The opinion of the court was delivered by: JAMES KNOLL GARDNER, District Judge
This matter is before the court on the Motion for Summary Judgment
Declaring Certain Claims in Issue Invalid and/or Not Infringed filed by
defendant on October 17, 2002.*fn1 On February 10, 2004, the undersigned
conducted a hearing and argument upon the issues of claim construction
In its motion, defendant seeks to have the court construe three phrases
in United States Patent Number 6,016,307 ("the `307 patent"),*fn3 seeks
summary judgment on infringement, and seeks summary judgment on whether
the `307 patent is valid. Because we conclude that the specification and
the prosecution history of the `307 do not permit the meaning which
plaintiff seeks to attribute to the phrases "property of the data file"
and "measuring of said parameters", we grant defendant's motion for claim
construction. Because we conclude that resolution of the motion for
summary judgment upon the issues of infringement and patent validity
requires a hearing upon Daubert*fn4 issues and upon alleged
violations of Rule 26(a) of the Federal Rules of Civil Procedure, we deny
defendant's motion for summary judgment without prejudice to refile
pending a hearing on those issues. Accordingly, we grant defendant's
request for a hearing regarding the testimony of Regis J. Bates Jr., and
permit defendant to reassert its motion for summary judgment
on the issue of validity after the hearing.
The within civil action was initiated on May 23, 2000 by a one-count
Complaint. Plaintiff avers that defendant is infringing upon the `307
patent, which is owned by Connectel, by assembling, offering to sell, or
selling a device that falls within one or more of the claims expressed in
the `307 patent without paying Connectel a licensing fee or royalty.*fn5
On July 11, 2000, defendant answered the Complaint and filed a
counterclaim which alleged that the `307 patent is invalid. See
35 U.S.C. § 102.
This matter is before the court on federal question jurisdiction.
See 28 U.S.C. § 1331, 1338.
Venue is proper in the United State District Court for the Eastern
District of Pennsylvania because acts of patent infringement allegedly
occurred within the judicial district.
See 28 U.S.C. § 118, 1391(b), 1391(c);
28 U.S.C. § 1400(b). Both parties have made a jury demand.
Before we may determine whether summary judgment is
appropriate on the issues of infringement or patent invalidity, we
must construe the disputed claims of the patent. See
Vitronics Corporation v. Conceptronics, Inc., 90 F.3d 1576,
1581-1582 (Fed Cir. 1996). The parties dispute the meaning the inventor
attributes to the phrases "property of the data file" and "measuring of
said parameters" in the claims of the `307 patent.
The `307 patent contains 28 claims, two of which, claims 1 and 14, are
independent claims. Claim 1, which is the independent claim at issue,
In a telecommunications switching system
comprising a plurality of interfaces, each of said
interfaces interconnected with an associated
telecommunications path capable of transferring a
data file from a first memory to a remote
destination, each of said telecommunications paths
having predetermined parameters associated
therewith stored in a second memory in said
switching system and variable parameters
associated therewith, a method of determining
which of said plurality of telcommunications paths
should be utilized for transferring the data file
from said first memory, said method comprising the
a) analyzing a property of the data file to
b) measuring said variable parameters and
said predetermined parameters;
c) analyzing said measured variable and
said predetermined parameters; and
d) determining which of said paths provides
an optimal set of characteristics for
transferring the file to the remote
destination in accordance with said
analyzed variable parameters and
predetermined parameters and said
data file property.
"It is well-settled that, in interpreting an asserted claim, the court
should look first to the intrinsic evidence of record, i.e., the
patent itself, including the claims, the specifications and, if in
evidence, the prosecution history." Vitronics, 90 F.3d at 1582.
These sources are the most important evidence of not only the applicant's
intended meaning, but also serves "as an official record that is created
in the knowledge that its audience is not only the patent examining
officials and the applicant, but the interested public." Biogen,
Inc. v. Berlex Laboratories, Inc., 318 F.3d 1132, 1140 (Fed ...