own qualifiers in every instance.
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`The court finds nothing within the remainder of the patents’ specifications that is
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`inconsistent with the meaning that the claim language dictates. Philips insists that a
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`primary feature of the inventions claimed in the shock delivery patents is adjusting the
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`shock waveform to reflect differing electrical parameters within patients. A review of
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`the written descriptions supports Philips’ assertion, e.g., ‘879 Patent at 2:2-7; ‘454 Patent
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`at 3:38-41, but the assertion is irrelevant. The language surrounding the term
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`“adjusting” in each claim serves the purpose of delimiting how the defibrillator adjusts
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`the waveform in response to those parameters. This is a case in which the patentee has
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`ORDER – 7
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`Page 7 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 8 of 26
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`not merely acted as his own lexicographer, but has done so in the language of the claims.
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`The court must defer to that lexicography, Digital Biometrics, Inc. v. Identix, Inc., 149
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`F.3d 1335, 1344 (Fed. Cir. 1998), under which “adjusting” means no more than
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`“modifying.”
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`2.
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`“Monitoring” means “measuring.”
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`The court’s resolution of the small difference between the parties’ interpretations
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`of “monitoring” presents a complicated question. The parties agree that “monitoring”
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`means “measuring.” Defibtech, however, contends that its proposed definition, “taking
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`more than one measurement over time,” properly reflects the patents’ disclosure of a
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`monitoring step that takes place over time. Philips argues that even a single
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`measurement qualifies as “monitoring.”
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`Defibtech’s argument finds some support in the claim language. Each time the
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`patents use “monitoring,” the accompanying language suggests that monitoring takes
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`place over an interval of time. Claim 1 of the ‘612 Patent refers to “monitoring a
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`patient-dependent electrical parameter during the discharging step,” and several other
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`claims use substantially identical language. ‘879 Patent Claim 13; ‘454 Patent Claims 1,
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`15, 53; ‘905 Patent Claims 1, 4, 9; ‘927 Patent Claims 1, 9, 11. Claim 16 of the ‘454
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`Patent discloses “an electrical parameter monitored during the discharge step.” The
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`language of the claims leaves no doubt that the “steps” they refer to are not single points
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`in time, but rather intervals of time. The most compelling evidence for this proposition
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`is that “monitoring” inevitably takes place “during” a step, suggesting that a step takes
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`place over a period of time, whereas “monitoring” that took place “at” a step would
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`Philips asserts that “monitoring” means “checking or measuring,” but never explains
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`what the term “checking” adds to its definition. The court finds “checking” to be redundant of
`“measuring.”
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`ORDER – 8
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`Page 8 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 9 of 26
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`suggest a step that is a single point in time. Moreover, the claimed steps “begin” and
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`“end” according to the language of the claims. E.g., ‘454 Patent Claims 53, 54. This
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`suggests that monitoring cannot be an instantaneous event, because intervals begin and
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`end, whereas instants do not.
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`Moreover, as Defibtech noted during oral argument, Philips used the term
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`“measuring” in other portions of the shock delivery specifications, including other
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`claims. For example, Claim 13 of the ‘879 Patent covers “monitoring a patient-
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`dependent electrical parameter during the discharging step,” whereas Claim 1 discloses
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`“measuring a patient impedance during the discharge step.” Defibtech argues that if
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`“monitoring” and “measuring” had the same meaning, Philips would have used the same
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`term consistently in the patents.
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`The court finds the claim language insufficient to carry Defibtech’s argument.
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`Although the use of “monitoring” in one claim and “measuring” in another raises an
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`inference that the terms have different meaning, that inference is not determinative.
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`Desper Prods., Inc. v. Qsound Labs, Inc., 157 F.3d 1325, 1337 n.3 (Fed. Cir. 1998). In
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`addition, comparing the “measuring” and “monitoring” claims reveals that both take
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`place “during the discharge step.” If both “measuring” and “monitoring” occur “during”
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`periods of time, there is little reason to assume that one term excludes single
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`measurements and one does not.
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`Fortunately, the written descriptions provide answers that the claim language does
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`not. Each description of the six shock delivery patents discloses an invention whose
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`preferred embodiment has three “aspects.” ‘879 Patent at 2:39-52. The first is a
`3
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`The ‘454 Patent and the ‘927 Patent disclose the three aspects by incorporating the
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`written description of the ‘879 Patent.
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`ORDER – 9
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`Page 9 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 10 of 26
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`defibrillator that delivers a shock with a biphasic waveform that has predetermined
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`values for the length of its two shock pulses. E.g., ‘879 Patent at 4:29-53. In this aspect,
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`no “measuring” or “monitoring” takes place. In the second aspect, the initial phase of
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`shock lasts for a minimum predetermined threshold time, but that time is extended if the
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`voltage has not dropped below a threshold voltage at the end of the threshold time. ‘879
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`Patent at 5:13-20. In the third aspect, the initial phase of shock ends at a predetermined
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`threshold time or at the time that the voltage drops below a threshold value, whichever
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`comes first. ‘879 Patent at 5:47-60.
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`The disclosure of the second and third aspects of the preferred embodiments
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`illuminates the meaning of “monitoring.” In the second aspect, there is no need to
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`measure a voltage until the end of the threshold time. If, however, the voltage has
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`dropped below a threshold at the end of the threshold time, the first phase of the shock
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`terminates, and no further measurements are necessary. In the third aspect, the
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`defibrillator necessarily measures voltage at least once before the threshold time, so that
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`it can determine whether to terminate the initial shock phase before the threshold time
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`expires. In either aspect, it is possible for a single measurement to suffice. Indeed, a
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`single measurement will suffice in every instance in which the first measurement reveals
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`a voltage below the threshold level.
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`The court ultimately adopts “measuring” as the definition of “monitoring”
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`because only this definition allows the patents to cover the invention’s preferred
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`embodiment. The court recognizes that it is not necessary that every claim cover the
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`preferred embodiment. In this case, however, unless Philips’ construction is correct,
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`four of the six shock delivery patents would contain no claims covering the preferred
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`embodiment. The asserted claims of the ‘612, ‘454, and ‘905 Patents use only the term
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`ORDER – 10
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`Page 10 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 11 of 26
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`“monitoring,” and never the term “measuring.” If “monitoring” excludes single
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`measurements, then none of the claims would cover the second and third aspects of the
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`preferred embodiment, both of which admit the possibility that a single measurement
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`would suffice. There is a heavy presumption against construing claims to read out a
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`preferred embodiment. Vitronics, 90 F.3d at 1583 (noting that such a construction is
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`“rarely, if ever, correct”).
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`In addition, because each of the possibilities requiring a single measurement
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`corresponds to a patient characteristic, Defibtech’s construction would not merely read
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`out the preferred embodiment, it would exclude an entire class of patients from an
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`invention whose purpose is to adjust shock delivery to fit any patient’s impedance
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`parameters. In the second aspect of the invention, the single measurement scenario
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`corresponds to a patient with low impedance. ‘879 Patent at 5:23-26. The single
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`measurement scenario in the third aspect also corresponds to a patient with low
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`impedance. ‘879 Patent at 5:57-60. The Patents thus teach that only a single
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`measurement in the first phase of the shock waveform is necessary for patients with
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`sufficiently low impedance. The court therefore cannot exclude single measurements
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`from the definition of “monitoring” without implicitly holding that the shock delivery
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`patents exclude low impedance patients. The court thus construes “monitoring” to mean
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`“measuring,” and to include single measurements.
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`3.
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`“Discharging a single capacitor” means “releasing energy from a
`single capacitor.”
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`Defibtech contends that the phrase “discharging a single capacitor” cannot have
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`its plain meaning (“releasing energy from a single capacitor”), but rather must mean:
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`delivering electrical energy from one capacitor to the electrodes and
`adjusting the shape of the waveform delivered to a patient in response to a
`patient-dependent electrical parameter measured during delivery of the
`waveform.
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`ORDER – 11
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`Page 11 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 12 of 26
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`To derive this highly specific definition from the generic claim language, Defibtech
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`turns to the written descriptions, which disclose that the primary advantage of the
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`claimed invention is its ability to deliver a shock that is tailored to the electrical
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`parameters of the patient. Because the capacitor discharge is the step that delivers the
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`shock to the patient, Defibtech contends that the term “discharging a single capacitor”
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`must be limited to the type of discharge that is the primary advantage of the invention.
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`Defibtech’s argument fails for at least two reasons. First, there is no requirement
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`that a patentee limit every claim to the primary feature of his or her invention. See
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`Liebel- Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 908 (Fed. Cir. 2004) (holding that
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`even where all embodiments in specification disclose a particular limitation, it is error to
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`limit claims unless specification contains a “clear disavowal” of other embodiments); see
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`also Phillips, 415 F.3d at 1327. Second, even if Defibtech correctly describes tailored
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`shock delivery to the patient as the purpose of the invention, the invention has other
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`purposes as well. It discloses, for example, that the invention can use discharged current
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`to detect improperly placed electrode leads without shocking a patient. ‘927 Patent at
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`7:53-57.
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`Lastly, the doctrine of claim differentiation compels the court to accept Philips’
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`construction. Under this doctrine, the court must construe an independent claim to avoid
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`nullifying claims that depend from it, unless there is compelling evidence for a nullifying
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`construction. Liebel-Flarsheim, 358 F.3d at 910 (“[T]he presence of a dependent claim
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`that adds a particular limitation raises a presumption that the limitation in question is not
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`found in the independent claim.”). “Discharging a single capacitor” appears only in
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`independent Claim 8 of the ‘927 Patent. Claim 9 depends from it, and contains
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`“monitoring” and “adjusting” limitations. If “discharging a single capacitor” has the
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`ORDER – 12
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`Page 12 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 13 of 26
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`meaning that Defibtech urges, then the additional limitations in Claim 9 are surplusage.
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`The limitations in Claim 9 reveal suggest that Claim 8 has broad scope. Nothing in the
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`remainder of the specification disavows that scope. The court thus construes
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`“discharging a single capacitor” to mean “releasing energy from a single capacitor.”
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`B.
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`Construing Terms in the Self-Test Patents
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`Two of the three self-test patents, the ‘460 Patent and the ‘374 Patent, share a
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`common written description. The ‘059 Patent issued from a separate application.
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`1.
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`In Some Claims, a “Test Signal” Is a Signal that Initiates a Test in the
`Defibrillator, Whereas In Other Claims It May Also Be A Signal Used
`to Perform Testing.
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`Philips contends that a “test signal” is a signal “associated with testing,” including
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`signals that initiate tests and those that perform tests. Defibtech seeks to limit the term
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`to signals that initiate tests. As the court explains below, Philips’ construction of the
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`term is correct, but the limitation that Defibtech seeks to impose exists in many of the
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`“test signal” claims. 4
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`Before explaining its construction, the court must specify which instances of “test
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`signal” it is construing. The ‘374 Patent and the ‘460 Patent claim a “test signal” in a
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`variety of contexts. The term sometimes appears in the phrase “test signal generator”
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`(‘374 Patent Claims 1, 2, 6, 21, 22, 41), and sometimes stands on its own in a set of
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`claims that the court will refer to as “bare” test signal claims. ‘374 Patent Claims 25, 26,
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`5
`42, 44, 65, 67-69; ‘460 Patent Claims 1, 3, 4. In response to the court’s order to choose
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`For the term “test signal” (and for the parties’ later dispute over the phrase “prior to any
`4
`attempted use”) the important issue is not precisely what the term means, but whether the claim
`in which it appears limits the term in the fashion one party proposes.
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`Several other patent claims use the term “test signal” (e.g. ‘374 Patent Claims 45-50),
`5
`but the parties have not asked the court to consider them. The court assumes that Philips has
`not asserted these claims in this action.
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`ORDER – 13
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`Page 13 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 14 of 26
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`ten claims for this first round of construction, the parties asserted the bare “test signal”
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`claims but not the “test signal generator” claims. There is no reason to construe these
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`terms separately, however, because the analysis underlying the claims is identical, and
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`because the court must assume, “unless otherwise compelled,” that the same claim term
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`used in the same patent “carries the same construed meaning.” Omega Eng’g, Inc. v.
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`Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003).
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`The specification discloses a preferred embodiment that consists of, inter alia,
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`two components. The first is a “system monitor” that sends signals to a test controller to
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`initiate tests, and the second is a controller or CPU that works in conjunction with other
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`6
`components to actually perform the tests. E.g., ‘374 Patent at 4:60-6:19 (describing
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`“system monitor”), 3:35-38, 6:19-13:48 (describing “controller” or “CPU”).
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`Unfortunately, the specification’s terminology regarding the signals that each component
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`generates is inconsistent. The written description of the system monitor sometimes
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`refers to the signals it sends to the CPU as “test signals” (e.g., ‘374 Patent at 4:60-67),
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`but at other times refers to “test initiation signals” it sends to the CPU. E.g., ‘374 Patent
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`at 3:51-53, 5:21-33, 6:18-20. In all such references, however, the description leaves no
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`doubt that the signal that the system monitor generates initiates other self-tests and does
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`not perform them.
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`The written description of the signals that the CPU uses to perform tests is
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`similarly inconsistent. In one instance, a signal that the CPU indirectly uses in
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`conducting tests is called a “test signal,” (e.g., ‘374 Patent at 8:56-9:3 (describing a “test
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`signal injector” to verify the function of various elements)), but in all other instances, the
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`The specification also notes the possibility that the system monitor and controller could
`6
`be combined in the same component. ‘374 Patent at 3:27-29.
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`ORDER – 14
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`Page 14 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 15 of 26
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`test signal has a more specific name that corresponds to a particular self-test. E.g., ‘374
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`Patent at 8:52 (“artifact test signal”), 9:10 (“test current signal”).
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`Despite these inconsistent uses of “test signal,” the claim language and the
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`written description combined reveal that several claims contain limits on the “test
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`signal.” In the bare “test signal” claims, all but two of the claims expressly disclose one
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`or more self-tests performed “in response” to the test signal or other stimuli. ‘374 Patent
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`Claims 42, 44, 65, 67-69; ‘460 Patent Claims 1, 3, 4. In these claims, therefore, the test
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`signal is a signal that initiates a test, not one that performs it. In the remaining two bare
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`“test signal” claims, the “test signal” is one that the “system monitor” generates, and is
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`thus also a signal for initiating a self-test. ‘374 Patent Claims 25, 26.
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`In all but one of the “test signal generator” claims, however, the claim language
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`does not compel the court to limit the test signal to one that initiates testing. Claim 1 of
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`the ‘374 Patent, for example, discloses a “test signal generator” and a “means for
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`operating [it] prior to any attempted use of the defibrillator.” The claim language
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`suggests that the “test signal generator” is the generator that sends signals used in
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`testing, and the “means for operating [it]” is another generator that sends signals to
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`initiate the claimed “test signal generator.” The written description supports this
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`interpretation, as it discloses a “signal generator” used to perform “ECG front end tests”
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`and a test signal generator that is different from the “system monitor” that generates
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`initiating test signals. ‘374 Patent at 8:19-55. It similarly reveals that other “test signal
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`generator” claims depending from Claim 1 use the term to refer to a generator that
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`performs various self-tests. ‘374 Patent Claim 2 (adding a “functionality tester” to the
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`test signal generator), Claim 6 (adding a “calibration verifier”), Claim 21 (adding a
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`“battery condition tester”). Claim 41 is identical to Claim 1 except that it discloses a
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`ORDER – 15
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`Page 15 of 26
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`Case 2:03-cv-01322-JLR Document 119 Filed 10/25/05 Page 16 of 26
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`“periodic” test signal generator, and thus it also uses “test signal” in the broad sense that
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`Philips advocates. In Claim 22, however, the “test signal generator” is limited to the
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`“system monitor” that the court has already discussed. Thus, the “test signal generator”
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`of Claim 22 generates only signals used to initiate testing.
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`To summarize, a “test signal” is a “signal associated with testing.” In several of
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`the asserted claims, however, additional claim language limits the term to a “signal that
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`initiates testing.” Those claims are all of the asserted bare “test signal” claims, as well
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`as Claim 22 of the ‘374 Patent.
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`2.
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`“Through conductors” means “through any electrically conductive
`material.”
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`The p