United States Court of Appeals for the Federal Circuit 

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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, California, 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 Corel 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 brief 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 Roxio, Inc. and MGI Software, Inc. With him on the 

brief was Ryan K. Yagura. 

Appealed from: United States District Court 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 stipulated final judgment of noninfringement 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 stipulated judgment of non-infringement 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 further 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 the 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 court properly denied the parties’ motions for 

summary judgment on the marking statute issues since the district court has not finally 

decided whether the marking statute bars the claims. We dismiss as moot the appeals 

insofar as they arise from orders that were granted in favor 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 originals. The invention discloses “color 

reproduction process[es] which use[ ] a small number of colorants, usually three or four, 

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in 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 exact combination of colorants required for the match is not 

related, in any simple way, to measurements 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 original in a medium using a selected 

multiplicity of reproduction colorants, the system comprising in serial 

order: 

a. a scanner for producing from said color 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 aesthetically 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 said reproducing colorants to 

produce in said medium a colorimetrically-matched reproduction. 

Id., col. 15, ll. 31-47 (emphases added). The pertinent claim construction dispute 

involves the emphasized language. 

In step (a) of the disclosed embodiment, “[an] image is scanned in [by the 

scanner] . . . and stored in terms of appearance values, for example RGB [“Red Green 

Blue”].” Id., col. 3, ll. 42-44. These “appearance 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 

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“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 the 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 alterations” to be “introduce[d] 

into [the] appearance signals to produce modified signals.” 

In step (c), the final step, the “colorant selection mechanism” (“CSM”) receives 

the “modified appearance signals” and calculates “[i]nk density images, as required for a 

colorimetric match with the corrected images....” Id., col. 4, ll. 12-14. Thus, as claim 1 

recites, the CSM “select[s] corresponding reproduction signals representing values [of 

colorants] to produce . . . a colorimetrically-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 complaint on December 28, 2001, alleging that 92 

defendants directly and contributorily infringed and induced infringement of the ‘919 

patent. On April 25, 2002, shortly before the ‘919 patent expired, plaintiffs filed an 

amended complaint, asserting infringement 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 contentions, including a list of so-called “Accused 

Instrumentalities” (infringing products) by September 3, 2002. MIT served its 

preliminary infringement contentions on August 29, 2002. The Accused 

Instrumentalities included various types of image editing software, computer systems, 

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digital cameras, scanners, and color reproduction systems. MIT did not list Windows as 

an Accused Instrumentality but stated that it believed that 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, Roxio, 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 claim construction order largely adopting the 

magistrate’s recommendations on September 15, 2003. Three claim terms are relevant 

to this appeal: “scanner,” “colorant selection mechanism,” and “aesthetic correction 

circuitry.”

The court held that the term “scanner” is not a means-plus-function limitation. 

The district court concluded, however, that the scanner includes 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 selection mechanism” as a means-plusfunction limitation, and held that the recited functions are “receiving said modified 

appearance signals” and “selecting corresponding reproduction signals representing 

values of said reproduction colorants to produce in said medium a colorimetricallymatched reproduction.” The court concluded that the structure that performs these 

functions is the components of the “ink correction module (ICM).”

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Finally, the court held that “aesthetic correction circuitry” is a means-plus-function 

limitation, that the recited function is “introducing aesthetically desired alterations into 

said appearance signals to produce modified appearance signals,” and that the 

structures that perform this function are the five components that comprise the Color 

Translation Module (“CTM”). 

Following the claim construction ruling, the district court issued two orders that 

are pertinent to this appeal. First, on September 10, 2004, the district court granted 

Microsoft’s motion to exclude Windows as an accused product on the ground that 

Windows had not been listed as an Accused Instrumentality when MIT submitted its 

preliminary infringement contentions prior to the Markman hearing. 

Second, on September 29, 2004, the district court denied both sides’ motions for 

summary judgment regarding MIT’s compliance with the marking statute, 35 U.S.C. § 

287, which permits damages only when the infringing articles are marked or the 

infringer is on notice of infringement. 

On November 10, 2004, the parties “stipulate[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 dismissal without prejudice of Defendants’ 

counterclaims” of invalidity and unenforceability. Based on these stipulations, the 

district court entered a final judgment of non-infringement and dismissed the 

defendants’ counterclaims on November 12, 2004. The stipulated judgment is thus 

based entirely on the claim construction issues decided adversely to the plaintiffs. MIT 

timely appealed and Microsoft, Corel, and Roxio cross-appealed. We have jurisdiction 

under 28 U.S.C. § 1295(a)(1). 

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DISCUSSION 

I 

We first address issues of claim construction. 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 claim 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 whether the ruling has in any 

way impacted the final judgment. The fact that this is a patent case does not invoke a 

different legal regime. 

As described above, the judgment here is a stipulated judgment of noninfringement by the parties based on the district court’s claim construction. The 

stipulated judgment presents 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 infringers contend were incorrect, 

nor will we address issues that are pertinent only to dismissed claims of invalidity. 

Revising the district court’s claim constructions in these respects would not affect the 

judgment of non-infringement.1

 1 The accused infringers have not suggested 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 construction not relied on by the district court. 

05-1142, -1161, -1162, -1163 7 
Even with respect to the claim construction 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 the nature of the accused devices, and our rulings on claim 

construction in this case unfortunately must be made without knowledge of the accused 

devices. See id. at 1350 (“Without knowledge of the accused products, this court 

cannot assess the accuracy of the infringement judgment under review and lacks a 

proper context for an accurate claim construction.”); see also Exigent 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 when determining what aspect of the claim 

should be construed.”). Moreover, the stipulated judgment does not identify which of 

the many claim construction rulings are dispositive. 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 claim 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 the 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. 

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“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). Indeed, 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 that the specification is not inconsistent 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 two dimensional original image past a scanning 

element. ‘919 patent, col. 5, ll.40-43. The drum scanner 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 understood meaning of words and 

have been used both by our court 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 example, the 1968 version of Webster’s 

Third New International Dictionary defines “scan” as “to cause a narrow beam of light to 

. . . traverse (an object) in order to translate light modulations into a corresponding 

electrical current.” Subsequent dictionary definitions include the same limitation. The 

1984 edition of McGraw-Hill Dictionary of Scientific and Technical Terms defines 

“scanner” as “[a]ny device that examines an area or region point by point in a 

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continuous systematic manner, repeatedly sweeping across until the entire area or 

region is covered.” The definition 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 the 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 scanner,” “[a] moving spot of light, controlled either 

mechanically or electrically, scans the image 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) (defining “flying-spot scanner” 

as “[a] scanner used for television film and slide transmission, electronic writing, and 

character recognition, in which a moving spot of light, controlled mechanically or 

electrically, scans the image field, and the light reflected from or transmitted by the 

image field is picked up by a phototube 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 forth 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 inconsistent with the district court’s relative 

movement limitation. Although the mechanical components of a flying spot scanner 

may remain fixed, the scanner operates by sweeping a light beam across the object to 

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be 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 operates with movement between the scanning element and the 

object being scanned. 

Plaintiffs similarly argue that television cameras, which were available in 1982, 

are “scanners” that operate without 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. Plaintiffs 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 specification 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 images by photographing or

scanning the original.” Pugsley patent, 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 (employing “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 camera”), or are ambiguous, see U.S. Patent No. 

4,349,279 (referring both to “an electronic color 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”). 

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ii 

The district court also concluded that the “scanner” in claim 1(a) must involve 

placing the “”color original’ . . . on or in close proximity to the scanner.” Here again the 

specification does not explicitly or implicitly define “scanner” as including a “close 

proximity” requirement. Although the single 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 dictionaries also offer no assistance. 

Under such circumstances, we must determine what meaning the term had in the 

relevant art at the time the patent issued by looking to other sources. This follows from 

our obligation to give the words of a claim “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 (internal 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 meaning 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 reference to “polypeptide of the IFN-α type” did not include 

later-discovered species of IFN-α that were unknown at the time 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 

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Here, the district court (relying on the ‘919 specification, expert testimony, and 

technical references) concluded that in 1982 a person of ordinary skill in the art would 

have known of two general types of scanners, drum scanners and flatbed scanners. 

Both these scanners require close proximity between 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. Plaintiffs argue that in 1982 

cameras were scanners that did not require close proximity, but as we noted above, a 

camera that lacks the relative movement limitation 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 district court erroneously held the phrase “colorant 

selection mechanism” was a means-plus-function limitation under section 112 ¶ 6. That 

phrase appears in the patent together with a description of its functions, “receiving said 

modified appearance signals” and “selecting corresponding reproduction signals 

representing values of said reproducing colorants to produce in said medium a 

colorimetrically-matched reproduction.” 

 

method of printing that existed at the time of application 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) (holding that claimed invention included digital technology 

that was known to those skilled in the art at the time of the patent application); 

Kopykake Enterprises 264 F.3d at 1383 (“[W]hen a claim 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.”). 

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The 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-plus-function treatment if it is shown that 

“the claim term fails to ‘recite sufficiently definite 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 sufficiently 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 (referring 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

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1193 def. 2 (2d ed. 1998) (defining “mechanism” 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 avoid 112 ¶ 6. For example, in Greenberg v. 

Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996), which 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 understood meaning in the 

mechanical arts, even though the definitions are expressed in functional terms.” Id. at 

1583. The court recited several dictionary 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 force to one of the parts.” Id. (internal 

quotation marks and citations omitted). 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 terms is not sufficient to convert a claim 

element containing that term into a ‘means for performing a specified function’ within the 

meaning of [112 ¶ 6]” because “[m]any devices take 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. Great Plains Chem. Co., Inc., 194 

F.3d 1250, 1258 (Fed. Cir. 1999). 

05-1142, -1161, -1162, -1163 15 
In contrast, the term “colorant selection,” which modifies “mechanism” here, is 

not defined in the specification and has no dictionary definition, and there is no 

suggestion that it has a generally understood meaning in the art. We therefore agree 

with the district court that “colorant selection 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 said modified appearance signals” and “selecting 

corresponding reproduction signals representing values of said reproduction colorants 

to produce in said medium a colorimetrically-matched reproduction.” The court further 

held that the corresponding structures are the components of the “ink correction module 

(ICM).” MIT does not argue that if means-plus-function treatment was appropriate, the 

district court erred in its conclusions regarding the function and corresponding structure 

of the term. Therefore, the district court’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, col. 15, ll. 37-41 (emphasis added). The 

phrase, “aesthetic correction circuitry for interactively 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 recognition as a noun denoting structure,” 

and determined that “connector” had a reasonably well-understood meaning 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 16 
alterations into said appearance signals to produce modified appearance signals,” does 

not contain the term “means,” and is therefore presumptively not a means-plus-function 

limitation. Nonetheless, the district court held that the presumption was overcome and 

proceeded to define the function and related structure. 

MIT urges that the term “aesthetic correction circuitry” connotes sufficient 

structure to avoid 112 ¶ 6 treatment. We agree. 

In contrast to the term “mechanism,” dictionary 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 “circuitry” 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 understandings of persons of skill in the technical arts, plainly 

indicate that the term ‘circuit’ connotes structure....The Dictionary 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 complete path of an electric current”); Rudolf F. Graf, Modern 

Dictionary of Electronics 116 (7th ed. 1999) (defining “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 structure to one of ordinary 

05-1142, -1161, -1162, -1163 17 
skill in the art to avoid 112 ¶ 6 treatment. See Linear, 379 F.3d at 1320 (“[W]hen the 

structure-connoting term ‘circuit’ is coupled with a description of the 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,’ ‘programming’ 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 further structure by describing 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 dissent appears to misapprehend the strength of 

the presumption that applies when the term “means” does not appear in the claim. As 

we stated in Lighting World, 382 F.3d at 1362, “[W]e have seldom held that a limitation 

not using the term ‘means’ must be considered to be in means-plus-function form,” and 

“the circumstances must be [unusual] to overcome the presumption . . . .” So too the 

dissent erroneously suggests that claims cannot avoid means-plus-function treatment 

unless the claim term denotes a specific structure. 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 structure. Instead, we have held that it is 

sufficient if the claim term is used in common parlance or by persons of skill in the 

pertinent art to designate structure, even if the term covers a broad class of structures 

05-1142, -1161, -1162, -1163 18 
and even if the term identifies 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 overcome 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 CTM is the “aesthetic correction 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 “manipulate[] 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 (“The next step is conversion to LC1C2 form by a 

hardware implementation of the given transformation, followed by the LC1C2 Color 

Balance Module, 35.”); id., col. 8 ll. 48-51 (“The next two modules operate on 

chrominance in polar coordinates, so that the C1C2 signals must be converted in a 

hardware Cartesian to Polar Coordinate Converter, 36.”); id., col. 9, ll. 7-10 (“After 

Special Correction, hue and saturation are converted 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 19 
Although the specification suggests that certain 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 involving hardware. Thus, the 

specification references do not require that “circuit” be interpreted to include software. 

Dictionary definitions of circuit in 1982, when the patent application was filed, did not 

include software. 7 See McGraw-Hill Dictionary of Scientific and Technical Terms 299 

(2d ed. 1978) (defining “circuitry” 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 term 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 district court properly construed the claim terms 

“colorant selection mechanism” and “scanner” in the respects described above. 

However, its construction of the term “aesthetic correction circuitry” was erroneous. 

Microsoft and Corel contend that the district 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” not 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 computation, but any known form of 

computation can be used....”). 

7 “Software” is defined as “the programs used to direct the operation of a 

computer,” Random House Webster’s Unabridged Dictionary 1814, def. 1 (2d ed. 1998), 

and “hardware” is defined as “the mechanical, magnetic, electronic, and electrical 

devices comprising a computer system,” Id. at 872, def. 5. 

05-1142, -1161, -1162, -1163 20 
originals. MIT contends that the district court should have adopted a narrower 

construction of the term “system comprising in serial order,” for purposes of the 

invalidity analysis. Because the construction 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 infringement contentions should be treated 

as final, and thus MIT should not be permitted 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 infringement contentions and defined the required disclosure as 

follows: 

[T]he “Disclosure of Asserted Claims and Preliminary Infringement 

Contentions” shall contain . . . each accused apparatus, product, device, 

process, method, act, or other instrumentality (“Accused Instrumentality”) 

of each opposing party of which the party is aware. This identification 

shall be as specific as possible, [sic] Each product, device, and apparatus 

must be identified by name or model number, if known. 

J.A. at 810. MIT served its preliminary infringement contentions 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 21 
the district court noted for the first time—nine months after the original DCO—that under 

the “Rules of Practice Before the Honorable T. John Ward of the Eastern District of 

Texas” (“Judge Ward’s Rules”) preliminary infringement contentions are deemed to be 

final, and can only be amended by order of the 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] ‘Preliminary 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 Preliminary 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 entered only upon a showing of good cause.” The 

 8 The dissent urges that the 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 cause” 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 court 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). The 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 Rules,” 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 forgoing 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 Microsoft Windows.” J.A. at 4970. Under these 

circumstances, we think it clear that the court relied on Judge Ward’s rules to conclude 

that MIT’s preliminary infringement contentions should be deemed final. 

05-1142, -1161, -1162, -1163 22 
court concluded that MIT had failed to show good cause for the delay in adding 

Windows as an Accused Instrumentality. 

Under the law of the Fifth Circuit, which governs 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 Rule 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 other disadvantage may be imposed for 

noncompliance with any requirement not in federal law, federal rules, or 

the local district rules unless the alleged 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 with 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 contentions 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 products to MIT’s preliminary infringement 

contentions. 

The dissent appears to suggest that even if the district court 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 23 
excuses” provision stated that “[a] party is not excused 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 contentions 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 theory that it needed discovery into Windows’ 

interaction with other products before it could determine whether Windows infringed. 

See Plaintiffs’ Opposition to Microsoft’s Motion to Exclude Windows as an Additional 

Accused Product and Strike Plaintiffs’ Infringement 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 failure 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 for 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 notice 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 its enforcement of the local rules and its 

own scheduling orders for abuse of discretion.”). 

05-1142, -1161, -1162, -1163 24 
Both MIT and defendants Microsoft and Corel contend 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 are improper since a favorable ruling would 

not broaden the scope of the judgment. See Bailey v. Dart Container Corp. of Mich., 

292 F.3d 1360, 1362 (Fed. Cir. 2002) (“It is only necessary and appropriate to file a 

cross-appeal when a party seeks to enlarge its own rights under the 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 court erred in granting Fry’s motion for summary judgment of 

non-infringement when it improperly determined that an infringing sale requires a 

completely assembled system. Second, MIT argues the district court erred in granting 

Arcsoft’s and Fry’s motion for partial summary judgment under the marking statute 

when it concluded that certain letters EFI sent to the appellees failed to give actual 

notice of infringement under section 287(a). Both these conclusions were reached in 

rulings in favor of Fry’s and Arcsoft. MIT agreed to dismiss both parties with prejudice, 

so challenges to those rulings are moot. U.S. Bancorp Mortgage Co. v. Bonner Mall 

P’ship, 513 U.S. 18, 25 (1994) (“Where 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 their damages award, but this does not affect 

the mootness of the particular rulings at this stage of the proceedings. See Reply Brief 

05-1142, -1161, -1162, -1163 25 
for 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 construction 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. Accordingly, we vacate the district court’s 

grant of summary judgment of non-infringement 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, DISMISSED-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 incorrectly construing the claim term 

“aesthetic correction circuitry” under section 112 and erring in the exclusion of Windows 

as an infringing product, first suggested two years after the complaint was filed. I 

believe that in view of its specific language, “aesthetic correction circuitry” was correctly 
construed as a means-plus-function claim limitation. Nor do the cases 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, successfully, that discovery be delayed. 

I. 

The district court correctly interpreted “aesthetic correction circuitry” as a meansplus-function claim despite the absence of the 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 presumption against application 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 ‘circuit[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 avoid section 112, paragraph 6 in a claim using functional 

language, even in the absence of “means for.” 

This “definite structure” requirement is well-established in our precedent. “To 

invoke this statute [section 112, paragraph 6], the alleged means-plus-function claim 

element must not recite a definite structure 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 2 
limitation . . . does not recite definite structure in support of its 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 function 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 focus 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 definite structure.”); CCS Fitness, Inc. v. 

Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002) (“Life Fitness can rebut this 

presumption if it demonstrates 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 specific instruction 

on interpretation of the type of claim which otherwise might be held to be indefinite.” 

Data Line Corp. v. Micro Techs., Inc., 813 F.2d 1196, 1201 (Fed. 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 performing a function might be indefinite.”). 

Such a claim would, of course, be invalid under section 112, paragraph 2. Although 

05-1142, -1161, -1162, -1163 3 
both Apex and Linear, relied on dispositively and exclusively by the majority, found 

sufficiently definite structure in the claim language, both are distinguishable from the 

instant case, in which the claim language is dramatically different. 

 In Apex, a number of claim limitations using the term “circuit” were at issue. One 

such representative claim with the representative limitations was: 

a first interface circuit for receiving keyboard and cursor control 

device signals from the workstation; 

an on-screen programming circuit that 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 controls the on-screen programming 

circuit to produce the video signals 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 disposed between the programmable 

switch and the selected computer for supplying the keyboard and 

cursor control device signals routed through the programmable 

switch to the selected computer. 

325 F.3d at 1368; United States Patent No. 5,884,096, col. 13, l. 53 – col. 14, l. 24. In 

holding that the term “interface circuit” was not a means-plus-function limitation, we 

explained that “the term ‘circuit’ 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 sufficiently definite structure because “interface” and 

“interface circuit” are defined in electronics 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 district 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 correction circuitry” to connote 

sufficiently definite circuit structure. 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 operator to interactively introduce changes into the 

appearance signals to create modified appearance signals,” this does not connote 

definite structure, but merely some unspecified hardware structure. The record on 

appeal does not reflect the opinion of MIT’s expert, Bradley Paxton, regarding the 

meaning of “aesthetic correction circuitry.” Rather, in the paltry portion of his testimony 

in the appellate record, he merely discusses “circuitry” and the fact that “[c]ircuitry 

05-1142, -1161, -1162, -1163 5 
contains a lot of components, including wires.” This fails to impart definite structure to 

“aesthetic correction circuitry” because the components and their arrangements are 

unstated. The inventor, William Schreiber, explained that “aesthetic correction circuitry” 

means to one skilled in the art “hardware or software used by the system operator to 

introduce desired alterations into the appearance 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 components or software. 

Neither of MIT’s experts even attempted to opine that “aesthetic correction” connotes 

definite structure such that “aesthetic correction circuitry” 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 limitations concerning “circuit” 

recited: 

A circuit for controlling a switching voltage regulator, the regulator 

having (1) a switch circuit coupled to receive an input voltage and 

including a pair of synchronously switched switching transistors and 

(2) an output circuit including an output terminal and an output 

capacitor coupled thereto for supplying current at a regulated 

voltage to a load, the control circuit comprising: 

a first circuit for monitoring a signal 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 first 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 6 
to be simultaneously OFF for a period of time if a sensed condition 

of the regulator indicates that the current supplied to the load falls 

below a threshold fraction of maximum rated output current for the 

regulator, whereby operating efficiency of the regulator at low 

output current levels is improved. 

379 F.3d at 1316. In ascertaining that these “circuit” limitations were not means-plusfunction limitations, Linear began with the approach of Apex and CCS Fitness: “To help 

determine whether a claim term recites 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 definitions that “circuit” connoted “some

structural meaning to one of ordinary skill in the art,” Apex, 325 F.3d 1373 (emphases 

added), Linear relied on these dictionary definitions, Apex, and certain non-functional, 

operational claim language to state: “Thus, when the structure-connoting term ‘circuit’ is 

coupled with a description of the 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.” 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 because the term ‘circuit’ is used in each of the disputed 

limitations . . . with a recitation 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 7 
Linear therefore extended the reasoning of Apex such that the use of “circuit” 

coupled with a description of the circuit’s operation 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 first state of circuit operation.” Id. at 1316. 

Similarly, the description of the third circuit’s operation was “for generating a second 

control signal during a second 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 ordinary skill in the art 

would understand the structural arrangements 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 opined that one skilled in the art 

“would have an understanding of, and would be able 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 circuit that connoted 

sufficient structure, but also the expert testimony that these descriptions conveyed 

sufficient structure to one skilled in the art because the artisan “would be able to draw[ ] 

structural arrangements of the circuit elements.” Id. 

Here, we face a description of only the circuit’s function, not of how it operates 

with other circuits or devices to carry out that function. Moreover, even assuming we 

had a description of the circuit’s operation, “for interactively introducing aesthetically 

05-1142, -1161, -1162, -1163 8 
desired 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 identifies 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 whole conveyed sufficiently definite circuit 

structure, i.e., elements or components and their sequence, to an artisan. Apex relied 

on dictionary definitions of an accompanying “appropriate” 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 “aesthetic correction” is an 

appropriate A.Q. to suggest definite structure nor expert testimony that the 

accompanying description of the operation of the circuit, if any, connotes definite circuit 

structure–sequence of particular circuit components–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 proposed order stated that Preliminary Infringement 

Contentions were due prior to the Markman hearing. It did not allow for amended or 

supplemental infringement contentions. It also contained a “No Excuses” provision, 

which stated: “A party is not excused from the requirements of the Proposed Docket 

05-1142, -1161, -1162, -1163 9 
Control Order because it has not fully completed its investigation of the case . . . or 

because another party has not made its disclosures.” MIT did not object to the “No 

Excuses” clause. Yet in response 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 requested stay of discovery until after the 

Markman hearing. After the Markman hearing and discovery, MIT attempted to 

“update” its infringement contentions. Microsoft then moved to exclude Windows as an 

additional accused device and strike MIT’s updated infringement contentions. 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 opportunity 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 requested the stay of discovery even though it already knew, 

based on the trial court’s June 19, 2002 proposed 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 contentions. Third, it 

 1 In Plaintiffs’ Proposed Scheduling Conference Agenda, MIT stated: 

“Plaintiffs, however, believe that the parties can avoid duplicative and wasteful 

discovery requests by the Court imposing the 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 10 
is difficult to fathom how the district court’s construction of “aesthetic correction circuitry” 

as a means-plus-function limitation, which narrowed the claim term, should have 

expanded the set of potentially infringing devices 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 explain how construction of this limitation as a 

means-plus-function limitation could have first apprised MIT that Windows might 

infringe. Moreover, it is difficult to understand why MIT could not have contended prior 

to the Markman hearing that Windows—software—allegedly infringed, given that in its 

Markman brief MIT argued that “aesthetic 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 caused 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 “update”—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 provided with sufficient notice that its preliminary infringement 

contentions would be deemed final” because MIT was not notified that 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 11 
would “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 allowed to “update” its 

infringement contentions based on incomplete discovery through the “No Excuses” 

clause. The no excuses clause explicitly notified 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 discovery, 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 clause that MIT was not allowed to do so. 

Indeed, the August 23, 2002 scheduling order required that preliminary 

infringement contentions be filed 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 preliminary 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, litigation strategies, and claim 

constructions with the allegedly infringing products in mind. Allowing MIT thereafter to 

“update” its contentions in contravention of this notice would have allowed it to subvert 

the very purpose of these provisions of the 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, including the issue of infringement, to facilitate 

early settlement, especially in this large, complex case. 

05-1142, -1161, -1162, -1163 12 
Second, the district court did not need to notify MIT that its preliminary 

infringement contentions would be deemed “final,” as the majority 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 contentions, incomplete discovery was explicitly not such a 

reason. 

Third, I further disagree with the majority’s and MIT’s characterization of 

Magistrate Judge Craven’s use of Judge Ward’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 order on July 3, 2003. MIT served its 

Updated Disclosure of Asserted Claims and Preliminary Infringement Contentions re 

Defendant Microsoft Corporation on Microsoft 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 13 
Windows as an infringing product for the first time 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 that 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 appears 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 courts do). I see no error, constitutional or other, in this use 

of Judge Ward’s rules, unlike the majority, nor a violation of Federal 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 excuses 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 discretion standard on appeal” regarding the 

exclusion of Windows as an infringing product. The majority equivocates on the 

standard it uses to determine that this exclusion was reversible. The majority states 

that “district courts are afforded broad discretion in interpreting their own orders.” Maj. 

Op. at 23. In a footnote, it then cites a case that holds 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 14 
standard of review. Upon reaching its conclusion, however, the majority simply states 

that the “district court erred.” That appears to be de novo review, rather than review for 

abuse of discretion. Indeed, a judge’s discretion is at its broadest on matters of trial 

management. 

“[R]ulings which rested largely in the sound 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 contradicts 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 meeting the rigorous standard of abuse of discretion. 

 

manufacturing methods.” 

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