Only the First, Ltd. v. Seiko Epson Corp., No. 07 C 1333 (N.D. Ill. Jul. 7, 2009) (Dow, J.).

Judge Dow construed the claims of plaintiff’s patent to a printing system that used a combination of four to six colors to achieve a wider range of brighter colors than possible just using the primary colors.  The following constructions were of particular interest:

  • The parties agreed that each of the six colors were defined by three component colors in order of intensity.  Defendant argued the three colors had to be the top three colors by intensity, but plaintiff argued that the three colors simply had to be in order of intensity allowing for other colors to be between the three along the intensity spectrum as long as the three were in the correct order.  The Court denied defendant’s construction because it would read a preferred embodiment out of the claims.  And the Court rejected plaintiff’s construction because in certain cases a single color could be defined as two different of the six colors.  Instead, the Court held that one of ordinary skill in the art would understand that the first two colors in the order had to be the highest intensity, but that the third component could fall anywhere thereafter.
  • The Court held that "quantity" and "intensity" were synonyms in the phrase "quantity or intensity" of a color.  The Court held that bot terms referred to the area under the color’s spectroscopic graph.
  • The Court held that because colors are necessarily subjective, the six colors required a definition in order to avoid indefiniteness.  The Court, therefore, used a table in the specification identifying a range of wavelengths for each color, slightly modifying the range for red to account for a wavelength of red identified in a preferred embodiment.