IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE SIRONA DENTAL SYSTEMS, INC.

And CALIFORNIA INSTITUTE OF TECHNOLOGY, Plaintiffs,

) ) ) ) ) ) ) )

v.

C.A. No. 10-288 (GMS)

DANAHER CORPORATION; DEXIS, LLC; and ) GENDEX CORP., ) ) Defendants.

ORDER CONSTRUING THE TERMS OF U.S. PATENT NOS. 6,456,326; 6,549,235; 6,555,842; 6,570,617; 6,744,068; and 7,369,166
After having considered the submissions of the parties and hearing oral argument on the matter, IT IS HEREBY ORDERED, ADJUDGED, and DECREED that, as used in the asserted claims of U.S. Patent Nos. 6,456,326 (the "'326 patent"); 6,549,235 (the '"235 patent"); 6,555,842 (the "'842 patent"); 6,570,617 (the '"617 patent"); 6,744,068 (the "'068 patent"); and 7,369,166 (the"' 166 patent"):

A.

The '842 Patent

1. The term "readout circuit" in claims 9 through 11 and 16 is construed to mean "a circuit that includes at least one output transistor." 1 2. The term "a photoreceptor" in claims 9 through 11 and 16 is construed to mean "a device that produces an electrical signal from light."2

The court rejects the defendants' proposed construction. The defendants' construction is not supported by the patent specification or the prosecution history, and improperly tries to import circuit elements shown in one preferred embodiment into the claim. See Comarck Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) ("while ... claims are to be interpreted in light of the specification and with a view to ascertaining the invention, it does not follow that limitations from the specification may be read into the claims") (internal citation omitted.)

3. The term "sensing node" in claims 9 through 11 and 16 is construed to have its plain and ordinary meaning. 3

B.

The '235 Patent

1. The term "signal controlling device" in claims 1 through 3, 5, 12 through 15, and 17 is construed to mean "on-chip circuitry that controls signal outputs of the pixel array." 4 2. The term "timing circuit" in claims 1 through 3, 5, 12 through 15, and 17 is construed to mean "a circuit that controls a timing operation of the photoreceptors and/or associated electronics. " 5 3. The term "correlated double sampling" in claims 12 and 13 1s construed to mean "acquiring samples at two different times. " 6 4. The term "single chip camera device" in claims 1, 2, 3, 5, 12 through 15 and 17 is construed to have its plain and ordinary meaning. 7

The court rejects defendants' proposed limitations on these claims. See Serrano v. Telular Corp., Ill F.3d 1578, 1584 (Fed. Cir. 1997) ("Although statements in file history may of course be used to explain and potentially limit the meaning of claim limitations, ... [they] cannot be used to add an entirely new limitation to a claim.") 3 The court adopts a construction that is consistent with the plain and ordinary meaning of the term and that gives effect to each term of the claim. See, e.g., In re Gabapentin Patent Lit., 503 F.3d 1254, 1263 (Fed. Cir.2007) (noting that "claims are interpreted with an eye towards giving effect to all terms in a claim"). 4 The court rejects the defendants' proposed construction which attempts to import limitations not supported by the claim language. See Telejlex, Inc. v. Ficosa North America Corp., 299. F.3d 1313, 1327 (Fed. Cir. 2002) ("We hold that claim terms take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term by redefining the term or by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.") 5 The court agrees with the plaintiffs' proposed construction. The defendants' attempt to insert the limitation "one and only one" into the photoreceptor term is misplaced, as "it is generally accepted in patent parlance that 'a' or 'an' can mean 'one or more."' Tate Access Floors, Inc. v. Maxcess Techs., Inc., 222 F.3d 958, 966 n.4 (Fed. Cir. 2000). 6 The court adopts a construction that is consistent with the plain and ordinary meaning of the term and that gives effect to each term ofthe claim. See, e.g., In re Gabapentin Patent Lit., 503 F.3d 1254, 1263 (Fed. Cir.2007) (noting that "claims are interpreted with an eye towards giving effect to all terms in a claim").

5. The term "control portion" in claims 1, 2, 3, 5, 12 through 15 and 17 is construed to mean "circuitry including at least a signal controlling device and a timing circuit." 8 6. The term "noise reduction circuit" in claims 15 and 17 is construed to have its plain and ordinary meaning. 9 7. The term "fixed pattern noise reduction circuits" in claim 15 is construed to mean "circuits used for the purpose of reducing unwanted currents or voltages that do not vary over time." 10
C. The '617 Patent
1. The term "signal controlling device" in claims 1, 2, 7, 9, 10, and 12 is construed to

mean "on-chip circuitry that controls signal outputs of the pixel array." 11

The plaintiffs argue that this term is a non-limiting part of the preamble. The court agrees. This term appears only in the preamble of the pertinent claims. "[A] preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention." Catalina Mktg. Int'l, Inc. v. Coo/savings. com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotations omitted). Here, the preamble does not offer any details, structure or description that aids in the understanding of what is covered. The bodies of the claims-which, significantly, do not make reference to the single chip camera device term-perform that function, and precisely specify the constituent elements of the claimed single chip camera device. Accordingly, the claim term requires no further construction. 8 The court rejects the defendants' construction which requires the control portion to include "all circuitry required to both generate and distribute the signals that direct the readout and operation of the image acquisition portion." The terms "generate," "distribute," and "direct," are not recited in the claims, and should not be read into them via claim construction. See Telejlex, Inc. v. Ficosa North America Corp., 299. F.3d 1313, 1327 (Fed. Cir. 2002) ("We hold that claim terms take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term by redefining the term or by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.") 9 The court rejects the defendants' proposed construction. See footnote 3. 10 The court rejects the defendants' proposed construction which attempts to import limitations not supported by the claim language. See Telejlex, 299 F.3d at 1327. 11 See footnote 4.

2. The term "timing circuit" in claims 1, 2, 7, 9, 10, and 12 is construed to mean "a circuit that controls a timing operation of the photoreceptors and/or associated electronics." 12 3. The term "correlated double sampling" in claim 7 is construed to mean "acquiring samples at two different times." 13 4. The term "single chip camera device" in claims 1, 2, 7, 9, 10, and 12 is construed to have its plain and ordinary meaning. 14 5. The term "control portion" in claims 1, 2, 7, 9, 10, and 12 is construed to mean "circuitry including at least a signal controlling device and a timing circuit." 15
D. The '166 Patent

1. The term "signal controlling device" in claims 1, and 3 through 6 is construed to mean "on-chip circuitry that controls signal outputs of the pixel array." 16 2. The term "timing circuit" in claims 1, and 3 through 6 is construed to mean "a circuit that controls a timing operation of the photoreceptors and/or associated electronics." 17 3. The term "single chip camera device" in claims 1, and 3 through 6 is construed to have its plain and ordinary meaning. 18 4. The term "control portion" in claims 1, and 3 through 6 is construed to mean "circuitry including at least a signal controlling device and a timing circuit." 19

12 13

See footnote See footnote 14 See footnote 15 See footnote 16 See footnote 17 See footnote 18 See footnote

5. 6. 7. 8. 4. 5. 7.

E.

The '326 Patent

1. The term "signal controlling device" in claims 1, 4, 11 through 13, 15, and 16 is construed to mean "on-chip circuitry that controls signal outputs of the pixel array."
20

2. The term "timing circuit" in claims 1, 4, 11 through 13, 15, and 16 is construed to mean "a circuit that controls a timing operation of the photoreceptors and/or associated electronics. " 21 3. The term "single chip camera device" in claims 1, 4, 11 through 13, 15, and 16 is construed to have its plain and ordinary meaning. 22 4. The term "control portion" in claims 1, 4, 11 through 13, 15, and 16 is construed to mean "circuitry including at least a signal controlling device and a timing circuit." 23 5. The term "noise reduction circuit" in claims 13, 15, and 16 is construed to have its . p1 . and ord'mary meanmg. 24 am 6. The term "fixed pattern noise reduction circuits" in claim 12 is construed to mean "circuits used for the purpose of reducing unwanted currents or voltages that do not vary over time. " 25

F.

The '068 Patent

1. The term "a photoreceptor" in claims 5 through 7 is construed to mean "a device that produces an electrical signal from light. " 26

See footnote See footnote 21 See footnote 22 See footnote 23 See footnote 24 See footnote 25 See footnote
20

19

8. 4. 5. 7. 8. 9. 10.

2. The term "correlated double sampling" in claim 7 is construed to mean "acquiring samples at two different times." 27 3. The term "a follower transistor, receiving information from said photoreceptor indicative of said light" in claims 5 through 7 is construed to mean "a transistor that is used to receive from a photoreceptor information indicative of light from a pixel of a scene being imaged. "28 4. The term "a select transistor, selecting said each pixel cell for readout" in claims 5 through 7 is construed to mean "a transistor that is energized to allow information indicative of light from a pixel of a scene being imaged to be output. "29 5. The term "associated device, associate[d] with processing said light from said photoreceptors" in claims 5 through 7 is a means-plus-function term. The disclosed function is "processing said light from said photoreceptors." The corresponding

structure is "A readout circuit consisting of a signal sample and hold circuit including an S/H FET and a signal store capacitor connected through the S/H FET and through the row select FET to the source of the source follower FET. The other side of the capacitor is connected to a source bias voltage VSS. The one side of the capacitor is

See footnote 2. See footnote 6. 28 The court rejects the defendants' proposed construction. The defendants' proposed construction improperly imports limitations on the number of transistors and photogates allowed by this claim language. Those limitations are not supported by the specification. See Teleflex, Inc. v. Ficosa North America Corp., 299. F.3d 1313, 1327 (Fed. Cir. 2002) ("We hold that claim terms take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term by redefining the term or by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.") 29 The court rejects the defendants' proposed construction for the same reasons as articulated in footnote 28: the specification does not limit the number of transistors to "one and only one".
27

26

also connected to the gate of an output FET.

The drain of the output FET is

connected through a column select FET to a signal sample output node VOUTS and through a load FET to the drain voltage VDD. A signal called 'signal sample and hold' briefly turns on the S/H FET after the charge accumulates beneath the photogate electrode has been transferred to the floating diffusion, so that the capacitor stores the source voltage of the source follower FET indicating the amount of charge previously accumulated beneath the photogate electrode. The readout circuit also consists of a reset sample and hold circuit including an S/H FET and a signal store capacitor connected through the S/H FET and through the row select FET to the source of the source follower. The other side ofthe capacitor is connected to the source bias voltage VSS. The one side of the capacitor is also connected to the gate of an output FET. The drain of the output FET is connected through a column select FET to a reset sample output node VOUTR and through a load FET to the drain voltage VDD. A signal called 'reset sample and hold' briefly turns on the S/H FET immediately after the reset signal RST has caused the resetting of the potential of the floating diffusion, so that the capacitor stores the voltage at which the floating diffusion has been reset to." 30

The court agrees with the defendants that this is a means-plus-function term. Means-plus-function limitations are construed to cover the function set forth in the limitation and the corresponding structure described in the specification and equivalents thereof. 35 U.S.C. 112, ,-r 6. Although the absence of the words "means for" triggers a rebuttable presumption that 112 does not apply, that presumption is overcome by demonstrating "that the claim term fails to recite sufficiently defmite structure or else recites a function without reciting sufficient structure for performing that function." Mass. lnst. ofTech. v. Abacus Software, 462 F.3d 1344, 1353 (Fed. Cir. 2006) (quotation omitted). Generic terms such as '"mechanism,' 'means,' 'element,' and 'device,' typically do not connote sufficiently definite structure." Jd

30

6. The term "formed in said substrate adjacent said plurality of pixel[] cells" in claims 5 through 7 is construed to have its plain and ordinary meaning. 31 7. The term "image processing device" in claim 6 is construed to mean "a device that is
. . fi . ,32 used to process Image m ormatwn.

Dated: January

]k_, 2012

Claim language that further defines a generic term like "mechanism" can sometimes add sufficient structure to avoid 112 treatment. !d. However, here, the term "associated" which modifies "device," is not defined in the specification and there is no suggestion that it has a generally understood meaning in the art. Therefore, the court finds that "associated device" does not connote sufficient structure to a person of ordinary skill in the art to avoid 112 treatment. 31 The court adopts a construction that is consistent with the plain and ordinary meaning of the term and that gives effect to each term of the claim. See, e.g., In re Gabapentin Patent Lit., 503 F.3d 1254, 1263 (Fed. Cir.2007) (noting that "claims are interpreted with an eye towards giving effect to all terms in a claim"). 32 The court rejects the defendants' contention that this is a means-plus-function term. Although this term uses the word "device," here the additional words "image processing" add sufficient structure to overcome the presumption that 112 applies. The claim makes clear that the image processing device is a particular type of device that connotes sufficient structure to a person of ordinary skill in the art.