In Brief: 2008-1155 MIT v. Microsoft

2008-1155 MIT v. Microsoft
ED/TX  5:01cv00344

Plaintiffs stipulated to non-infringement by Microsoft after Judge David Folsom construed the term "aesthetic correction circuitry" to be limited to hardware rather than hardware and software.

Summary of Argument from the brief of plaintiff/appellant MIT.  Howrey LLP, Irvine, CA (William Rooklidge; Russell Hill; Andrew Dallman; Alyson Barker).

The district court's erroneous inclusion of “directly upon” in its definition of aesthetic correction circuitry contradicts the teachings of the MIT patent [4,500,919]. Figure 1 of the patent and its written description unambiguously describe intervening operations that are performed on appearance signals as they flow from the scanner to the aesthetic correction circuitry. Further, the MIT patent teaches that only scanners equipped with CMC filters produce signals upon which the aesthetic correction circuitry could operate directly. Thus, the construction of “scanner”--uncontested after remand--contradicts the “directly upon” language added by the district court.

The district court also erred in limiting “aesthetic correction circuitry” to “hardware” to the complete exclusion of software. The MIT patent includes express acknowledgements that software is used to program or control the aesthetic correction circuitry. Dr. Schreiber's contemporaneous article regarding the original embodiment of his invention, incorporated by reference into the MIT patent, discloses that the aesthetic correction circuitry included image editing software running on a computer. Thus, the district court's construction, precluding software from playing any role in the operation of aesthetic correction circuitry, finds no basis in the patent or its file history.

Rather than relying on the intrinsic evidence, the district court construed this claim term based only on its erroneous belief that extraneous statements in this Court's MIT I decision compelled the complete exclusion of software. The district court was wrong to do so because the only issue with regard to “aesthetic correction circuitry” on appeal in MIT I was whether this limitation was subject to 35 U.S.C. § 112 (6). Accordingly, this Court's extraneous statements that were the sole basis for the district court's construction were not binding because the district court had yet to decide the software issue prior to the MIT I appeal. Thus, this Court did not have a fully developed record on this issue. The district court should have instead reviewed the intrinsic evidence of record in formulating its construction of “aesthetic correction circuitry.”

Further, even if this Court's MIT I decision were intended to limit the invention's aesthetic circuitry to implementations using hardware, this would not overcome the overwhelming intrinsic evidence that demonstrates that software does indeed play a role in programming or controlling such hardware. Appellants expressed their agreement at the second Markman hearing that aesthetic correction circuitry includes hardware (i.e. , “an interconnection of electrical elements”). (A3828). The intrinsic evidence, however, plainly teaches that software programs and controls this hardware. Thus, completely excluding software from playing any role in the operation of aesthetic correction circuitry runs afoul of the intrinsic evidence and this Court's long-established claim construction principles.

Summary of Argument from the brief of defendant/appellee Microsoft.  Locke, Lord, Bissell & Liddell, Dallas TX (Roy Hardin; Scott Fuller) and Microsoft (Isabella Fu).

This appeal is the latest in Appellants' continued attempt to over-reach the single asserted claim of the now long-expired ‘919 Patent to cover fundamentally different, modern-day technology that was never envisioned, much less actually invented, by the patentee. In particular, EFI wishes to extend claims written for twenty-year-old precision commercial printing technology to cover today's widespread consumer use of digital scanners and personal computer systems to edit and print photographs. Claim 1 of the ‘919 Patent, however, is not as broad as EFI would like, as reflected not only in this  Court's  prior binding Opinion in MIT I,  but also in the district court's claim construction on remand, from which EFI now appeals.

Appellants' Opening Brief correctly asserts that the construction begun by this Court and refined by the district court precludes any theory of infringement against Microsoft under Claim 1; and that, of course, is precisely the point. (See, e.g., Brief at 22). The Microsoft Accused Products do not, under any circumstance, infringe Claim 1 of the ‘919 Patent because, among other things, that claim is plainly limited to “circuitry” which acts “directly upon appearance signals.” This Court got it right in MIT I, and the district court got it right again on remand. Thus, affirmance by this Court of either aspect of the district court's claim construction is entirely dispositive.

A. “Hardware” Not “Software” Is The Law Of The Case

It cannot be denied that this Court rendered a de novo review of the construction of “aesthetic correction circuitry” in MIT I. In so doing, the panel correctly endeavored to construe the limitation as a matter of law, given the record before it. The limitation was deemed to recite sufficiently definite structure so as to avoid treatment as a means-plus-function limitation, and was further deemed to be limited to hardware, to the exclusion of software. These unmistakable findings were not mere “remarks by the wayside,” as Appellants now contend. Rather, they were reasoned claim construction holdings by this Court, rendered not only pursuant to the de novo standard of review requested by Appellants, but also to the appellate briefing of Microsoft which placed the issue squarely before this Court in MIT I. The holdings of the panel in MIT I were, and remain, law of this case, and should not now be disturbed.

B. As Used In Claim 1, “Circuitry” Is Hardware, Not Software

Even if not law of the case, both this Court in MIT I, and the district court on remand, correctly construe “aesthetic correction circuitry” as being clearly limited to hardware, and as not including software. Relevant dictionary definitions and expert testimony confirm this construction, and dependent Claim 13 does nothing to alter the plain meaning of “circuitry.” Likewise, there is nothing in the ‘919 specification equating or defining “circuitry” that “interactively introduces aesthetically desired alterations into appearance signals” as anything other than hardware. Further, the “interactive” aspect of Claim 1 necessarily limits “circuitry” to a hardware implementation, as the art at the time of the invention dictated.

C. The Claimed “Circuitry” Acts Directly Upon Appearance Signals

A simple and plain reading of Claim 1 of the ‘919 Patent compels the proper construction of “aesthetic correction circuitry” as entered by the district court. The claimed circuitry introduces alterations “into said appearance signals,” with such signals being “the three tristimulus appearance signals” produced by the scanner. The “directly upon” limitation has not been “read into” the claim - it is the claim.

The prosecution history also supports the district court's construction, as the Pugsley reference was specifically distinguished on the basis of its alleged failure to disclose circuitry for acting directly on the system appearance signals. Further, Figure 1 of the ‘919 Patent, upon which Appellants chiefly rely, identifies the “tristimulus values” as entering in the system at the interface to the “aesthetic correction circuitry,” and subject only to storage before being acted upon by the claimed circuitry.