Free Claim Construction Answering Brief - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE R.R. DONNELLEY & SONS COMPANY, Plaintiff, v. CREO, INC., NEXPRESS SOLUTIONS, INC., KODAK VERSAMARK, INC., EASTMAN KODAK COMPANY, and KODAK GRAPHIC COMMUNICATIONS COMPANY, Defendants. ) ) ) ) ) ) ) ) ) ) ) ) )

C.A. No. 06-032 (JJF)

PLAINTIFF R.R. DONNELLEY & SONS COMPANY'S CLAIM CONSTRUCTION ANSWERING BRIEF MORRIS, NICHOLS, ARSHT & TUNNELL LLP Jack B. Blumenfeld (#1014) Rodger D. Smith II (#3778) 1201 North Market Street P.O. Box 1347 Wilmington, DE 19899 (302) 658-9200 [email protected] Attorneys for Plaintiff R.R. Donnelley & Sons Company

OF COUNSEL: John G. Hutchinson SIDLEY AUSTIN LLP 787 Seventh Avenue New York, New York 10019 (212) 839-5398 Douglas I. Lewis Jamie L. Secord SIDLEY AUSTIN LLP One South Dearborn Street Chicago, Illinois 60603 (312) 853-7000 August 30, 2007

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TABLE OF CONTENTS TABLE OF CONTENTS................................................................................................................. i TABLE OF AUTHORITIES ......................................................................................................... iv INTRODUCTION .......................................................................................................................... 1 DISCUSSION OF LEGAL PRINCIPLES ..................................................................................... 1 ARGUMENT.................................................................................................................................. 6 I. U.S. PATENT NO. 6,327,599 ........................................................................................... 6 A. B. C. D. E. F. "Template File" (Element 1) (Claim 11 of `599 Patent)....................................... 6 "Fixed Information" (Element 2) (Claim 11 of `599 Patent) ............................... 8 "Variable Information" (Element 3) (Claim 11 of `599 Patent)........................ 12 "The Master Page File" and "Wherein The Master Page File Defines the Fixed Information" (Element 5) (Claim 11 of `599 Patent)......................... 14 "A Database Having Entries Therein Each Representing Variable Information" (Element 4) (Claim 11 of the `599 patent).................................... 17 "Converting the Template File, the Database and the Master Page File into Press Commands Specifying Sequence and Content of Page Production by the Press" (Element 6) (Claim 11 of `599 Patent)...................... 18 "Press Commands Specifying Sequence and Content of Page Production by the Press" (Element 7) (Claim 11 of `599 Patent)...................... 20

G. II.

U.S. PATENT NO. 6,844,940 ......................................................................................... 21 A. B. C. D. E. F. "Template" (Element 8) (Claims 11, 17, 18, 19, 20, 22 of `940 Patent)............. 22 "Reusable Object" (Element 10) (Claims 11, 18 of `940 Patent)....................... 24 "Position Data" (Element 11) (Claim 11 of `940 Patent) ................................... 26 "Variable Object" (Element 12) (Claims 11, 20, 21, 22 of `940 Patent) ........... 27 "Master Data" (Element 9) (Claims 11, 18, 19 of `940 Patent) ......................... 29 "Developing A Database Having A Number Of Entries Each Of Which Represents A Variable Object" (Element 13) (Claim 11 of `940 Patent) ................................................................................................................... 31

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G.

"Causing the Electronic Press to Print Output Pages with The Reusable Objects and Variable Objects by Separating the Master Data from the Position Data for Each Data Set" (Element 14) (Claim 11 of `940 Patent).................................................................................................. 32 "Separating The Master Data From The Position Data For Each Data Set In Preparation For Rasterization" (Element 15) (Claim 11 of `940 Patent) ................................................................................................................... 34 "Page Sequence Commands" (Element 16) (Claim 12 of `940 Patent)............. 35 "Wherein The Master Data Of The First And Second Data Sets Are Identical" (Element 17) (Claim 19 of `940 Patent) ............................................. 36 "Wherein The Variable Objects Of The First And Second Data Sets Are Identical" (Element 18) (Claim 20 of `940 Patent)...................................... 37

H.

I. J. K. III.

U.S. PATENT NO. 6,205,452 ......................................................................................... 38 A. B. C. D. E. F. "Template Page File" (Element 22) (Claims 1, 7 of `452 Patent) ...................... 38 "Fixed Information" (Element 24) (Claim 1 of `452 Patent) ............................. 40 "Variable Information" (Element 21) (Claim 1 of `452 Patent)........................ 40 "Variable Graphics Information" (Element 19) (Claims 1, 2, 10 of `452 Patent) ................................................................................................................... 40 "Master Data" (Element 23) (Claim 1 of `452 Patent) ....................................... 41 "A Database Having A Number Of Fields, Each Of Which Represents Variable Information Or Variable Graphics Information" (Element 20) (Claim 1 of `452 Patent) ................................................................................. 41 "Causing the Display Device to Display the Pages with the Fixed Information, Selected Variable Information from the Database, and Selected Variable Graphics Information from the Database" (Element 25) (Claim 1 of `452 Patent) ................................................................................. 43 "Executing a Graph File to Generate a Graph" (Element 26) (Claim 2 of `452 Patent)....................................................................................................... 44 "QuarkXPress" (Element 27) (Claim 7 of `452 Patent) ..................................... 45

G.

H. I. IV.

U.S. PATENT NO. 6,952,801 ......................................................................................... 46 A. "Storing a First Number of Pages" (Element 28) (Claim 1 of `801 Patent) ................................................................................................................... 46

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B. C.

"Pagination Information" (Element 31) (Claims 1, 4, 5, 13, 16, 17, 25 of `801 Patent)........................................................................................................... 48 "Specifying A First Set Of Pagination Information Including An Indication Of Whether A Stored Page Is To Be Selectively Included In The First Book" (Element 29) and "Specifying A Second Set Of Pagination Information Including An Indication Of Whether A Stored Page Is To Be Selectively Included In The Second Book" (Element 30) (Claim 1 of `801 Patent) ................................................................. 48 "Determining Whether A Stored Page Is To Be Assembled Into The First Book Based On The First Set Of Pagination Information Wherein A Second Number Of Stored Pages To Be Assembled Into The First Book Is Less Than The First Number" (Element 32) and "Determining Whether A Stored Page Is To Be Assembled Into The Second Book Based On The Second Set Of Pagination Information Wherein A Third Number Of Stored Pages To Be Assembled Into The Second Book Is Different Than The Second Number And No Greater Than The First Number" (Element 33) (Claim 1 of `801 Patent) ..................... 50

D.

CONCLUSION............................................................................................................................. 52

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TABLE OF AUTHORITIES FEDERAL CASES Page(s)

Acumed LLC v. Stryker Corp., 483 F.3d 800 (Fed. Cir. 2007)................................................................3, 28, 35, 37 Ballard Med. Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352 (Fed. Cir. 2001)..............................................................................25 CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225 (Fed. Cir. 2005)...................................................................... passim D.M.I., Inc. v. Deere & Co., 755 F.2d 1570 (Fed. Cir. 1985)..............................................................................16 Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364 (Fed. Cir. 2001)...................................................................... passim Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048 (Fed. Cir. 1994)......................................................................4, 20, 26 Free Motion Fitness, Inc. v. Cybex, 423 F.3d 1343 (Fed. Cir. 2005)....................................................................5, 39, 46 Hewlett-Packard Co. v. Repeat-O-Type Stencil Mfg. Corp., 123 F.3d 1445 (Fed. Cir. 1997)..........................................................................5, 48 Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352 (Fed. Cir. 2004)................................................................2, 3, 23, 26 Honeywell Int'l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131 (Fed. Cir. 2004)..............................................................................36 Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111 (Fed. Cir. 2004)................................................................................2 Intamin Ltd. v. Magnetar Techs. Corp., 483 F.3d 1328 (Fed. Cir. 2007)..........................................................................4, 20 Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988)............................................................................4, 21 Lampi Corp. v. American Power Prods., Inc., 228 F.3d 1365 (Fed. Cir. 2000)....................................................................5, 17, 31

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Masco Corp. v. United States, 303 F.3d 1316 (Fed. Cir. 2002)..................................................................32, 33, 43 O.I. Corp. v. Tekmar Co., 115 F.3d 1576 (Fed. Cir. 1997)..............................................................................33 Omega Eng'g Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003)..............................................................................11 In re Omeparazole Patent Litig., 483 F.3d 1364 (Fed. Cir. 2007)..........................................................................2, 16 PSC Computer Prods., Inc. v. Foxconn Int'l, Inc., 355 F.3d 1353 (Fed. Cir. 2004)..............................................................................51 Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284 (Fed. Cir. 2006)................................................................................3 Pfizer, Inc. v. Teva Pharm., U.S.A., Inc., 429 F.3d 1364 (Fed. Cir. 2005)..................................................................13, 49, 50 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)...................................................................... passim RF Delaware Inc. v. Pacific Keystone Techs. Inc., 326 F.3d 1255 (Fed. Cir. 2003)..........................................................................2, 23 Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559 (Fed. Cir. 1997)..........................................................................5, 17 Rexnord Corp. v. Laitram Corp., 274 F.3d 1336 (Fed. Cir. 2001)............................................................28, 36, 37, 38 In re Roberts, 470 F.2d 1399 (CCPA 1973) .................................................................................33 S3 Inc. v. Nvidia Corp., 259 F.3d 1364 (Fed. Cir. 2001)................................................................................3 Seal-Flex, Inc v. Athletic Track & Court Constr., 172 F.3d 836 (Fed. Cir. 1999)................................................................................33 Ex Parte Simpson, 218 U.S.P.Q. 1020 (Bd. Pat. App. 1982) ...............................................................45

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Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356 (Fed. Cir. 2004)..............................................................................27 SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004)................................................................................25 Tandon Corp. v. U.S. Int'l Trade Comm'n, 831 F.2d 1017, 1023 (Fed. Cir. 1987)....................................................................22 Versa Corp. v. Ag-Bag Int'l, Ltd., 392 F.3d 1325 (Fed. Cir. 2004)........................................................................14, 24 Ex Parte Zimmerley, 153 U.S.P.Q. 367 (Bd. Pat. App. 1966) .................................................................33 FEDERAL STATUTES 35 U.S.C. § 112, ¶1..............................................................................................................4 35 U.S.C. § 112, ¶6............................................................................................................32 OTHER AUTHORITIES American Heritage Dictionary (2d ed. 1991) ............................................................ passim Manual of Patent Examining Procedure § 2111.03 (7th ed. rev. 2000).........................5, 48 Microsoft Computer Dictionary (2d ed. 1994). .................................................................44 Webster's Third New International Dictionary (1993).............................................. passim

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INTRODUCTION Defendants seek to limit the claims to the preferred embodiment in the specification by arguing that the patents-in-suit describe a "page-based approach" to variable data printing. Defendants then contrast this "page-based approach" to an "element-based

assembly approach" that, perhaps not surprisingly, Defendants believe themselves to utilize. Defendants' "page-based approach," however, relies on a fundamentally flawed proposition: that the claims cover only the exact system disclosed in the specification. A basic patent law principle is that the claims, not the specification, determine the scope of a patent. The specification may help define a claim term, but the claims do not incorporate features appearing in the specification unless the specification evidences an intent to so limit the claims. No such intent is present here and, notably, Defendants never argue that RRD had any such intent. The Court should disregard Defendants' "page-based approach." RRD's

construction is faithful to the actual language appearing in the claims. The Court should apply the claim language and use the specification as a dictionary to define terms, not to limit the claims. Following this well-established procedure will lead the Court to adopt RRD's

construction. DISCUSSION OF LEGAL PRINCIPLES Defendants argue that the specification discloses only a "page-based system" and seek to limit the asserted claims to such a "page-based approach," transparently trying to exclude their supposedly "element-based" infringing products. See Defs.' Br. at 7-10, 12-18. The claims, however, lack any indication that they cover only a "page-based system." Unquestionably, the specification discloses a "page-based system." And in

support of their "page-based approach," Defendants claim that "Donnelley developed only one approach." Defs.' Br. at 2 (emphasis in original). But none of this matters because it is an

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elemental principle of patent law that the specification does not limit more general claims. The claims, not the specification, define the scope of a patent.1 Indeed, Defendants make the exact argument rejected in Phillips: "we have expressly rejected the contention that if a patent

describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment."2 Claims are construed based on their language, with the specification helping to define the meaning of their terms.3 Quite simply, RRD's claims can encompass a broader scope than the preferred embodiment. Indeed, "[a]n independent claim usually covers a scope broader than the preferred embodiment."4 "A patentee may claim an invention broadly and expect enforcement of the full scope of that language absent a clear disavowal or contrary definition in the specification."5 Defendants never offer any legally cognizable reason to limit the claims to a "page-based approach." For claims to be limited to the specific embodiment in the specification, the patentee must have demonstrated "clear intent" to so limit the claims.6 Such intent requires that the specification have "an intentional disclaimer, or disavowal, of claim scope by the

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"It is a `bedrock principle' of patent law that `the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Phillips, 415 F.3d at 1323. "[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313. RF Delaware Inc. v. Pacific Keystone Techs. Inc., 326 F.3d 1255, 1264 (Fed. Cir. 2003) (emphasis added). Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1357 (Fed. Cir. 2004). In re Omeparazole Patent Litig., 483 F.3d 1364, 1372 (Fed. Cir. 2007) ("Absent some clear intent to the contrary, this court does not import examples from the specification into the claims."). 2

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inventor."7 Alternatively, the specification may show that "the patentee . . . intends for the claims and the embodiments in the specification to be strictly coextensive."8 Defendants'

argument that the specification discloses only a "page-based approach" is not sufficient.9 Defendants offer no proof, or even argument, that RRD intended to disclaim claim scope or that RRD intended the specification to be coextensive with the claims. Indeed, the specification says the opposite.10 Defendants do nothing more than point to the obvious fact that the patents-in-suit disclose a particular embodiment. See, e.g., Defs.' Br. at 15 ("Page-bypage processing is thus critical to all of the asserted patents."). By providing a detailed

disclosure, however, RRD was "not narrowly defining the term[s] [at issue] or otherwise limiting the claims, but merely discharging [its] statutory duties `to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.'"11 In addition to offering no proof that RRD intended to limit the claims, Defendants admit that RRD had no such intent ­ but then read the specification into the claims anyway. With respect to the `940 patent, Defendants argue that "[f]aced with the reality of having out-ofdate patents, Donnelley's patent attorneys crafted new patent claims, which attempted to obfuscate and expand upon the meaning of `fixed information' and `variable information,' while
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Phillips, 415 F.3d at 1316. Phillips, 415 F.3d at 1323. Home Diagnostics, 381 F.3d at 1357 ("[T]he applicant's choice to describe only a single embodiment does not mean that the patent clearly and unambiguously disavowed other embodiments."). `599 Patent col.5, ll.35-40 (stating that the invention is "not limited to use with a particular type of demand printer or a particular system for controlling a printer"); see also Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1290 (Fed. Cir. 2006) (finding no disclaimer where the specification stated that "[t]hese examples are illustrative and are not to be read as limiting the scope of the invention as it is defined by the appended claims"). Acumed LLC v. Stryker Corp., 483 F.3d 800, 809 (Fed. Cir. 2007); Cf. S3 Inc. v. Nvidia Corp., 259 F.3d 1364, 1369 (Fed. Cir. 2001) ("The purpose of claims is not to explain the technology or how it works, but to state the legal boundaries of the patent grant."). 3

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avoiding any mention of a `page.'" Defs.' Br. at 17.12 But after claiming that RRD's attorneys intentionally sought broad claim scope, Defendants still conclude that "the `940 patent claims recite a page-based method as does the `599 patent." Defs.' Br. at 18. Defendants rely on the fact that RRD cited the `599 patent as providing the written description for the `940 patent's claims under 35 U.S.C. § 112, ¶1. Defendants then assume that the `940 patent's claims must be identical to the preferred embodiment in the specification. Defendants, however, ignore that claims are limited by their language, not by the preferred embodiment13 and that claims can be broader than the preferred embodiment.14 In any event, RRD had no intent to limit the claims of any of the patents-in-suit to a "page-based approach," and Defendants offer no proof of such intent. Not only do Defendants read the specification into the claims, but they read limitations not even in the specification into the claims. For example, Defendants read the "database" steps to require that the database contain only "variable information" (or "variable objects"). Defs.' Br. at 30. The specification, however, contains a database with a control code that is not "variable information."15 Similarly, Defendants want the "fixed information" to

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To be sure, there is nothing wrong with adding claims intended to capture an existing method. See Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 874 (Fed. Cir. 1988) (holding that it is not improper "to amend or insert claims intended to cover a competitor's product the applicant's attorney has learned about during the prosecution of a patent application"). The Federal Circuit has explained that "although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments." Phillips, 415 F.3d at 1323. Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328, 1335 (Fed. Cir. 2007) ("As this court has repeatedly noted . . . a narrow disclosure in the specification does not necessarily limit broader claim language."); see also Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) ("[P]articular embodiments appearing in a specification will not be read into the claims when the claim language is broader than such embodiments."). `599 Patent col.10, ll.50-59. 4

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include the "location" of the fixed information on the page.

Defs.' Br. at 26.

Yet the

specification describes the location of the "fixed information" as changeable and only the content of the "fixed information" as constant.16 In addition, Defendants also misapply other claim construction law. The claims at issue in this case are open-ended "comprising" claims. "Comprising" is an open-ended term meaning that, in addition to the recited steps and features, the claim can perform other, unclaimed steps.17 Put simply, the law allows for any number of unclaimed steps between, before, or after the claimed steps.18 Similar to their handling of "comprising," Defendants also misapply the law relating to other open-ended terms. Defendants ignore that unless the specification indicates otherwise, claiming an element "having" some features does not prohibit it from "having" other features too.19 Similarly, when the term "including" lists claimed features, it does not exclude other, unclaimed features.20

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`599 Patent col.7, ll.36-50, col.13, ll.31-35, Figs. 6a, 7a. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1235 (Fed. Cir. 2005) ("`[C]omprising'...is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.") (internal citations and quotation omitted); Free Motion Fitness, Inc. v. Cybex Int'l, Inc., 423 F.3d 1343, 1353 (Fed. Cir. 2005) ("[T]he `comprising' language allows additional features."); see also Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1380-81 (Fed. Cir. 2001). See CollegeNet, 418 F.3d at 1235. See Lampi Corp. v. American Power Prods., Inc., 228 F.3d 1365, 1376 (Fed. Cir. 2000); Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1573 (Fed. Cir. 1997). See Hewlett-Packard Co. v. Repeat-O-Type Stencil Mfg. Corp., 123 F.3d 1445, 1451 (Fed. Cir. 1997) ("The claim term `including' is synonymous with `comprising,' thereby permitting the inclusion of unnamed components."); Manual of Patent Examining Procedure § 2111.03 (7th ed. rev. 2000) ("The transitional term `comprising,' which is synonymous with `including,' ...is inclusive or open-ended and does not exclude additional, unrecited elements or method steps."). 5

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In sum, Defendants' claim construction is inconsistent with the law. This leads Defendants to an incorrect and narrow claim construction. The Court should apply the law and find that the disputed claim terms should be construed as RRD proposes. See Am. Ex. A. ARGUMENT I. U.S. PATENT NO. 6,327,59921 A. "Template File" (Element 1) (Claim 11 of `599 Patent)22 Defendants' Proposed Construction a file that stores template pages, which are single page layouts defining the content and position of fixed information and the position of variable information on that page

RRD's Proposed Construction data representing the position and content of the "fixed information" and identifying the position and corresponding entry (or entries) in the database of the "variable information," which is stored in a file

The parties dispute three issues relating to the "template file": (1) whether "single page layouts" belongs in the construction, (2) whether the "template file" must "store[] template pages," and (3) whether the "template file" identifies the source of the "variable information." Defendants frankly admit their goal of limiting this term to "page-based processing" and that they added "single page layout" to do so.23 Defs.' Br. at 25. Defendants, however, never offer any legally cognizable reason to support such a limitation. The claim language speaks generally about the "template file" and what it contains ­ "a template file defining pages to be printed with fixed information common to all of the pages and variable information unique to each page." Similarly, the specification defines "template file" (see
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For the Court's convenience, attached hereto is Amended Exhibit A, which lists each disputed term and each party's proposed constructions. This term appears in the following context in the claim: "template file defining pages to be printed with fixed information common to all of the pages and variable information unique to each page." As explained in RRD's Opening Brief, neither the `599 patent specification nor claims refer to a "single page layout," making it unclear what Defendants even mean by the phrase. RRD's Br. at 12. Defendants' attempt to add a so-called "clarifying phrase" to the construction of "template file" (Defs.' Br. at 25) is in fact another restriction with no support in the intrinsic record. 6

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RRD's Br. at 12) but never says that the invention is limited to the specific disclosure or demonstrates any intent to limit this term to the preferred embodiment. In sum, there is no reason to limit this term to "page-based processing." With regard to the second dispute, although the claim recites "a template file defining pages to be printed," Defendants read this language as "a template file defines and stores template pages." Defs.' Br. at 25 (emphasis added). As discussed in RRD's Opening Brief, "defines" and "stores" are not synonymous. See RRD's Br. at 13.24 And Defendants' addition of "template pages" lacks any basis in the claim. The term "template page" does not appear anywhere in the claim.25 Defendants also wrongly read this element to cover only plural "pages." The law interprets a "template file defining pages to be printed" to refer to one or more pages.26 On the third dispute, Defendants dispute whether the "template file" contains information about where to find the data representing the variable information ­ i.e., in the corresponding entry (or entries) in the database. Although Defendants claim that such language is "unsupported and superfluous" (Defs.' Br. at 25), RRD's proposed language comes directly from asserted claim 11. The "template file" holds information "defining pages to be printed with
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"Define" in an ordinary sense indicates the data included therein. See `599 Patent col.8, ll.16-23; see also American Heritage Dictionary (2d ed. 1991), Ex. M, at 375 (describing "define" as "[t]o describe the nature or basic qualities of; explain" or "to specify distinctly"); Webster's Third New International Dictionary (1993), Ex. N, at 592 (describing "define" as "to discover and set forth the meaning of"). "Store," on the other hand, means "to record (information) in an electronic device (as a computer) from which the data can be obtained as needed." Webster's Third New International Dictionary (1993), Ex. N, at 2252; see also American Heritage Dictionary (2d ed. 1991), Ex. M, at 1201 (defining "store" as "[t]o reserve or put away for future use"). A variant of "template page" is a disputed term in another patent (the `452 patent), but there is no reason to read that term into this claim, and Defendants never offer one. See also RRD's Br. at 12. See CollegeNet, 418 F.3d at 1232 (finding it "well settled" that a singular term can mean "`one or' more"). 7

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. . . variable information" and part of defining such pages requires identifying the data to substitute for the "variable information." Fully defining "variable information" requires

identifying where to find the data to substitute for the variable placeholder. Other than mentioning their unsupported "page-based processing" theory, Defendants offer only a single citation to the specification in support of their construction. Defs.' Br. at 25. But even that part of the specification supports including a reference to the entries in the database, as RRD proposes: The variable information may be stored in a database created by the publisher and the template file(s) specify the locations on particular pages for variable information stored in the database as noted in greater detail hereinafter. `599 Patent col.6, ll.6-9 (emphasis added). B. "Fixed Information" (Element 2) (Claim 11 of `599 Patent)27 Defendants' Proposed Construction the substance (i.e., content) and location of the information is common to all of the pages to be printed and does not vary from page to page

RRD's Proposed Construction information that does not vary from printed product to printed product

The parties dispute whether "fixed information" (1) includes the location of the fixed information, (2) must be "common to all of the pages to be printed," and (3) does not vary from "page to page" or "printed product to printed product." RRD's construction uses the ordinary meaning and the specification to define "fixed information" and does not have the potential to confuse the jury with respect to multipage output (e.g., a book or magazine). Although Defendants mention consulting the intrinsic evidence (Defs.' Br. at 26), they ignore the claim language and the portions of the `599 specification that define "fixed information." The specification confirms that the `599 patent
27

This term appears in the following context in the claim: "fixed information common to all of the pages." 8

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defines "fixed information" consistent with its ordinary meaning28 as "printed information which does not vary from book to book of the same version."29 The parties' first dispute relates to whether the "fixed information" must be at the same location on every printed product. The claim never says that it does, despite Defendants' argument to the contrary. Defs.' Br. at 26. Moreover, the specification clearly weighs in RRD's favor. The specification provides an example where "fixed information" appears in different locations: [T]he present invention is not limited to production of books of the same "version" (i.e., books having the same master information). For example, the book versions of FIGS. 7a, 7b and 8a, 8b may be produced together with the book version of FIG. 6a and 6b in the same production run or job. The book version example of FIGS. 7a and 7b includes pages P5-P8 to be reproduced a number of times to produce individual books. The book version of FIGS. 7a and 7b is identical to of the book version of FIGS. 6a and 6b except that an additional area 113 is provided on the page P5 for placement of variable information, in addition to the areas 110 and 112. Because of the addition of the area 113, the remaining master information appearing in an area 114 differs from master information appearing in an area 116 of the page P1 of FIG. 6a.30 The figures cited in the above quotation are reproduced below and show that the addition of more variable information into Figure 7(a) (denoted by area 113 in Figure 7(a)), moves the fixed information (denoted by area 116 in Figure 6(a) and area 114 in Figure 7(a)) to a different location on the printed pages:31

28

29 30 31

In its Opening Brief, RRD cited dictionary definitions showing that, in the ordinary sense, "fixed" indicates that the information does not vary. American Heritage Dictionary (2d ed. 1991), Ex. M, at 508 (describing "fixed" as "[n]ot subject to change or variation"); Webster's Third New International Dictionary (1993), Ex. N, at 861 (defining "fixed" as "not adjustable"); RRD's Br. at 13 & n.49. `599 Patent col.6, ll.2-4. `599 Patent col.7, ll.36-50; see also col. 13, ll.31-35. RRD's Br. at 14 & n.53 discusses other places where the specification explains that fixed information may appear in a different position on different pages. 9

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To support adding "location," Defendants cite to a discussion of "template files" in the specification rather than "fixed information": [O]ne or more template files 106 are developed by a publisher specifying the content (including appearance) of fixed information and the positioning of all information (i.e., fixed and variable) on the different books or book versions. *** The template files 106 include data specifying the position and content of fixed information on the pages to be printed.32 This language sheds no light on "fixed information." And although Defendants argue that both the substance and location of the fixed information must be the same on every printed page, the language quoted above states only that template files include data specifying the position and content of fixed information, not that the fixed information must always appear in the same location on every printed page. That position could be specified in a way that allows the "fixed information" to move ­ e.g., a specified amount away from some variable information that varies in size. Defendants also support their "location" argument by reference to their "pagebased processing" argument, claiming that "fixed information" must "be tied to the notion of page." Defs.' Br. at 27. As throughout their brief, Defendants offer no reason to limit this claim element to "page-based processing," providing no citations to any intrinsic or extrinsic evidence

32

Defs.' Br. at 26, citing `599 Patent col.8, ll.6-9, 16-17. 10

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or to case law. As discussed above, the location of the fixed information need not be "common to all pages." With regard to the parties' second dispute, RRD does not dispute that in claim 11, the content of the "fixed information" must be "common to all pages" ­ the claim says that. Defendants, however, overstate what this means. The claim does not require that the "fixed information" be, as Defendants assert, "common to all the pages to be printed," only that it be common to "the pages." "The pages" does not necessarily refer to every page in a print job. This claim is an open-ended "comprising" claim, meaning that "all pages" refers to "all pages" being described in the claim, not to all pages in the job or all pages in a printed product.33 See RRD's Br. at 14. For example, in printing a two-page advertisement, the claim does not require that the same "fixed information" appear on both pages. Finally, Defendants complain about RRD's use of "printed product" in its proposed construction. Defs.' Br. at 27. In defining "fixed information," the specification speaks of the "printed information" not varying "from book to book of the same version."34 The `599 patent defines "book" to mean such things as "magazines, catalogs or any other printed and bound matter," all of which have more than one page.35 The phrase "printed product" is better than "page" because it signifies that the printed output may have one or more pages. RRD

33

34 35

See CollegeNet, 418 F.3d at 1235. "Fixed information" also appears in the `452 patent without the "all pages" language, and the disputed term should be construed to have the same meaning in all the patents-in-suit. See Omega Eng'g Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003). Defendants, however, try to incorporate "all pages" into that patent as well. See Section III.B. Additionally, even though the term "fixed information" does not appear in the `940 patent claims, Defendants attempt to import that term ­ with all the additional restrictions Defendants place on "fixed information"­ into the `940 patent's claims. Further, the `940 patent claims do not recite that the "fixed information" must be common to all pages. `599 Patent col.6, ll.2-4. `599 Patent col.1, ll.20-21. 11

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further believes the jury will understand "printed product" better than "book" because the `599 patent uses "book" to mean more than just a traditional hardback or paperback book. Defendants' use of "page" ignores that the printed output can be more than a single page and that every page does not need to have the same "fixed information." C. "Variable Information" (Element 3) (Claim 11 of `599 Patent) Defendants' Proposed Construction information that varies from printed page to printed page and is retrieved from a database

RRD's Proposed Construction information that typically varies from printed product to printed product

The parties dispute (1) whether "variable information" must be retrieved from the database, (2) whether the variable information may "typically" vary between printed products, (3) whether the construction must include the "notion of a page," and (4) whether the term "printed product" is appropriate. Regarding the first dispute, Defendants want to mandate that the "variable information" be "retrieved from a database." Defs.' Br. at 28.36 The claim language, however, does not require "variable information" to be "intertwined" with the "database," as Defendants assert. Although the database holds "variable information," the claim does not require that all the variable information be in the database or that every item in the database be variable information. As discussed in RRD's Opening Brief, the specification clearly states that "variable information may be stored in a database," not that it must be retrieved from a database.37 RRD's Br. at 16. And the specification discusses variable images that are not located in the database at
36

37

Defendants argue that "variable information is the information contained in the database, and the information in the database consists of variable information, and only variable information, since by the terms of the claim language itself, `each entry' in the database is variable information." Defendants, however, do not quote the entire claim term, which describes the database as "having entries therein each representing variable information to be printed." Under the relevant law, the database may "hav[e]" other entries as well. See Section I.E. `599 Patent col.6, ll.5-7 (emphasis added). 12

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all (e.g., the database contains a record that selects amongst a collection of variable images). See RRD's Br. at 16; `599 patent, col. 10, ll.22-25. Defendants next take issue with the word "typically" in RRD's construction, claiming that "there is no basis for insertion of the word `typically' into the definition" of "variable information." Defs.' Br. at 29. Contrary to Defendants' statement, the specification expressly defines variable information as "information (which typically varies from book to book)."38 Defendants' proposed construction incorrectly requires information always to vary from one printed product to the next. As discussed in RRD's Opening Brief, the specification contains a sample database where each customer lives in the same state. See RRD's Br. at 5. A proposed construction that is inconsistent with the specification is not correct.39 With respect to the third dispute, Defendants again make their "page-based" argument, complaining that RRD "does not include any notion of a page" in its construction. Defs.' Br. at 29. Defendants' sole support is the prosecution history, which they take out of context to suggest that RRD in some way embraced "page-based processing" while prosecuting the `599 patent. Defendants claim that "when arguing about the prior art to the Examiner, Donnelley belittled the prior art for not disclosing how variable information `could be placed in a fixed location on a finished page . . .'" Defs.' Br. at 29. Defendants ignore, however, that the language they quote does not describe the claims in suit. Unlike the claims in suit, the claims that RRD was discussing included an element requiring "area data representing an area of a page in which the variable information is to be printed" ­ i.e., "variable information" "placed in a

38

39

`599 Patent col.6, l.5 (emphasis added). In its Opening Brief, RRD cited additional examples from the `599 specification where the variable information does not vary for every printed product. See RRD's Br. at 15-16. See Pfizer, Inc. v. Teva Pharm., U.S.A., Inc., 429 F.3d 1364, 1374 (Fed. Cir. 2005). 13

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fixed location on a finished page" as RRD's attorney told the Patent Office.40 When RRD's attorney made this statement, the Examiner had already allowed the claims in suit, leaving RRD no reason to be commenting on their patentability. Indeed, RRD's attorney expressly identified the claims he was discussing ­ the ones still pending and not the ones that had already been allowed.41 The claims in suit, which the Examiner had previously approved, do not have this

"area data" limitation, making this file history irrelevant. With respect to the fourth dispute, as in its construction of "fixed information," RRD uses the phrase "printed product." RRD believes the jury will understand "printed product" better than "book" given that "book" in the `599 patent can mean more than a traditional hardback or paperback book.42 As discussed above, the `599 specification expressly states that variable information "typically varies from book to book."43 Defendants' construction is

confusing because a "page" in the claim may be one page or many, which the jury may not appreciate.44 D. "The Master Page File" and "Wherein The Master Page File Defines the Fixed Information" (Element 5) (Claim 11 of `599 Patent) Defendants' Proposed Construction a copy of the template file stripped of the placeholders for the variable information and defines only the content and location of the fixed information plain meaning using the definitions for "master page file" and "fixed information"

RRD's Proposed Construction data representing "fixed information," which is stored in a file

the "master page file" identifies the "fixed information"

40 41 42 43 44

See RRD004574-77, Defs.' Br. at Ex. FW1. See RRD004576, Defs.' Br. at Ex. FW1. `599 Patent col.1, ll.20-21. `599 Patent col.6, l.5 (emphasis added). See CollegeNet, 418 F.3d at 1232 (finding it "well settled" that a singular term can mean "`one or' more"); see also Versa Corp. v. Ag-Bag Int'l, Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) ("[P]lural can describe a universe ranging from one to some higher number."). 14

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The parties have four disputes about these terms: (1) whether to incorporate the preferred embodiment into this term, (2) whether the "master page file" must contain the "location" as well as the content of the "fixed information," (3) whether the "master page file" defines "only" this information, and (4) whether "identifies" and "defines" are synonymous in construing the "wherein" clause.45 The parties' first dispute goes to the heart of claim construction law ­ whether to apply the claim language as written or to read in the exact process described in the specification. RRD's proposed construction for "master page file" tracks the claim language and does not inappropriately incorporate the exact process discussed in the specification into the claim. RRD's Br. at 16-17. Defendants offer no legally recognizable reason to incorporate the process of the preferred embodiment ­ "stripp[ing] of the placeholders for variable information." The claim generically describes a process with an end result ­ "developing" a "master page file" that "defines the fixed information" ­ not the specific process that produces the "master page file." See RRD's Br. at 17. The second dispute involves Defendants' attempt to have the "master page file" contain the "location" of the fixed information. Defs.' Br. at 31. The claim never says that the location of the fixed information must be in the "master page file." Moreover, even though the "template file" contains the location of the fixed information, there is nothing in the claim requiring that location to be in the "master page file," too. Indeed, Defendants' argument that

45

Defendants also raise a red herring, claiming that RRD's definition is too broad because a "master page file" could be considered part of a "template file" and RRD differentiated between the two in prosecuting the `599 patent. Defs.' Br. at 31-32. RRD is not claiming that the "master page file" can be part of the "template file." RRD is willing to add "separate and apart from a template file" to its construction to eliminate any confusion. In any event, Defendants' argument provides no reason to adopt their construction or add other restrictions to this term. 15

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"[i]nformation isn't really fixed if it can vary all over the page" is simply inconsistent with the specification46 and the `940 patent, which contains a dependent claim demonstrating that the same "master data" can appear in different positions. In sum, the location is not fixed; the content is fixed. Defendants conclude that the "location" should be in the "master page file" because they have read the preferred embodiment into the claim. Defs.' Br. at 31. The

specification discloses a particular technique of "stripping" variable information from the template and identifying the remaining information as the "master page file." But this claim is not coextensive with the specification, and Defendants identify no reason to import features in the specification into the claim.47 The specification does not state that it is intended to limit the claim. To the contrary, it clearly states that it "is to be construed as illustrative only" and that "the exclusive use of all modifications which come within the scope of the appended claims is reserved."48 With regard to the third dispute, Defendants propose that the "master page file" "defines only the content and location of the fixed information." (Emphasis added.) The claim contains no language, however, requiring the "master page file" to contain anything except the "fixed information." As an open-ended "comprising" claim, the claimed method still covers processes with additional steps or features not mentioned in the claim.49 Further, unasserted claim 6 recites that "the master page file includes data defining the fixed information only." Claim 11 contains no such language.50

46 47 48 49 50

See, e.g., `940 Patent col. 13, ll.31-35. See In re Omeparazole Patent Litig., 483 F.3d at 1372; Phillips, 415 F.3d at 1323. `599 Patent col.19, ll.14-23. See CollegeNet, 418 F.3d at 1235. See D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 1574 (Fed. Cir. 1985). 16

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Finally, with respect to the broader phrase "wherein the master page file defines the fixed information," the parties agree that the construction of the phrase hinges on the constructions of the disputed terms "master page file" and "fixed information." See Defs.' Br. at 32. Defendants complain, however, about RRD's use of "identifies" to explain "defines" to the jury. The two terms are clearly synonymous in this context. Indeed, "define" means "[t]o describe the nature or basic qualities of; explain" or "to specify distinctly,"51 and "identify" means "[t]o ascertain the origin, nature, or definitive characteristics of."52 Defendants, however, just repeat the word "define." E. "A Database Having Entries Therein Each Representing Variable Information" (Element 4) (Claim 11 of the `599 patent) Defendants' Proposed Construction each entry in the database represents variable information

RRD's Proposed Construction a collection of data representing the "variable information"

The parties dispute whether each and every entry in the database must contain variable information or whether some entries in the database can hold other information, such as control codes. Defendants seek "total congruence" between the database and the "variable information." Defs.' Br. at 30. Defendants simply ignore the law on construing a claim with the term "having." Claim 11 recites "a database having entries therein each representing variable information." (Emphasis added.) As explained in RRD's Opening Brief (RRD's Br. at 19 & n.74), the term "having" does not preclude the database from having other features and other types of data in

51

52

American Heritage Dictionary (2d ed. 1991), Ex. M, at 375; see also Webster's Third New International Dictionary (1993), Ex. N, at 592 (describing "define" as "to discover and set forth the meaning of"). American Heritage Dictionary (2d ed. 1991), Ex. M, at 639; see also Webster's Third New International Dictionary (1993), Ex. N, at 1123 (describing "identify" as "to establish the identity of"). 17

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addition to those recited in the claims. Specifically, the database may contain entries in addition to the entries recited in the claim that represent variable information. These other entries need not represent "variable information." Further, a term using "having" must be interpreted in light of the specification.53 Here, the specification makes clear that not all entries in the database represent variable information. See RRD's Br. at 18-19. For example, some entries represent a "control code" or the number of copies.54 Furthermore, the specification states that, "[t]he variable information may be stored in a database created by the publisher."55 Some entries represent variable information, but there can be others that do not. And some "variable

information" may not be located in the database as the claim never says that all the "variable information" is located there. Finally, Defendants make no effort to define the key term in the disputed phrase ­ "database." RRD's proposed construction does so ("a collection of data representing the

`variable information'"), and, in their brief, Defendants themselves agree that "the database consists of the data representing `variable information.'" Defs.' Br. at 30. F. "Converting the Template File, the Database and the Master Page File into Press Commands Specifying Sequence and Content of Page Production by the Press" (Element 6) (Claim 11 of `599 Patent)

RRD's Proposed Construction Defendants' Proposed Construction Generating instructions to a press for using the "template file," the "database," and the "master page file" to produce "press sequencing pages defined by the template files, commands specifying sequence and content the database and the master page file of page production by the press"

53 54 55

See Lampi, 228 F.3d at 1376; Regents of the Univ. of Cal., 119 F.3d at 1573. `599 Patent col.9, ll.40-50, col.10, ll.22-32, 40-50, 57-59. `599 Patent col.6, ll.5-7 (emphasis added). 18

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The parties dispute whether one creates the "press commands" using the "template file," "database," and "master page file" or whether those sources "define" the press commands.56 The claim language itself answers that it is the former, not the latter. The claimed method uses the "template file," "database," and the "master page file" to produce the press commands ("converting ... into"); the press commands themselves are not defined by these sources. See RRD's Br. at 19, 21. The specification supports this conclusion.57 The claim language does not require any particular method or technique for "converting" these sources into "press commands," and indeed, in a comprising claim, other sources could be used as well. The specification describes, for example, also using "variable page files."58 Defendants, in arguing that these sources "define" the press commands, ignore the claim language and base their argument on the specification's preferred embodiment. See Defs.' Br. at 33 ("According to the entire teaching of the patent, the pages that are sent to the press are defined by the content of the template file and the database."; "Based on this specific description of the process [in the specification] of generating process commands."). Again here, Defendants make no effort to show that RRD somehow intended to limit this claim to the preferred embodiment in the specification ­ nor could they given that the claim language does not support Defendants' proposed limitation and that the specification states it is not intended to be coextensive with the claims.59

56

57 58 59

The parties also dispute whether this element generates "instructions to a press." This dispute is discussed in Section I.G. See, e.g., `599 Patent col.16, l.23 ­ col.17, l.7. See `599 Patent col.16, ll.59-62. See `599 Patent col.19, ll.14-23. 19

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G.

"Press Commands Specifying Sequence and Content of Page Production by the Press" (Element 7) (Claim 11 of `599 Patent) Defendants' Proposed Construction instructions to a press for sequencing pages defined by the template files, the database and the master page file

RRD's Proposed Construction commands specifying what information goes where on the printed page and the order of the pages

The parties dispute (1) whether the "press commands" are "instructions to a press," (2) whether to include a construction of the claimed "content of page production" and (3) whether the "press commands" are "defined by the template files, the database and the master page file." Defendants' construction requires the "press commands" to be "instructions to a press." This is unnecessarily restrictive because the "press commands" could "specify[]

sequence and content of page production by the press" indirectly. For example, the "press commands" could go to and be processed by an intermediate unit such as a collator or RIP before going to the press.60 The claim language only requires that the "press commands" "specify[] sequence and content of page production," not that the "press commands" themselves instruct the press what to print. Defendants' construction also lacks any acknowledgement that the "press commands specify[] . . . content of page production," as set forth in the claim. Nevertheless, Defendants complain about the "what information goes where" portion of RRD's construction as "impl[ying] that the press commands arrange the components on the page." Defs.' Br. at 34. Defendants ignore, however, that the claim language itself specifies that "press commands specify[] . . . [the] content of page production by the press" ­ i.e., "what information goes where on the printed page." The "press commands" can do so as disclosed in the specification by

60

See, e.g., `599 Patent col.6, ll.41-65. 20

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combining files containing fixed and variable information or they can do so in other ways.61 The claim language does not recite any particular technique. Indeed, Defendants' argument is no more than their "page-based approach" reprised. See also Defs.' Br. at 34 ("Kodak's construction is true to the page-based approach"). But as explained above, Defendants never show that their "page-based approach" has any support in the intrinsic evidence. Defendants' "page-based approach" is nothing more than a transparent attempt to read the preferred embodiment into the claims. Defendants also apply their "page-based approach" to assert that "all that is left for the press commands is to instruct the merging or overlaying of the pages, not their assembly." Defs.' Br. at 34. In a comprising claim like this one, the law allows for any number of unclaimed steps before or after the elements of the claim, including before the instructions are provided to the press.62 Moreover, nothing in the claim restricts the "page commands" from describing the "assembly" of the page.63 Finally, the parties dispute whether the "press commands" are "defined by the template files, the database and the master page file." This dispute is discussed in Section I.F. II. U.S. PATENT NO. 6,844,940 As described above, Defendants wrongly incorporate the preferred embodiment into the broad claims of the `599 patent. Worse yet, Defendants apply the same narrow

construction to the `940 patent even though they argue that RRD intentionally sought broad claims to cover the manner in which the industry had progressed. See Defs.' Br. at 16-17. There is of course nothing wrong with writing claims to cover your competitors' products, even if you
61 62 63

See Intamin, 483 F.3d at 1335; see also Electro Med. Sys., 34 F.3d at 1054. See CollegeNet, 418 F.3d at 1235. See Phillips, 415 F.3d at 1312 (stating that it is the claims, and not the specification that define the scope). 21

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did not know about those products when you filed your patent application.64 Indeed, while concluding that "the `940 patent claims recite a page-based method as does the `599 patent," Defendants argue that RRD intentionally sought patents that "avoid[ed] any mention of a `page.'" Defs.' Br. at 17. At bottom, RRD's claims are not limited to the preferred embodiment because RRD lacked any intent to so limit the claims. A. "Template" (Element 8) (Claims 11, 17, 18, 19, 20, 22 of `940 Patent)65 Defendants' Proposed Construction a single page layout defining the content and position of reusable objects (fixed information) and the position of variable objects (variable information) on that page

RRD's Proposed Construction data representing the position and content of one or more "reusable objects" and identifying the position and corresponding entry (or entries) in the database of one or more "variable objects"

Both parties agree that the construction of "template" in the `940 patent should largely track the construction of "template file" in the `599 patent. The parties' dispute largely parallels the dispute over that term. See RRD's Br. at 22; Defs.' Br. at 36; see Section I.A. Additionally, the parties disagree about whether terms not used in the `940 patent claims ­ namely, "fixed information" and "variable information" ­ should be imported into the construction of "template." The `940 patent claims use the terms "reusable objects" and "variable objects," not "fixed information" and "variable information." Even so, Defendants baldly assert that the words "fixed information" and "variable information" ­ along with all of the unsupported

64

65

Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 874 (Fed. Cir. 1988) (it is not improper "to amend or insert claims intended to cover a competitor's product the applicant's attorney has learned about during the prosecution of a patent application"). This term appears in the following context in the claim: "developing first and second data sets representing associated first and second templates, respectively, each data set having master data representing reusable objects to be printed and position data representing a position on a page at which a variable object is to be printed." 22

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limitations Defendants propose for each term in the context of the `599 patent ­ should be imported into the construction of "template" in the `940 patent. Without citing any legal

authority, Defendants argue that the different words automatically must be given the same meaning. Defs.' Br. at 36-37. It is improper, however, to ascribe the same meaning to different claim terms appearing in related patents, even if the patents share a common specification.66 Indeed, Defendants tell a tale about how RRD's prosecuting attorneys allegedly tried to get different coverage with these different words. See Defs.' Br. at 36-37. Nonetheless, Defendants still construe these different terms the same way ­ to cover only the preferred embodiment. Defendant rely heavily on RRD's citations to the `599 patent's specification as providing the required written description for these claims. Defs.' Br. at 37. But this does not limit the claims because so long as there is support in the specification, claims can be broader than the preferred embodiment. Indeed, "[a]n independent claim usually covers a scope broader than the preferred embodiment."67 "A patentee may claim an invention broadly and expect enforcement of the full scope of that language absent a clear disavowal or contrary definition in the specification."68 Here, Defendants argue, without any legal or factual support, that despite actually trying to get broad claims, RRD's attorneys nonetheless failed to do so. Not only do Defendants' unsupported limitations not belong in the constructions of "fixed information" and "variable information" in the `599 patent, but they certainly do not belong in the construction of "template" in the `940 patent.

66

67 68

See Tandon Corp. v. U.S. Int'l Trade Comm'n, 831 F.2d 1017, 1023 (Fed. Cir. 1987) ("There is presumed to be a difference in meaning and scope when different words or phrases are used in separate claims."). RF Delaware, 326 F.3d at 1264. Home Diagnostics, 381 F.3d at 1357. 23

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Defendants' brief also glosses over the fact that their proposed construction limits "template" to "a single page layout" defining content "on that page." Defs.' Br. at 37. In support, Defendants offer little more than their "page-based approach" to claim construction (here called "page connotation"). Defs.' Br. at 37. The claim, however, contains no such language. The claim language never says that a "template" consists only of a single page. Furthermore, the specification makes numerous references to the "template" representing multiple pages.69 A "template" therefore can represent one or more than one printed page. Defendants' proposed construction, moreover, requires "template" to represent plural "reusable objects" and "variable objects." Defs.' Br. at 36. This simply ignores the law. According to the Federal Circuit, a claimed "plural can describe a universe ranging from one to some higher number."70 B. "Reusable Object" (Element 10) (Claims 11, 18 of `940 Patent) Defendants' Proposed Construction fixed information

RRD's