Koninklijke Philips Electronics NV v. Defibtech LLC, 397 F.Supp.2d 1257 (2005)
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`2005 Markman 2777379
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`Synopsis
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`Background: Owner of patents for portable defibrillator sued competitor for infringement.
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`Holdings: Construing claims, the District Court, Robart, J., held that:
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`1 “monitoring” of various parameters meant measuring parameters, including both measurements over time and
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`single measurements;
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`2 “test signal” was signal associated with testing;
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`3 requirement that test pulse be delivered “through conductors” meant that pulse had to be delivered through
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`electrically conductive material; and
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`4 requirement that device indicate defibrillator's “condition” meant that it had to indicate whether defibrillator
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`was capable of treating patient, and possibly other defibrillator statuses, but did not require indication of status
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`of defibrillator's electrodes.
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`Claims construed.
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`West Headnotes (22)
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`1
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`Patents
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`Questions of law or fact
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`Court construes patent claims purely as matter of law.
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`2
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`Patents
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`Operation and Effect of Claims in General
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`Patents
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`Rejection and Amendment of Claims
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`Intrinsic evidence, which includes patent and its prosecution history, is primary source from which to
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`derive patent claim's meaning.
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`3
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`Patents
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`State of the art
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`Patent-construing court's task is to determine ordinary and customary meaning of claim terms through
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`eyes of person of ordinary skill in the art on patent's filing date.
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`4
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`Patents
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`Specifications, Drawings, and Models
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`Patent claim language must be read in light of remainder of specification.
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` © 2011 Thomson Reuters. No claim to original U.S. Government Works.
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`1
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`1
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`LIFECOR454-1011
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`Koninklijke Philips Electronics NV v. Defibtech LLC, 397 F.Supp.2d 1257 (2005)
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`2005 Markman 2777379
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`5
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`Patents
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`Contemporaneous construction of inventor
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`Inventor is free to use patent specification to define claim terms as she wishes, and construing court must
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`defer to inventor's definition, even if it is merely implicit in specification.
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`6
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`Patents
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`Specification as limiting or enlarging claims
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`Patent-construing court must walk tightrope between properly construing claims in light of written
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`description and improperly importing limitations from written description into claims.
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`7
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`Patents
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`Rejection and Amendment of Claims
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`Prosecution history is useful, when construing patent claims, in determining when inventor has disavowed
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`certain interpretations of his or her claim language.
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`8
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`Patents
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`Extrinsic evidence in general
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`Patent-construing court need not admit extrinsic evidence, but may do so in its discretion if intrinsic
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`evidence does not disclose meaning of claim term.
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`9
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`Patents
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`Construction in general
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`“Adjusting” of various parameters, called for in patents for portable defibrillator, meant modification of
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`parameters.
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`10
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`Patents
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`Construction in general
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`“Monitoring” of various parameters, called for in patents for portable defibrillator, meant measuring
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`parameters, including both measurements over time and single measurements.
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`11
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`Patents
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`Reading limitations or elements into claims, or disregarding limitations or elements
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`There is heavy presumption against construing patent claims to read out preferred embodiment.
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`12
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`Patents
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`Construction in general
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`“Discharging single capacitor,” called for in patents for portable defibrillator, meant releasing energy
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`from single capacitor.
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`13
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`Patents
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`Reading limitations or elements into claims, or disregarding limitations or elements
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`There is no requirement that patentee limit every claim to invention's primary feature.
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`14
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`Patents
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`Construction of particular claims as affected by other claims
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` © 2011 Thomson Reuters. No claim to original U.S. Government Works.
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`2
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`2
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`Koninklijke Philips Electronics NV v. Defibtech LLC, 397 F.Supp.2d 1257 (2005)
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`2005 Markman 2777379
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`Under doctrine of “claim differentiation,” court must construe independent patent claim to avoid
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`nullifying claims that depend from it, unless there is compelling evidence for nullifying construction.
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`15
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`Patents
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`Construction in general
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`“Test signal,” called for in patents for portable defibrillator, was signal associated with testing; in some
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`claims it was limited to signal that initiated test in defibrillator, while in others it could also be signal
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`used to perform testing.
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`16
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`Patents
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`Construction of particular claims as affected by other claims
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`Court must assume, unless otherwise compelled, that same claim terms used in same patent carry same
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`construed meaning.
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`17
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`Patents
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`Limitations in general
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`Requirement in patent for portable defibrillator, that test pulse be delivered “through conductors,” meant
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`that pulse had to be delivered through electrically conductive material; claim was not limited to delivery
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`of pulse through patient electrode leads.
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`18
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`Patents
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`Limitations in general
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`Requirement in patent claims for portable defibrillator, that various self-tests occur “prior to any
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`attempted use of defibrillator,” meant that they had to occur at least prior to any attempt to use defibrillator
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`to treat patient, and possibly prior to other uses, depending on test in question.
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`19
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`Patents
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`Construction in general
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`Requirement in patent claims for portable defibrillator, that device indicate “an operating status,” meant
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`that it had to provide visible or audible alert of whether defibrillator was capable of treating patient and
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`possibly other indications of operational status.
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`20
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`Patents
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`Construction in general
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`Requirement in patent claims for portable defibrillator, that device indicate defibrillator's “condition,”
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`meant that it had to indicate whether defibrillator was capable of treating patient, and possibly other
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`defibrillator statuses, but did not require indication of status of defibrillator's electrodes.
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`21
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`Patents
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`Original utility
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`5,097,830. Cited as Prior Art.
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`22
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`Patents
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`Original utility
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`5,601,612, 5,607,454, 5,735,879, 5,749,905, 5,800,460, 5,803,927, 5,879,374, 6,016,059, 6,047,212.
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`Construed.
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` © 2011 Thomson Reuters. No claim to original U.S. Government Works.
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`3
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`3
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`Koninklijke Philips Electronics NV v. Defibtech LLC, 397 F.Supp.2d 1257 (2005)
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`2005 Markman 2777379
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`Attorneys and Law Firms
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`*1259 Adam R. Steinert, Eugene L. Chang, Gary Serbin, John M. Dimatteo, Kimberly (May) S. Rosen, Spyros
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`S. Loukakos, Steven H. Reisberg, Willkie Farr & Gallagher, New York, NY, Bradley S. Keller, Keith David
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`Petrak, Byrnes & Keller, Seattle, WA, for Plaintiffs.
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`Alexas D. Skucas, Khue Van Hoang, Steven Todd Snyder, King & Spalding, New York, NY, J. Thomas
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`Richardson, Melinda M. Riddle, Stephen P. Vanderhoef, Cairncross & Hempelmann, Seattle, WA, for Defendants.
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`Opinion
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`ROBART, District Judge.
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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 claim terms at issue in this patent
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`infringement action. At the court's direction, the parties jointly chose a set of ten claim terms to comprise the “first
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`round” of terms for the court to construe. The court has reviewed the parties' briefing and supporting materials,
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`and has heard oral argument from the parties at an October 11, 2005 Markman hearing. This order memorializes
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`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 LLC (“Defibtech”) manufacture
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`portable defibrillators. The devices at issue are automatic external defibrillators that people without medical
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`training can use in emergencies. Because their users are presumptively *1260 untrained, the defibrillators must
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`be “smart” enough to deliver appropriate shocks to patients with a wide range of body characteristics without input
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`from the user. Moreover, because portable defibrillators are rarely used, they must be able to remain functional
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`through long periods of inactivity, and to signal any malfunctions to users. Heartstream, Inc. (“Heartstream”)
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`began developing defibrillators with these characteristics in the early 1990s. Heartstream is now a wholly-owned
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`division of Philips.
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`Philips (or Heartstream) has been selling various portable defibrillators since 1996, and has obtained at least
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`thirteen patents covering its technology. The court has stayed consideration of four of those patents. The nine
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`remaining patents cover “shock 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 States Patent Nos. 5,800,460
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`(the “ '460 Patent”), 5,879,374 (the “ '374 Patent”), and 6,016,059 (the “ '059 Patent”). The six shock delivery
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`patents address technology that adjusts the waveform of a defibrillator's shock based on results from an electrical
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`test that the defibrillator performs on the patient. The electrical test measures variances in patient impedance that
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`arise from differences in weight, body fat, and other factors. The shock delivery patents are United States Patent
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`Nos. 5,601,612 (the “ '612 Patent”), 5,607,454 (the “ '454 Patent”), 5,735,879 (the “ '879 Patent”), 5,749,905 (the
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`“ '905 Patent”), 5,803,927 (the “ '927 Patent”), and 6,047,212 (the “ '212 Patent”). Philips contends that Defibtech
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`infringes each of the self-test and shock delivery patents.
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` © 2011 Thomson Reuters. No claim to original U.S. Government Works.
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`4
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`Koninklijke Philips Electronics NV v. Defibtech LLC, 397 F.Supp.2d 1257 (2005)
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`2005 Markman 2777379
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`Defibtech entered the automatic external defibrillator market in 2002. It admits to studying Heartstream
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`defibrillators and other products when designing its defibrillators, but denies that it infringes any Philips patent.
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`In the first step toward deciding Philips' infringement allegations, the court must now construe the meaning of
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`the terms of the asserted patents.
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`III. ANALYSIS
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`1 Almost ten years ago, the Supreme Court in Markman v. Westview Instruments, Inc. placed sole responsibility
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`for construing patent claims on the court. 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Subsequent
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`authority established that the court construes claims purely as a matter of law. Cybor Corp. v. FAS Tech., Inc., 138
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`F.3d 1448, 1456 (Fed.Cir.1998) (applying de novo review to all claim construction issues, even “allegedly fact-
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`based questions”). Executing the Markman mandate requires a court to rank the importance of various sources of
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`evidence of claim term meaning and consider it accordingly.
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`2 Intrinsic evidence, which includes the patent and its prosecution history, is the primary source from which
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`to derive a claim's meaning. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005) (en banc). A patent is
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`composed of three parts: (1) a “written description,” an often lengthy exposition of the background of the invention,
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`at least one embodiment of the invention, and other written material that assists in understanding how to practice
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`the invention; (2) (in most cases) a set of drawings that illustrates portions of the written description; and (3) the
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`claims, which delimit the scope of the invention. General Foods Corp. v. Studiengesellschaft Kohle mbH, 972
`F.2d 1272, 1274 (Fed.Cir.1992). Together, these three components make up the patent's “specification.” 1 Atmel
`Corp. v. Information *1261 Storage Devices, Inc., 198 F.3d 1374, 1384 (Fed.Cir.1999); 35 U.S.C. § 112. The
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`prosecution history exists independently of the patent. It consists of the inventor's application to the United States
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`Patent and Trademark Office (“PTO”) and all correspondence between the PTO and the inventor documenting
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`the invention's progress from patent application to issued patent. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
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`1576, 1582 (Fed.Cir.1996).
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`3 In its review of intrinsic evidence, the court should begin with the language of both the asserted claim and
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`other claims in the patent. Phillips, 415 F.3d at 1314; Biagro Western Sales, Inc. v. Grow More, Inc., 423 F.3d
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`1296, 1302 (Fed.Cir.2005) (“It is elementary that claim construction begins with, and remains focused on, the
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`language of the claims.”). The court's task is to determine the “ordinary and customary meaning” of the terms of
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`a claim through the eyes of a person of ordinary skill in the art on the filing date of the patent. Phillips, 415 F.3d
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`at 1313 (quoting Vitronics, 90 F.3d at 1582).
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`4 5 6 The court must read claim language, however, in light of the remainder of the specification. Id. at
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`1316 (“[T]he specification necessarily informs the proper construction of the claims.”). The specification acts
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`as a “concordance” for claim terms, and is thus the best source beyond claim language for understanding claim
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`terms. Id. at 1315. The inventor is free to use the specification to define claim terms as she wishes, and the
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`court must defer to an inventor's definition, even if it is merely implicit in the specification. Id. at 1316 (“[T]he
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`inventor's lexicography governs.”), 1320–21 (noting that a court cannot ignore implicit definitions). The court
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`should “rely heavily” on the specification in interpreting claim terms. Id. at 1317. In doing so, however, it must
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`walk a tightrope between properly construing the claims in light of the written description and the “cardinal
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`sin” of improperly importing limitations from the written description into the claims. SciMed Life Sys., Inc. v.
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`Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed.Cir.2001); Phillips, 415 F.3d at 1323 (citing
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`Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186–87 (Fed.Cir.1998)).
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` © 2011 Thomson Reuters. No claim to original U.S. Government Works.
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`Koninklijke Philips Electronics NV v. Defibtech LLC, 397 F.Supp.2d 1257 (2005)
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`2005 Markman 2777379
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`7 Although a patent's prosecution history is also intrinsic evidence, it is “less useful for claim construction
`purposes,” because it usually “lacks the clarity of the specification.” Id. at 1317. The prosecution history is useful,
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`however, in determining when an inventor has disavowed certain interpretations of his or her claim language. Id.
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`8 Finally, the court can consider extrinsic evidence, “including expert and inventor testimony, dictionaries, and
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`learned treatises.” Id. (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed.Cir.1995)). Extrinsic
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`evidence is usually “less 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 discretion if intrinsic evidence
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`does not disclose the meaning of a claim term. Id. at 1319; Vitronics, 90 F.3d at 1583 (“[W]here the public record
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`unambiguously describes 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 put before it: dictionary definitions
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`of the claim terms. For each disputed claim *1262 term, the court has begun with a view of its ordinary meaning
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`formed from the undisputed portions of the parties' proposed claim constructions. The court has then looked to
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`the intrinsic evidence to elucidate that meaning. In each of these claim terms, the intrinsic evidence is sufficient to
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`either confirm that the inventors used the term in its ordinary sense or to reveal the precise departure from ordinary
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`meaning that the inventors had in mind. The court thus declines to discuss the dictionary definitions of these claim
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`terms, consistent with the Phillips court's recognition that it is not necessary to do so. 415 F.3d at 1318–1319.
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`With this general framework in mind, the court turns to the ten claims-in-suit. Seven terms are from the self-test
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`patents. Three are from the shock delivery patents.
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`A. Construing Terms in the Shock Delivery Patents
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`The six shock delivery patents share a common genealogy. All six originated in the same abandoned patent
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`application (Ser. No. 101,837). Four of them (the '612 Patent, the '879 Patent, the '905 Patent, and the '212
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`Patent) are continuation 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 patents, which issued
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`from a continuation-in-part of the original application. This subgroup shares a written description that expressly
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`incorporates the written description of the other four shock delivery patents. When the court cites the written
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`descriptions of these patents, it will generally cite only a single patent from each subgroup.
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`1. “Adjusting” means “modifying.”
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`9 The term “adjusting” appears in eight of the claims-in-suit, and in each, the surrounding language strongly
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`supports Defibtech's argument that the term simply means “modifying.” Philips proposes that the term means
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`“correcting or modifying to reflect actual [patient] conditions.” Inserting Philips' definition into the claims-in-
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`suit demonstrates the flaws in its construction. For example, Claim 1 of the '612 patent covers a method that
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`includes monitoring a “patient-dependent electrical parameter” and “adjusting a discharge parameter of a later
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`phase of the multiphasic waveform as a function of a value of the electrical parameter during an earlier phase.”
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`The claim language itself dictates precisely what type of “adjusting” the claim contemplates. Philips' construction
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`is surplusage, as the claim language dictates waveform adjustment according to a patient-dependant electrical
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`parameter. Philips' less specific “modifying to reflect actual [patient] conditions” language would read out or
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`needlessly broaden the specific language of the claim.
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`The same contextual analysis applies to the remaining claims that use “adjusting.” Every “adjusting” claim
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`contains specific language that informs the reader what type of adjusting falls within the invention. Claim 15 of the
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`'454 Patent discloses “adjusting the title of the waveform based on the value of the monitored electrical parameter,”
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`and Claim 53 covers “adjusting a waveform parameter based on a value of the monitored parameter.” Claims 1
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`and 13 of the '879 Patent address “adjusting a discharge parameter based on the measured patient impedance” and
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`“adjusting waveform tilt based on a value of the monitored electrical parameter.” The remaining claims are similar
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` © 2011 Thomson Reuters. No claim to original U.S. Government Works.
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`6
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`Koninklijke Philips Electronics NV v. Defibtech LLC, 397 F.Supp.2d 1257 (2005)
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`2005 Markman 2777379
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`in that they unambiguously disclose the parameter that will dictate the necessary “adjusting.” Philips' proposed
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`construction is inappropriate in light of this unvarying pattern of using the term “adjusting” followed by specific
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`instructions. The parties agree that “adjusting” means “modifying,” but Philips insists that the term has qualifying
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`*1263 language built into it. This proposal conflicts with the claim language, which contains its own qualifiers
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`in every instance.
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`The court finds nothing within the remainder of the patents' specifications that is inconsistent with the meaning that
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`the claim language dictates. Philips insists that a primary feature of the inventions claimed in the shock delivery
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`patents is adjusting the shock waveform to reflect differing electrical parameters within patients. A review of the
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`written descriptions supports Philips' assertion, e.g., '879 Patent at 2:2–7; '454 Patent at 3:38–41, but the assertion
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`is irrelevant. The language surrounding the term “adjusting” in each claim serves the purpose of delimiting how
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`the defibrillator adjusts the waveform in response to those parameters. This is a case in which the patentee has
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`not merely acted as his own lexicographer, but has done so in the language of the claims. The court must defer
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`to that lexicography, Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed.Cir.1998), under which
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`“adjusting” means no more than “modifying.”
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`2. “Monitoring” means “measuring.”
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`10 The court's resolution of the small difference between the parties' interpretations of “monitoring” presents a
`complicated question. The parties agree that “monitoring” means “measuring.” 2 Defibtech, however, contends
`that its proposed definition, “taking more than one measurement over time,” properly reflects the patents'
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`disclosure of a monitoring step that takes place over time. Philips argues that even a single measurement qualifies
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`as “monitoring.”
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`Defibtech's argument finds some support in the claim language. Each time the patents use “monitoring,” the
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`accompanying language suggests that monitoring takes place over an interval of time. Claim 1 of the '612 Patent
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`refers to “monitoring a 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, 15, 53; '905 Patent Claims
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`1, 4, 9; '927 Patent Claims 1, 9, 11. Claim 16 of the '454 Patent discloses “an electrical parameter monitored during
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`the discharge step.” The language of the claims leaves no doubt that the “steps” they refer to are not single points in
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`time, but rather intervals of time. The most compelling evidence for this proposition is that “monitoring” inevitably
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`takes place “during” a step, suggesting that a step takes place over a period of time, whereas “monitoring” that
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`took place “at” a step would suggest a step that is a single point in time. Moreover, the claimed steps “begin”
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`and “end” according to the language of the claims. E.g., '454 Patent Claims 53, 54. This suggests that monitoring
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`cannot be an instantaneous event, because intervals begin and end, whereas instants do not.
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`Moreover, as Defibtech noted during oral argument, Philips used the term “measuring” in other portions of the
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`shock delivery specifications, including other claims. For example, Claim 13 of the '879 Patent covers “monitoring
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`a patient-dependent electrical parameter during the discharging step,” whereas Claim 1 discloses “measuring a
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`patient impedance during the discharge step.” Defibtech argues that if “monitoring” and “measuring” had the
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`same meaning, Philips would have used the same term consistently in the patents.
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`*1264 The court finds the claim language insufficient to carry Defibtech's argument. Although the use of
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`“monitoring” in one claim and “measuring” in another raises an inference that the terms have different meaning,
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`that inference is not determinative. Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1337 n. 3
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`(Fed.Cir.1998). In addition, comparing the “measuring” and “monitoring” claims reveals that both take place
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`“during the discharge step.” If both “measuring” and “monitoring” occur “during” periods of time, there is little
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`reason to assume that one term excludes single measurements and one does not.
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`Fortunately, the written descriptions provide answers that the claim language does not. Each description of the
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`six shock delivery patents discloses an invention whose preferred embodiment has three “aspects.” '879 Patent at
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` © 2011 Thomson Reuters. No claim to original U.S. Government Works.
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`7
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`Koninklijke Philips Electronics NV v. Defibtech LLC, 397 F.Supp.2d 1257 (2005)
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`2005 Markman 2777379
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`2:39–52. 3 The first is a defibrillator that delivers a shock with a biphasic waveform that has predetermined values
`for the length of its two shock pulses. E.g., '879 Patent at 4:29–53. In this aspect, no “measuring” or “monitoring”
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`takes place. In the second aspect, the initial phase of shock lasts for a minimum predetermined threshold time, but
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`that time is extended if the voltage has not dropped below a threshold voltage at the end of the threshold time.
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`'879 Patent at 5:13–20. In the third aspect, the initial phase of shock ends at a predetermined threshold time or at
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`the time that the voltage drops below a threshold value, whichever comes first. '879 Patent at 5:47–60.
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`The disclosure of the second and third aspects of the preferred embodiments illuminates the meaning of
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`“monitoring.” In the second aspect, there is no need to measure a voltage until the end of the threshold time. If,
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`however, the voltage has 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 defibrillator necessarily measures
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`voltage at least once before the threshold time, so that it can determine whether to terminate the initial shock
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`phase before the threshold time expires. In either aspect, it is possible for a single measurement to suffice. Indeed,
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`a single measurement will suffice in every instance in which the first measurement reveals a voltage below the
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`threshold level.
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`11 The court ultimately adopts “measuring” as the definition of “monitoring” because only this definition allows
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`the patents to cover the invention's preferred embodiment. The court recognizes that it is not necessary that every
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`claim cover the preferred embodiment. In this case, however, unless Philips' construction is correct, four of the
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`six shock delivery patents would contain no claims covering the preferred embodiment. The asserted claims of
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`the '612, '454, and '905 Patents use only the term “monitoring,” and never the term “measuring.” If “monitoring”
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`excludes single measurements, then none of the claims would cover the second and third aspects of the preferred
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`embodiment, both of which admit the possibility that a single measurement would suffice. There is a heavy
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`presumption against construing claims to read out a preferred embodiment. Vitronics, 90 F.3d at 1583 (noting that
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`such a construction is “rarely, if ever, correct”).
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`In addition, because each of the possibilities requiring a single measurement corresponds to a patient characteristic,
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`Defibtech's construction would not merely read *1265 out the preferred embodiment, it would exclude an entire
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`class of patients from an 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 corresponds to a patient with
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`low impedance. '879 Patent at 5:23–26. The single measurement scenario in the third aspect also corresponds to a
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`patient with low impedance. '879 Patent at 5:57–60. The Patents thus teach that only a single measurement in the
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`first phase of the shock waveform is necessary for patients with sufficiently low impedance. The court therefore
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`cannot exclude single measurements from the definition of “monitoring” without implicitly holding that the shock
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`delivery patents exclude low impedance patients. The court thus construes “monitoring” to mean “measuring,”
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`and to include single measurements.
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`3. “Discharging a single capacitor” means “releasing energy from a single capacitor.”
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`12 Defibtech contends that the phrase “discharging a single capacitor” cannot have its plain meaning (“releasing
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`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
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`delivered to a patient in response to a patient-dependent electrical parameter measured during delivery of the
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`waveform.
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`To derive this highly specific definition from the generic claim language, Defibtech turns to the written
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`descriptions, which disclose that the primary advantage of the claimed invention is its ability to deliver a shock
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`that is tailored to the electrical parameters of the patient. Because the capacitor discharge is the step that delivers
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`the shock to the patient, Defibtech contends that the term “discharging a single capacitor” must be limited to the
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`type of discharge that is the primary advantage of the invention.
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` © 2011 Thomson Reuters. No claim to original U.S. Government Works.
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`8
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`8
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`Koninklijke Philips Electronics NV v. Defibtech LLC, 397 F.Supp.2d 1257 (2005)
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`2005 Markman 2777379
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`13 Defibtech's argument fails for at least two reasons. First, there is no requirement that a patentee limit every
`claim to the primary feature of his or her invention. See Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 908
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`(Fed.Cir.2004) (holding that even where all embodiments in specification disclose a particular limitation, it is error
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`to limit claims unless specification contains a “clear disavowal” of other embodiments); see also Phillips, 415
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`F.3d at 1327. Second, even if Defibtech correctly describes tailored shock delivery to the patient as the purpose
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`of the invention, the invention has other purposes as well. It discloses, for example, that the invention can use
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`discharged current to detect improperly placed electrode leads without shocking a patient. '927 Patent at 7:53–57.
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`14 Lastly, the doctrine of claim differentiation compels the court to accept Philips' construction. Under this
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`doctrine, the court must construe an independent claim to avoid nullifying claims that depend from it, unless there
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`is compelling evidence for a nullifying construction. Liebel–Flarsheim, 358 F.3d at 910 (“[T]he presence of a
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`dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found
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`in the independent claim.”). “Discharging a single capacitor” appears only in independent Claim 8 of the '927
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`Patent. Claim 9 depends from it, and contains “monitoring” and “adjusting” limitations. If “discharging a single
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`capacitor” has the meaning that Defibtech urges, then the additional limitations in Claim 9 are surplusage. The
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`limitations in Claim 9 reveal suggest that Claim 8 has broad scope. Nothing in the remainder of the specification
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`disavows that scope. The court thus construes “discharging a single capacitor” *1266 to mean “releasing energy
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`from a single capacitor.”
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`B. 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 common written description. The
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`'059 Patent issued from a separate application.
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`1. In Some Claims, a “Test Signal” Is a Signal that Initiates a Test in the Defibrillator, Whereas In Other
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`Claims It May Also Be A Signal Used to Perform Testing.
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`15 Philips contends that a “test signal” is a signal “associated with testing,” including signals that initiate tests
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`and those that perform tests. Defibtech seeks to limit the term to signals that initiate tests. As the court explains
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`below, Philips' construction of the term is correct, but the limitation that Defibtech seeks to impose exists in many
`of the “test signal” claims. 4
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`16 Before explaining its construction, the court must specify which instances of “test signal” it is construing.
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`The '374 Patent and the '460 Patent claim a “test signal” in a variety of contexts. The term sometimes appears in
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`the phrase “test signal generator” ('374 Patent Claims 1, 2, 6, 21, 22, 41), and sometimes stands on its own in a set
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`of claims that the court will refer to as “bare” test signal claims. '374 Patent Claims 25, 26, 42, 44, 65, 67–69; '460
`Patent Claims 1, 3, 4. 5 In response to the court's order to choose ten claims for this first round of construction,
`the parties asserted the bare “test signal” claims but not the “test signal generator” claims. There is no reason to
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`construe these terms separately, however, because the analysis underlying the claims is identical, and because the
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`court must assume, “unless otherwise compelled,” that the same claim term used in the same patent “carries the
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`same construed meaning.” Omega Eng'g, Inc. v. 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, two components. The first is a
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`“system monitor” that sends signals to a test controller to initiate tests, and the second is a controller or CPU
`that works in conjunction with other components to actually perform the tests. 6 E.g., '374 Patent at 4:60–
`6:19 (describing “system monitor”), 3:35–38, 6:19–13:48 (describing “controller” or “CPU”). Unfortunately,
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`the specification's terminology regarding the signals that each component generates is inconsistent. The written
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`description of the system monitor sometimes refers to the signals it sends to the CPU as “test signals” (e.g., '374
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`Patent at 4:60–67), but at other times refers to “test initiation signals” it sends