Judicial decision on patent and/or copyrights

CITE: 308 F.3d 1193
CMON: October 2002
PLAIN: Texas Digital Systems
DEFND: Telegenix
COURT: United States Court of Appeals for the Federal Circuit
DATE: October 16, 2002

HISTORY:

Appealed from: United States District Court for the Northern District of
Texas. Magistrate Judge Paul D. Stickney. Texas Digital Sys. v. Telegenix,
Inc., 2000 U.S. Dist. LEXIS 18360 (N.D. Tex. Dec. 6, 2000).
AFFIRMED-IN-PART, REVERSED-IN-PART, and REMANDED.

SUMMARY:
Dictionaries, encyclopedias and treatises serve as reliable sources of
information on the established meanings of the terms in the claims.
A term in the claim encompasses multiple definitions consistent with
the specification.

JUDGE: LINN, Circuit Judge
Before MICHEL, SCHALL, and LINN, Circuit Judges.

DECISION:

Telegenix, Inc. ("Telegenix") appeals from the final judgment of the United
States District Court for the Northern District of Texas in favor of Texas
Digital Systems, Inc. ("TDS"). Because the district court erroneously
construed certain disputed claim limitations, but correctly construed
ther claim limitations, we affirm-in-part, reverse-in-part, and remand.

BACKGROUND

TDS is the current owner of the four patents at issue, U.S. Patent Nos.
4,845,481 (" '481 patent"), 4,965,561 (" '561 patent"), 4,734,619 (" '619
patent"), and 4,804,890 (" '890 patent"), each issued to Karel Havel. TDS
obtained these patents from Havel in 1997.

The Havel patents are directed to methods and devices for controlling the
color of pixels in a light emitting diode ("LED") display. Each pixel
includes at least two elements corresponding to different primary colors,
e.g., one red element and one green element. Light signals from the two
elements may be blended to produce a composite light signal of variable
color. Figure 1 of the '481 patent, reproduced below, shows seven pixels
arranged in a familiar seven-segment display pattern, each pixel having
a red element (i.e., 2a-2g) and a green element (i.e., 3a-3g).

[SEE FIG. 1 IN ORIGINAL]

Claims 1 and 2 of the '481 patent are representative of the asserted
claims of the '481 and '561 patents:

1. A method for controlling a color of a variable color display device which
comprises a plurality of display areas arranged in a pattern for selectively
exhibiting a plurality of display units, each said display area including
a plurality of light sources for emitting upon activation light signals of
respectively different primary colors and means for combining said light
signals to obtain a composite light signal of a composite color, by
exhibiting a selected display unit by repeatedly substantially
simultaneously activating the light sources in selected display areas
for brief time intervals to cause the light sources to emit light signals
of said primary colors, and by selectively controlling the durations of
the time intervals of activation of the light sources in the selected
display areas to control the portions of the primary color light signals
emitted therefrom, to thereby control the color of the exhibited display
unit. (emphases added)

2. A variable color display device comprising:

a plurality of variable color display areas arranged in a pattern for
selectively exhibiting a plurality of display units, each said display area
including a plurality of light sources or emitting upon activation light
signals of respectively different primary colors and means for combining
said light signals to obtain a composite light signal of a composite color;
means for exhibiting a selected display unit by repeatedly substantially
simultaneously activating the light sources in selected display areas by
pulses of a substantially constant amplitude for causing the light sources
to emit light signals of said primary colors; and
color control means for selectively controlling the durations of the pulses
applied to the light sources in the selected display areas to control the
portions of the primary color light signals emitted therefrom, to thereby
control the color of the exhibited display unit. (emphases added)

The '619 patent is directed to display devices including a variable color
background area 32 substantially surrounding the display area segments 31,
as illustrated in Fig. 1a, reproduced below.

[SEE FIG. 1a in ORIGINAL]

Claim 1 of the '619 patent is representative of the claims and is reproduced
below:

1. A variable color display device comprising:

a plurality of variable color display areas arranged in a pattern, each said
display area including a plurality of display light sources for emitting upon
activation light signals of different colors and means for combining said
light signals to obtain a composite light signal of a composite color;

a variable color background area substantially surrounding said display
areas and including a plurality of background regions adjacent to said
display areas, each said background region including a plurality of light
sources for emitting upon activation light signals of different colors and
means for combining said light signals to obtain a composite light signal
of a composite color;

a plurality of opaque walls for optically separating said background regions
from adjacent display areas; and

means for selectively activating said display light sources, to illuminate
certain of said display areas in a first color, and said background light
sources, to illuminate said background regions in a second color different
from said first color. (emphases added)

The '890 patent is directed to a variable color LED display and display
circuit as illustrated in Figure 3, reproduced below:

[SEE FIG. 3]

Representative claim 4 of the '890 patent is reproduced below:

4. A display device comprising:

first means for carrying selective display color control signals;

converter means for converting said display color control signals to obtain
complementary color control signals;

second means for carrying said complementary color control signals; and

control means for selectively coupling said light sources in said display
areas to said first means, for causing selective ones of said display
areas to illuminate in a selected color defined by said display color
control signals, and to said second means, for causing the remaining
display areas to illuminate in a substantially complementary color
defined by said complementary color control signals. (emphases added)

After TDS obtained the Havel patents in 1997, TDS filed suit, alleging that
Telegenix's Colorgraphix devices infringed each of them. Following a jury
verdict in favor of TDS, the district court entered judgment that Telegenix
had literally infringed claims 1-4 and 7 of the '481 patent, claims 1-4 of
the '561 patent, claim 1 of the '619 patent, and claim 4 of the '890 patent.
The district court also found each of the asserted claims not invalid and
concluded that Telegenix had willfully infringed "one or more" of the four
asserted patents.

The district court awarded TDS a reasonable royalty of 20% as applied to
$30 million in infringing sales (i.e., $6 million), enhanced damages of
$6 million, pre-judgment interest of $3,007,999, post-judgment interest
at 6.5%, and costs. The district court also permanently enjoined Telegenix
from making, using, selling, or offering to sell its Colorgraphix color
display devices, versions of its software used with the Colorgraphix
color display devices, or other devices that otherwise infringe.

Telegenix appeals. We have jurisdiction pursuant to 28 U.S.C. 1295(a)(1).

ANALYSIS

Standard of Review

Claim construction is a question of law that this court reviews de novo.
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998)
(en banc). The standard of review for jury instructions is prejudicial
legal error. See Jamesbury Corp. v. Litton Indus. Prods., 756 F.2d 1556,
1558 (Fed. Cir. 1985), overruled on other grounds by A.C. Aukerman Co. v.
R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc). To
prevail, the party challenging the jury instruction "must demonstrate both
that the jury instructions actually given were fatally flawed and that
the requested instruction was proper and could have corrected the flaw".
Biodex Corp. v. Loredan Biomedical, Inc., 946 F.2d 850, 862 (Fed. Cir. 1991).
"An erroneous instruction regarding claim interpretation that affects the
jury's decision on infringement is grounds for a new trial." Ecolab Inc.
v. Paraclipse, Inc., 285 F.3d 1362, 1373 (Fed. Cir. 2002).

Telegenix, which timely objected to the jury instructions at trial, argues
that the district court erroneously interpreted the claims of the asserted
patents in its Markman order and instructed the jury according to the
erroneous claim constructions. Telegenix further argues that the district
court abused its discretion in excluding certain evidence offered by
Telegenix and in admitting other evidence presented by Texas Digital, and
erroneously relied on the rule of Wine Railway Appliance Co. v. Enterprise
Railway Equipment Co., 297 U.S. 387, 80 L. Ed. 736, 56 S. Ct. 528,
1936 Dec. Comm'r Pat. 657 (1936). On these grounds, Telegenix seeks a new
trial. We address each of the allegations of error in turn.

I. The Contours of Claim Construction

"In construing claims, the analytical focus must begin and remain centered
on the language of the claims themselves, for it is that language that the
patentee chose to use to 'particularly point[ ] out and distinctly claim[ ]
the subject matter which the patentee regards as his invention.' 35 U.S.C.
Section 112, P 2." Interactive Gift Express, Inc. v. Compuserve, Inc.,
256 F.3d 1323, 1331 (Fed. Cir. 2001). The terms used in the claims bear a
"heavy presumption" that they mean what they say and have the ordinary
meaning that would be attributed to those words by persons skilled in the
relevant art. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366,
(Fed. Cir. 2002); K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362-63 (Fed.
Cir. 1999); Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985,
989 (Fed. Cir. 1999); Specialty Composites v. Cabot Corp., 845 F.2d 981,
986 (Fed. Cir. 1988). Moreover, unless compelled otherwise, a court will
give a claim term the full range of its ordinary meaning as understood by
persons skilled in the relevant art. See Rexnord Corp. v. Laitram Corp.,
274 F.3d 1336, 1342 (Fed. Cir. 2001); Johnson Worldwide Assocs., 175 F.3d
at 989; Specialty Composites, 845 F.2d at 986.

It has been long recognized in our precedent and in the precedent of our
predecessor court, the Court of Customs and Patent Appeals, that dictionaries,
encyclopedias and treatises are particularly useful resources to assist the
court in determining the ordinary and customary meanings of claim terms. See
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)
("The ordinary meaning of a claim term may be determined by reviewing a
variety of sources, including . . . dictionaries and treatises . . . ."
(internal citations omitted)); CCS Fitness, 288 F.3d at 1366 ("Our
precedents show that dictionary definitions may establish a claim term's
ordinary meaning."); Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324,
1334-35 (Fed. Cir. 2000) ("For such ordinary meaning, we turn to the
dictionary definition of the term."); Quantum Corp. v. Rodime, PLC,
65 F.3d 1577, 1581 (Fed. Cir. 1995) ("We see no error in the district
court's use of dictionary definitions to ascertain the ordinary meaning
of the relevant claim limitation."); In re Ripper, 36 C.C.P.A. 743, 171 F.2d
297, 299 (C.C.P.A. 1948) ("It is clear that in ascertaining the meaning of
[the claim term] as it appears herein, reference properly may be made to
the ordinary dictionaries.").

Dictionaries are always available to the court to aid in the task of
determining meanings that would have been attributed by those of skill
in the relevant art to any disputed terms used by the inventor in the
claims. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6,
(Fed. Cir. 1996) ("Technical treatises and dictionaries . . . are worthy
of special note. Judges are free to consult such resources at any time
. . . and may also rely on dictionary definitions when construing claim
terms . . . ."); Cybor Corp., 138 F.3d at 1459 (citing Vitronics for the
proposition that a court is free to consult dictionaries, encyclopedias,
and treatises at any time to help determine the meaning of claim terms);
Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed.
Cir. 2000) ("A dictionary is not prohibited extrinsic evidence, and is
an available resource of claim construction.").

When a patent is granted, prosecution is concluded, the intrinsic record
is fixed, and the public is placed on notice of its allowed claims.
Dictionaries, encyclopedias and treatises, publicly available at the time
the patent is issued, are objective resources that serve as reliable
sources of information on the established meanings that would have been
attributed to the terms of the claims by those of skill in the art. Such
references are unbiased reflections of common understanding not influenced
by expert testimony or events subsequent to the fixing of the intrinsic
record by the grant of the patent, not colored by the motives of the
parties, and not inspired by litigation. Indeed, these materials may be
the most meaningful sources of information to aid judges in better
understanding both the technology and the terminology used by those
skilled in the art to describe the technology.

These materials serve as important resources to assist courts in many ways.
For example, they are often used to aid in the interpretation of statutes and
regulations and in the interpretation of terms used in contracts. See, e.g.,
Rocknel Fastener, Inc. v. United States, 267 F.3d 1354, 1356-57 (Fed. Cir.
2001) (advising that the interpretation of tariff terms, a matter of
statutory construction, may be aided by reviewing "dictionaries, scientific
authorities, and other reliable information sources" (citations omitted));
Am. Express Co. v. United States, 262 F.3d 1376, 1381 n.5 (Fed. Cir. 2001)
(in interpreting Internal Revenue Service regulations and procedures, "it
is appropriate to consult dictionaries to discern the ordinary meaning of
a term not explicitly defined by statute or regulation"); Bowers v. Baystate
Techs., No. 01-1108, 302 F.3d 1334 (Fed. Cir. Aug. 20, 2002) (construing
contract terms using non-technical and technical dictionaries); Buchanan
v. Dep't of Energy, 247 F.3d 1333, 1339 (Fed. Cir. 2001) (relying on a
dictionary definition in construing a settlement agreement). Thes
materials deserve no less fealty in the context of claim construction.

As resources and references to inform and aid courts and judges in the
understanding of technology and terminology, it is entirely proper for both
trial and appellate judges to consult these materials at any stage of a
litigation, regardless of whether they have been offered by a party in
evidence or not. Thus, categorizing them as "extrinsic evidence" or even
a "special form of extrinsic evidence" is misplaced and does not inform
the analysis.

Because words often have multiple dictionary definitions, some having no
relation to the claimed invention, the intrinsic record must always be
consulted to identify which of the different possible dictionary meanings
of the claim terms in issue is most consistent with the use of the words
by the inventor. See Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364,
1372-73 (Fed. Cir. 2001); Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1478 (Fed. Cir. 1998). If more than one dictionary definition
is consistent with the use of the words in the intrinsic record, the claim
terms may be construed to encompass all such consistent meanings. Rexnord,
274 F.3d at 1343 (holding that the claim term "portion" may be interpreted
in accordance with the dictionary definitions to encompass both "separate"
and "integral" parts of an object). The objective and contemporaneous record
provided by the intrinsic evidence is the most reliable guide to help the
court determine which of the possible meanings of the terms in question was
intended by the inventor to particularly point out and distinctly claim the
invention. See Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243,
1250 (Fed. Cir. 1998) ("The construction that stays true to the claim
language and most naturally aligns with the patent's description of the
invention will be, in the end, the correct construction.").

Moreover, the intrinsic record also must be examined in every case to
determine whether the presumption of ordinary and customary meaning is
rebutted. See id. Indeed, the intrinsic record may show that the
specification uses the words in a manner clearly inconsistent with the
ordinary meaning reflected, for example, in a dictionary definition. In
such a case, the inconsistent dictionary definition must be rejected.
See id. ("[A] common meaning, such as one expressed in a relevant
dictionary, that flies in the face of the patent disclosure is undeserving
of fealty."); Liebscher v. Boothroyd, 46 C.C.P.A. 701, 258 F.2d 948, 951
(C.C.P.A. 1958) ("Indiscriminate reliance on definitions found in
dictionaries can often produce absurd results."). In short, the presumption
in favor of a dictionary definition will be overcome where the patentee,
acting as his or her own lexicographer, has clearly set forth an explicit
definition of the term different from its ordinary meaning. See In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994); Intellicall, Inc. v.
Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992). Further,
the presumption also will be rebutted if the inventor has disavowed or
disclaimed scope of coverage, by using words or expressions of manifest
exclusion or restriction, representing a clear disavowal of claim scope.
See Teleflex, 299 F.3d at 1324.

Consulting the written description and prosecution history as a threshold
step in the claim construction process, before any effort is made to
discern the ordinary and customary meanings attributed to the words
themselves, invites a violation of our precedent counseling against
importing limitations into the claims. See, e.g., Generation II Orthotics
Inc. v. Medical Technology Inc., 263 F.3d 1356, 1367 (Fed. Cir. 2001)
("The district court should have construed the claim limitation 'controlled'
according to its ordinary and accustomed meaning [citing medical
dictionary], rather than importing a characteristic of a disclosed or
preferred embodiment into that term."); Loctite Corp. v. Ultraseal Ltd.,
781 F.2d 861, 867 (Fed. Cir. 1985) ("Generally, particular limitations or
embodiments appearing in the specification will not be read into the
claims."), overruled on other grounds by Nobelpharma AB v. Implant
nnovations, Inc., 141 F.3d 1059 (Fed. Cir. 1998). For example, if an
invention is disclosed in the written description in only one exemplary
form or in only one embodiment, the risk of starting with the intrinsic
record is that the single form or embodiment so disclosed will be read
to require that the claim terms be limited to that single form or
embodiment. See Teleflex, 299 F.3d at 1328 ("To the extent that the
district court construed the term 'clip' to be limited to the embodiment
described in the specification, rather than relying on the language of
the claims, we conclude that the district court construed the claim term
'clip (28)' too narrowly."); Comark Communications, Inc. v. Harris Corp.,
156 F.3d 1182, 1186 (Fed. Cir. 1998) (cautioning against the limitation of
the claimed invention to preferred or specific embodiments or examples);
Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1277 (Fed. Cir.
1995) ("[A] patent claim is not necessarily limited to a preferred embodiment
disclosed in the patent."); SRI Int'l, Inc. v. Matsushita Elec. Corp.,
775 F.2d 1107, 1121 n.14 (Fed. Cir. 1985) (en banc) ("That a specification
describes only one embodiment does not require that each claim be limited
to that one embodiment."). Indeed, one can easily be misled to believe that
this is precisely what our precedent requires when it informs that disputed
claim terms should be construed in light of the intrinsic record. See, e.g.,
Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995)
(stating the claims must be construed in light of the specification and the
patent's prosecution history, if in evidence). But if the meaning of the
words themselves would not have been understood to persons of skill in the
art to be limited only to the examples or embodiments described in the
specification, reading the words in such a confined way would mandate the
wrong result and would violate our proscription of not reading limitations
from the specification into the claims. See, e.g., Teleflex, 299 F.3d at
1328; Generation II Orthotics, 263 F.3d at 1367; Comark, 156 F.3d at 1186;
Transmatic, 53 F.3d at 1277; SRI Int'l, 775 F.2d at 1121 n.14.

By examining relevant dictionaries, encyclopedias and treatises to ascertain
possible meanings that would have been attributed to the words of the claims
by those skilled in the art, and by further utilizing the intrinsic record
to select from those possible meanings the one or ones most consistent with
the use of the words by the inventor, the full breadth of the limitations
intended by the inventor will be more accurately determined and the improper
importation of unintended limitations from the written description into
the claims will be more easily avoided.

A. "repeatedly substantially simultaneously activating"

Each of the asserted claims of TDS's '481 and '561 patents includes the
limitation, "repeatedly substantially simultaneously activating." {n1} The
district court construed this limitation as follows:

The term repeatedly means "repeating" in its ordinary sense, and
that the repetitions be fast enough such that the composite color
is actually perceived by the viewer. The term substantially,
simultaneously activating means that during some portion of this
period (defined as repeatedly), the two separate lights are on at
the same time.
Tex. Digital Sys. Inc. v. Telegenix, Inc., 2000 U.S. Dist. LEXIS 18360,
*16, No. 3:98-CV-1537-R (N.D. Tex. Dec. 6, 2000).

Telegenix argues that the district court erred by requiring merely that the
lights be on simultaneously, instead of requiring that the activation of each
light begin at substantially the same time. According to Telegenix, the
district court improperly separated the adverbs "substantially simultaneously"
from the verb it modifies, "activating", and thereby failed to require that
the light emitting diodes ("LEDs") must be activated, or turned on, at the
same time.

According to TDS, the crucial word in the phrase is "repeatedly", which
would signal to one of skill in the art that the invention activates light
sources repeatedly within the "refreshing period" or "repetition period"
within which humans do not detect pulses due to the principle of
"persistence of vision". TDS argues that because one of skill in the art
would understand that the claim refers to simultaneously activating light
sources of different colors at some time during that critical
repetition/refreshing period, and because humans cannot detect changes,
pulses, or activations that occur within that period, the question of
whether one begins activation of the LEDs at the exact same time or
whether one simply ensures that both of the LEDs are on at some time
during the repetition period is irrelevant. Thus, according to TDS, one
of skill in the art would not interpret the claim term "repeatedly
substantially simultaneously activating the light sources" to limit the
starting point of the LED activations.

The district court correctly construed the term "repeatedly". However, the
district court's construction of the overall phrase "repeatedly substantially
simultaneously activating" was in error and ignored the meaning of the term
"activating". We begin by ascertaining the ordinary meaning to one skilled
in the art. See Specialty Composites, 845 F.2d at 986. According to a
relevant technical dictionary, to activate is "to start an operation,
usually by application of an appropriate enabling signal". Modern
Dictionary of Electronics 20 (6th ed. 1984). We presume that the word used
in a claim carries this ordinary meaning, but this presumption may be
rebutted. See CCS Fitness, 288 F.3d at 1366. Here, the intrinsic evidence
is entirely consistent with the dictionary definition, and there is nothing
in the record to suggest that "activating" means other than what its
dictionary definition would suggest, i.e., starting the operation or
turning on. We conclude that the presumption has not been rebutted, and
thus the ordinary meaning controls.

TDS has argued that "activating" can mean "being on". Certainly, once
activated, a lamp might accurately be described as "being on". But the
claim does not refer to the state of the lamps as being "substantially
simultaneously activated". The words used, which serve as the focus of
the claim construction analysis, call for "substantially simultaneously
activating" the lamps, and the ordinary meaning of that phrase requires
that during some portion of the period defined as "repeatedly", the two
separate lights are turned on at the same or nearly the same time.

B. "selectively controlling the durations of the time intervals of activation"

Claims 1 and 3 of both the '481 and '561 patents include the limitation
"selectively controlling the durations of time intervals of activation".
In its Markman ruling, the district court explicitly refused to provide
a distinct definition for this limitation, deeming the phrase "sufficiently
defined".

Telegenix contended before the district court, and reiterates on appeal,
that this limitation means "specifically controlling the length of time
that individual pulses are activated to vary the amount of light emitted
from a light source". Telegenix argues that by his disclosure in the
specification, the inventor limited the claims to varying color using
pulse width modulation ("PWM"), a technique that varies the duration of
individual pulses. Telegenix further contends that the inventor limited
the asserted claims to PWM by statements and amendments during prosecution
of the patents in suit.

TDS responds that the claims are not limited to the particular PWM technique
suggested by Telegenix. TDS urges that the claim language uses the plural
form of both "durations" and "time intervals" and thus is consistent with
an interpretation in which color is controlled with "more than one pulse
and includes multiple activations of the same LED within the repetition
period". In other words, TDS urges a claim construction that would cover
devices which change perceived light intensity by varying either the width
of the pulses or the number of pulses.

The words of the claim require "controlling the durations" of the "time
intervals of activation". The plain meaning of "controlling the durations"
indicates that the claimed invention requires variation of the duration of
individual time intervals, or controlling the width of pulses, during which
the LEDs are activated, e.g., PWM. This plain meaning is consistent with the
specification of the '481 and '561 patents. The structures shown in Figures
9 and 11 of the '481 patent and Figure 1 of the '561 patent depict circuitry
for driving the LEDs using PWM. As shown in Figure 9 of the '481 patent, the
circuitry includes at least one counter 71f for each color connected to a
corresponding memory 76 containing data regarding the amount of primary
color activation required to produce the desired color. '481 patent, col. 4,
lines 24-59. The counter and corresponding memory are connected to a
"flip-flop" 73 which provides the appropriate output to generate the
desired color. Id. According to the specification, the "output of the flip
flop 73 will be at a high logic level for a period of time proportional to
the data" loaded into the counter 71f from the memory 76. Id. at col. 4,
lines 51-52. Thus, the circuitry controls color by setting the output
"at a high logic level for a period of time proportional" to the desired
color data.

Moreover, the prosecution history is consistent with this interpretation of
the claim language. During prosecution of the '481 patent, the inventor
distinguished prior art on the basis of PWM. The Patent Office initially
rejected all claims in the application as obvious in view of the Kaelin
reference, which taught that "LED color display elements can be varied by
applying variable timed pulses to the individual diodes". The applicant
responded by submitting new claims and arguing that the invention "controls
the durations of the pulses that are applied to the primary color light
sources in the selected display areas to control the portions of the primary
color light signals, to thereby control the color of the exhibited display
unit".

On the basis of our review of the ordinary meaning of the words themselves,
we conclude that this limitation requires control of pulse width. This is
entirely consistent with the intrinsic record. Contrary to TDS's argument,
introducing multiple pulses of identical duration during the repetition period
does not effect control of pulse duration. Where multiple pulses of identical
duration are introduced during a single repetition period, pulse duration
remains constant and color is controlled not by varying "the durations of
the time intervals of activation" of pulses, as called for in the claims
themselves, but by varying the number of constant duration pulses applied.
Such a technique does not set the output "at a high logic level for a period
of time proportional" to the desired color data nor does it "control the
durations of the pulses", and thus is inconsistent with the specification
and prosecution history.

We conclude that "selectively controlling the durations of the time intervals
of activation" means controlling the width of pulses during repetition
periods.

C. "color control means"

The "color control means" limitation appears in claims 2, 4, and 7 of the
'481 patent, and claims 2 and 4 of the '561 patent. The limitation appearing
in claim 2 of the '481 patent is representative:

color control means for selectively controlling the durations of the pulses
applied to the light sources in the selected display areas to control the
portions of the primary color light signals emitted therefrom, to thereby
control the color of the exhibited display unit.
'481 patent, col. 9, lines 59-64.

The district court construed this limitation to be a means-plus-function
limitation -- a conclusion with which we agree. Neither party disputes
that this limitation is subject to 35 U.S.C. 112, paragraph six. That
paragraph states:

An element in a claim for a combination may be expressed as a means
or step for performing a specified function without the recital of
structure, material, or acts in support thereof, and such claim shall
be construed to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
35 U.S.C. Section 112, para. 6 (2000).

"Because this limitation is expressed in 'means plus function' language and
because it does not recite definite structure in support of its function,
it is subject to the requirements of 35 U.S.C. 112, P 6 (1994)." B. Braun
Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). The
first step in construing such a limitation is to identify the function of
the means-plus-function limitation. Micro Chem., Inc. v. Great Plains
Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999). The next step is to
identify the corresponding structure in the written description necessary
to perform that function. Id. "Structure disclosed in the specification is
'corresponding' structure only if the specification or prosecution history
clearly links or associates that structure to the function recited in the
claim". B. Braun, 124 F.3d at 1424.

The district court instructed the jury concerning the claimed function:

The color control means performs the function of selectively
controlling the on times of the light sources to control the
portions of primary color light signals for controlling the color
of the composite light signal.

The district court described the corresponding structure from the
specification as "the structure that performs as disclosed in the
specification of the display decoder and decoder driver".

Telegenix argues that the district court erred by misidentifying both the
claimed function and the corresponding structure from the specification.
We agree. The function recited in the asserted claims does not include
"selectively controlling the on times of the light sources". Instead, the
claim recites "selectively controlling the durations of the pulses applied
to the light sources . . . ." To the extent that the district court failed
to follow the claim language in defining the function, it erred. See Micro
Chem., 194 F.3d at 1258 ("The statute does not permit limitation of a
means-plus-function claim by adopting a function different from that
explicitly recited in the claim.").

The district court further erred in its identification of "the display
decoder and decoder driver" as the corresponding structure in the
specification.

Section 112, P 6, as is well-documented, was intended to permit use of
means expressions without recitation of all the possible means that might
be used in a claimed apparatus. . . . The price that must be paid for use
of that convenience is limitation of the claim to the means specified in
the written description and equivalents thereof. O.I. Corp. v. Tekmar Co.,
115 F.3d 1576, 1583 (Fed. Cir. 1997) (citations omitted). The duty to link
or associate structure in the specification to the recited function is the
quid pro quo for the convenience of employing Section 112, paragraph 6.
B. Braun, 124 F.3d at 1424. In the specification, the structure linked to
the recited function of "selectively controlling the durations of the
pulses applied to the light sources" includes the memory and counter
circuitry illustrated in Figure 9. See '481 patent, col. 4, lines 24-59.
It was error for the district court to omit this structure from its claim
construction of the color control means.

Accordingly, we conclude that the "color control means" performs the function
of selectively controlling the durations of the pulses applied to the
light sources to control the portions of the primary color light signals, to
thereby control the color of the exhibited display unit. Moreover, we hold
that the corresponding structure includes the memory 76, the counters 71e
and 71f, the flip-flop 73, and associated connection circuitry illustrated
in Figures 5 and 9. The color control means is limited to this corresponding
structure and equivalents thereof.

D. "display areas" and "background area"

The patents in suit recite "display areas" and "background area" at several
locations in the asserted claims. For example, claim 1 of the '619 patent
recites "a plurality of variable color display areas . . .; [and] a variable
color background area . . . ." The district court instructed the jury:

Display areas and the background areas "include any illuminated pixel
anywhere on the display device with background pixels illuminated to
substantially surround the illuminated display area pixels". As the
image for illuminated display area changes, so does the adjacent
illuminated background area.

Telegenix argues that the jury should have been instructed that the display
areas are distinct from the background areas, that display areas cannot
become background areas, and that background areas cannot become display
areas. TDS argues that the claims encompass display areas arranged in the
form of an array or matrix of areas, and as such the display areas and
background areas are interchangeable.

Beginning with the words of the claims themselves, the dictionary meaning of
display is "[a] visually observable presentation of information . . . ."
Illustrated Dictionary of Electronics 147 (3rd ed. 1985). Background is
defined as: "[the] context or supporting area of a picture . . . ." Id.
at 43. Thus, the ordinary meaning of "display area", as reflected in these
dictionary definitions, is an area designated to portray information.
Background is ordinarily understood to provide the context or contrasting
reference against which the displayed information is presented. The ordinary
meaning of these limitations does not indicate that the display and
background areas are interchangeable.

The specification of the '619 patent is consistent with an interpretation
in which the display and background areas are distinct and not
interchangeable. For example, the written description describes the
invention as including "a variable color display area" and "a variable
color background area 32, substantially surrounding the display area".
'619 patent, col. 2, lines 16-21. The specifications of the patents in
suit do not establish that display areas can become background areas, nor
do they allow for their interchangeable use.

The specification of the '890 patent describes illuminating selected display
areas in the background color to "blend with the background to provide
maximum color contrast". '890 patent, col. 2, lines 41-54. However, this
establishes only that the inventor contemplated that display areas could
function similar to the background areas, not that the display and
background areas could be interchangeable.

Looking to the prosecution history, there is additional evidence supporting a
construction that the display and background areas are mutually exclusive.
The inventor stated in response to a rejection: "[claims 1 and 2], similar
to claim 13 which was not explicitly rejected, are distinguished from the
prior art by the recitation of background regions separated from the display
areas by opaque walls. No reference of the record describes explicitly
defined background regions." This evidence of manifest exclusion or
restriction represents a clear disavowal of claim scope. See Teleflex,
299 F.3d at 1325. In doing so, the patentee expressly limited background
areas to explicitly defined regions. In addition, the patent examiner
stated in his notice of allowance, "the prior art does not show the
combination of variable color display areas and a variable color background
area; these being two discrete, distinct components of the device. It is
this distinction which, as claimed, is deemed allowable over the prior art."

The ordinary meaning of the words of the claims, coupled with the patentee's
statements in the specification and during prosecution, establish that the
district court's instruction was in error. Although the specification
indicates that a display area can be illuminated in the background color
to "blend with the background to provide maximum color contrast", there
is no corresponding indication that the background areas can be illuminated
in the display color. The district court's construction that background
areas can include "any illuminated pixel anywhere on the display device"
is incompatible with the patentee's statements during prosecution expressly
limiting the background areas to "explicitly defined background regions".

Moreover, if the background and display areas could each include "any
illuminated pixel," the background area would not be different in nature or
quality from the display area. Such a proposition is inconsistent with the
language of the claims, in which the inventor claimed a device having two
types of areas, and with the specification which describes distinct display
areas and background areas.

On the basis of the ordinary meaning of the words of the claim and the
intrinsic evidence, we conclude that these limitations should be construed as
follows: display areas include any illuminated pixel anywhere on the display
device, other than background area pixels in defined background regions. The
background area pixels substantially surround the illuminated display area
pixels. Display area pixels may be illuminated in the background color, but
background area pixels may not be illuminated in the display color.

E. "display areas arranged in a pattern"

The limitation "display areas arranged in a pattern" appears in the asserted
claims of the '481 and '619 patents, as well as claim 4 of the '890
patent. The district court construed "pattern" to mean "having a systematic
arrangement". Telegenix argues that this construction is too general, and the
limitation should be limited to a seven-segment display pattern, for example,
that shown in Figures 1a-c of the '890 patent. TDS responds that this
limitation is not limited to a seven-segment display or any other fixed
pattern, and that the scope of the claims is broad enough to encompass
a matrix display.

Where "pattern" is described in the specifications of the patents in suit,
the seven-segment display is listed as an example of the preferred font.
The '481 patent specification describes "seven elongated display segments
a, b, c, d, e, f, g, arranged in a conventional pattern." '481 patent,
col. 2, lines 24-25. The preferred embodiment of the '890 patent is
described as including "a variable color display area consisting of seven
segments 31 arranged in a well known 7-segment font." '890 patent, col. 2,
lines 16-18. Nowhere in the specification is the limitation "display areas
arranged in a pattern" restricted, explicitly or implicitly, to the
seven-segment arrangement of the preferred embodiment.

Telegenix does not dispute that the patents in suit describe the
seven-segment pattern in exemplary language. Instead, Telegenix argues that
U.S. Patent No. 4,086,514 (" '514 patent") establishes that the same
inventor represented matrix displays and seven-segment displays as two
separate embodiments of the same invention. We fail to understand the
relevance of Telegenix's argument. Whether or not the claims in an
unrelated patent are broad enough to encompass both a matrix and the
familiar seven-segment pattern, this proposition sheds no light on whether
the claims of the patents in suit are limited to the seven-segment pattern.
See Abbott Labs. v. Dey, L.P., 287 F.3d 1097, 1104 (Fed. Cir. 2002)
(finding the relationship between two unrelated patents, although having
common subject matter, a common inventor, and the same assignee,
"insufficient to render particular arguments made during prosecution
of [one of the patents] equally applicable to the claims of [the other
patent]").

Referring to the prosecution history, the Examiner's Statement of Reasons for
Allowance for the '619 patent stated, "In this manner, multicolored arrays
(i.e., color cathode ray tube displays such as Takeda, of record) in
which there is no physical distinction between a foreground or background
pixel (display area), are distinguished from by the claimed subject matter."
Although the prosecution history may help define the scope of a term if
relevant, see Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576
(Fed. Cir. 1995), this Examiner's statement has no bearing on the meaning
of the term "pattern". Nor does this statement limit the scope of "pattern"
to the familiar seven-segment font.

Accordingly, because there is nothing in the claims or the intrinsic evidence
of record to indicate otherwise, we conclude that this limitation was
correctly construed by the district court according to the ordinary meaning
of "pattern". The district court's construction, "having a systematic
arrangement", is not in error.

F. "means for selectively activating said display light sources"

The limitation "means for selectively activating said display light sources"
appears in claim 1 of the '619 patent. The district court instructed the
jury:

The function of this means-plus function element is to control the
activation of light sources to illuminate the display area in a first
color and the background area in a second color, different from the
display area's first color. The function is to activate the display
area by passing current through selected light sources of the display
area and the background area. The structural components are specified
in Figures 3 and 4.

Telegenix argues that the court's construction is too broad, and misled the
jury to believe that this limitation can be met by any structure broadly
suggested by Figure 3, which shows only a block diagram. Telegenix requested
an instruction limiting the structure to the circuitry shown in Figure 4.
Telegenix also argues that "passing current through selected light sources"
incorrectly identifies the function.

TDS argues that its expert testified that "means for selectively activating"
includes hardware, software, and/or firmware for passing current through
selected light sources, as supported by Figures 3 and 4. TDS argues that
a block diagram such as that shown in Figure 3 may describe structure.

TDS argues in favor of a broad interpretation of this claim limitation in
reliance on the testimony of its expert. "Extrinsic evidence in general,
and expert testimony in particular, may be used only to help the court come
to the proper understanding of the claims; it may not be used to vary or
contradict the claim language." Vitronics, 90 F.3d at 1584. Where the
patent documents are unambiguous, expert testimony regarding the meaning
of a claim is entitled to no weight. Id. "'Any other rule would be unfair
to competitors who must be able to rely on the patent documents themselves,
without consideration of expert opinion that then does not even exist,
in ascertaining the scope of a patentee's right to exclude.'" Id.
(quoting Southwall Techs., 54 F.3d at 1578). Thus, where the patent
documents are unambiguous, reliance upon the testimony of TDS's expert
witness would be improper.

We hold, and the parties do not dispute, that this limitation is in
means-plus-function form and thus is subject to 35 U.S.C. 112, paragraph six.
As stated above, in construing such a limitation, the task of the district
court is first to identify the function recited for the limitation and
next to identify the corresponding structure in the written description
necessary to perform that function. See Micro Chem., 194 F.3d at 1258.

The district court misidentified the recited function by including in the
construction, "The function is to activate the display area by passing
current through selected light sources of the display area and the
background area." This reference to "passing current" has no basis in
the claim language. See Generation II Orthotics, 263 F.3d at 1364-65
("When construing the functional statement in a means-plus-function
limitation, we must take great care not to impermissibly limit the
function by adopting a function different from that explicitly recited
in the claim."); Micro Chem., 194 F.3d at 1258 ("The statute does not
permit limitation of a means-plus-function claim by adopting a function
different from that explicitly recited in the claim.").

Likewise, the district court's identification of the corresponding structure
was incomplete. The description in the specification of the structure
corresponding to the recited function is not limited to Figures 3 and 4,
as instructed, but also includes the written description accompanying these
Figures. See '619 patent, col. 3, lines 34-68, and col. 4, lines 1-61.
Moreover, as Figure 3 and its accompanying text serve merely as overview
for introducing and explaining Figure 4, the corresponding structures
must necessarily be found in Figure 4.

We conclude that the "means for selectively activating" performs the function
of "illuminating certain of said display areas in a first color, and said
background light sources, to illuminate said background regions in a second
color different from said first color". The corresponding structure in the
specification is described in Figure 4 and the accompanying written
description, including the overview provided by Figure 3 and the written
description accompanying that Figure. The "means for selectively activating"
is limited to this corresponding structure and equivalents thereof.

G. "converter means"

The phrase "converter means" is a limitation recited in claim 4 of the '890
patent. The district court interpreted this phrase to mean:

The converter means includes firmware, software and/or hardware that
functions to convert said display color control signals to obtain
complementary color control signals.

Telegenix argues that this interpretation is unsupported, because no software
or firmware is mentioned anywhere in the specification. Telegenix argues that
the structure disclosed for the "converter means" is the multiplexer and
inverter arrangement described in the written description and figures.

TDS argues that its expert testified that one of ordinary skill in the art
would have appreciated that the converter means could be implemented in
hardware, software, and/or firmware. TDS argues that the function of the
converter means includes providing a complementary color in response to the
selected display area color, and the multiplexer does not perform this
function. Instead, according to TDS, only the inverter performs this function.

There is no dispute that "converter means" is a means-plus-function
limitation within the meaning of section 112, paragraph 6. Again, in
construing such a limitation, the task of the district court is to first
identify the function recited for the limitation, and next to identify
the corresponding structure in the written description necessary to
perform that function. See Micro Chem., 194 F.3d at 1258.

In its construction of the "converter means", the district court failed to
identify the corresponding structure from the specification. The district
court correctly performed the first step by identifying the claimed
function, "to convert said display control color signals to obtain
complementary color control signals". However, the court's description
of the corresponding structure as "including firmware, software and/or
hardware" has no basis in the specification. TDS essentially admits in
its brief that the testimony of TDS's expert was used to broaden the
court's view of the corresponding structure beyond that disclosed in the
specification and prosecution history.

TDS argues that the structure identified by the district court could qualify
as equivalent structure under section 112, paragraph six. This argument
misunderstands the deficiency in the district court's construction. Even if
software and firmware could be equivalent structures under section 112,
paragraph six, the court failed to correctly perform the second step of
identifying the structure disclosed in the written description as
corresponding to the recited function. Instead, the court identified a
broad array of possible structures not mentioned anywhere in the
specification.

We conclude that the district court erred in construing this limitation.
Where the patent documents are unambiguous, expert testimony regarding
the meaning of a claim is entitled to no weight. Vitronics, 90 F.3d
at 1584. The "converter means" performs the function of converting the
display color control signals to obtain complementary color control
signals. The corresponding structure includes inverters 26a-c depicted
in Fig. 3 and described in the specification at col. 3, lines 31-39,
and col. 4, lines 8-27. The "converter means" is limited to this
corresponding structure and equivalents thereof.

H. "first means" and "second means" for carrying color control signals

The "first means" and "second means" are limitations recited in claim 4 of
the '890 patent. The district court instructed the jury:

The first means for carrying includes functions that are performed
by electrical paths which are non-inverting buses for the red and
green LEDs shown in Figure 3 and described in Column 3, lines 23-30.
First means includes "firmware, software and/or hardware that function
to carry the information which determines the display area
(character) color."

The court further instructed:

The second means for carrying includes functions that are performed
by electrical paths which are inverting buses for the red and green
LEDs shown in Figure 3 and described in column 3, lines 31-35. Second
means for carrying includes "any firmware, software and/or hardware
that function to carry complementary control signals".

Telegenix repeats its arguments that the specification does not disclose
"firmware, software, and/or hardware" that performs the claimed functions.
Telegenix argues that the structure should be limited to inverting and
non-inverting electrical buses.

TDS argues that Figure 2 shows structure for carrying the color control
signals in the form of signal lines connecting the Display Color Control
block 21 and the Complement Color Control block 22 with the Variable
Color Display block 11.

Again, the parties do not dispute that the "first means" and "second means"
are in means-plus-function form and thus are subject to 35 U.S.C. 112,
paragraph six.

The district court misidentified both the recited function and the
corresponding structure with respect to "first means" and "second means".
Instead of identifying the function recited for the first means, the district
court's instruction to the jury indicated that the function was "to carry
the information which determines the display area (character) color". We
disagree. This language appears nowhere in claim 4, and unnecessarily
limits the function actually recited in claim 4, "carrying selective
display color control signals". See Generation II Orthotics, 263 F.3d at
1364-65 ("When construing the functional statement in a means-plus-function
limitation, we must take great care not to impermissibly limit the function
by adopting a function different from that explicitly recited in the claim."). Likewise, the district court erred in identifying the recited function of
the second means. The recited function is "for carrying said complementary
color control signals".

Concerning the district court's identification of corresponding structure,
it is undisputed that such structure includes the non-inverting buses
described in the specification. However, the district court ventures beyond
the specification to include in its construction "any firmware, software
and/or hardware" that performs the identified function. Committing the same
error as with the "converter means", the district court relied on expert
testimony to broaden its interpretation of the corresponding structure
beyond that appearing in the specification.

Although TDS argues that Figure 2 identifies structure broader than the
inverting and non-inverting buses described in the written description,
Figure 2 fails to describe any structure for the first and second means
sufficient to comport with section 112, paragraph six. If a patentee fails
to disclose an adequate corresponding structure in the specification, the
patentee may fail to satisfy the bargain embodied in the statutory quid pro
quo of section 112, paragraph six. See Kemco Sales, Inc. v. Control Papers
Co., 208 F.3d 1352, 1360 (Fed. Cir. 2000). Notwithstanding its adequacy,
Figure 2 provides no support whatsoever for the district court's
identification of the corresponding structure as including "any firmware,
software and/or hardware".

We conclude that the district court's claim construction for "first means"
and "second means" was flawed to the extent that it misidentified the
functions recited in claim 4 of the '890 patent and included in the
corresponding structure "any firmware, software and/or hardware". See
Vitronics, 90 F.3d at 1585 ("Because the specification clearly and
unambiguously defined the disputed term in the claim, reliance on this
extrinsic evidence was unnecessary and, hence, legally incorrect."). The
recited function of the first means is "carrying selective display color
control signals", and the corresponding structure includes "electrical
paths which are non-inverting buses for the red and green LEDs shown in
Figure 3 and described in Column 3, lines 23-30". The recited function of
the second means is "carrying said complementary color control signals",
and the corresponding structure includes "electrical paths which are
inverting buses for the red and green LEDs shown in Figure 3 and described
in column 3, lines 31-35". The first means and second means are limited
to the identified corresponding structure and equivalents thereof.

I. "control means for selectively coupling said light sources"

The "control means for selectively coupling" appears in claim 4 of the '890
patent. Claim 4 of the '890 patent recites:

control means for selectively coupling said light sources in said
display areas to said first means, for causing selective ones of
said display areas to illuminate in a selected color defined by
said display color control signals, and to said second means, for
causing the remaining display areas to illuminate in a substantially
complementary color defined by said complementary color control
signals.
'890 patent, col. 10, lines 16-23.

The district court's instruction to the jury construing "control means" was:

Control means includes any firmware, software, and/or hardware that
functions to selectively couple the light sources in the display areas
to said first means for carrying thereby causing the selective ones
of the display areas to illuminate in a selected color . . . . Control
means is defined as a multiplexer. Multiplexers serve to selectively
couple each display area of a display device to non-inverting and
inverting buses in order to illuminate the display areas with either
the desired color or a substantially complimentary color in accordance
with the output of the decoder. The decoder output is respectively
coupled to the display areas. The multiplexer simultaneously couples
the display areas to the display control bus and couples the converted
display signal to the background areas of the display device.

Telegenix argues that inclusion of "any firmware, software, and/or hardware"
was error. Telegenix argues that the Statement of Reasons for Allowance in
the prosecution history of the '890 patent shows that the inventor limited
the claims to require a hardware multiplexer, thus firmware or software
multiplexers would be excluded.

TDS concedes that the "control means" must include a multiplexer, but TDS
contends that the circuit shown in Figure 4 of the '890 patent is not the only
implementation of a multiplexer, again citing expert testimony in support.

The limitation "control means" is in means plus function form, and neither
party disputes the district court's identification of the recited function,
which we conclude is correct.

However, for the same reasons announced earlier with regard to the "converter
means", the district court erred by including "any firmware, software,
and/or hardware" in its identification of the corresponding structure. See
Vitronics, 90 F.3d at 1585, 39 USPQ2d at 1579 ("Because the specification
clearly and unambiguously defined the disputed term in the claim, reliance on
this extrinsic evidence was unnecessary and, hence, legally incorrect.").
We can find no support in the specification or prosecution history for such
a broad array of structures. Instead, the specification describes a hardware
multiplexer at col. 5, lines 45-68 and col. 6, lines 1-20, illustrated in
Figures 3 and 4. We conclude that the correct construction of "control
means" is that of the district court with the phrase "includes any firmware,
software, and/or hardware that" excised from the first sentence and the
phrase "a multiplexer" at the end of the second sentence replaced with
the phrase -- the multiplexer shown in Figure 4 and described in the
accompanying written description, and equivalents thereof --.

II. Prejudicial Error

Telegenix has shown that the district court erred in construing limitations
of the claims, but this alone is not enough to challenge jury instructions
with respect thereto -- the standard of review for jury instructions is
prejudicial legal error. See Jamesbury, 756 F.2d at 1558. Thus, to prevail,
the party challenging a jury instruction "must demonstrate both that the
jury instructions actually given were fatally flawed and that the
requested instruction was proper and could have corrected the flaw".
Biodex, 946 F.2d at 862; accord Ecolab, 285 F.3d at 1372-73.

Although TDS argues that Telegenix has failed to demonstrate prejudice from
these claim construction errors, Telegenix correctly points to the record,
which shows that Telegenix warned the district court concerning the court's
failure to properly construe the means-plus-function limitations and
proposed constructions of the disputed claim limitations that would
have corrected the flaws.

On this record, we conclude that the claim construction errors committed by
the district court were prejudicial. Accordingly, we vacate the decision
of the district court and remand for a new trial of both liability and
damages. To assist the district court on remand, we address the allegations
of error regarding the admissibility of the challenged testimony of Brent W.
Brown ("Brown") and J. Carl Cooper ("Cooper"), and the district court's
reliance on the Supreme Court's decision in Wine Railway Appliance Co.
v. Enterprise Railway Equipment Co., 297 U.S. 387, 1936 Dec. Comm'r Pat.
657 (1936).

III. Admissibility of Evidence

We review a trial court's decision to exclude evidence for abuse of
discretion. Beech Aircraft Corp. v. Rainey, 488 U.S. 153, 172, 102 L. Ed. 2d
445, 109 S. Ct. 439 (1988). To be admissible, expert testimony must "assist
the trier of fact to understand the evidence or to determine a fact in
issue." Fed. R. Evid. 702; Kumho Tire Co. v. Carmichael, 526 U.S. 137,
147, 143 L. Ed. 2d 238, 119 S. Ct. 1167 (1999).

Telegenix argues that the district court abused its discretion by excluding
the evidence offered by Brown, and by admitting the testimony of Cooper
respecting damages. We first address Telegenix's argument with respect
to Brown and then with respect to Cooper.

A. Brown

Telegenix argues that the district court erroneously excluded the testimony
of Brown, an engineer who developed a variable color LED display in the early
1980's. Telegenix argues that Brown's testimony, along with his 1982 patent
application, would have shown that the patents in suit were in public use
prior to one year before the original application in 1986.

The district court refused to admit Brown's testimony, stating:

He testified that he had a prototype of a multicolor display unit
somewhere prior to 1985. I think he testified '83 or so, somewhere
around there, but he didn't testify that it was out in the public
anywhere or that any were sold prior to 1986. He just couldn't
remember. That's the type of unreliable evidence that is difficult
to make a determination whether or not to admit to a jury.

The district court also stated:

It's too dangerous to submit this evidence to the jury based upon
the testimony of Mr. Brown and their offer of proof because Mr. Brown
is just uncertain of the facts and circumstances surrounding when
the invention actually got out into the public. . . . The Court finds
that the uncorroborated testimony of Mr. Brown would be confusing
to the jury . . . .

Telegenix argues that the district court erred by excluding Mr. Brown's
testimony as lacking in sufficient corroboration. Telegenix contends that
because his evidence was not offered as a party seeking to prove priority,
no corroboration is required. Telegenix's argument misreads our caselaw
on corroboration. "Corroboration is required of any witness whose
testimony alone is asserted to invalidate a patent, regardless of his
or her level of interest." Finnigan Corp. v. Int'l Trade Comm'n, 180
F.3d 1354, 1369 (Fed. Cir. 1999). Thus, the district court correctly
required corroboration for Brown's testimony.

Telegenix argues that, even if Brown's testimony required corroboration, his
1982 patent application and other documentary and physical evidence provided
sufficient corroboration for his testimony. Telegenix argues that the court
erred by excluding the 1982 unissued patent application as corroborating
evidence, citing Sandt Technology v. Resco, 264 F.3d 1344, 1351 (Fed. Cir.
2001).

We assess corroboration according to the factors enumerated in Woodland Trust
v. Flowertree Nursery, Inc.:

(1) the relationship between the corroborating witness and the
alleged prior user,
(2) the time period between the event and trial,
(3) the interest of the corroborating witness in the subject matter
in suit,
(4) contradiction or impeachment of the witness' testimony,
(5) the extent and details of the corroborating testimony,
(6) the witness' familiarity with the subject matter of the
patented invention and the prior use,
(7) probability that a prior use could occur considering the state
of the art at the time, and
(8) impact of the invention on the industry, and the commercial value
of its practice.

148 F.3d 1368, 1371, 47 USPQ2d 1363, 1366 (Fed. Cir. 1998). "Documentary or
physical evidence that is made contemporaneously with the inventive process
provides the most reliable proof that the inventor's testimony has been
corroborated." Sandt, 264 F.3d at 1350-51.

Despite Telegenix's argument, the district court did not refuse to consider
Brown's 1982 unissued patent application, but instead expressly considered it
for corroboration purposes. Judge Stickney stated in open court, "Now, Mr.
Brown's testimony is not corroborated other than by his patent application,
which the Court finds is insufficient corroboration."

However, the district court did refuse to consider Brown's '114 patent and
physical evidence for corroboration purposes because it was not prior or
contemporaneous evidence, as Telegenix concedes. TDS argues that the physical
evidence offered with Brown's testimony was properly excluded because it was
built after the effective date of the patents in suit. Whether or not the
district court erred in refusing to consider this evidence for corroboration
purposes, Telegenix faces a particularly high hurdle in attempting to
demonstrate abuse of discretion in light of the stringent standard for
corroboration. See Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728
(Fed. Cir. 2002). In the absence of further contemporaneous corroborating
evidence, we are unable to conclude that the district court abused its
discretion in refusing to admit Brown's testimony for lack of corroboration.

The district court excluded Brown's testimony for the further reason that
Brown gave uncertain testimony concerning the date of public use: "Mr.
Brown is just uncertain of the facts and circumstances surrounding when
the invention actually got out into the public . . . he just really doesn't
remember anything." The district court cited Federal Rule of Evidence 403
("FRE") and found that Brown's testimony would be confusing to the jury.

Although the record before us indicates that Brown gave clear and definite
testimony concerning certain facts related to public use, it is also clear
that Brown could not recall the details:

Q: You said you sold the company -- did you sell multicolor displays
using red and green LEDs prior to your sale of ISE to Bray in 1983?

A: I can't honestly remember at that point.

Q: Did Bray sell those devices after you sold the company to Bray
and moved over to that company?

A: Yes. That was a product line that we continued to develop and
was being sold when I bought the company back in 1986, in December.

Q: They were sold prior to 1986?

A: Yes.

Q: For approximately how long?

A: I can't tie it down exactly because the -- it was an ongoing
development, and I was running both companies, the whole division.
So I can't tie it any closer than that.

The district court ultimately excluded the evidence because Brown could not
establish a particular date of public use, a critical consideration for a
statutory bar. The court found Brown's testimony unreliable and
potentially confusing to the jury, and rightfully excluded it pursuant
to FRE 403. On the basis of the record before us, we cannot conclude
that the district court abused its discretion.

B. Cooper

Telegenix argues that the district court improperly admitted Cooper's
revised expert report on patent damages. Telegenix contends that Cooper
is unqualified to testify as an expert in this subject. Telegenix argues
that Cooper's report contained numerous flaws, including that Cooper's
profit calculations for Telegenix products were not based on the actual
cost figures provided by Telegenix; that Cooper did not take into account
that hypothetical licensing negotiations taking place in 1992 would have
been with the inventor Mr. Havel, not with TDS; that Cooper did not account
for revenues and profits from related products; and that Cooper's premise
that TDS did not license its patents was false because the evidence
showed that another company took two licenses.

Despite Telegenix's qualifications argument, the evidence supports a finding
that Cooper was competent and qualified. Cooper owned and managed two patent
licensing companies following his work in manufacturing displays in the
early 1990's.

The district court initially refused to admit Cooper's second damages report
because Cooper had revised the cost figures provided by Telegenix. The court
ruled that Cooper must use the actual cost figures provided by Telegenix, and
permitted Cooper to submit another report with the corrected figures. Although
Telegenix argues that it did not receive the revised report until shortly
before trial, due to the nature of the revisions Telegenix can hardly claim
unfair surprise.

Telegenix's other complaints allege no abuse of discretion by the district
court. Instead, Telegenix takes issue with the content of Cooper's opinion.
As the district court stated, Telegenix's complaints go to weight, not
admissibility. We conclude that the district court did not abuse its
discretion by admitting Cooper's corrected expert report.

IV. Wine Railway

Telegenix argues that the district court erroneously relied on Wine Railway
Appliance Co. v. Enterprise Railway Equipment Co., 297 U.S. 387, 80 L. Ed.
736, 56 S. Ct. 528, 1936 Dec. Comm'r Pat. 657 (1936), in sustaining the
jury's award of damages for acts of infringement dating back to 1992.
Telegenix argues that it did not receive notice that it was infringing
the patents in suit until 1998, and, by permitting liability for acts
prior to 1998, the rule of Wine Railway undermines the notice requirement
of 35 U.S.C. 287.

TDS argues that the damages awarded by the jury were not limited by section
287 because TDS did not trigger operation of the statute. TDS contends that
it could not have triggered operation of the statute because it did not
produce or sell the patented product -- there was no "failure so to mark"
under 35 U.S.C. 287(a). TDS argues that Wine Railway is still good law on
which the district court properly relied.

The Supreme Court in Wine Railway held that the patent marking statute then
in effect did not require a patentee who did not produce the patented device
to give actual notice to an infringer before damages could be recovered.
Although Wine Railway interpreted a predecessor to the current patent
marking statute, we have applied Wine Railway to the modern statutory
counterpart, 35 U.S.C. 287. See Nike, Inc. v. Wal-Mart Stores, Inc.,
138 F.3d 1437, 1443 (Fed. Cir. 1998); Am. Med. Sys., Inc. v. Med. Eng'g Corp.,
6 F.3d 1523, 1538 (Fed. Cir. 1993); Bandag, Inc. v. Gerrard Tire Co.,
704 F.2d 1578, 1581 (Fed. Cir. 1983).

Telegenix's arguments reveal a misunderstanding of the patent marking
statute. The statute does not specify when or under what circumstances
damages may be recovered. Rather, it describes circumstances that effect a
forfeiture of damages:

In the event of failure so to mark, no damages shall be recovered
by the patentee in any action for infringement, except on proof that
the infringer was notified of the infringement and continued to
infringe thereafter, in which event damages may be recovered only
for infringement occurring after such notice.
35 U.S.C. 287(a) (2000).

Thus, section 287 "penalizes the use of unauthorized marks upon manufactured
articles" and limits the extent to which damages may be recovered where
products covered by a U.S. patent are sold without the notice defined in
the statute. Wine Railway, 297 U.S. at 393. The recovery of damages is not
limited where there is no failure to mark, i.e., where the proper patent
notice appears on products or where there are no products to mark.
Id. As the Supreme Court so aptly stated:

The idea of a tangible article proclaiming its own character runs
through this and related provisions. Two kinds of notice are specified
-- one to the public by a visible mark, another by actual advice to
the infringer. The second becomes necessary only when the first has
not been given; and the first can only be given in connection with
some fabricated article. Penalty for failure implies opportunity to
perform.

Id. at 395. The district court did not err in its reliance on the rule of
Wine Railway.

CONCLUSION

For the foregoing reasons, the decision of the district court is
affirmed-in-part, reversed-in-part, and remanded.

AFFIRMED-IN-PART, REVERSED-IN-PART, and REMANDED

COSTS

No costs.

FOOTNOTES:

{n1} Although certain claims of the patents in suit include a slight
modification of this phrase, the parties have treated the modified
phrases in an identical manner for purposes of this appeal.