By Eric Schweibenz
On April 22, 2010, ALJ Robert K. Rogers, Jr. issued Order No. 25 in Certain Printing and Imaging Devices and Component Thereof (Inv. No. 337-TA-690) denying Respondents Oki Data Corporation and Oki Data Americas, Inc.’s (collectively “Oki Data”) motion for summary determination of invalidity of claims 18-21 of U.S. Patent No. 6,212,343 (the ‘343 patent).

In the motion, Oki Data asserted that claims 18-21 of the ‘343 patent are invalid because they are indefinite.  Specifically, Oki Data argued that the specification fails to shed light on the meaning of the claim language “configured to have a length that enables the narrow-width part to be bent in a direction orthogonal to a longitudinal direction of the developing roller between the sides seals arranged at sides of the toner exit” because the parties’ experts do not dispute that there are an infinite number of potential “longitudinal direction[s] of the developing roller.”  The OUII supported Oki Data’s motion.  Complainants Ricoh Company, Ltd., Ricoh Americas Corporation, and Ricoh Electronics, Inc. (collectively “Ricoh”) opposed the motion, arguing that: (1) it is irrelevant whether the location of the “longitudinal direction of the developing roller” could be any of an infinite number of locations because as long as the narrow-width part of the blade can be “bent in a direction orthogonal to” any of the allegedly infinitely-located longitudinal directions, then the claim limitation is met; (2) one of ordinary skill in the art would have no trouble identifying a “longitudinal direction” of the developing roller as the direction along the length-wise part of the roller; (3) Oki Data disproves its argument by admitting in its motion that “[t]he longitudinal direction of a cylinder is any chord, or line, drawn between the two ends of a cylinder and parallel to the axis or one side of the cylinder;” and (4) the claim language states “a direction orthogonal,” with “a” signifying “one or more,” the plain meaning of which is a direction along a line running perpendicular or radial to a line running parallel to the central length-wise axis of the developing roller.

According to the Order, ALJ Rogers held that the meaning of the claim language at issue is discernable and thus not indefinite, and that summary determination of invalidity is therefore inappropriate.  Finding nothing in the specification to indicate that that the terms should be given anything other than their plain and ordinary meaning, ALJ Rogers determined that “a direction orthogonal to a longitudinal direction of the developing roller” refers to a direction that is at a right angle to a lengthwise direction of the developing roller, and does not require a single or specific longitudinal direction.  ALJ Rogers then found that while there may be an infinite number of lines that run in a longitudinal direction of the developing roller, a longitudinal direction of the developing roller and a direction orthogonal to a longitudinal direction are “easily identifiable” to one or ordinary skill in the art.  Regarding Oki Data’s argument that a change in Ricoh’s expert’s position regarding the claim language proves that the claims are indefinite – which, according to Ricoh, simply means that its expert reached a different conclusion upon further study of the patent – ALJ Rogers determined that the alleged change in position “relates to the comparison of the claim language to a preferred embodiment in the specification” and does not provide evidence that the claim language is “insolubly ambiguous.”  ALJ Rogers also noted that since expert testimony is extrinsic evidence that is secondary in nature, even if Ricoh’s expert’s opinion regarding claim construction did support Oki Data’s argument, it “cannot overcome the plain meaning of the claim terms.”