HONEYWELL INTERNATIONAL, INC., and Honeywell Intellectual Properties, Inc., Plaintiffs, v. The UNITED STATES, Defendant, and Lockheed Martin Corp., Defendant-Intervenor, 66 Fed. Cl. 400

MEMORANDUM OPINION AND ORDER CONSTRUING CERTAIN CLAIMS OF UNITED STATES PATENT NO. 6,467,914 BRADEN, Judge. In the decade following the United States Supreme Court’s unanimous affirmance of the landmark en banc decision in Markman v.

Westview Instruments, Inc., 52 F.3d 967, 978-79 (Fed.Cir.1995) (“Markman F), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (“Markman IF), the United States Court of Appeals for the Federal Circuit has devoted a great deal of effort to provide federal trial courts with a workable analytical framework to construe the meaning of a patent’s claims that is faithful to 35 U.S.C. § 112 and affords the court an opportunity to consider relevant, but reliable, evidence, in a wide range of diverse and increasingly complex applications of mechanical, electrical, chemical, computer, pharmaceutical, bio, and nano technology.

From the court’s reading of controlling appellate precedent, intrinsic evidence has been endorsed as most relevant and reliable to establish the metes and bounds of the property right conveyed by the privilege of the patent grant. Extrinsic evidence has been determined to be useful to identify the academic and industry credentials of “one skilled in the art,” akin to the “reasonable man” in the tradition of tort law. If the court must resort to extrinsic evidence to avoid determining that a claim is indefinite, only the most probative and reliable of such evidence should be considered-and, with caution.

In this case, the court determined that it was unnecessary to consider extrinsic evidence to construe the language of the patent claims at issue, in most instances. See Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed.Cir.1998) (internal citations omitted) (“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.”).

In only one claim, where extrinsic evidence was considered, the court was able to construe the disputed term by referring to prior art and was not dependent on technical treatises, technical dictionaries, nor the parties’ experts. In light of the multitude of issues addressed herein, an outline of this Memorandum Opinion and glossary of selected acronyms follow: OUTLINE I. THE RELEVANT TECHNOLOGY. A. Night Vision Aids. 1. The Electromagnetic Spectrum. 2. Night Vision Goggles. B. Cockpit Displays. 1. Cathode Ray Tubes. 2. Liquid Crystal Displays. 3. Color. C. Characteristics And Types Of Optical Filters. D.

The ’914 Patent. II. FACTUAL AND PROCEDURAL BACKGROUND. III. DISCUSSION. A. Jurisdiction. B. Standing. 1. Plaintiff. 2. Intervenor. C. Controlling Appellate Precedent Concerning Construction Of Patent Claims. 1. A Federal Trial Judge Must First Attempt To Construe Ambiguous Claim Terms Utilizing Intrinsic Evidence. a. Claim Language. b. Specification Explanation And Definition. c. Prosecution History. 2. Only In Limited Circumstances May A Federal Trial Judge Construe Claim Terms Utilizing Extrinsic Evidence. a. Prior Art. b. Technical Treatises And Technical Articles. c. Expert Testimony. d.

Scientific Or Industry Specific Dictionaries. e. Inventor Testimony. 3. A Federal Trial Court Should Construe Claims To Preserve A Patent’s Validity Only Where All Other Tools Of Claim Construction Are Exhausted. 4. The Import Of Phillips v. AWH Corp., 376 F.3d 1382 (Fed.Cir.2004). D. Construction Of Certain Claims Of United States Patent No. 6,467,914. 1. “Display System.” a. Honeywell’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. b. The Government’s Proposed Construction. i.

Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. c. Intervenor Lockheed Martin’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. d. Specific Precedent Governing Construction Of A Patent’s

Preamble. e. The Court’s Construction Of “A Display System For Use In Association With A Light Amplifying Passive Night Vision Aid And A Local Color Display, Including A Local Source Of Light, Comprising” In This Case. 2. “Local” And “Color Display.” a. Honeywell’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. b. The Government’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. c.

Intervenor Lockheed Martin’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. d. The Court’s Construction Of “Local Color Display” In This Case. i. In The

Preambles To Claim 1 And Claim 2. ii. In Claim 1(a). iii. In Claim 2(a). 3. “Local” And “Source of Light.” a. Honeywell’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. b. The Government’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Brief. c. Intervenor Lockheed Martin’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Brief. d.

The Court’s Construction Of “Local Source Of Light” In This Case. 4. “Optical Filter” And “Filter.” 5. “Filters” And “Filtering.” 6. “Filters Light From The Local Color Display.” a. Honeywell’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. b. The Government’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Briefs. c. Intervenor Lockheed Martin’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii.

At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. d. The Court’s Construction Of “Filters Light From The Local Color Display” In This Case. 7. “Notch Filter.” a. Honeywell’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Briefs. b. The Government’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. c. Intervenor Lockheed Martin’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii.

At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. d. The Court’s Construction Of “Notch Filter” In This Case. 8. “Passes.” 9. “Color Band[s].” a. Honeywell’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. b. The Government’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. c. Intervenor Lockheed Martin’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii.

Post-Claim Construction Hearing Briefs. d. The Court’s Construction Of “Color Bands” In This Case. 10. “Predetermined Color Bands.” 11. “Red Color Band.” a. Honeywell’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. b. The Government’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. c. Intervenor Lockheed Martin’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii.

Post-Claim Construction Hearing Briefs. d. The Court’s Construction Of “Red Color Band” In Thi s Case. 12. “Predetermined Red Color Band.” 13. “Substantially Blocks.” a. Honeywell’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. b. The Government’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. c. Intervenor Lockheed Martin’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii.

At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. d. The Court’s Construction Of “Substantially Blocks” In This Case. 14. “First,” “Second,” “Third,” “Fourth,” And “Filter.” 15. “Blue Color Band.” a. Honeywell’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. b. The Government’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. c. Intervenor Lockheed Martin’s Proposed Construction. i.

Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. d. The Court’s Construction Of “Blue Color Band” In This Case. 16. “Green Color Band.” a. Honeywell’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. b. The Government’s Proposed Construction. i. Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. c. Intervenor Lockheed Martin’s Proposed Construction. i.

Pre-Claim Construction Hearing Brief. ii. At The Claim Construction Hearing. iii. Post-Claim Construction Hearing Briefs. d. The Court’s Construction Of “Green Color Band” In This Case. 17. “Narrowband Of The Red Color Band.” IV. CONCLUSION. GLOSSARY OF SELECTED ACRONYMS AGC Automatic Gain Control ANVTS Aviators’ Night Vision Imaging System CIE Commission International l’Eclairage or International Commission on Illumination CRT Cathode Ray Tube IEEE Institute of Electrical and Electronics Engineers, Inc.

IPL Instrument Panel Lighting JEDEC Joint Engineering Display and Electronic Committee LCD Liquid Crystal Display MCP MicroChannel Plate nm Nanometer NVG Night Vision Goggles NVIS Night Vision Imaging System RGB Red Green Blue SED Spectral Energy Distribution A Wavelength or the distance between successive peaks of an electromagnetic wave. nu, v Frequency or the number of complete cycles of electromagnetic radiation completed each second. * sis * * * * I. THE RELEVANT TECHNOLOGY.

In 1973, a second-generation of Night Vision Goggles (“NVG”) was developed by the United States Army to provide helicopter pilots with a brighter view at night of underlying terrain to allow them to fly at low levels. See January 24, 2005 Technology/Industry Primer (“Jt.Primer”) at 3; see also November 22, 2004 Direct Testimony and Expert Report of Dr. Harry Lee Task (“PMX35”) U 8 at 4. NVGs, however, were very sensitive to cockpit lighting, warning lights, displays, and particularly to light of longer wavelengths in the visible spectrum and infrared radiation. See Jt. Primer at 6-8; see also PMX 35 119 at 4.

In particular, NVGs’ sensitivity to red light created numerous problems that were known prior to the October 10, 1985 filing of the patent at issue in this case, including the fact that nearby light sources in a cockpit could overwhelm the sensor elements and interrupt NVG functioning or amplify reflections from the cockpit lights, causing the pilot to see confusing images. Id. Many techniques were developed by the military and private companies to try to solve the incompatibility between the NVG and aircraft lighting and cockpit displays. See PMX 35 HU 8-12 at 4-6.

In the 1980’s, the United States Army began to utilize an Aviation Night Vision Imaging System (“AN-VTS”) goggles with a third-generation image intensifying tube that was much more sensitive to light, i.e., ranging from approximately 450 nanometers (“nm”) to 930 nm, instead of 400 nm to 700 nm. See Jt. Primer at 3; see also PMX 35 Till 9-13 at 4-7. As a result, the visible range below 580 nm could be used for cockpit lighting and display since light in that range, in large part, was invisible to NVGs and allowed the pilot to see outside the aircraft. See PMX 35 1113 at 6-7. A. Night Vision Aids. 1.

The Electromagnetic Spectrum. The electromagnetic spectrum (“spectrum”) describes the range of electromagnetic waves that transports energy, both in electric and magnetic fields. See Jt. Primer at 3. Energy from cosmic rays have the shortest wavelengths; electrical oscillations have the longest wavelengths. Id. “Visible spectrum” or light is the portion of the spectrum located between the ultraviolet light region and the infrared region, as depicted below: Id. at 4. Light is characterized by wavelength and frequency. Id.

Wavelength, referred to by the symbol lambda, <fc, is the distance between successive peaks of an electromagnetic wave. Id. Frequency referred to by the symbol nu, c, is the number of complete cycles of electromagnetic radiation completed each second. Id. Wavelength and frequency are inversely related, i.e., light with a higher frequency has a shorter wavelength; light with a shorter frequency has a longer wavelength. Id. at 4-5. Wavelength times frequency equals the speed of light. Id. at 5. Light and infrared radiation customarily are described in terms of wavelength. Id. 2. Night Vision Goggles.

NVGs are sensitive to visible light and infrared radiation regions of the electromagnetic spectrum. Id. at 5. An unaided human eye only can see light within the visible region of the electromagnetic spectrum, which has a narrow range, as shown above. Id. The human eye adapts to different lighting environments and has two distinct sensitivity curves, as illustrated below: Id. at 6. The peak sensitivity of the human eye drifts toward shorter wavelengths of light in extreme darkness, known as scotopic vision, which is rarely used in human activities. Id. at 6. Colors are seen by day vision, known as photopic vision.

Id. Radiant energy, originating from the sun during the day and the stars or moon at night, is the electromagnetic energy that the human eye detects. Id. At night, there is less visible light present than during the day, so the human eye has extreme difficulty detecting the radiant energy that remains. Id. Night vision aids enable the user, generally a pilot, to see objects at night by amplifying the very low levels of radiant energy from the visible and infrared spectrum. Id. Some night vision aids are capable of amplifying the radiant energy reflected from an object at night in overcast conditions. Id.

NVGs utilize a “two-step energy conversion process” to enable the user to observe very low levels of light and infrared radiation and convert the latter into visible light: first, by converting photons into electrons and amplifying the electrons; and second, by converting the amplified electrons back into photons, in visible light for the user. Id. at 7-8. A schematic of a typical night vision aid is reproduced below: Id. at 7. Low-level radiation first enters the NVG at an objective lens that focuses low levels of light and infrared radiation onto an input window of an intensifier tube. Id.

The intensifier tube consists of a photocathode and a microchannel plate (“MCP”) that amplifies light and infrared radiation. Id. The photo-cathode converts photons into electrons. Id. Electrons are then emitted from the cathode and received at the input surface of the MCP, generally constructed of a honeycomb-like plate of many hollow tubes fused together. Id. Each electron passing through the tube frees other electrons, creating tens of thousands of electrons that exit the tube for each one that entered the tube. See Jt. Primer at 7-8.

Exiting electrons strike a phosphor screen that acts as the reverse of the photocathode and converts the electrons back into photons of visible light at a higher intensity than the input photons. Id. at 8. If an observer uses an ocular lens, the light emitted appears as a green image. Id. This energy is increased by a factor of 10,000 to 20,000 at maximum sensitivity and is known as “gain” or “image intensification” of the NVGs. Id.

Although NVGs amplify low level light and infrared radiation by a factor of 10,000 to 20,000, they also amplify normal level and bright lights, such as streetlights or cockpit lights, by the same factor, which can damage the NVGs. Id. To prevent this problem, ANVIS goggles were developed that have a feature known as “automatic gain control” to govern image intensification within the MCP. Id. This reduction of intensification, however, affects the ANVIS goggles’ entire field, thereby preventing the user from seeing dimly illuminated objects when normal level and bright lights are introduced.

ANVIS goggles also are sensitive to light from about 540 nm to 910 nm. See Jt. Primer at 8. To address this issue, ANVIS goggles utilize a “minus blue” filter that reduces the sensitivity of the goggles to the longer wavelengths. Id. B. Cockpit Displays. Aircraft use a variety of displays in the cockpit, such as cathode ray tubes (“CRTs”) and liquid crystal displays (“LCDs”). Id. at 9. Both, however, can generate or reflect light that interferes with the operation of the NVG. Id. at 9-11. 1. Cathode Ray Tubes.

CRTs are “picture tube for television” technology used in a broad range of commercial and military applications, including aircraft displays. Id. at 9. CRTs operate by receiving an input that is processed by generating electron beams that strike a screen coated with one or more layers of phosphor, wherein each layer can generate one or more colors in a color display. Id. When an electron beam strikes a particular phosphor, a phosphor dot on the screen is excited to emit light of a certain color. Id. at 10.

Full color CRTs typically have three phosphors that correspond to the three most common primary colors of the display: red, green and blue. Id. There are different sets of primary colors, each of which can produce many more colors in the visible spectrum. Id. Prior to the advent of flat screen technologies, every computer monitor and television used a CRT, similar to that shown below: Id. at 9. 2. Liquid Crystal Displays. LCDs are used in many commercial applications, including aircraft cockpit displays. Id.

In transmissive LCDs, light is generated at the back of the display using a fluorescent tube, known as an LCD backlight. Id. This tube has a phosphor coating on the inside that emits light when excited by mercury vapor, which produces color, as determined by the chemical characteristics of the phosphors. Id. Color is then passed through an array of liquid crystal picture elements or pixels. Id. Each liquid crystal pixel also acts as a “shutter” that either passes or blocks the light to varying degrees. Id. at 10-11. A LCD is comprised of two polarizing filters and a cavity containing a liquid crystal compound.

Id. at 10. When electricity is not applied to a pixel, the backlight is polarized by the first polarizer and is placed to permit light to pass through the second polarizer. Id. In a color LCD, each pixel has three subpixels that correspond to the three primary colors of the display. Id. at 11. When electricity is applied, the two polarizers act together to block the backlight, as shown below: Id. 3. Color. Color is a psychological response to different wavelengths of light based on the human perception. Id. at 12. How color is perceived depends upon the amount of energy light has at each wavelength. Id.

Spectral energy distribution (“SED”) shows the relative intensity of light at each wavelength. Id. The SED, however, is not useful for identifying specific colors. Id. In 1931, the Commission International 1’Eelairage or International Commission on Illumination (“CIE”) developed a system for identifying specific colors by measuring the chromaticity of light. The CIE system, which uses the diagram reproduced below, is well known and widely accepted. Id. Id. at 13. All existing colors can be represented by a single point on the CIE Diagram, as plotted on chromaticity coordinates (x,y). Id.

The upside down u-shaped perimeter of the diagram represents the 100% saturated, or pure spectral colors. Id. Colors, however, desatu-rate or become more and more pastel toward the center, until they are white. Id. Every color can be correlated to a dominant wavelength or complimentary dominant wavelength. Id. C. Characteristics And Types Of Optical Filters. Optical filters are devices that selectively pass or block electromagnetic radiation. Id. at 14.

Whether radiation is passed or blocked is based upon a transmissive spec-tram that shows wavelengths that have high transmittance (passing) and low transmittance (blocking). Id. Typically, filters derive their names by the way the transmittance graph looks. Id. For example, filters that pass shorter wavelengths and block longer wavelengths are called “low pass filters.” Id. FHters that pass longer wavelengths and block shorter wavelengths are “high pass filters.” Id.

A combination of optical filters wiH create a filter with properties that are cumulative, ie., the combination of a “highpass filter” that passes light above 500 nm and a “low-pass filter” that passes light below 600 nm wül result in light being emitted in the 500-600 nm range. Id. The transmittance values of filters are multiplied, wavelength by wavelength, to calculate the cumulative effect. Id. D. The ’914 Patent.

The ’914 patent describes the technical problem in 1985 of having “a night vision aid, such as ANVIS goggles, be operable in a cockpit or similar environment in which a full color display is illuminated.” ’914 patent, col. 2, H. 2-5. The ’914 patent consists of three claims. Claims 1 and 2 are independent claims and Claim 3 is dependent upon Claim 2. See ’914 patent, col. 5,1. 30 — col. 6,1. 31. Claim 1 describes: A display system for use in association with a light amplifying passive night vision aid and a local color display including a local source of light, comprising: (

a) a first optical filter that filters light from the local color display, wherein said first optical filter is a notch filter that passes light comprising predetermined col- or bands including a predetermined red color band and that substantially blocks light associated with color bands other than said predetermined color bands; and (

b) a second optical filter that filters light at the night vision aid, wherein said second optical filter substantially blocks light of at least said predetermined red color band. ’914 patent, col. 5,1. 30 — col. 6,1.11. Claim 2 describes: A display system for use in association with a light amplifying passive night vision aid and a local color display including a local source of light having blue, red, and green color bands, comprising: (

a) a plurality of filters at the local color display including (1) a first filter for filtering the blue color band of the local source of light; (2) a second filter for filtering the green color band of the local source of light; and (3) a third filter for filtering the red color band of the local source of light and passing a narrowband of the red color band; and (

b) a fourth filter which filters light at the night vision aid, said fourth filter cooperating with said plurality of filters to substantially block at least said narrowband of the red color band from being admitted to the night vision aid. ’914 patent, col. 6,11.12-28. Claim 3 describes: The display system of claim 2 wherein said narrowband of the red color band is substantially five to twenty nanometers wide. ’914 patent, col. 6,11. 29-31. , II. FACTUAL AND PROCEDURAL BACKGROUND.

Honeywell Intellectual Properties, Inc. is the owner of the ’269 patent application and ’914 patent and Honeywell International, Inc. (hereinafter collectively, “Honeywell”) is the exclusive licensee of the ’269 patent application and ’914 patent. The issuance of the patent, however, was withheld because of a Secrecy Order, issued on April 2,1986.

On December 18, 2002, Honeywell filed a Complaint in the United States Court of Federal Claims asserting essentially three claims against the Government allegedly for violating: (1) the Invention Secrecy Act of 1951, 35 U.S.C. §§ 181-88, as a result of the Government’s issuance of an April 2, 1986 Secrecy Order concerning Honeywell’s ’914 patent and related ’269 application; (2) the Fifth Amendment to the United States Constitution, as a result of the Government’s taking of Honeywell’s ’914 patent and related ’269 application; and (3) 28 U.S.C. § 1498(a), as a result of the unlicensed, or otherwise unlawful, use of the ’914 patent by or on behalf of the Government.

See Compl. at HH 53-75. The case was assigned to the Honorable Emily C. Hewitt. On May 23, 2003, the Government filed a Motion to Issue a Notice to Third Party Lockheed Martin, pursuant to 41 U.S.C. § 114(

b) and RCFC 14(b). On June 5, 2003, the court granted the Government’s Motion. On June 16, 2003, the Government filed a First Answer. On August 15, 2003, this case was assigned to the undersigned judge. On September 3, 2003, Lockheed Martin filed an Unopposed Motion to Intervene, insofar as Honeywell alleged that the C-130J Hercules aircraft, which is manufactured by Lockheed Martin, incorporated technology claimed in the ’914 patent. See Int. Motion at 1. On September 9, 2003, Honeywell filed a Response to Lockheed Martin’s Motion to Intervene.

On September 12, 2003, both Lockheed Martin and the Government filed a Reply to Honeywell’s Response. On September 17, 2003, the court issued a revised Order granting Lockheed Martin’s Motion to Intervene with respect to only Counts III and IV of the Complaint. On September 17, 2003, the court entered an Order setting discovery and pretrial deadlines agreed to by the parties. On that date, Lockheed Martin also filed an Answer in response to the December 18, 2002 Complaint. On February 10, 2004, the Government filed an Unopposed Motion for Entry of a Stipulated Protective Order.

On February 20, 2004, the court granted the Unopposed Motion and entered a Stipulated Protective Order. On April 30, 2004, the court entered an Order setting the date of a claim construction hearing for December 6-10, 2004, which subsequently was rescheduled to November 29, 2004-December 3, 2004 by a May 14, 2004 Order. On July 9, 2004, the court also issued an Order granting Honeywell’s Unopposed Motion for Extension of Time of Certain Discovery Deadlines. On July 16, 2004, the court convened a telephone status conference to discuss discovery matters and questions concerning the claim construction hearing.

At the invitation of the court, on July 23, 2004 and July 29, 2004, Lockheed Martin and Honeywell forwarded the court letters expressing suggestions about that hearing. On July 23 and 30, 2004, and August 5 and 17, 2004, the court convened additional telephone status conferences to discuss pending discovery matters. On August 25, 2004, the court vacated the September 17, 2003 and May 14, 2004 Orders and established a revised Scheduling Order setting a new date for the claim construction hearing for January 27, 2005, later re-set for January 31, 2005.

In addition, on August 25, 2004, the court issued a Claim Construction Procedures Order proposed by the parties. On August 26, 2004, the court convened another telephone status conference to discuss discovery matters. On August 27, 2004, Lockheed Martin filed a Motion to Compel Honeywell’s responses to Interrogatories 3 and 4. On August 30, 2004, Lockheed Martin filed a- Motion to Compel Honeywell’s response to Interrogatory 17. On September 13 and 23, 2004, the court convened additional telephone status conferences to discuss discovery matters.

On October 4, 2004, Lockheed Martin filed a Motion to Compel Honeywell to respond to requests for admission. On October 5, 2004, the court convened a telephone status conference with the parties. On October 6, 2004, the court issued an Amended Claim Construction Procedures Order and an Amended Scheduling Order setting another telephone status conference with the parties for October 12, 2004. On October 15, 2004, Honeywell filed an Infringement Claim Chart. On October 18, 2004, Honeywell requested entry of a First Amended Protective Order and opposed Lockheed Martin’s requests for admission.

On October 27, 2004, Lockheed Martin filed a Reply. At the November 1, 2004 telephone status conference, the court was advised that the dispute regarding requests for admission had been resolved to the satisfaction of the parties. Accordingly, on November 2, 2004, the court entered an Order to that effect.

On November 10, 2004, defendants filed a Joint Response Chart that asserted Claims 1, 2, and 3 of the ’914 patent were invalid, due to: (1) the existence of documentary and non-documentary evidence that rendered Honeywell’s claims obvious; (2) the insufficiency of the description of the invention to show Honeywell’s possession of it; (3) a failure by Honeywell to disclose the best mode for practicing the claimed invention;

(4) Honeywell’s derivation of the invention from others; (5) the introduction of impermissible new matter to the ’914 patent in Honeywell’s June 24, 2002 amendment; (6) the misjoinder of inventorship, which led to the granting of the ’914 patent (the Government did not join in this defense); (7) the violation of Honeywell’s duty to disclose to the second patent examiner the existence of prior art that was material to the PTO granting the ’914 patent (the Government did not join in this defense). On November 15, 2004, Honeywell submitted a Proposed Claim Construction Statement that set forth:

(1) Honeywell’s proposed claim constructions, including any special or uncommon meanings of words or phrases used in the ’914 patent; (2) references from the specification that support, describe, or explain each of the claim elements and/or Honeywell’s proposed construction; (3) material in the prosecution history that describes or explains each of the elements of the claim; and (4) extrinsic evidence, where necessary. On November 16, 2004, the court entered a First Amended Protective Order reflecting the changes negotiated by the parties.

On November 16, 2004, defendants filed a Motion to Amend the Defendants’ Joint Response Chart. On November 22, 2004, defendants filed a Joint Proposed Claim Construction Statement, together with a November 22, 2004 Expert Report of Dr. Harry Lee Task. On December 3, 2004, the court entered an Order setting a status conference on December 17, 2004 and amending the due date for the Joint Claim Construction Statement to December 14, 2004. On December 16, 2004, the court entered an Order granting Lockheed Martin’s Motion to Amend Defendants’ November 8, 2004 Joint Response Chart.

Following the December 17, 2004 status conference, the court entered a Second Amended Protective Order. On December 21, 2004, the parties filed a Joint Claim Construction Statement. On December 23, 2004, Honeywell filed an Opening Claim Construction Brief seeking the court’s construction of certain claims in the ’914 patent, together with a four volume appendix — Exhibits 1-39 (PA1-PA514). On January 14, 2005, the Government and Lockheed Martin filed Defendants’ Claim Construction Brief, together with five volumes of Exhibits 1-35 (DE1-DE1036).

On January 21, 2005, Honeywell filed a Reply Claim Construction Brief, together with a Supplemental Appendix Ex. 40-49 (PA515-558). On January 27, 2005, the parties filed a Supplement to the Joint Claim Construction agreeing to the construction of the following terms: “optical filter” and “filter,” when used as nouns; “filter” and “filtering,” when used as verbs; and “passes,” when used as a verb. The court held a claim construction hearing from January 31, 2005-February 3, 2005 (“TR 1-1138”).

In addition to argument of the parties, the court considered the reports of the parties’ experts as direct testimony and heard cross examination and re-direct. The court has determined that Honeywell’s expert, Lawrence E. Tannas, Jr., and his testimony, met the qualifications of Fed. R.Evid. 702-03. See PMX 34 (Nov. 15, 2004 Initial Expert Report of Lawrence E. Tan-nas, Jr.); PMX 36 (Dee. 1, 2004 Rebuttal Expert Report); PMX 37 (Dec. 7, 2004 Supplement to Expert Reports); see also TR at 772-958; 1128-1135. Mr. Tannas has a B.S. and M.S. degree in Engineering from the University of California. See PMX 37 at Ex. 1.

Mr. Tannas has had more than 25 years of “hands-on” experience with avionic cockpit displays, including research and development, manufacturing, testing, and human factor analysis. See PMX 34111 at 2. In addition, Mr. Tannas worked for Honeywell in the early 1960’s during which time he invented the backup reentry guidance display for the Apollo Reentry Vehicle, which was used in the Apollo 13 mission. Id. 113 at 2. Subsequently, Mr. Tannas was employed at Martin Marietta Corp. where he developed a cockpit for the SV5 Manned Space Vehicle. Id. Pri- or to starting his own firm in 1999, Mr.

Tannas also was employed by Rockwell International where he developed the engineering prototype of a liquid crystal display for the world’s first full-scale LCD production. Id. Mr. Tannas currently is President of Tannas Electronics, an entity involved in con-suiting, lecturing, and research. Id. H 5 at 3. In addition, he is President of Tannas Electronic Displays, Inc., which is involved in research, development, and licensing of intellectual property for preparing LCDs for avionics. Id. Mr.

Tannas has served as a consultant or lecturer for Fortune 500 companies, several universities, and federal agencies, including the Federal Aviation Administration, National Aeronautics and Space Administration, United States Air Force, United States Navy, National Science Foundation, Defense Advanced Research Projects Agency, and the Central Intelligence Agency. Id. H2 at 2. Mr. Tannas also is an inventor or co-inventor of eight patents issued by the USPTO. Id. H 3.

He has authored or co-authored numerous publications, including serving as author/editor of Flat-Panel Displays and CRTs (Van Nostrand Reinhold Co., 1985) and Flatr-Panel Display Technologies, Japan, Russia, Ukraine, and Belarus (Noyes Publications, 1995). Id. H 4. In addition, Mr. Tan-nas has been a coordinator and lecturer on flat-panel displays, human factor analysis, and advance cockpit displays at University of California at Los Angeles and other universities. Id. H 4 at 2-3. Mr.

Tannas was retained by Honeywell to provide an opinion as to the meaning of the following words or phrases in the ’914 patent: “color display,” id. 1112 at 5; “source of light,” id. If 13; “local” with “color display,” id. 1114; “local” with “source of light,” id. H14 at 5-6; “optical filter,” id. 1115 at 6; “notch filter,” id. U16; “color band,” id. 1117 at 6-7; “predetermined color band,” id. H 18 at 7; “substantially blocks,” id. 1119; “filter,” id. 1120; “narrow band of the red color band,” id. H 21 at 7-8. In addition to testifying about proposed construction of the above-referenced terms, Mr.

Tannas advised the court that he intended to testify about the “background of the patented [’914] invention, including providing relevant information concerning the technologies and industry to which the [’914] patent relates, the prior art, and the problems solved by the invention.” Id. 1122 at 8. The court also has determined that the Government’s expert, Dr. Harry Lee Task met the qualifications of Fed.R.Evid. 702-03. See PMX 35 (Nov. 22, 2004 Expert Report of Harry Lee Task, Ph.D.); see also TR at 968-1127. Dr.

Task has had more than 27 years of “hands-on” experience with research and development in helmet mounted displays, display image quality, vision assessment in space, night vision goggles, night vision goggle compatible lighting, and vision through aircraft transparencies. See PMX 35 113 at 2. Dr. Task has a B.S. degree in Physics from Ohio University, a M.S. in Physics from Purdue University, a M.S. and Ph.D. in Optical Sciences from the University of Arizona Optical Sciences Center, and a M.S. in Management of Technology from the Massachusetts Institute of Technology Sloan School of Management. Id. 112 at 1-2.

In 1971, Dr. Task was hired by the United States Air Force Aerospace Medical Research Laboratory (“AMRL”) as an optical physicist to work on helmet mounted displays and display image quality. Id. 113 at 2. In 1989, Dr. Task became the Chief Scientist for AMRL and served in that capacity until 1991. Id. In 1997, Dr. Task became the Senior Scientist for Human Systems Interface for the United States Air Force Research Laboratory, a position equivalent to a one-star General. Id. In June 2001, Dr. Task retired from the United States Air Force, but has continued technical work as a consultant.

Since his retirement in June 2001, Dr. Task has been an independent consultant and President and Treasurer for Opto-Metrix, Inc., a Subchapter “S” corporation that makes and sells optical protractors. Id. 111 at 1. Dr. Task also is the inventor or co-inventor of approximately 45 patents issued by the USPTO, author or co-author of over 100 technical-research publications, a member of relevant professional associations, including the Society for Information Display, and a Fellow of the American Society for Testing and Materials. See PMX 35 114 at 2-3.

He has been retained as an expert in vision and visibility in approximately a dozen cases involving vehicle accidents at night or dusk, however, none concerned NVGs or NVG compatible lighting. Id. 115 at 3. Dr. Task was retained to provide an opinion as to the meaning of the following words or phrases in the ’914 patent: “display system,” id. H15 at 8; “local” with respect only to “passive night vision aid,” id. at Hit 17-18 at 8; “display,” id. Hit 19-20 at 4-5; “color display,” id. 1121 at 9; “local source of light,” id. 111122-23 at 9; “notch filter,” id. 111124-25 at 9; “narrowband,” id.

H26 at 10; “color band,” id. HH 27-29 at 10-11; “red color band,” id. Vil 30-31 at 11-12; “predetermined red color band,” id. HH 32-34 at 12; “blue color band,” id. 1135 at 13; “green color band,” id. K 36 at 13; and “substantially blocks,” id. KH 37-42 at 13-15. In addition, Dr. Task testified about the background associated with the technical areas of the ’914 patent, including the United States Army’s 1973 adoption of a second-generation NVG and designation of the AN/ PVS-5A as an “interim” pilot’s aid for helicopter flying at night. See PMX 35 H 8 at 4. Dr.

Task admitted that NVGs were limited because of their incompatibility with aircraft lighting and displays. Id. Dr. Task explained that the problem was too much light in the cockpit, to which the NVGs were “sensitive.” Id. H 9 at 4. In addition, pilots trying to look outside the helicopter would see only reflections of the inside of the cockpit, as opposed to the view outside the helicopter. Id. On a more technical basis, the wavelengths that the NVGs were sensitive to (and amplified) included the entire visible spectrum (i.e., 400-700 nm) and a small portion of the near infrared wavelengths, i.e., 700-900 nm.

Id. 119 at 4. Dr. Task advised the court that most cockpit fighting and displays utilize incandescent fight bulbs that emit a considerable amount of infrared energy compared to energy to which the human eye is sensitive. Id. It 10 at 5. This created an issue since most incandescent lights in the cockpit emitted far more “bad” light than “good” fight, to which the eye is sensitive. Id. Even when the NVGs were sensitive, “the filters typically did their job with respect to producing the desired color, but they also passed the invisible-to-the-eye infrared light that was incompatible with the NVG operation.” Id.

Therefore, in order to create a display with phosphors compatible with NVGs, longer wavelength side bands needed to be blocked by a filter. Id. H11 at 5-6.

To accomplish making a display with a phosphor compatible with NVGs several techniques were developed, including: placing filters over displays to block objectionable infrared and red wavelengths, but pass blue and green wavelengths; incandescent lights in the cockpit were turned off and the instrument panel utilized sources of light that did not emit objectionable light; and a filter passing only shorter wavelengths were put over white phosphor displays to block those wavelengths. Id. 1112 at 6.

The United States Army also developed an Aviation Night Vision Imaging System (“AN-VIS”) night vision goggles in the early 1980s that used an image intensified tube that was sensitive in the 450-930 nm range, rather than a full visible spectrum. Id. H13 at 6. When a “long pass” filter was used on the lens in front of the NVG to reduce the sensitivity of the ANVIS to shorter visible wavelengths, the NVG became sensitive to wavelengths of 580-930 nm. Id. 1113 at 7.

As a result, the visible range of below approximately 530 nm was used for cockpit lighting and display since light in this range was invisible to the NVGs allowing visibility outside the cockpit. Id. H 14 at 7. Figure 1, the preferred embodiment of the ’914 patent, teaches a significant overlap between the wavelengths (including yellow, orange, and red wavelength bands) sensitive to the human eye and the ANVIS, i.e., approximately 580-700 nm. Id. This was the state of the NVG technology in 1985, at the time the ’914 patent was filed. Id.

K15 at 7 (quoting ’914 patent specification describing the problem in 1985 that the ’914 patent addressed) (“It is ... desired that a night vision aid such as ANVIS goggles be operable while a full color display is illuminated. It is therefore desired to prevent light which originates at the full color display from overwhelming the night vision aid.”).

Following the claim construction hearing, on February 28, 2005 and March 3, 2005, the court convened telephone status conferences, pursuant to which the court issued a March 11, 2005 Scheduling Order regarding post-hearing briefs and discovery deadlines regarding the August 1-12, 2005 trial. On March 30, 2005, Lockheed Martin filed a Motion to Supplement the Record with three contracts between Lockheed Martin and the Government to support Lockheed Martin’s intervention as a matter of right.

On April 1, 2005, Honeywell filed an Opening Post-Hearing Brief Regarding Claim Construction; the Government filed a Post-Hearing Claim Construction Brief; and Lockheed Martin filed a Post-Markman Hearing Brief. On April 7, 2005, the court granted Lockheed Martin’s March 30, 2005 Motion to Supplement the Record. On April 15, 2005, Honeywell filed a Posb-Hearing Reply Brief Regarding Claim Construction; the Government filed a Posb-Hearing Claim Construction Reply Brief; and Lockheed Martin filed a Reply to Honeywell’s Opening Post-Hearing Brief Regarding Claim Construction.

In addition, on April 15, 2005, the parties filed a Stipulation agreeing to the meaning of six of the contested claims, which are set forth herein. On April 20, 2005, Honeywell filed a Motion for Leave to Supplement the Record Regarding Claim Construction of the term “red color band” (“4/20/05 Honeywell Brief’), together with an April 18, 2004 Declaration of Mark Koehn, Esquire and April 19, 2004 Declaration of Lawrence E. Tannas, Jr. and Exhibits 1-13 (PEI-155). Honeywell’s Motion requested that the record include the Draft Standard for Color Active Matrix Liquid Crystal Displays in U.S.

Military Aircraft, WL-TR-93-1177, Darrel Hopper June 1994 (Koehn Ex. 1) and Dr. Hopper’s deposition testimony related thereto. On May 4, 2005, the Government filed a Brief in Response to Honeywell’s Motion to Supplement, together with three volumes of supporting Exhibits (“Gov’t Supp. Resp.”). The Government did not object to Honeywell’s request to supplement the record, but requested counter-designations. On May 4, 2005, Honeywell also filed a letter to bring the recent decision of the United States Court of Appeals for the Federal Circuit in Gillette Co. v.

Energizer Holdings, Inc., 405 F.3d 1367 (Fed.Cir.2005) to the attention of the court. On May 5, 2005, Honeywell filed a Supplement to the October 15, 2004 Claim Chart (“5/5/05 Honeywell Supp. to Claim Chart”) to amend:

Section II of the Claim Chart to clarify that “Honeywell no longer asserts that LED displays are a type of display that infringes the ’914 patent when used by the Government” (5/5/05 Honeywell Supp. to Claim Chart at 1, H 2.);

Section II of the Claim Chart to clarify that “Honeywell no longer asserts that the Cockpit Engineer Display (CED) made by Smiths Industries for B-52H, the Warning Annunci-ator Panel (WAP) made by Litton Systems/Northrop Grumman for the C-17A, or the Engine/Caution Panel made by Litton Systems for the C-17A are covered by the ’914 patent when used by the Government in connection with NVIS” (Id. at 2, U 3.); and

Section III of the Claim Chart to remove “the statement at page 9 referencing ‘Attachment B: claim chart showing how, on information and belief, ’914 claim 1 reads on full color, NVIS compatible, Light-Emitting Diode (LED) displays, when used with NVIS” ’ (Id. at H 4.). Honeywell appears to have withdrawn Attachment B to the Claim Chart. Id. On May 6, 2005, the Government filed a Motion for Leave to File the Declaration of Dr. Darrel G. Hopper (“5/5/05 Hooper Deck”). On May 6, 2005, Honeywell filed a Reply in support of the April 20, 2005 Unopposed Motion to Supplement the Record Regarding Claim Construction.

On May 9, 2005, the court granted the Government’s May 6, 2005 Unopposed Motion to File an Original Declaration of Dr. Darrel Hopper. On May 13, 2005, the court granted Honeywell’s May 13, 2005 Unopposed Amended Complaint dismissing Counts I, II, III, and IV as they relate to U.S. Patent No. 6,142,637.

On May 13, 2005, Honeywell filed a Motion to Preclude the Government “from making offensive use of certain documents belatedly produced in violation of the Court’s [First Amended Protective Order and Second Amended Protective Order],” together with the May 11, 2005 Affidavit of Mark Koehn and Exhibits 1-19 (PE1-PE159). On May 25, 2005, the Government filed a Brief in Opposition. On May 26, 2005, the court denied Honeywell’s May 13, 2005 Motion to Preclude. On May 31, 2005, Honeywell filed a Motion for Reconsideration.

On May 31, 2005, both the Government and Lockheed Martin filed an Answer to Honeywell’s Amended Complaint. III. DISCUSSION. A. Jurisdiction. The United States Court of Federal Claims has jurisdiction to adjudicate claims that allege “an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same ... [seeking] recovery of ... reasonable and entire compensation for such use and manufacture.” 28 U.S.C. § 1498(a).

The United States Court of Federal Claims also has jurisdiction to adjudicate claims under the Invention Secrecy Act. See 35 U.S.C. § 181. The Complaint and Amended Complaint in this action properly invoke the court’s jurisdiction under both of these federal statutes that authorize the award of monetary damages. B. Standing. 1. Plaintiff. Lower federal courts have been advised to “decide standing questions at the outset of a case. That order of decision (first jurisdiction then the merits) helps better to restrict the use of the federal courts to those adversarial disputes that

Article III defines as the federal judiciary’s business.” Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83, 111, 118 S.Ct. 1003,140 L.Ed.2d 210 (1998) (Breyer, J. concurring). The party invoking federal jurisdiction, has the burden of proof and persuasion to satisfy the constitutional requirements of

Article III standing. See FW/ PBS, Inc. v. Dallas, 493 U.S. 215, 231, 110 S.Ct. 596, 107 L.Ed.2d 603 (1990) (holding that the burden is on the party seeking to exercise jurisdiction by clearly alleging facts sufficient to establish jurisdiction).

Section 281 of Title 35 of the United States Code provides that “[a] patentee shall have remedy by civil action for infringement of his patent.” 35 U.S.C. § 281; see also 35 U.S.C. § 100(d) (“The word ‘patentee’ includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.”); Prima Tek II, L.L.C. v. A-Roo Co., 222 F.3d 1372, 1376-77 (Fed.Cir.2000) (“Standing to sue for patent infringement derives from the Patent Act, ... 35 U.S.C. § 281.”); Paradise Creations, Inc. v.

UV Sales, Inc., 315 F.3d 1304, 1308 (Fed.Cir. 2003) (emphasis in original) (“This court has determined that in order to assert standing for patent infringement, the plaintiff must demonstrate that it held enforceable title to the patent at the inception of the lawsuit.”). The standard set forth by the United States Supreme Court over a century ago fully retains its vitality. See Waterman v.

Mackenzie, 138 U.S. 252, 260, 11 S.Ct. 334, 34 L.Ed. 923 (1891) (citations omitted) (“There can be no doubt that he is ‘the party interested, either as patentee, assignee, or grantee,’ and as such entitled to maintain an action at law to recover damages for an infringement; and it cannot have been the intention of congress that a suit in equity against an infringer to obtain an injunction and an account of profits, in which the court is authorized to award damages, when necessary to fully compensate the plaintiff, and has the same power to treble the damages as in an action at law, should not be brought by the same person.”).

Plaintiffs properly have alleged that, at the inception of the lawsuit and at the filing of the Amended Complaint on May 31, 2005, Honeywell Intellectual Properties Inc. was the owner of the ’269 patent application and ’914 patent and Honeywell International Inc. was an exclusive licensee of the ’269 patent application and ’914 patent. 2. Intervenor.

The United States Court of Federal Claims “may summon any and all persons with legal capacity to be sued to appear as a party ... in any suit ... of any nature whatsoever pending in said court to assert and defend their interests[.]” 41 U.S.C. § 114(b); see also RCFC 14(b) (“The court, ... may notify any person with legal capacity to sue and be sued and who is alleged to have an interest in the subject matter of any pending action.”); see also RCFC 24(a) (“Upon timely application anyone shall be permitted to intervene in an action ... (2) when the applicant claims an interest relating to the property or transaction which is the subject of the action and the applicant is so situated that the disposition of the action may as a practical matter impair or impede the applicant’s ability to protect that interest, unless the applicant’s interest is adequately represented by existing parties.”); RCFC 24(b) (“Upon timely application anyone may be permitted to intervene in an action: ... (2) when an applicant’s claim or defense and the main action have a question of law or fact in common.

In exercising its discretion the court shall consider whether the intervention will unduly delay or prejudice the adjudication of the rights of the original parties.”). The Complaint alleged that aircraft manufactured by Lockheed Martin for the Government incorporate technology disclosed and claimed in the ’269 patent application and ’914 patent. See Compl. UK 53-60, Ex. B; see also Am. Compl. 111124-28, Ex. B. Lockheed Martin initially filed a Motion to Intervene and the court subsequently granted Lockheed Martin’s Motion.

Following the court’s January 26, 2005 Memorandum Opinion and Order, Lockheed Martin supplemented the record with three contracts that Lockheed Martin entered into with the Government, “all contain[ing] warranties that each aircraft provided by Lockheed Martin under the contracts ‘shall be free of rightful claim of infringement of any United States Patent.’ ” See 3/30/05 Lockheed Martin Motion to Supplement the Record at 2 (citing Ex. 1 (Contract No. F33657-95-C-2055) at 14 (C-130J System Commercial Warranty), Part A(e), p. 42 of 165; Ex. 2 (Contract No.

F33657-00-C-0018), Attachment 1 at 14 (C-130J System Commercial Warranty), Part A, e., p. 50 of 65; Ex. 3 (Contract No. 33657-03-C-2014), Attachment 1 at 13 (C-130J System Commercial Warranty), b(5), p. 34 of 48). The remedy for a breach of these warranties by Lockheed Martin would be “‘reimbursement of the Government by [Lockheed Martin] of the amount of the Government’s loss, cost or damage ... arising out of such patent infringement.’” See 3/30/05 Lockheed Martin Motion to Supplement the Record at 3 and n.2.

These contracts evidence that the disposition of this action may impair Lockheed Martin’s interests, unless it enjoys all the rights of a party, including the right to appeal. Therefore, the court has determined that Lockheed Martin has standing to intervene in this case pursuant to RCFC 24(a). C. Controlling Appellate Precedent Concerning Construction Of Patent Claims. The United States Supreme Court’s unanimous affirmance of the en banc decision of the United States Court of Appeals for the Federal Circuit in Markman v.

Westview Instruments, Inc., 52 F.3d 967, 978 (Fed.Cir.1995) (“Markman F), aff'd 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (“Mark-man IF), settled that the meaning and scope of a patent’s claims are issues of law to be determined by a federal trial judge. Id. A strong undercurrent, if not undertow, concerned the competence of a jury to understand, must less construe, technical terms of art and functional elements of a patent’s claims.

See Markman II, 517 U.S. at 384, 116 S.Ct. 1384 (“We ... consider both the relative interpretive skills of judges and juries and the statutory policies that ought to be furthered by the allocation.”); see also id. at 388-89, 116 S.Ct. 1384 (quoting Parker v. Hulme, 18 F. Cas. 1138, 1140 (E.D.Pa.1849) (“The judge, from ... training and discipline, is more likely to give a proper

interpretation to such instruments than a jury; and ... is, therefore, more likely to be right, in performing such a duty, than a jury can be expected to be.”)). In Markman I, the United States Court of Appeals for the Federal Circuit specified three sources relevant to construe a patent’s claim: claim language; the specification; and prosecution history. See Markman I, 52 F.3d at 979 (quoting Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561 (Fed.Cir.1991)) (“‘To ascertain the meaning of claims, we consider three sources: The claims, the specification, and the prosecution history.’ ”).

It is important to recognize, however, that in Markman II the United States Supreme Court did not constrain a federal trial court from adjudicating the terms of a claim by excluding any relevant and reliable evidence, including that of experts. See Markman II, 517 U.S. at 390, 116 S.Ct. 1384 (“The deci-sionmaker vested with the task of construing the patent is in the better position to ascertain whether an expert’s proposed definition fully comports with the specification and claims and so will preserve the patent’s internal coherence.”).

Instead, that decision was entrusted to the considered judgment of the federal trial judge to determine, but following the precedent of the United States Court of Appeals for the Federal Circuit that was established to bring uniformity and doctrinal stability to the decisions of the federal judiciary on all matters concerning patent law. Id. (“It was just for the sake of such desirable uniformity that Congress created the Court of Appeals for the Federal Circuit as an exclusive appellate court for patent cases, H.R.Rep.

No. 97-312, pp. 20-23 (1981), observing that increased uniformity would ‘strengthen the United States patent system in such a way as to foster technological growth and industrial innovation.’ Id. at 20.”). 1. A Federal Trial Judge Must First Attempt To Construe Ambiguous Claim Terms Utilizing Intrinsic Evidence. a. Claim Language. A federal trial judge examines claim terms and phrases “through the viewing glass of a person skilled in the art.” See Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.Cir.2003); see also Hockerson-Halberstadt, Inc. v.

Avia Group Int’l, Inc., 222 F.3d 951, 955 (Fed.Cir. 2000) (“Claim language must be given ordinary and accustomed meaning, as understood by one of ordinary skill in the art,” at the time of the patent application.). In doing so, a federal trial judge in a patent infringement case must determine, as a threshold matter, whether there is ambiguity in any claim term requiring construction and, if so, to consider intrinsic evidence. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.1996).

First, a federal trial judge must “look to the words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention.” Id. Second, “it is always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. The specification acts as a dictionary when it expressly defines terms ... or by implication.” Id. Third, a federal trial judge may “consider the prosecution history of the patent, if in evidence.” Id.

The United States Court of Appeals for the Federal Circuit has decided that intrinsic evidence is the “most significant source of the legally operative meaning of disputed claim language.” Id.; see also Phonometrics, Inc. v. Northern Telecom Inc., 133 F.3d 1459, 1464 (Fed.Cir.1998) (“Proper construction requires an examination of claim language, the written description, and, if introduced, the prosecution history.”). b. Specification Explanation And Definition.

The United States Court of Appeals for the Federal Circuit recently reaffirmed that the specification is often the best tool to ascertain the “technological and temporal context” of claims. See Nazomi Communications, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1368 (Fed.Cir.2005) (citing Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed.Cir.2004)) (“In most cases, the best source for discerning ... [usage in context as understood by one skilled in the art at the time of the invention] is the patent specification wherein the patent applicant describes the invention.”).

If a patent’s claim language is ambiguous, the specification “including the inventors’ statutorily-required written description of the invention is the primary source for determining claim meaning.” Astrazeneca AB v. Mutual Pharm. Co., Inc., 384 F.3d 1333, 1336 (Fed.Cir.2004); see also id. at 1337 (quoting Autogiro Co. of Am. v.

United States, 181 Ct.Cl. 55, 384 F.2d 391, 397-98 (1967)) (‘“Most courts have simply stated that the specification is to be used to explain the claims’; ... the patent is an integrated document, with the claims ‘pointing out and distinctly claiming,’ 35 U.S.C. § 112, the invention described in the rest of the specification and the goal of claim construction is to determine what an ordinary artisan would deem the invention claimed by the patent, taking the claims together with the rest of the specification.”).

Of course, the utility of the specification depends on whether the “written description of the invention [is] ... clear and complete enough to enable those of ordinary skill in the art to make and use it.” Vitronics, 90 F.3d at 1582.

The United States Court of Appeals for the Federal Circuit has held many times that “ ‘a patentee can act as his own lexicographer to specifically define terms of a claim contrary to their ordinary meaningt;]’ the written description in such a ease must clearly redefine a claim term ‘so as to put a reasonable competitor or one reasonably skilled in the art on notice that the patentee intended to so redefine that claim term.’” Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1307 (Fed.Cir.2000) (quoting Process Control Corp. v.

HydReclaim Corp., 190 F.3d 1350, 1357 (Fed.Cir. 1999)); see also Georgia-Pacific Corp. v. United States Gypsum Co., 195 F.3d 1322, 1332 (Fed.Cir.1999) (citations omitted) (advising that the “specification of the patent in suit is the best guide to the meaning of a disputed term ... [and if] intrinsic evidence is unambiguous, it is improper for the court to rely on extrinsic evidence to contradict the meaning of the claims.”); ATD Corp. v.

Lydall, Inc., 159 F.3d 534, 540 (Fed.Cir.1998) (citation omitted) (“When ‘the specification explains and defines a term used in the claims, without ambiguity or incompleteness, there is no need to search further for the meaning of the term’ ... [unless] such definition is challenged [then] it is often appropriate ... to receive evidence of the meaning and usage of terms of art from persons experienced in the field of the invention.”); Vi-tronics, 90 F.3d at 1582 (holding that, in ascertaining the scope of the patent, deference should be afforded claims, as defined by their “customary meaning,” with the caveat that the law affords patentees the right to serve as a “lexicographer,” if a special or unique definition is clearly stated in the specifications or prosecution history.).

Federal trial judges also have been well advised not to construe a claim to exclude the preferred and only embodiment disclosed in a specification: “such an

interpretation is rarely, if ever, correct[.]” Vitronics, 90 F.3d at 1583. In Chemcast Corp. v. Arco Industries Corp., 913 F.2d 923, 926-27 (Fed.Cir.1990), the United States Court of Appeals for the Federal Circuit also discussed the distinction between “enablement” and “best mode” requirements. The specification discloses an invention “in such a manner as will enable one skilled in the art to make and utilize it.” Id. at 926. The purpose of the “best mode,” however, is to restrain inventors from applying for patents and concealing from the public preferred embodiments of their inventions. Id. at 927. c.

Prosecution History. Federal trial judges also have been instructed that prosecution history is relevant to claim construction “because it may contain contemporaneous exchanges between the patent applicant and the [USPTO] about what the claim means.” Vitronics, 90 F.3d at 1584. Prosecution history, however, can trump the importance of the specification in certain circumstances. For example, in Graham v.

John Deere Co. of Kansas City, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the United States Supreme Court held that if claims were narrowed to obtain issuance over prior art during prosecution, they may not later be interpreted by the specifications to cover what was disclaimed before the U.S. Patent Office. Id. at 33, 86 S.Ct. 684; see also Schriber-Schroth Co. v.

Cleveland Trust Co., 311 U.S. 211, 220-21, 61 S.Ct. 235, 85 L.Ed. 132 (1940) (“When ... the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory compromised unforeseen subject matter that should be deemed equivalent to the literal claims of the issued patent.”). In sum, prosecution history may preclude “a patentee from regaining through litigation, coverage of subject matter relinquished during prosecution of the application of the patent.” Wang Labs. v.

Mitsubishi Electronics America, Inc., 103 F.3d 1571, 1577-78 (Fed.Cir.1997), cert denied, 522 U.S. 818, 118 S.Ct. 69, 139 L.Ed.2d 30 (1997). 2. Only In Limited Circumstances May A Federal Trial Judge Construe Claim Terms Utilizing Extrinsic Evidence. If analysis of intrinsic evidence resolves ambiguity about the meaning of the patent claim, as a matter of law, it is improper for a federal trial judge to cite to extrinsic evidence, i.e., evidence outside of the patent record, including expert and inventor testimony, dictionaries, learned treatises, and articles.

See Vitronics, 90 F.3d at 1584 (allowing extrinsic evidence “to help the court come to the proper understanding of the claims[,]” but not to contradict intrinsic evidence or vary the scope of the claims). That instruction was clarified in Key Pharm. v. Hercon Lab. Corp., 161 F.3d 709 (Fed.Cir. 1998): This court has made strong cautionary statements on the proper use of extrinsic evidence, which might be misread by some members of the bar as restricting a trial court’s ability to hear such evidence. We intend no such thing.

To the contrary, trial courts generally can hear expert testimony for background and education on the technology implicated by the presented claim construction issues, and trial courts have broad discretion in this regard. Furthermore, a trial court is quite correct in hearing and relying on expert testimony on an ultimate claim construction question in eases in which the intrinsic evidence (i.e., the patent and its file history — the “patent record”) does not answer the question.

What is disapproved of is an attempt to use extrinsic evidence to arrive at a claim construction that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent. Id. at 716 (citations omitted); see also Elekta Instrument, 214 F.3d at 1307 (quoting Gentry Gallery, Inc. v.

Berkline Corp., 134 F.3d 1473, 1476 (Fed.Cir.1998)) (“[A] court should rely upon ‘the claim language, the written description portion of the specification, the prosecution history, and if necessary to aid the court’s understanding of the patent, extrinsic evidence.’”); Zodiac Pool Care, Inc. v.

Hoffinger Indus., Inc., 206 F.3d 1408, 1414 (Fed.Cir.2000) (affirming a federal trial court’s claim construction and cautioning that “both intrinsic and extrinsic evidence [may be considered, however, a federal trial court should] turn[ ] to extrinsic evidence only when the intrinsic evidence is insufficient to establish the clear meaning of the asserted claim.”); Trilogy Communications, Inc. v.

Times Fiber Communications, Inc., 109 F.3d 739, 744 (Fed.Cir.1997) (“When, as here, the district court has concluded that the patent specification and the prosecution history adequately elucidate the proper meaning of the claims, expert testimony is not necessary and certainly not crucial.”). Extrinsic evidence, however, may be particularly useful to determine how one of ordinary skill in the relevant art would interpret the claim language. See Brookhill-Wilk 1, LLC, 334 F.3d at 1298.

For example, a federal trial judge should be able to consider extrinsic evidence to learn whether a common term has a special meaning in the relevant field. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1347 (Fed.Cir.2004) (en banc) (quoting Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1367 (Fed.Cir.2003)) (“Claim language generally earries the ordinary meaning of the words in their normal usage in the field of invention.”), a. Prior Art.

Depending on the clarity of a patent claim and specification, prior issued patents may provide a source of relevant evidence to determine how a term or phrase has been used or understood by one skilled in the art. That is true whether or not the prior art was referenced in the specification or the prosecution history. See Arthur A. Collins, Inc. v.

Northern Telecom, Ltd., 216 F.3d 1042, 1044-45 (Fed.Cir.2000) (“When prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because it may indicate not only the meaning of the term to persons skilled in the art, but also that the patentee intended to adopt that meaning.”); see also Vitronics, 90 F.3d at 1583. Within the hierarchy of extrinsic evidence, prior art is a more reliable source of evidence as to the meaning of words or phrases in a patent claim than expert testimony. Id. b.

Technical Treatises And Technical Articles. As with prior art, treatises and technical articles, particularly those of note, wide circulation, or likely to be utilized as standard desk reference material by an ordinary person skilled in the art at the time of the patent’s issuance may be consulted in the discretion of the court. See Dow Chemical Co. v. Sumitomo Chem.

Co., 257 F.3d 1364, 1372 (Fed.Cir.2001) (“[Technical treatises, which are extrinsic evidence, hold a ‘special place’ and may sometimes be considered along with the intrinsic evidence when determining the ordinary meaning of claim terms.”); see also Vitronics, 90 F.3d at 1584 n. 6 (“Although technical treatises and dictionaries fall within the category of extrinsic evidence, as they do not form a part of an integrated patent document, they are worthy of special note. Judges are free to consult such resources at any time in order to better understand the underlying technology and may also rely on dictionary

definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.”). c. Expert Testimony. The United States Court of Appeals for the Federal Circuit has instructed federal trial judges that expert testimony may be helpful in aiding an understanding of the patent, but not for the purpose of varying or contradicting the claims. See Markman I, 52 F.3d at 981.

The United States Court of Appeals for the Federal Circuit, however, has cautioned that expert testimony may be considered, but only insofar as it aids the trial court to understand the claim language, the specification, or the prosecution history. See Vitronics, 90 F.3d at 1584 (“Indeed, where the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight.”); see also CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1318 (Fed.

Cir.2000) (holding that when “the intrinsic evidence is unambiguous, it is improper for a [federal trial] court to rely on extrinsic evidence such as expert testimony when construing disputed claim limitations.”); but see Pitney Bowes, Inc. v.

Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed.Cir.1999) (“Vitronics does not prohibit courts from examining extrinsic evidence, even when the patent document is itself clear.”); see also id. (emphasizing that Vitronics “does not set forth any rules regarding the admissibility of expert testimony into evidence----[and] there are no prohibitions ... on courts hearing evidence from experts.

Rather, Vitronics merely warned courts not to rely on extrinsic evidence in claim construction to contradict the meaning of claims discernible from thoughtful examination of the claims, the written description, and the prosecution history-the intrinsic evidence.”); Key Pharm., 161 F.3d at 716 (“[T]rial courts generally can hear expert testimony for background and education on the technology implicated by the presented claim construction issues, and trial courts have broad discretion in this regard.”).

Federal trial courts also have been advised that “it is entirely appropriate, perhaps even preferable, for a court to consult trustworthy extrinsic evidence to ensure that the claim construction it is tending to from the patent file is not inconsistent with clearly expressed, plainly apposite, and widely held understandings in the pertinent technical field.” Pitney Bowes, 182 F.3d at 1309.

In that case, Circuit Judge Rader wrote “Additional Views,” joined by Circuit Judge Plager, to emphasize that Vitronics provides “good counsel when it urges trial judges to focus on the patent document — notably the claims themselves— to ascertain the scope of patent coverage.” Id. at 1314.

Federal trial judges, however, may turn to expert testimony to: “(1) supply a proper technological context to understand the claims (words often have meaning only in context), (2) explain the meaning of claim terms as understood by one of skill in the art (the ultimate standard for claim meaning), and (3) help the trial court understand the patent process itself (complex prosecution histories — not to mention specifications — are not familiar to most trial courts.”). Id. (citations omitted); see also Elkay Mfg. Co. v. Ebco Mfg.

Co., 192 F.3d 973, 976-77 (Fed.Cir.1999) cert. denied, 529 U.S. 1066 (2000) (reversing a federal trial court and stating that a court “may receive extrinsic evidence to educate itself about the invention and the relevant technology, but the court may not use extrinsic evidence to arrive at a claim construction that is clearly at odds with the construction mandated by the intrinsic evidence.”). d. Scientific Or Industry Specific Dictionaries.

Although many post-Markman II decisions have attempted to clarify the permissible use of dictionaries to define words in a claim, the United States Court of Appeals for the Federal Circuit’s initial guidance in Markman I remains sound: “The district court’s claim construction, enlightened by such extrinsic evidence as may be helpful, is still based upon the patent and prosecution history.” Markman I, 52 F.3d at 981; see also Toro Co. v. White Consol.

Indus., Inc., 199 F.3d 1295, 1299 (Fed.Cir.1999) (“[The trial court should] not rely solely on a dictionary of general linguistic usage, but would understand the claims in light of the specification and the prior art, guided by the prosecution history and experience in the techno-logic field.”). e. Inventor Testimony. The United States Court of Appeals for the Federal Circuit appropriately has viewed post-issuance testimony by a patent’s inventor as subjective opinion about the meaning of claim terms that is entitled to little or no weight. See, e.g., Bell & Howell Document Mgmt. Prods. Co. v.

Altek Sys., 132 F.3d 701, 706 (Fed.Cir.1997) (“The testimony of an inventor often is a self-serving, after-the-fact attempt to state what should have been part of his or her patent application.”); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1405 (Fed.Cir.1996) (“[The inventor’s] subjective intent is of little or no probative weight in determining the scope of the claims, except as documented in the prosecution history.”). 3. A Federal Trial Court Should Construe Claims To Preserve A Patent’s Validity Only Where All Other Tools Of Claim Construction Are Exhausted.

Where ambiguity remains after reviewing intrinsic evidence in construing patent claims, two doctrines have been employed to preserve the patent’s validity. The United States Court of Appeals for the Federal Circuit has advised federal trial judges that claims should be construed to preserve a patent’s validity, however, this presumption is applicable only “where the proposed claim construction is ‘practicable,’ ... based on sound claim construction principles, and does not revise or ignore the explicit language of the claims.” Generation II Orthotics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed.

Cir.2001); see also Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 914 (Fed.Cir. 2004) (holding that “unless the court concludes, after applying all the available tools of claim construction that the claim is still ambiguous, the axiom regarding the construction to preserve the validity of the claim does not apply”). Likewise, the United States Court of Appeals for the Federal Circuit has emphasized that the doctrine of claim differentiation is to be reserved only for those cases where neither intrinsic nor extrinsic evidence leads to a definite definition. See Hormone Research Foundation, Inc. v.

Genentech, Inc., 904 F.2d 1558, 1567 n. 15 (Fed.Cir.1990) (“[The doctrine of claim differentiation] although well established in our cases cannot overshadow the express and contrary intentions of the patent draftsman.”). 4. The Import Of Phillips v. AWH Corp., 376 F.3d 1382 (Fed.Cir.2004). To the displeasure of the court, none of the parties initially recognized, much less discussed, the pending en banc consideration of Phillips v. AWH Corp., 363 F.3d 1207, reh’g en banc granted, j. vacated, 376 F.3d 1382 (Fed.Cir.2004) (“Phillips”) in their pre-claim construction briefs. See Honeywell Int’l, Inc. v.

United States, 65 Fed.Cl. 809, 810-11, 2005 WL 1415441 (Jan. 26, 2005, amended and reissued June 14, 2005) (Memorandum Opinion and Order); see also TR at 8-13. In Phillips, the United States Court of Appeals for the Federal Circuit, sitting en banc, requested briefing and argument concerning seven core claim construction issues: 1. Is the public notice function of patent claims better served by referencing primarily to technical and general purpose dictionaries and similar sources to interpret a claim term or by looking primarily to the patentee’s use of the term in the specification?

If both sources are to be consulted, in what order? 2. If dictionaries should serve as the primary source for claim

interpretation, should the specification limit the full scope of claim language (as defined by the dictionaries) only when the patentee has acted as his own lexicographer or when the specification reflects a clear disclaimer of claim scope? If so, what language in the specification will satisfy those conditions? What use should be made of general as opposed to technical dictionaries? How does the concept of ordinary meaning apply if there are multiple dictionary

definitions of the same term? If the dictionary provides multiple potentially applicable

definitions for a term, is it appropriate to look to the specification to determine what definition or

definitions should apply? 3. If the primary source for claim construction should be the specification, what use should made of dictionaries? Should the range of the ordinary meaning of claim language be limited to the scope of the invention disclosed in the specification, for example, when only a single embodiment is disclosed and no other indications of breadth are disclosed? 4.

Instead of viewing the claim construction methodologies in the majority and dissent of the now-vacated panel decision as alternative, conflicting approaches, should the two approaches be treated as complementary methodologies such that there is a dual restriction on claim scope, and a pat-entee must satisfy both limiting methodologies in order to establish the claim coverage it seeks? 5. When, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity under, e.g., 35 U.S.C. §§ 102,103, and 112? 6.

What role should prosecution history and expert testimony by one of ordinary skill in the art play in determining the meaning of the disputed claim terms? 7. Consistent with the Supreme Court’s decision in Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), and our en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed.Cir.1998), is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent? Phillips, 376 F.3d at 1383.

In post-claim construction hearing briefs, however, the parties rationalized their oversight by advising the court that the resolution of Phillips would not affect the claim construction in this case because the ’914 claims are not dependent upon dictionary definition, but rather can be resolved by the claim language or description of the ’914 invention, as set forth in the specification and embodiments therein. See 4/1/05 Honeywell Brief at 9-10; see also 4/1/05 Gov’t Brief at 12. The Government’s proposed

[…]