Only the First, Ltd. v. Seiko Epson Corp., No. 07 C 1333 & 09 C 4655, Slip Op. (N.D. Ill. Sep. 29, 2010) (Dow, J.).

Judge Dow construed the claims of plaintiff’s patent covering a color printing system, and granted in part defendant’s motion for summary judgment of indefiniteness. Of particular note, the Court construed the following terms:

  • The Court, by agreement, construed the base colors – violet, blue, green, yellow, orange and red – using the same wavelengths the Court used in construing a related patent earlier in the case — click here for that opinion in the Blog’s archives.
  • As in the prior constructions, the Court held that the components of component colors (e.g., red and orange for orange-red) must have the highest intensity of all the components. Otherwise, a color ordered red, orange, blue and violet could be both orange-red and violet-blue, a nonsensical result.
  • The Court held that the patentee gave "intensity" the same "unconventional" meaning — a synonym for "quantity" — as in the prior constructions because the two patents share a specification and the claims did not define the term differently.
  • The Court held that the term "peak reflectance percentage" used in claims 7 and 9 was not supported by the specification and, therefore, those claims were invalid because they contained new matter. While a new matter determination is a question of fact, no reasonable jury could find support for peak reflectance percentage in the specification, warranting summary judgment.
  • "Peak intensity" and "dominant intensity" were both indefinite. Pursuant to the Court’s construction of intensity, each color can only have a single intensity, rendering peak and dominant intensities nonsensical.
  • The terms "cyan," "magenta," and "yellow" were indefinite to the extent that they were amenable to multiple constructions. The Court, however, used the narrowest possible constructions as follows: "cyan" was "green-blue"; "magenta" was "violet-red"; and "yellow" was "orange-yellow" or "green-yellow."
  • "Each of a different color" was not indefinite. Color referred to the six claimed colors, as well as black and white. Shades of a color were not "different."