## United States Court of Appeals for the Federal Circuit

05-1142, -1161, -1162, -1163 THE MASSACHUSETTS INSTITUTE OF TECHNOLOGY and ELECTRONICS FOR IMAGING, INC., Plaintiffs-Appellants,

v. ABACUS SOFTWARE, Defendant, and COREL CORP. and COREL INC., Defendants-Cross Appellants, and MICROSOFT CORPORATION, Defendant-Cross Appellant, and ROXIO, INC. and MGI SOFTWARE, INC., Defendants-Cross Appellants.

William C. Rooklidge , Howrey LLP, of Irvine, Calif ornia, argued for plaintiffsappellants. With him on the brief was Russell B. Hill . Of counsel on the brief was Tom Crunk, of Los Angeles, California. Jeffrey D. Sanok , Crowell & Moring LLP, of Washington, DC, argued for defendants-cross appellants Corel Corp. and Co rel Inc. With him on the brief was Richard McMillan, Jr. Of counsel on the brief was Dennis R. Gallagher , of Irvine, California. Roy W. Hardin , Locke Liddell & Sapp, LLP, of Dallas, Texas, argued for defendant-cross appellant Microsoft Corporation. With him on the brief was M. Scott Fuller . Of counsel on the br ief was Isabella E. Fu , Microsoft Corporation, of Redmond, Washington.-2-

David P. Enzminger , O’Melveny & Myers LLP, of Los Angeles, California, argued for defendants-cross appellants Ro xio, Inc. and MGI Software, Inc. With him on the brief was Ryan K. Yagura

. Appealed from: United States District C ourt for the Eastern District of Texas Judge David J. Folsom

## United States Court of Appeals for the Federal Circuit

05-1142, -1161, -1162, -1163 THE MASSACHUSETTS INSTITUTE OF TECHNOLOGY and ELECTRONICS FOR IMAGING, INC., Plaintiffs-Appellants,

v.

ABACUS SOFTWARE, Defendant, and COREL CORP. and COREL INC., Defendants-Cross Appellants, and MICROSOFT CORPORATION, Defendant-Cross Appellant, and ROXIO, INC. and MGI SOFTWARE, INC., Defendants-Cross Appellants.

___________________________ DECIDED: September 13, 2006

___________________________ Before MICHEL, Chief Judge , FRIEDMAN, Senior Circuit Judge , and DYK, Circuit Judge

.Opinion for the court filed by Circuit Judge DYK. Dissenting opinion filed by Chief Judge MICHEL. DYK, Circuit Judge. Massachusetts Institute of Technology (“MIT”) and Electronics for Imaging, Inc. (“EFI”) appeal from the stipulat ed final judgment of noninfringem ent of the United States District Court for the Eastern District of Texas. MIT and EFI urge that the district court’s claim construction (on which the stipulat ed judgment of non-infr ingement was based) was erroneous. Appellants also urge that the district court’ s order granting Microsoft’s motion to exclude Windows as an infringing product was erroneous. We vacate the grant of summary judgment and remand for fu rther proceedings because we hold that the district court erred in its construction of “aesthetic correction circuitry,” and erred in excluding Windows as an infringing product. We decline to address claim construction issues not implicated by t he judgment. We dismiss the cross-appeals since the crossappeals, if successful, would not expand the scope of the judgment. We decline to reach the question whether the district c ourt properly denied the parties’ motions for summary judgment on the marking statute issues since the district court has not finally decided whether the marking st atute bars the claims. We dismiss as moot the appeals insofar as they arise from or ders that were granted in favo r of Fry’s Electronics, Inc. (“Fry’s”) and Arcsoft, Inc. (“Arcsoft”) because both those parties have been voluntarily dismissed from this action. BACKGROUND U.S. Patent No. 4,500, 919 (the “’919 patent”) discloses a color processing system for producing copies of color origi nals. The invention discloses “color reproduction process[es] which use[ ] a small num ber of colorants, us ually three or four,

05-1142, -1161, -1162, -1163 2in various mixtures, more or less to match the colors of the original.” ‘919 patent, col. 1, ll. 22-25. It is designed to address a problem common to conventional color editing systems--namely, that “the exac t combination of colorants r equired for the match is not related, in any simple way, to measurem ents which can be made on the original.” Id. col. 1, ll. 32-36. The invention performs three basic steps: (a) scanning a color image; (b) displaying and interactively editing the scanned image; and (c) accurately reproducing the displayed image. Claim 1 of the ‘919 patent, the only claim at issue in this appeal, describes the three steps as follows: 1. A system for reproducing a color orig inal in a medium using a selected multiplicity of reproduction colorants, the system comprising in serial order: a. a scanner for producing from said colo r original a set of three tristimulus appearance signals dependent on the colors in said original; b. display means connected to the scanner for receiving the appearance signals and aesthetic correction circuitry for interactively introducing aesthetica lly desired alterations into said appearance signals to produce modified appearance signals; and c. colorant selection mechanism for receiving said modified appearance signals and for selecting corresponding reproduction signals representing values of sa id reproducing colorants to produce in said medium a colorimetrically-matched reproduction. Id. , col. 15, ll. 31-47 (emphas es added). The pertinent claim construction dispute involves the emphasized language. In step (a) of the disclosed embodimen t, “[an] image is scanned in [by the scanner] . . . and stored in terms of appearanc e values, for example RGB [“Red Green Blue”].” Id. , col. 3, ll. 42-44. These “appearanc e values” are the “appearance signals” referred to in claim 1(a). In step (b), the appearance signals are sent to a TV or other “display means,” and “[t]he image is displayed on [the display means].” Id. , col. 3, ll. 44-46. The image

05-1142, -1161, -1162, -1163 3“is a colorimetric match for the final reproduction, and can be used to judge its appearance.” Id. , col. 3, ll. 53-54. An operator “manipulates t he TV image interactively in terms of appearance values, introducing aesthetic corrections and such other changes as desired.” Id. , col. 3, ll. 59-63. In the language of claim 1(b), “aesthetic correction circuitry” allows these “aesthetically desired al terations” to be “introduce[d] into [the] appearance signals to produce modified signals.” In step (c), the final step, the “color ant selection mechanism” (“CSM”) receives the “modified appearance signals” and calculates “[i]nk density images, as required for a colorimetric match with t he corrected images....” Id. , col. 4, ll. 12-14. Thus, as claim 1 recites, the CSM “select[s] corresponding r eproduction signals representing values [of colorants] to produce . . . a colorimetric ally-matched reproduction.” The “computed ink density images are used . . . to control the amount of colorant delivered to the final page at each point.” Id. , col. 4, ll. 15-21. MIT, the assignee of the ‘919 patent, granted an exclusive license to EFI. Plaintiffs MIT and EFI filed an original comp laint on December 28, 2001, alleging that 92 defendants directly and contribut orily infringed and induced in fringement of the ‘919 patent. On April 25, 2002, shortly before the ‘ 919 patent expired, plaintiffs filed an amended complaint, asserting infringem ent against a total of 214 defendants. On August 23, 2002, the district court issued a docket control order (“DCO”) that required MIT to make preliminary infringement content ions, including a list of so-called “Accused Instrumentalities” (infringing products) by September 3, 2002. MIT served its preliminary infringement c ontentions on August 29, 2002. The Accused Instrumentalities included various types of image editing software, computer systems,

05-1142, -1161, -1162, -1163 4digital cameras, scanners, and color reproduc tion systems. MIT did not list Windows as an Accused Instrumentality but stated that it believed t hat Microsoft Windows infringed and would “seek related discovery.” J.A. at 4497. In the course of litigation, plaintiffs settled with some defendants and dismissed their claims against others, until only four remained: Microsoft, Corel, Rox i o, and MGI Software. Following a Markman hearing, a magistrate judge issued a “Report and Recommendation” on claim construction on July 3, 2003, construing various terms in claim 1. The district court issued a cl aim construction order largely adopting the magistrate’s recommendations on September 15, 2003. Three claim terms are relevant to this appeal: “scanner,” “colorant select ion mechanism,” and “aesthetic correction circuitry.” The court held that the term “scanner” is not a means-plus-func tion limitation. The district court concluded, however, that the scanner includ es two limitations: first, it must have “relative movement between the scanning element and the object being scanned,” and second, the “color original” that the scanner scans must be “placed on or in close proximity to the scanner.” The court construed the term “colorant se lection mechanism” as a means-plusfunction limitation, and held t hat the recited functions are “receiving said modified appearance signals” and “selecting correspondi ng reproduction signals representing values of said reproduction co lorants to produce in said medium a colorimetricallymatched reproduction.” The court concluded t hat the structure t hat performs these functions is the components of the “ink correction module (ICM).”

05-1142, -1161, -1162, -1163 5Finally, the court held that “aesthetic corre ction circuitry” is a means-plus-function limitation, that the recited f unction is “introducing aesthetica lly desired alterations into said appearance signals to produce modi fied appearance signals,” and that the structures that perform this function are t he five components that comprise the Color Translation Module (“CTM”). Following the claim construction ruling, t he district court issued two orders that are pertinent to this appeal. First, on Sept ember 10, 2004, the di strict court granted Microsoft’s motion to exclude Windows as an accused produc t on the ground that Windows had not been listed as an Accused In strumentality when MIT submitted its preliminary infringement content ions prior to the Markman hearing. Second, on September 29, 2004, the distri ct court denied both sides’ motions for summary judgment regarding MIT’s compliance with the marking stat ute, 35 U.S.C. § 287, which permits damages only when the in fringing articles are marked or the infringer is on notice of infringement. On November 10, 2004, the parties “stipulat e[d] to entry of final judgment of noninfringment of [the ‘919 patent] based on the Court’ s claim construction.” J.A. at 1. The parties also “stipulate[d] to the di smissal without prejudi ce of Defendants’ counterclaims” of invalidity and unenforceabilit y. Based on these stipulations, the district court entered a final judgment of non-infr ingement and dismissed the defendants’ counterclaims on No vember 12, 2004. The sti pulated judgment is thus based entirely on the claim construction issues decided adversely to the plaintiffs. MIT timely appealed and Microsoft, Corel, and Rox i o cross-appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

05-1142, -1161, -1162, -1163 6DISCUSSION I We first address issues of claim construc tion. Claim construction is a matter of law that we review without deference. Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1454-55 (Fed. Cir. 1998) (en banc). This case once again involves an effort by parties to a patent infringement case to have this court opine on a range of cl aim construction issues even though the judgment of the district court is not based on the resolution of those issues. We decline that invitation and limit our consideration to issues presented by the judgment under review. An appeal is not an opportunity to bring before the appellate court every ruling with which one of the parties disagrees without regard to w hether the ruling has in any way impacted the final judgment. The fact that this is a patent ca se does not invoke a different legal regime. As described above, the judgment here is a sti pulated judgment of noninfringement by the parties based on the district court’s claim construction. The stipulated judgment pr esents only the question whether the claim constructions adverse to the patentee were correct. We thus will not consider claim construction issues decided in favor of the patent holder that the accused infr ingers contend were incorrect, nor will we address issues that are pertinent only to dismissed claims of invalidity. Revising the district court’s claim constructi ons in these respects would not affect the judgment of non-infringement. 1

1 The accused infringers have not suggest ed that this is a case like Nautilus Group, Inc. v. ICON Health and Fitness, Inc. , 437 F.3d 1376 (Fed. Cir. 2006), where the judgment could be sustained by a claim constr uction not relied on by the district court.
05-1142, -1161, -1162, -1163 7Even with respect to the claim construc tion issues on which the judgment is based we perceive a problem with the mechanism by which this case has been litigated. As in Lava Trading, Inc. v. Sonic Trading Mgmt., LLC , 445 F.3d 1348 (Fed. Cir. 2006), the record does not disclose t he nature of the accused devices, and our rulings on claim construction in this case unfortunately mu st be made without knowledge of the accused devices. See id. at 1350 (“Without knowledge of t he accused products, this court cannot assess the accuracy of the infr ingement judgment under review and lacks a proper context for an accurate claim construction.”); see also Ex igent Tech., Inc. v. Atrana Solutions, Inc. , 442 F.3d 1301, 1310 n.10 (Fed. Cir. 2006) (“[I]t is appropriate for a court to consider the accused device w hen determining what aspect of the claim should be construed.”). Moreov er, the stipulated judgment do es not identify which of the many claim construction rulings are dispos itive. While it is highly undesirable to consider these issues in the abstract, here as in Lava Trading , we have proceeded to do so. A The parties dispute the meaning of the clai m term “scanner.” The first element of claim 1 recites, in pertinent part, “a scanner for producing from said color original a set of three tristimulus appearance signals dependent on t he colors in said original.” ‘919 patent, col. 15, ll. 34-36 (emphasis added). i The district court concluded that the scanner must have “relative movement between the scanning element and the object being scanned.” We agree.

05-1142, -1161, -1162, -1163 8“Claims must be read in view of the specification, of which they are a part.” Phillips v. AWH Corp. , 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (internal quotations omitted). I ndeed, the specification is “[u]sually . . . dispositive” and “is the single best guide to the meaning of a disputed term.” Id . In this case, however, the specification does not define the term “scanner” either explicitly or implicitly. The most that can be said is t hat the specification is not incons istent with a relative movement requirement. The specification discloses only one type of scanner , a “Hell Model 299,” which is a drum scanner that rotates a tw o dimensional original image past a scanning element. ‘919 patent, col. 5, ll.40-43. The drum sc anner operates by moving the original past a scanning element, and thus requires “relative movement between the scanning element and the object being scanned.” Under such circumstances it is appropriate for us to look to dictionary definitions of the terms. See Phillips , 415 F.3d at 1322 (“Dictionaries or comparable sources are often useful to assist in understanding the commonly under stood meaning of words and have been used both by our cour t and the Supreme Court in claim interpretation.”). Dictionary definitions of “scan” and “scanner” at the time the patent application was filed in 1982 confirm that these terms require relative movement between a scanning element and an object being scanned. For ex ample, the 1968 version of Webster’s Third New International Dictionary defines “scan” as “to caus e a narrow beam of light to . . . traverse (an object) in order to translate light modulations into a corresponding electrical current.” Subsequent dictionary def initions include the same limitation. The 1984 edition of McGraw-Hill Dictionary of Scientific and Technical Terms defines “scanner” as “[a]ny device t hat examines an area or r egion point by point in a

05-1142, -1161, -1162, -1163 9continuous systematic manner, repeatedly sweeping across until th e entire area or region is covered.” The definiti on in the 2002 version of Webster’s is identical to the definition in the 1968 version. Thus the definitions, both before and after 1982, require relative movement. MIT argues that “flying spot scanners” existed in 1982 (although not referenced in the specification) and lacked t he relative movement limitation. Thus, MIT urges that to a person of ordinary skill in 1982, a scanner would not have required relative movement. In a “flying spot sc anner,” “[a] moving spot of light , controlled either mechanically or electrically, scans the im age field to be transmitted.” Electronics and Nucleonics Dictionary 249 (3d ed. 1966) (emphasis added); see McGraw-Hill Dictionary of Scientific and Technical Terms 784-85 (5th ed. 1994) (defin ing “flying-spot scanner” as “[a] scanner used for tele vision film and slide transmissi on, electronic writing, and character recognition, in which a moving s pot of light, controlled mechanically or electrically, scans the image field, and the li ght reflected from or transmitted by the image field is picked up by a photot ube to generate electric signals”). A 1982 dictionary of computing defines a “flying spot” as “[a] point of light or the end of an electron beam that is movable at high speed back and fort h across a field.” Frank. J. Galland, Dictionary of Computing 107 (1982). This type of scanner is disclosed in U.S. Patent No. 2,790,844 (the “‘844 patent”), filed on May 11, 1954. ‘844 patent, col. 4, ll. 33-44, 63-65. MIT argues that because a flying spot scanner has no mechanical movement, it is an example of a scanner that is inconsis tent with the district court’s relative movement limitation. Alt hough the mechanical components of a flying spot scanner may remain fixed, the scanner operates by sweeping a light beam across the object to

05-1142, -1161, -1162, -1163 10be scanned. See McGraw-Hill definition; ‘844 patent, col. 4 ll. 33-44, 63-65. We agree with the district court that the light beam qualifies as a scanning element, and thus that the flying spot scanner operat es with movement between t he scanning element and the object being scanned. Plaintiffs similarly argue that television cameras, which were available in 1982, are “scanners” that operate wit hout relative movement. We disagree. Although a camera may achieve the same result as a scanner, the dictionary definitions confirm that a “scanner,” as it was understood in 1982, required relative movement between a scanning element and the object being scanned. Plai ntiffs assert that U.S. Patent No. 4,037,249 (the “Pugsley” patent) used the term “ scanner” to refer to a camera and thus reveals that in 1982 a person of ordinary skill in the art viewed a camera as a type of scanner. However, the specif ication of the Pugsley patent explicitly distinguishes between a camera (which does not require relative movement) and a scanner (which does) when it states that “it is usual to form three separate im ages by photographing or scanning the original.” Pugsley pat ent, col. 1, l. 27 (emphasis added). 2 We conclude that a camera that operates without relative movement is not a scanner within the meaning of the ‘919 patent.

2 MIT relies on three other patents as supposedly recognizing that a camera is a type of scanner. But these references either make clear that a scanner is distinct from a camera, see U.S. Patent Nos. 4,393,398 (emp loying “a cathode ray tube scanner or a color television camera”); 4,328, 515 (“a scanning unit can be employed which works with a color television ca mera”), or are ambiguous, see U.S. Patent No. 4,349,279 (referring both to “an electronic colo r scanner in the form of a color camera” and to a “color scanning device in the form of a color scanner or a primary color camera”).

05-1142, -1161, -1162, -1163 11ii The district court also concluded that t he “scanner” in claim 1(a) must involve placing the “”color original’ . . . on or in cl ose proximity to the scanner.” Here again the specification does not explicit ly or implicitly define “sc anner” as including a “close proximity” requirement. Although the singl e disclosed scanner in the specification includes this limitation, we do not confine the claim to the disclosed embodiments. Phillips , 415 F.3d at 1323. The pertinent dicti onaries also offer no assistance. Under such circumstances, we must det ermine what meaning the term had in the relevant art at the time the pat ent issued by looking to other sources. This follows from our obligation to give the words of a cl aim “their ordinary and customary meaning, [which] . . . is the meaning that the [words] would have to a person of ordinary skill in the art in question at the time of the invention , i.e., as of the effective filing date of the patent application.” Phillips , 415 F.3d at 1312-13 (i nternal quotation marks and citations omitted) (emphasis added); see also Markman v. Westview Instruments, Inc. , 52 F.3d 967, 986 (Fed. Cir. 1995) (en banc), aff’d , 517 U.S. 370 (1996) (In construing claims, the courts focus on “what one of ordinary skill in the art at the time of the invention would have understood the term to mean.”); Chisum on Patents § 18.03[2][g] (2003 ed.). In determining the meani ng of a term within the pertinent art, it is appropriate to determine the mode of operation of the device at the time the patent application was filed. 3

3 In Schering Corp. v. Amgen Inc. , 222 F.3d 1347, 1354 (Fed. Cir. 2000), we concluded that the claim refer ence to “polypeptide of the IFN- α type” did not include later-discovered species of IFN- α that were unknown at the ti me of the application. And in Kopykake Enterprises, Inc. v. Lucks Co. , 264 F.3d 1377 (Fed. Cir. 2001), the term “screen printing,” a term of art referring to printing on foodstuffs, did not include a
05-1142, -1161, -1162, -1163 12Here, the district court (relying on the ‘ 919 specification, ex pert testimony, and technical references) concluded that in 1982 a person of ordinary skill in the art would have known of two general types of scanner s, drum scanners and flatbed scanners. Both these scanners require close proximity bet ween the color original and the scanner. We see no basis for disturbing this conclusion and agree that the term scanner should be defined by what was known in the art at the time. Plainti ffs argue that in 1982 cameras were scanners that did not require cl ose proximity, but as we noted above, a camera that lacks the relative movement lim itation is not a scanner. We conclude that the term scanner in 1982 should be construed to include a requirement of close proximity. B MIT and EFI argue that the di strict court erroneously held the phrase “colorant selection mechanism” was a means-plus-functi on limitation under secti on 112 ¶ 6. That phrase appears in the patent toget her with a description of its functions, “receiving said modified appearance signals” and “selecti ng corresponding reproduction signals representing values of said reproducing colorants to produce in said medium a colorimetrically-matched reproduction.”

method of printing that exist ed at the time of applicati on but was only later adapted to printing on foodstuffs. See also Superguide Corp. v. DirecTV Enterprises , 358 F.3d 870, 879-880 (Fed. Cir. 2004) (hol ding that claimed invention included digital technology that was known to those skilled in the ar t at the time of the patent application); Kopykake Enterprises 264 F.3d at 1383 (“[W]hen a clai m term understood to have a narrow meaning when the application is filed later acquires a broader definition, the literal scope of the term is limited to what it was understood to mean at the time of filing.”).

05-1142, -1161, -1162, -1163 13The phrase “colorant selection mechanism” is presumptively not subject to 112 ¶ 6 because it does not contain the term “means.” CCS Fitness, Inc. v. Brunswick Corp. , 288 F.3d 1359, 1369 (Fed. Cir. 2002). However, a limitation lacking the term “means” may overcome the presumption against means-plu s-function treatment if it is shown that “the claim term fails to ‘recite sufficiently def inite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. (quoting Watts v. XL Sys., Inc. , 232 F.3d 877, 880 (Fed. Cir. 2000)). We agree with the district court’s conclusion that the presumption here is overcome and that the phrase “colorant selection mechanism” should be construed as a means-plus-function limitation. The generic terms “mechanism,” “means,” “element,” and “device,” typically do not connote sufficient ly definite structure. In Personalized Media Commc’ns, LLC v. Int’l Trade Com’n , 161 F.3d 696 (Fed. Cir. 1998), we addressed the claim term “digital detector.” We contrasted the term “detector,” which recited sufficient structure to avoid 112 ¶ 6, with “generic structural term[s] such as ‘means,’ ‘element,’ or ‘device,’” which do not. Id. at 704. Similarly, in Lighting World, Inc. v. Birchwood Lighting, Inc. , 382 F.3d 1354 (Fed. Cir. 2004) , we recognized that Section 112 ¶ 6 does not apply to “a term that is simply a nonce word or a verbal construct that is not recognized as the name of structure and is simply a substitute for the term ‘means for.’” Id. at 1360. Here the patentee used “mechanism” and “means” as synonyms. See ‘919 patent, claim 3, col. 15 l. 51 (refe rring to “colorant selection means ”) (emphasis added); id. , claim 14, col. 17 ll. 1-2 (same). At least one dictionary definition equates mechanism with means. See The Random House Webster’s Unabridged Dictionary

05-1142, -1161, -1162, -1163 141193 def. 2 (2d ed. 1998) (defining “mechanis m” as “the agency or means by which an effect is produced or a purpose is accomplished”); see also The Random House Dictionary of the English Language – The Unabridged Edition 889 (1973) (same). The term “mechanism” standing alone connotes no more structure than the term “means.” Claim language that further defines a generic term like “mechanism” can sometimes add sufficient structure to avoi d 112 ¶ 6. For example, in Greenberg v. Ethicon Endo-Surgery, Inc. , 91 F.3d 1580 (Fed. Cir. 1996), whic h involved a mechanical device, we held that 112 ¶ 6 did not apply to the term “detent mechanism,” because “the noun ‘[d]etent’ denotes a type of device with a generally underst ood meaning in the mechanical arts, even though the definitions ar e expressed in functional terms.” Id. at 1583. The court recited several dictionar y definitions for “detent,” including “a mechanism that temporarily keeps one part in a certain position relative to that of another, and can be released by applying fo rce to one of the parts.” Id. (internal quotation marks and citations om itted). These definitions connoted sufficient structure to avoid 112 ¶ 6. We also concluded that “[t]he fact that a particular mechanism—here ‘detent mechanism’—is defined in functional te rms is not sufficient to convert a claim element containing that term in to a ‘means for performing a specified function’ within the meaning of [112 ¶ 6]” because “[m]any devices ta ke their names from the functions they perform.” Id. 4

4 Of course, a claim term defined solely in functional terms, without more, would fall within Section 112(6). See Al-Site Corp. v. VSI Int’l, Inc. , 174 F.3d 1308, 1318 (Fed. Cir. 1999); see also Micro Chem., Inc. v. Gr eat Plains Chem. Co., Inc. , 194 F.3d 1250, 1258 (Fed. Cir. 1999).

05-1142, -1161, -1162, -1163 15In contrast, the term “colorant selecti on,” which modifies “mechanism” here, is not defined in the specification and has no dictionary definition, and there is no suggestion that it has a gener ally understood meaning in the art. We therefore agree with the district court that “colorant se lection mechanism” does not connote sufficient structure to a person of ordinary skill in the art to avoid 112 ¶ 6 treatment. 5
The district court found that the functions of the “colorant selection mechanism,” as recited in claim 1, are “receiving sa id modified appearance signals” and “selecting corresponding reproduction signals representing values of said reproduction colorants to produce in said medium a colorimetric ally-matched reproduction.” The court further held that the corresponding stru ctures are the components of the “ink correction module (ICM).” MIT does not argue t hat if means-plus-function tr eatment was appropriate, the district court erred in its conclusions regarding the function and corresponding structure of the term. Therefore, the district c ourt’s construction will govern further proceedings. C Claim 1(b) of the ‘919 patent recites, “display means connected to the scanner for receiving the appearance signals and aesthetic correction circuitry for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals.” ‘919 patent, co l. 15, ll. 37-41 (emphasis added). The phrase, “aesthetic correction circuitry for in teractively introducing aesthetically desired

5 In Lighting World , we held that it was appropriate to look to dictionaries “to determine if a disputed term has achieved re cognition as a noun denoting structure,” and determined that “connector” had a reas onably well-understood m eaning as a name for a structure. 382 F.3d at 1360-61. That structure was defined in terms of the function it performed, “connecting.” Id. Here, the term “mechanism” is not defined by a function that particularizes its structure.

05-1142, -1161, -1162, -1163 16alterations into said appearance signals to produce modified appearance signals,” does not contain the term “means,” and is therefore presumptivel y not a means-plus-function limitation. Nonethele ss, the district court held that the presumption was overcome and proceeded to define the functi on and related structure. MIT urges that the term “aesthetic co rrection circuitry” connotes sufficient structure to avoid 112 ¶ 6 treatment. We agree. In contrast to the term “mechanism,” dict ionary definitions establish that the term “circuitry,” by itself, connotes structure. Webster’s Third New International Dictionary , 408-09 (1968 ed.) (defining “circuit” as “the complete path of an electric current including any displacement current” and “circuit ry” as “the detailed plan of an electric circuit or network (as of a radio or television receiver)”); see also Linear Tech. Corp. v. Impala Linear Corp. , 379 F.3d 1311, 1320 (Fed. Cir. 2004) (“Technical dictionaries, which are evidence of the underst andings of persons of skill in the technical arts, plainly indicate that the term ‘circuit’ connotes structure....The Dicti onary of Computing 75 (4th ed. 1996) defines ‘circuit’ as ‘the combination of a number of electrical devices and conductors that, when interconnected to form a conducting path, fulfill some desired function.’”); Random House Webster’s Unabridged Dictionary 374, def. 9 (2d ed. 1998) (defining circuit as “the comp lete path of an electric current”); Rudolf F. Graf, Modern Dictionary of Electronics 116 (7th ed. 1999) (def ining “circuit” as “[t]he interconnection of a number of devices in one or more closed paths to perform a desired electrical or electronic function”); In two of our prior cases we concluded that the term “circuit,” combined with a description of the function of the circuit, connoted sufficient st ructure to one of ordinary

05-1142, -1161, -1162, -1163 17skill in the art to avoid 112 ¶ 6 treatment. See Linear , 379 F.3d at 1320 (“[W]hen the structure-connoting term ‘circuit’ is coupled wit h a description of t he circuit’s operation, sufficient structural meaning generally will be conveyed to persons of ordinary skill in the art, and § 112 ¶ 6 presumptively will not apply. ”); Apex Inc. v. Raritan Computer, Inc. , 325 F.3d 1364, 1373 (Fed. Cir . 2003) (“[T]he term ‘circuit’ with an appropriate identifier such as ‘interface,’ ‘programmi ng’ and ‘logic,’ certainly identifies some structural meaning to one of ordinary skill in the art.”). The claim language here too does not merely describe a circuit; it adds fu rther structure by de scribing the operation of the circuit. The circuit’s input is “appearance signals” produced by the scanner; its objective is to “interactively introduce[e] aesthetically desired alterations into said appearance signals”; and its output is “modified appearance signals.” ‘919 patent, col. 15, ll. 29-41. This description of the operation of the circuit is sufficient to avoid 112 ¶ 6. In arguing to the contrary, the diss ent appears to misappr ehend the strength of the presumption that applies when the term “m eans” does not appear in the claim. As we stated in Lighting World , 382 F.3d at 1362, “[W]e have se ldom held that a limitation not using the term ‘means’ must be consider ed to be in means-plus-function form,” and “the circumstances must be [unusual] to overco me the presumption . . . .” So too the dissent erroneously suggests that claims cannot avoid means-plus-function treatment unless the claim term denotes a specific structur e. But “[i]n considering whether a claim term recites sufficient structure to avoid application of section 112 ¶ 6, we have not required the claim term to denote a specific stru cture. Instead, we have held that it is sufficient if the claim term is used in comm on parlance or by perso ns of skill in the pertinent art to designate struct ure, even if the term covers a broad class of structures

05-1142, -1161, -1162, -1163 18and even if the term identif ies the structures by their function.” Id. at 1359-60. Here, technical dictionaries supply ample evidence that the claim term designates structure. We conclude that Microsoft has not overco me the presumption that the “aesthetic correction circuitry” limitation is not a means-plus-function limitation. Microsoft urges that “circuitry” should be limited to hardware whereas MIT urged below that it should include both hardware and software. We conclude that the term “aesthetic correction circuitry” is clearly limited to hardware. The parties agree that the CT M is the “aesthetic correct ion circuitry” of the ‘919 patent. As the Summary of the Invention explains, when the operator views an image of the scanned original on a TV screen, the operator can “m anipulate[] the TV image interactively in terms of appearance values, introducing aesthetic corrections and such other changes as desired.” ‘919 patent, col. 3 ll. 59-62. The CTM is the device that is used “to correct the input errors” in the image on the TV screen. In the preferred embodiment, it is composed of five modules, each of which corrects a specific type of

error. The specification describes the components of the CTM as hardware components. See id. , col. 8, ll. 36-38 (“T he next step is conversion to LC1C2 form by a hardware implementation of the given transformation, fo llowed by the LC1C2 Color Balance Module, 35.”); id. , col. 8 ll. 48-51 (“The nex t two modules operate on chrominance in polar coordinates, so that the C1C2 signals must be converted in a hardware Cartesian to Polar Coor dinate Converter, 36.”); id. , col. 9, ll. 7-10 (“After Special Correction, hue and saturation are conv erted back to C1C2 form by a hardware Polar to Cartesian Coordinate Converter, 39, for passage to storage or the display.”).

05-1142, -1161, -1162, -1163 19Although the specification suggests that ce rtain computations performed by the CTM can be accomplished with either hardware or software, 6 this reference does not alter the specification’s repeated description of the circuit itself as in volving hardware. Thus, the specification references do not require that “c ircuit” be interpreted to include software. Dictionary definitions of circui t in 1982, when the patent app lication was filed, did not include software. 7 S e e McGraw-Hill Dictionary of Sc ientific and Technical Terms 299 (2d ed. 1978) (defining “circuit ry” as “[t]he complete combination of circuits used in an electrical or electronic system or piece of equipment”). We conclude that the term “circuitry” in claim 1 is limited to hardware. Having decided that 112 ¶ 6 does not apply to the “aesthetic correction circuitry” limitation and that the te rm does not include software, we leave it to the district court to define this term with further particularity. D In conclusion, we agree that the distri ct court properly construed the claim terms “colorant selection mechanism” and “scanne r” in the respects described above. However, its construction of the term “aest hetic correction circuitry” was erroneous. Microsoft and Corel contend that the distri ct court erred in construing the term “colorimetric match” to permit a specific tolerance, the term “scanner” not to require “Color Mixture Curve filters,” and the term “color original” no t to require two-dimensional

6 See ‘919 patent, col. 10, ll. 25-29 (“It has proven convenient to use a hybrid analog-digital computer to perform the said computat ion, but any known form of computation can be used....”). 7 “Software” is defined as “the progr ams used to direct the operation of a computer,” Random House W ebster’s Unabridged Dictionary 1814, def. 1 (2d ed. 1998), and “hardware” is defined as “the mechanica l, magnetic, electronic, and electrical devices comprising a computer system,” Id. at 872, def. 5.

05-1142, -1161, -1162, -1163 20originals. MIT contends that the dist rict court should have adopted a narrower construction of the term “system comprising in serial order,” for purposes of the invalidity analysis. Because the constructi on of these terms would not affect the judgment under review, we decline to address them. II Microsoft urges an alternative ground for partial affirmance of the judgment of non-infringement. Microsoft contends that the district court properly granted Microsoft’s motion to exclude Windows as an infringing product. The district court granted the motion on the ground that MIT’s preliminary in fringement contentions should be treated as final, and thus MIT should not be pe rmitted subsequently to add new accused products except on a showing of good cause. The docket control order (“DCO”) set a September 3, 2002, deadline for asserting preliminary infri ngement contentions and defined the required disclosure as follows: [T]he “Disclosure of Asserted Cla ims and Preliminary Infringement Contentions” shall contain . . . eac h accused apparatus, product, device, process, method, act, or other instru mentality (“Accused Instrumentality”) of each opposing party of which the party is aware. This identification shall be as specific as possible, [s ic] Each product, device, and apparatus must be identified by name or model number, if known. J.A. at 810. MIT served it s preliminary infringement c ontentions on August 29, 2002. The court’s claim construction order issued on July 3, 2003. On November 4, 2003, the court issued an amended DCO, requiring the parties to update their preliminary infringement contentions in light of the claim construction order by November 21, 2003 (later extended to December 22, 2003). In an order accompanying the amended DCO,

05-1142, -1161, -1162, -1163 21the district court noted for the first time—n ine months after the original DCO—that under the “Rules of Practice Before the Honorabl e T. John Ward of t he Eastern District of Texas” (“Judge Ward’s Rules”) preliminary infringement contenti ons are deemed to be final, and can only be amended by order of t he court on a showing of good cause. Nonetheless, on December 22, 2003, MIT attempted to update its preliminary infringement disclosures to include Windows. Microsoft moved to exclude Windows on January 26, 2004, and the district court granted the motion on September 10, 2004. The district court relied on rules 3-6 and 3-7 of Judge Ward’s Rules. 8 Rule 3-6 provides that “[e]ach party’s [sic] ‘Pre liminary Infringement Contentions’...shall be deemed to be that party’s final contentions [with immaterial exceptions].” Rule 3-7 provides that “[a]mendment or modification of the Prelim inary or Final Infringement Contentions . . ., other than as expressly permitted in P.R. 3-6, may be made only by order of the Court, which shall be enter ed only upon a showing of good cause.” The

8 The dissent urges that t he district court did not rely on Judge Ward’s rules. Dissenting Op. at 13. But the court here quoted Judge Ward’s rules at length, and its conclusion explicitly relies on the “good c ause” standard enunciated in Rule 3-7 of Judge Ward’s Rules, which it interpreted as an exception to the finality of party’s preliminary infringement contentions. Quoting Rule 3-6, the c ourt stated “[e]ach party’s ‘Preliminary Infringement Contentions’ . . . shall be deemed to be that party’s final contentions ....” J.A. at 4967 (emphasis in original). T he court then noted that Judge Ward ’s Local Patent Rule 3-7 provides for an exception: “Amendment or modification of the Preliminary or Final Infringement Contentions [with immaterial exceptions] . . . may be made only by order of the Court, which shall be entered only upon a showing of good cause .” J.A. at 4968 (emphasis in original). Noting that “Judge Ward adopted the Northern District of California’s Patent Local Ru les,” the court proceeded to discuss at length two cases Northern District of California interpreting Rule 3-7. J.A. 4968-69. Finally, the court concluded that “[f]or the forgoi ng reasons, the Court finds that Plaintiffs have not set forth good cause for their lengthy delay in seeking to amend their infringement contentions to include all versions of Micr osoft Windows.” J.A. at 4970. Under these circumstances, we think it clear that the c ourt relied on Judge Ward’s rules to conclude that MIT’s preliminary infringement contentions should be deemed final.

05-1142, -1161, -1162, -1163 22court concluded that MIT had failed to s how good cause for the delay in adding Windows as an Accused Instrumentality. Under the law of the Fifth Circuit, which gov erns here, district courts are afforded broad discretion in interpreting their own orders. 9 However, the district court is obligated to provide clear notice of the requirements of its orders. Federal Ru le of Civil Procedure 83(b) provides: A judge may regulate practice in any manner consistent with federal law, rules adopted under 28 U.S. C. §§ 2072 and 2075, and local rules of the district. No sanction or ot her disadvantage may be imposed for noncompliance with any requirement not in federal law, f ederal rules, or the local district rules unless the a lleged violator has been furnished in the particular case with actual notice of the requirement. Fed. R. Civ. P. 83(b). We conclude that MIT was not provided wit h sufficient notice that its preliminary infringement contentions would be deemed final or that they could only be updated upon a showing of good cause. The August 23, 2002, DCO did not give notice that the preliminary infringement content ions would be deemed final. The district court did not state that Judge Ward’s rules would govern. Nor did it state that a “good cause” standard would govern the addition of new produc ts to MIT’s preliminary infringement contentions. The dissent appears to suggest t hat even if the district c ourt here erred in relying on Judge Ward’s rules, its order was justified under the “no excuses” provision. The “no

9 See Nat’l Presto Indus., Inc. v. W. Bend Co. , 76 F.3d 1185, 1188 n.2 (Fed. Cir. 1996) (“On procedural matters not unique to the areas that are exclusively assigned to the Federal Circuit, the law of the regional circuit shall be applied.”); Macklin v. City of New Orleans , 293 F.3d 237, 240 (5th Cir. 2002) (“We review the district court’s

05-1142, -1161, -1162, -1163 23excuses” provision stat ed that “[a] party is not excus ed from the requirements of the Docket Control Order because it has not fully completed its investigation of the case” cannot justify the exclusion. J.A. at 806. The dissent suggests that MIT purported to justify updating its infringement content ions to include Windows for a single unpersuasive reason—namely, that the district court unexpectedly construed “aesthetic correction circuitry” as a means-plus-function term. See Dissenting Op. at 11. On the contrary, MIT relied primarily on the theor y that it needed discovery into Windows’ interaction with other products before it could determine w hether Windows infringed. See Plaintiffs’ Opposition to Microsoft’s Motion to Exclude Windows as an Additional Accused Product and Strike Plaintiffs’ Infringem ent Contentions, at 2- 4 (Feb. 17, 2004). In this respect, the dissent appears to urge that, even though the district court stayed discovery, MIT should be held culpable for its fa ilure to obtain the earlier discovery that would have permitted it to add Windows as an accused product prior to the Markman hearing. With respect, the “no excuses” provision cannot reasonably be read as obligating MIT to conduct the discovery fo r purposes of framing final infringement contentions when the district court had explicitly stayed discovery in the very same order. Because MIT was not on actual notic e that a showing of good cause was required to add “Accused Instrumentalities” to its preliminary infringement contentions, the district court erred in barring the addition of Windows as an infringing product. III

administrative handling of a case, including it s enforcement of the local rules and its own scheduling orders for abuse of discretion.”).
05-1142, -1161, -1162, -1163 24Both MIT and defendants Microsoft and Corel c ontend that the district court erred in denying their motions for summary judgment under the marking statute. Microsoft’s and Corel’s cross-appeals in this respect ar e improper since a favorable ruling would not broaden the scope of the judgment. See Bailey v. Dart Cont ainer Corp. of Mich. , 292 F.3d 1360, 1362 (Fed. Cir. 2002) (“It is onl y necessary and appropriate to file a cross-appeal when a party seeks to enlarge its own rights under th e judgment or to lessen the rights of its adversary under the judgment.”). The cross-appeals are therefore dismissed. To the extent that we have jurisdiction to consider the marking statute issues, we decline to address them because those questions have not been finally resolved by the district court. We also have no authority to address two other arguments raised by MIT. First, MIT argues that the district c ourt erred in granting Fry’s motion for summary judgment of non-infringement when it impr operly determined that an in fringing sale requires a completely assembled system. Second, MIT ar gues the district court erred in granting Arcsoft’s and Fry’s motion for partial summa ry judgment under t he marking statute when it concluded that certain letters EFI s ent to the appellees failed to give actual notice of infringement under se ction 287(a). Both these co nclusions were reached in rulings in favor of Fry’s and Arcsoft. MIT agreed to dismiss both par ties with prejudice, so challenges to those rulings are moot. U.S. Bancorp Mort gage Co. v. Bonner Mall P’ship , 513 U.S. 18, 25 (1994) (“Wher e mootness results from settlement . . . the losing party has voluntarily forfeited his legal remedy by the ordinary process[ ] of appeal.”). MIT argues that these rulings “may” limit t heir damages award, but this does not affect the mootness of the particular rulings at this stage of t he proceedings. See Reply Brief

05-1142, -1161, -1162, -1163 25for Plaintiff-Appellant at 47. If the district court in the future relies on these rulings to limit damages with respect to a non-dismissed party, that reliance will give rise to a new ruling that may then be appealed (if otherwise appropriate).

CONCLUSION The district court erred in its constr uction of the term “aesthetic correction circuitry” in the ‘919 patent and its decision to grant Microsoft’s motion to exclude Windows as an Accused Instrumentality. Acco rdingly, we vacate the district court’s grant of summary judgment of non-infri ngement of the ‘919 patent and remand for further proceedings consistent with this opinion. We dismiss Microsoft’s and Corel’s cross-appeals from the district court’s denial of their motions for summary judgment concerning the marking statute. We dismiss MIT’s appeal in part as moot. VACATED-IN-PART, DISMI SSED-IN-PART, and REMANDED COSTS No costs.

05-1142, -1161, -1162, -1163 26

## United States Court of Appeals for the Federal Circuit

05-1142, -1161, -1162, -1163 THE MASSACHUSETTS INSTITUTE OF TECHNOLOGY and ELECTRONICS FOR IMAGING, INC., Plaintiffs-Appellants,

v.

ABACUS SOFTWARE, Defendant, and COREL CORP. and COREL INC., Defendants-Cross Appellants, and MICROSOFT CORPORATION, Defendant-Cross Appellant, and ROXIO, INC. and MGI SOFTWARE, INC., Defendants-Cross Appellants.
MICHEL, Chief Judge , dissenting. I respectfully dissent from the majority’s vacatur and remand-in-part of the district court’s decision on the bases of the trial court’s incorrect ly construing the claim term “aesthetic correction circuitry” under secti on 112 and erring in the exclusion of Windows as an infringing product, first suggested two y ears after the complaint was filed. I believe that in view of its specific language, “aesthetic corre ction circuitry” was correctlyconstrued as a means-plus-function claim limitat ion. Nor do the case s relied on by the majority support, much less require, a different disposition. Moreover, I believe that excluding Windows as an infringing product was not an abuse of the trial court’s discretion because MIT itself urged, succe ssfully, that discovery be delayed. I. The district court correctly interpreted “ aesthetic correction circuitry” as a meansplus-function claim despite the absence of t he term “means for” in view of the presence of functional language because the limitation fails to recite sufficiently definite structure, as our precedent requires. Thus, the pres umption against applicat ion of section 112, paragraph 6 was overcome. Indeed, on this record, I find it overcome as a matter of law. The parties agree that “the term ‘circu it[ry],’ by itself connotes some structure” to one skilled in the art. Apex, Inc. v. Raritan Computer, Inc. , 325 F.3d 1364, 1373 (Fed. Cir. 2003) (emphasis added). The issue, however , is whether the “aesthetic correction circuitry” limitation “recite[s] sufficiently definite structure,” id. at 1372 (emphasis added); accord Linear Tech. Corp. v. Impala Linear Corp. , 379 F.3d 1311, 1319 (Fed. Cir. 2004), which is required to av oid section 112, paragraph 6 in a claim using functional language, even in the absence of “means for.” This “definite structure” requirement is well-establis hed in our precedent. “To invoke this statute [sec tion 112, paragraph 6], the alleged means-plus-function claim element must not recite a definite struct ure which performs the described function.” Cole v. Kimberly-Clark Corp. , 102 F.3d 524, 531 (Fed. Cir. 1996); see also B. Braun Med., Inc. v. Abbott Labs. , 124 F.3d 1419, 1424 (Fed. Cir. 1997) (“Because this

05-1142, -1161, -1162, -1163 2limitation . . . does not recite def inite structure in support of it s function, it is subject to the requirements of 35 U.S.C. § 112, ¶ 6 . . . .”); Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n , 161 F.3d 696, 704 (Fed. Cir. 1998) (“In deciding whether either presumption [‘means for’ with stated func tion presumes that section 112, paragraph 6 applies, while no ‘means for’ with stated function presumes that section 112, paragraph 6 does not apply] has been rebutted, the fo cus remains on whether the claim as properly construed recites sufficiently definite structure to avoid the ambit of § 112, ¶ 6.”); Watts v. XL Sys., Inc. , 232 F.3d 877, 880 (Fed. Cir. 2000) (“[T]he focus remains on whether the claim . . . recites sufficiently def inite structure.”); CCS Fitness, Inc. v. Brunswick Corp. , 288 F.3d 1359, 1369 (Fed. Cir. 2002) (“L ife Fitness can rebut this presumption if it demons trates that the claim term fails to ‘recite sufficiently definite structure.’”); Lighting World, Inc. v. Birchwood Lighting, Inc. , 382 F.3d 1354, 1358 (Fed. Cir. 2004) (“The presumption that a limitation lacking the term ‘means’ is not subject to section 112 ¶ 6 can be overcome if it is demonstrated that the ‘claim term fails to recite sufficiently definite structure.’”) (internal quotations omitted). Indeed, section 112, paragraph 6 is rooted in the definiteness requirement of section 112, paragraph 2: “Congress has provided this statute [section 112, paragraph 6] as a sp ecific instruction on interpretation of the type of claim whic h otherwise might be held to be indefinite.” Data Line Corp. v. Micro Techs., Inc. , 813 F.2d 1196, 1201 (F ed. Cir. 1987); accord Jonsson v. Stanley Works , 903 F.2d 812, 819 (Fed. Cir. 1990); see also Laitram Corp. v. Rexnord, Inc. , 939 F.2d 1533, 1536 (Fed. Cir. 1991) (“Absent section 112(6), claim language which requires only a means for performi ng a function might be indefinite.”). Such a claim would, of course, be inva lid under section 112, paragraph 2. Although

05-1142, -1161, -1162, -1163 3both Apex and Linear , relied on dispositively and exclus ively by the majority, found sufficiently definite structur e in the claim language, both ar e distinguishable from the instant case, in which the claim language is dramatically different. In Apex , a number of claim limitations using t he term “circuit” were at issue. One such representative claim with the representative limitations was: a first interface circuit for rece iving keyboard and cursor control device signals from the workstation; an on-screen programming circuit t hat produces video signals for display on the video monitor; a programmed logic circuit coupled to the first interface that transmits the keyboard and cursor control device signals to the programmable switch and cont rols the on-screen programming circuit to produce the video si gnals upon the detection of a predefined input from a user of the workstation, the programmed logic circuit further operating to detect keyboard or cursor control device signals received while the on-screen programming circuit is producing video signals on the video monitor and to control the programmable switch in response to the keyboard or cursor control device signals detected; and a second interface circuit dis posed between the programmable switch and the selected computer for supplying the keyboard and cursor control device signals r outed through the programmable switch to the selected computer. 325 F.3d at 1368; United States Pa tent No. 5,884,096, col. 13, l. 53 – col. 14, l. 24. In holding that the term “interface circuit” wa s not a means-plus-func tion limitation, we explained that “the term ‘c ircuit’ with an appropriate identifier such as ‘interface,’ ‘programming’ and ‘logic,’ certainly identifies some structural meaning to one of ordinary skill in the art.” Apex , 325 F.3d at 1373 (emphases added) . Moreover, we elaborated that “interface circuit” connotes sufficient ly definite structure because “interface” and “interface circuit” are defined in electr onics and computing dictionaries so as to

05-1142, -1161, -1162, -1163 4“connote[ ] specific structures to one of ordinary skill in the art.” Id. at 1374. We then remanded the case to the distri ct court for further development of the record and a similar analysis for the remaining “circuit ” terms. Thus, not every “adjectival qualification” (“A.Q.”), id. , connotes sufficiently definite structure for the term “circuit,” but rather an “appropriate ” A.Q., as demonstrated in Apex by technical dictionaries. By contrast, the “circuitry” claim limitation in this case recites only the following and nothing more: aesthetic correction circuitry for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals; ’919 patent, col. 15, ll. 38-41. Unlike in Apex , here we have no evidence whatsoever that “aesthetic correction” is such an “appropriate” A.Q. that it would connote sufficiently definite structure to one skilled in the art. Indeed, “aesthetic correction” itself may be solely functional language. For example, we were shown no evidence that any technical dictionaries suggest to the artisan a sufficiently definite structure for “aesthetic correction circuitry” or even list such a term. Nor did experts from either side opine that one skilled in the art would understand “aesthetic correcti on circuitry” to connote sufficiently definite circuit st ructure. While Microsoft’s expert Anthony Johnson stated that one skilled in the art would have understood “ aesthetic correction circuitry” to mean “hardware that allows an oper ator to interactively introduce changes into the appearance signals to create modified appearanc e signals,” this does not connote definite structure, but merely some unspecif ied hardware structure. The record on appeal does not reflect the opinion of MIT’ s expert, Bradley Pa xton, regarding the meaning of “aesthetic correction circuitry.” Ra ther, in the paltry porti on of his testimony in the appellate record, he merely discusses “c ircuitry” and the fact that “[c]ircuitry

05-1142, -1161, -1162, -1163 5contains a lot of components, including wires.” This fails to impart definite structure to “aesthetic correction circuitry” becaus e the components and t heir arrangements are unstated. The inventor, Willia m Schreiber, explained that “aes thetic correction circuitry” means to one skilled in the ar t “hardware or software used by the system operator to introduce desired alterations into the appearanc e signals of an image.” Again, this does not elucidate a definite structure, but merely suggests some generic structure, namely, some unspecified arrangement of unidentified hardware co mponents or software. Neither of MIT’s experts even attempted to opine that “aesthetic correction” connotes definite structure such that “aesthetic correction circuitr y” would suggest a sufficiently definite array of components to one skilled in the art. Thus, I cannot discern sufficiently definite structure from the term “aesthetic correction circuitry” to avoid means-plusfunction treatment. Similarly, in Linear , a representative claim with lim itations concerning “circuit” recited: A circuit for controlling a switchi ng voltage regulator, the regulator having (1) a switch circuit coupled to receive an input voltage and including a pair of synchronously s witched switching transistors and (2) an output circuit including an output terminal and an output capacitor coupled thereto for s upplying current at a regulated voltage to a load, the control circuit comprising: a first circuit for monitoring a si gnal from the output terminal to generate a first feedback signal; a second circuit for generating a first control signal during a first state of circuit operation, the firs t control signal being responsive to the first feedback signal to vary the duty cycle of the switching transistors to maintain the output terminal at the regulated voltage; and a third circuit for generating a second control signal during a second state of circuit operation to cause both switching transistors

05-1142, -1161, -1162, -1163 6to be simultaneously OFF for a period of time if a sensed condition of the regulator indicates that t he current supplied to the load falls below a threshold fraction of maximum rated output current for the regulator, whereby operating effici ency of the regulator at low output current levels is improved.
379 F.3d at 1316. In ascertaini ng that these “circuit” limit ations were not means-plusfunction limitations, Linear began with the approach of Apex and CCS Fitness : “To help determine whether a claim term re cites sufficient structure, we examine whether it has an understood meaning in the art.” Id. at 1320. Linear then quoted two dictionary definitions of “circuit,” one identical to the dictionary definition in Apex . Yet, while Apex merely concluded from these dictionary def initions that “circuit” connoted “some structural meaning to one of or dinary skill in the art,” Apex , 325 F.3d 1373 (emphases added), Linear relied on these dicti onary definitions, Apex , and certain non-functional, operational claim language to state: “Thus, when the structure-connotin g term ‘circuit’ is coupled with a description of the circuit’s operation , sufficient structural meaning generally will be conveyed to persons of or dinary skill in t he art, and § 112 ¶ 6 presumptively will not apply.” Linear , 379 F.3d at 1320 (citing Apex , 325 F.3d at 1373) (emphases added). In its holding , however, Linear also required expert testimony as to whether these descriptions of the circuit’s operation conveyed sufficient structure to an artisan: “We hold that becaus e the term ‘circuit’ is used in each of the disputed limitations . . . with a recitati on of the respective circuit’s operation in sufficient detail to suggest structure to persons of ordinary skill in the art , the ‘circuit’ and ‘circuitry’ limitations of such claims are not means -plus-function limitations . . . .” Id. at 1320-21 (emphasis added). Thus, not any operational language suffices.

05-1142, -1161, -1162, -1163 7Linear therefore extended t he reasoning of Apex such that the use of “circuit” coupled with a description of the circuit’s oper ation may connote “sufficient structural meaning,” id. at 1320, to one skilled in the art. In Linear , this description of the first circuit’s operation was “for monitoring a signal from the output terminal to generate a first feedback signal.” Id. The description of the second circuit’s operation was “for generating a first control signal during a fi rst state of circuit operation.” Id. at 1316. Similarly, the description of the third circuit’s operati on was “for generating a second control signal during a sec ond state of circuit operation to cause both switching transistors to be simultaneously OFF.” Id. Importantly, however, Linear relied on expert testimony to determine whether these descriptions of the circuit’s operation conveyed sufficient structure to one skilled in the art. “That persons of ordi nary skill in the art would understand the structural a rrangements of circuit components from the term ‘circuit’ coupled with the qualifying language of claim 1 was recognized by Linear’s expert witness,” id. at 1320 (emphasis added), who opi ned that one skilled in the art “would have an understanding of, and would be abl e to draw, structural arrangements of the circuit elements defined by the claims.” Id. (emphases added). Thus, in Linear , it was not merely the particular descriptions of the operation of the ci rcuit that connoted sufficient structure, but also the expert testimony that these descriptions conveyed sufficient structure to one skill ed in the art because the artisan “would be able to draw[ ] structural arrangements of t he circuit elements.” Id. Here, we face a description of only the ci rcuit’s function, not of how it operates with other circuits or devices to carry out that function. Mor eover, even assuming we had a description of the circuit’s operation, “f or interactively introducing aesthetically

05-1142, -1161, -1162, -1163 8desired alterations into said appearance signals to produce modified appearance signals,” ’919 patent, col. 15, ll. 38-41, we were shown no evidence from which to conclude that this description identifie s the circuit components or conveys the arrangement of circuit components to one skilled in the art so that he could draw the circuit’s elements and their sequence. In sum, both Apex and Linear relied on additional information in the claim to determine whether the limitation as a whol e conveyed sufficiently definite circuit structure, i.e., elements or components and their sequence, to an artisan. Apex relied on dictionary definitions of an accompanying “appropri ate” A.Q. that suggested sufficiently definite structure to one skilled in the art. Linear relied on expert testimony that the claim’s description of the operation of the circuit connoted definite structure. Here, we have neither a dictionary definition to establish that “aesthet ic correction” is an appropriate A.Q. to suggest definite stru cture nor ex pert testimony that the accompanying description of the operation of t he circuit, if any, connotes definite circuit structure–sequence of particular circuit component s–to an artisan so that he could draw on paper the arrangement of the components needed. II. The district court denied MIT’s belated attempt to add Windows as an infringing device. At the outset of the case, the court provided a proposed Docket Control Order on June 19, 2002. This pr oposed order stated that Pr eliminary Infringement Contentions were due prior to the Markman hearing. It did not allow for amended or supplemental infringement cont entions. It also contained a “No Excuses” provision, which stated: “A party is not excused from the requirem ents of the Proposed Docket

05-1142, -1161, -1162, -1163 9Control Order because it has not fully complet ed its investigation of the case . . . or because another party has not m ade its disclosures.” MIT did not object to the “No Excuses” clause. Yet in re sponse to the proposed order, MIT did request that no discovery occur until after the Markman hearing. 1 The court amended the proposed Docket Control Order to include MIT’s reques ted stay of discovery until after the Markman hearing. After the Markman hearing and discovery, MIT attempted to “update” its infringement cont entions. Microsoft then move d to exclude Windows as an additional accused device and strike MIT’s updat ed infringement content ions. The court granted the motion because, it said, to do otherwise would have caused “significant delay that could have been avoided,” Mass. Inst. of Tech. v. Abacus Software , No. 01- 344, at 10 (E.D. Tex. Sept. 10, 2004) (order granting motion to exclude), especially given that “Microsoft did not have the opportuni ty to consider Windows in drafting its claim construction arguments.” Id. I agree. First, had MIT not requested stay of discovery until after the Markman hearing, it would have discovered Windows as an allegedly infringing device prior to the Markman hearing. Second, MIT request ed the stay of discovery even though it already knew, based on the trial court’s June 19, 2002 pr oposed scheduling order, that incomplete investigation of its case—i.e., uncompleted discovery—was not an excuse for deviation from the scheduling order, including the deadline for infringement content ions. Third, it

1 In Plaintiffs’ Proposed Scheduli ng Conference Agenda, MIT stated: “Plaintiffs, however, believe that the par ties can avoid duplicative and wasteful discovery requests by the Court imposing t he following limitations: No individualized discovery may be served until after the Court issues its Markman ruling.” MIT does not deny that MIT requested this stay of discovery. Thus, MIT’s arguments in its appeal briefs that “[t]he district court did not permit the needed discovery until after the Markman ruling” are disingenuous.
05-1142, -1161, -1162, -1163 10is difficult to fathom how the district court’s construction of “aesthetic correction circuitry” as a means-plus-function lim itation, which narrowed the claim term, should have expanded the set of potentially infringing devic es such that MIT would only have been able to identify Windows as an allegedly infringing device after the limitation had been so narrowed. Indeed, MIT utterly fails to expl ain how construction of this limitation as a means-plus-function limitat ion could have first apprised MIT that Windows might infringe. Moreover, it is difficult to understand why MIT c ould not have contended prior to the Markman hearing that Windows—software—allegedly infringed, given that in its Markman brief MIT argued that “aes thetic correction circuitry” includes “hardware or software”—not only hardware, as Microsoft argued. Fourth, to add this new accused product two years into litigation would have c aused undue delay and prejudice to Microsoft—and all other parties in this complex litigation against 214 defendants— because claim construction had occurred, invalidity contentions had been served, depositions had been taken, expert reports had been served, etc. 2 Fifth, adding an entirely new accused product was not an “updat e”—it materially changed the theories of the case. Moreover, I disagree that MIT did not have actual notice that it would not be able to “update” its infringement contentions based on incomplete discovery. The majority states that “MIT was not prov ided with sufficient notice that its preliminary infringement contentions would be deemed final” because MI T was not notified t hat Judge Craven

2 For example, Bradley Paxton, MIT’s expert, was deposed February 7, 2003. Microsoft’s expert report by Anthony Johnson was submitted in support of its Markman brief on February 18, 2003.

05-1142, -1161, -1162, -1163 11would “rel[y]” on Judge Ward’s Rules. This is misleading on three points: (1) notice, (2) finality, and (3) Judge Ward’s Rules. First, MIT was provided with notice that it would not be allow ed to “update” its infringement contentions based on incomple te discovery through the “No Excuses” clause. The no excuses clause explicitly notif ied MIT that it would not be excused from the requirements of the scheduling order “ because it ha[d] not fully completed its investigation of the case.” Incomplete disco very, I infer, is the real reason that MIT wanted to update its infringement contentions. Incomplete discovery is one reason explicitly noticed by the no excuses claus e that MIT was not allowed to do so. Indeed, the August 23, 2002 scheduling or der required that preliminary infringement contentions be f iled by September 3, 2002. This same order set a deadline for opening Markman briefs of February 3, 2003. This five-month delay between filing of preliminar y infringement contentions and of the opening Markman briefs strongly suggests that the purpose of this extended time frame was to allow the parties to develop their respective theories of the case, litigati on strategies, and claim constructions with the allegedly infringing produc ts in mind. Allowing MIT thereafter to “update” its contentions in cont ravention of this notice would have allowed it to subvert the very purpose of these provisions of t he scheduling order. Moreover, the March 10, 2003 Early Mediation Deadline set in the same scheduling order further implies that the purpose of the infringement contention deadline combined with the no excuses clause was to narrow the issues in the case, incl uding the issue of infr ingement, to facilitate early settlement, especially in this large, complex case.

05-1142, -1161, -1162, -1163 12Second, the district court did not need to notify MIT that its preliminary infringement contentions woul d be deemed “final,” as the ma jority states, because the district court never deemed them “final.” Nowhere in her order did Judge Craven characterize MIT’s infringement contentions as “final.” Rather, the district court, applying its no excuses clause, refused to allow MIT to add an allegedly infringing product based on incomplete discovery. Indeed, the no excuses clause seems to contemplate—and obviate—such a situation as we have here: a belated attempt to add an infringing product based on incomplete discovery. 3 The no excuses clause quashed such a possibility in no uncertain terms. Thus, while other reasons may have allowed plaintiffs upon a showing of good cause to introduce additional infringement contentions beyond the preliminary content ions, incomplete discovery was explicitly not such a

reason. Third, I further disagree with the majo rity’s and MIT’s characterization of Magistrate Judge Craven’s use of Judge Wa rd’s Local Patent Rules in granting Microsoft’s motion to exclude Windows as an infringing product. The majority states that Judge Craven was “govern[ed]” by Judge Ward’s Rules and “relied” on those Rules. This is inaccurate. The court issued its claim construction or der on July 3, 2003. MIT served its Updated Disclosure of Assert ed Claims and Preliminary Infr ingement Contentions re Defendant Microsoft Corporation on Microso ft on December 22, 2003, attempting to add

3 MIT repeatedly stated in its appellate briefs that incomplete discovery was the reason for its delay in “updating” its infringement contentions, viz. , “the district court arbitrarily forced Appellants into final infringement contentions without complete infringement discovery,” “Appellants could not finalize their infringement contentions

05-1142, -1161, -1162, -1163 13Windows as an infringing product for the first ti me since filing its complaint on December 28, 2001. Yet in her November 4, 2003 Order granting the motion for entry of a revised Docket Control Order, Judge Craven stated t hat she was using Judge Ward’s Local Patent Rules as “guidance.” In her September 10, 2004 Order granting Microsoft’s motion to exclude Windows as an infringing product, Judge Craven again cited Judge Ward’s rules. Yet it does not appear that she viewed these rules as binding on her or on the parties. Rather, it appear s that she used them to justify and explain in part the grant of Microsoft’s motion, in the same way that she cited case law to justify and explain her decision (as all cour ts do). I see no error, constitutional or other, in this use of Judge Ward’s rules, unlike the majority, nor a violation of F ederal Rule of Civil Procedure 83(b). From the no excuses clause, MIT had actual notice that the infringement contentions were not subject to expansion from discovery results occurring after the Markman hearing. Indeed, because the no ex cuses clause provided sufficient notice that MIT would not be allowed to add an infringing product based on incomplete discovery, whether Judge Craven gave sufficient notice of her alleged reliance on Judge Ward’s rules is irrelevant. I certainly see no abuse of discretion in excluding Windows. MIT concedes that “this Court should apply the abuse of discr etion standard on appeal” regarding the exclusion of Windows as an infringing pr oduct. The majority equivocates on the standard it uses to determine that this exclus ion was reversible. The majority states that “district courts are afforded broad discreti on in interpreting thei r own orders.” Maj. Op. at 23. In a foot note, it then cites a case that hol ds that abuse of discretion is the

until after they obtained discovery into the accused product’s source code as well as

05-1142, -1161, -1162, -1163 14standard of review. Upon reachi ng its conclusion, however, the majority simply states that the “district court erred.” That appears to be de novo review, rat her than review for abuse of discretion. Indeed, a judge’s discretion is at it s broadest on matters of trial management. “[R]ulings which rested largely in the s ound discretion of the court . . . may be made the basis for reversal only where it is made to appear not merely that the ruling might have been the other way but that, as made, there was a grave and serious abuse of discretion . . . .” Fulenwider v. Wheeler , 262 F.2d 97, 99 (5th Cir. 1959). In particular, “[t]he Civil Rules endow the trial judge with formidable case-management authority.” Rushing v. Kan. City S. Ry. Co. , 185 F.3d 496 (5th Cir. 1999) (quoting Rosario-Diaz v. Gonzalez , 140 F.3d 312, 315 (1st Cir. 1998)); see also Macklin v. City of New Orleans , 293 F.3d 237, 241 (5th Cir. 2002). Here , neither the majority nor MIT has demonstrated “grave and serious” error. The majority simply opines that Judge Craven failed to provide “clear notice” that the initial infringement contentions would be deemed final even though ample evidence cont radicts this, as discussed above. Moreover, it seems that Judge Craven was not “govern[ed]” by Judge Ward’s Rules, as the majority contends. Thus, while another reasonable judge may have ruled another way, this ruling falls far short of meeti ng the rigorous standard of abuse of discretion.

manufacturing methods.”
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