Opinion
Civil No. 99-4876 (JBS).
May 6, 2004
Edwin Chociey, Esquire, Riker, Danzig, Scherer, Hyland Perretti, LLP, Headquarters Plaza, One Speedwell Avenue, Morristown, New Jersey, and Dennis J. Mondolino, Esquire, Douglas R. Weider, Esquire, Peter Schuyler, Esquire, Morgan, Lewis Bockius, LLP New York, New York, Attorneys for Plaintiff Metrologic Instruments, Inc.
Joel Schneider, Esquire, Archer Greiner, P.C., Haddonfield, New Jersey, and James H. Shalek, Esquire, Robert S. Mayer, Esquire, Baldassare Vinti, Esquire, Proskauer Rose LLP, New York, New York, Attorneys for Defendant PSC Inc.
OPINION
This matter comes before the Court upon Plaintiff Metrologic Instruments, Inc.'s motion for reconsideration pursuant to Local Civil Rule 7.1(g) and Fed.R.Civ.P. 59(e). Plaintiff urges this Court to reconsider its determination in the Opinion and Order filed August 26, 2003, that claim 5 of U.S. Patent No. 5,081,342 has no affirmative limitation of a "decoder means" and that the preamble of claim 5 contains no affirmative limitations. For the reasons discussed herein, Plaintiff's motion for reconsideration will be denied.
BACKGROUND
Plaintiff Metrologic Instruments, Inc. ("Metrologic") filed its complaint against Defendant PSC Inc. ("PSC") on October 12, 1999, alleging that Defendant's products infringed Metrologic's United States Patent Nos. 5,637,852 (the '852 patent), 5,627,359 (the '359 patent), 5,789,731 (the '731 patent), 5,260,553 (the '553 patent), 5,343,027 (the '027 patent), 5,686,717 (the '717 patent), 5,828,049 (the '049 patent), and 5,081,342 (the '342 patent). PSC filed a counterclaim, seeking a declaratory judgment of non-infringement and alleging unfair competition under § 43 of the Lanham Act.
This Court held a Markman hearing on August 6 and 7, 2002. After defendant filed bankruptcy in December 2002, the case was administratively terminated on December 17, 2002. The case was reopened on July 18, 2003, after defendant emerged from bankruptcy. In its lengthy Opinion of August 26, 2003, this Court set forth its construction of the disputed claim limitations in Metrologic's '359, '731, '852, '027, and '342 patents.
Metrologic filed its motion for reconsideration on September 10, 2003, and PSC filed opposition shortly thereafter.
DISCUSSION
Standard for Reconsideration
Local Civil Rule 7.1(g) of the United States District Court, District of New Jersey, governs the instant motion for reconsideration. The rule requires that the moving party set forth the factual matters or controlling legal authority that it believes the court overlooked when rendering its initial decision. L. Civ. R. 7.1(g). Whether to grant reconsideration is a matter within the district court's discretion, but it should only be granted where such facts or legal authority were indeed presented but overlooked. DeLong Corp. v. Raymond Int'l, Inc., 622 F.2d 1135, 1140 (3d Cir. 1980), overruled on other grounds by Croker v. Boeing Co., 662 F.2d 975 (3d Cir. 1981);Williams v. Sullivan, 818 F. Supp. 92, 93 (D.N.J. 1993). The purpose of a motion for reconsideration "is to correct manifest errors of law or to present newly discovered evidence." Harsco Corp. v. Zlotnick, 779 F.2d 906, 909 (3d Cir. 1985), cert. denied, 476 U.S. 1171 (1986). A motion for reconsideration is improper when it is used solely to ask the court to rethink what it has already thought through — rightly or wrongly. Oritani Savings Loan Assoc. v. Fidelity Deposit Co., 744 F. Supp. 1311, 1314 (D.N.J. 1990) (citing Above the Belt v. Mel Bohannan Roofing, Inc., 99 F.R.D. 99, 101 (E.D. Va. 1983)), rev'd on other grounds, 989 F.2d 635 (3d Cir. 1993). Nor is reconsideration warranted when the moving party simply recapitulates the cases and arguments considered by the court prior to rendering its initial decision. Carteret Sav. Bank v. Shushan, 721 F. Supp. 705, 706-07 (D.N.J. 1989). Here, Metrologic seeks reconsideration of this Court's prior determination that claim 5 of the '342 patent has no affirmative limitation of a "decoder means" and that the preamble of claim 5 contains no affirmative limitations. The motion consists largely of arguments that the Court heard, considered and adjudicated. Those arguments are now briefly addressed again.
Claim 6's "Decoder Means" and Claim 5
Though this Court found to the contrary in its Opinion of August 26, 2003, Metrologic argues that the last element of the '342 patent is written in means plus function format and requires "decoder means" for performing the function of "decoding said bar code symbols." Metrologic advances that for claim 6 of the '342 patent to be properly interpreted and for the claims of the '342 patent to be internally consistent, "decoder means" must be an affirmative limitation of claim 5.
Claim 6 states:
6. The device of claim 5 wherein said decoder means comprises a first decoder for receiving said processed signals and wherein said device uses a second one of said plurality of predetermined frequencies for timing said first decoder.
Metrologic argues that the use of the word "said" in claim 6 in reference to the "decoder means" transforms those means into affirmative elements of claim 5.
This Court previously determined that the "decoder means" is not an element of claim 5, and that it is used in the claim to specify the normally intended designation of the digital data. Metrologic has failed to cite any cases that refute both this interpretation and the general notion that terms that are recited inferentially are not necessarily considered to be elements of the claim. Claim 6 serves only to further specify the nature of the signals that are generated by the claimed device. The first half of claim 6 ("wherein said decoder means comprises a first decoder for receiving said processed signals") specifies the nature of those signals in an indirect manner, by explaining the intended destination. The second half of claim 6 ("wherein said device uses a second one of said plurality of predetermined frequencies for timing said first decoder") specifies the nature of the clock signal that is generated by the claimed device for use by the destination decoder. Thus, claim 6 of the '342 patent specifies the nature of the signals that are generated by the claimed device, but does not incorporate the decoder means into claim 5.
Metrologic additionally contends that this Court's claim construction "result[s] in claim 6 being invalid for lack of a proper antecedent basis." (Metrologic Brief, p. 6 n. 3). Federal Circuit precedent holds, however, that it is proper to use "said" to refer back to anything in the claim, including items that are not elements. See e.g., Bristol-Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368, 1371, 1375 (Fed. Cir. 2001) (preamble was not a limitation despite a reference back to the preamble using "said"); Embrex, Inc. v. Service Engineering Corp., 216 F.3d 1343, 1348 (Fed. Cir. 2000) (holding "avian species" was not a limitation despite subsequent references using "said"). In addition, § 23 of the Faber treatise provides in relevant part that "[t]he word `said' is used by many practitioners rather than `the' to refer back to previously recited elements, sometimes to a previously recited anything." R. Faber, Landis on Mechanics of Patent Claim Drafting, at § 23 (4th ed. 1998). Thus, this Court continues to hold that the phrase "said decoder means" in claim 6 merely refers back to the inferentially recited "decoder means" in claim 5, which provides proper antecedent basis for the phrase "said decoder means" in claim 6.
Claim 12's "Input Means" and Claim 5
Metrologic further argues that for claim 12 of the '342 patent to be properly interpreted and for the claims of the '342 patent to be internally consistent, "input means" must also be an affirmative limitation of claim 5. This Court previously rejected this interpretation. See August 26, 2003 Opinion at p. 72.
Claim 12 states:
12. The device of claim 5 wherein said input means is selected from the group comprising counter top scanners, hand-held scanners, light pen scanners, wand scanners, and magnetic readers.
Metrologic contends that claim 12 depends from claim 5 and refers to an antecedent "means" from that claim. Because such reference requires that the antecedent be a claim limitation, it asserts, "input means" from the preamble must be an affirmative limitation. Metrologic suggests that claim 12 further defines the scope of the input means from the preamble to claim 5 as including the listed scanner and reader types.
"When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention." Eaton Corp. v. Rockwell Int'l. Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). The court in Eaton continued, "On the other hand, `[i]f the body of the claim sets out the complete invention,' then the language of the preamble may be superfluous." Id. (quoting Schumer v. Lab. Computer Sys. Inc., 308 F.3d 1304, 1310 (Fed. Cir. 2002)).
The preamble of claim 5 reads as follows:
A device for processing plural digital input signals, each said digital input signal having first and second levels, and being provided to said device by at least one input means, and each said digital input signal representing a code symbol recorded on a medium read by said input means, the frequency of each said digital input signal from said input means being a function of the type of said input means and the resolution of said code symbol as recorded on said medium.
The first portion of the preamble thus states what the claimed device is (i.e., a device for processing plural digital input signals), while the remainder of the preamble describes the nature of the digital input signals that are processed by the device. As such, the body of the claim alone describes the complete invention, rendering the preamble superfluous, rather than a necessary component of that invention.
Furthermore, claim 12 serves to more specifically describe the nature of the input signals that are processed by the claimed device. When claim 12 states that the input means can be a countertop scanner, a handheld scanner, or a light pen scanner, it indicates that the device can handle both faster and slower signals. Thus, claim 12 describes additional characteristics of the input signals that are processed by the claimed device, above and beyond the original description of those signals that appeared in the preamble of claim 5. This interpretation does not support Metrologic's contention that claim 5 is properly interpreted as an affirmative limitation.
CONCLUSION
For the reasons discussed above, Plaintiff Metrologic Instrument, Inc.'s motion for reconsideration will be denied. The accompanying Order will be entered.
ORDER
This matter coming before the Court upon Plaintiff Metrologic Instruments, Inc.'s motion for reconsideration of this Court's construction of various disputed claim limitations in Plaintiff's patents, as articulated in its August 26, 2003 Opinion and Order; and the Court having considered the parties' submissions; and for the reasons stated in the Opinion of today's date; and for good cause shown;
ORDERED that Plaintiff Metrologic Instruments, Inc.'s motion for reconsideration [Docket Item No. 110-1] be, and hereby is, DENIED.