MEMORANDUM OPINION

LEONARD P. STARK, District Judge.

I. BACKGROUND

On August 15, 2013, Custom Media Technologies LLC ("Custom Media" or "Plaintiff) filed suit against Comcast Cable Communications, LLC and DISH Network, LLC (collectively "Defendants")1 alleging infringement of U.S. Patent No. 6,269,275 ("the '275 patent"). (C.A. No. 13-1421 D.I. 1; C.A. No. 13-1424 D.I. 1) The patent-in-suit generally relates to "customizing and distributing presentations for user sites over networks for utilization on demand." (D.I. 1)2

Pending before the Court is the issue of claim construction for various disputed terms of the patent-in-suit. The parties completed briefing on claim construction on June 9, 2015 (D.I. 58, 60, 66, 67; C.A. No. 13-1424 D.I. 59, 62, 68, 69), and filed an updated claim construction chart on June 10, 2015 (D.I. 73). The parties also submitted technology tutorials. (D.I. 64; C.A. No. 13-1424 D.I. 65) The Court held a claim construction hearing on June 23, 2015. (D.I. 75) ("Tr.")

II. LEGAL STANDARDS

The ultimate question of the proper construction of a patent is a question of law. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-91 (1996)). "It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted). "[T]here is no magic formula or catechism for conducting claim construction." Id. at 1324. Instead, the court is free to attach the appropriate weight to appropriate sources "in light of the statutes and policies that inform patent law." Id.

"[T]he words of a claim are generally given their ordinary and customary meaning . . . [which is] the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321 (internal quotation marks omitted). The patent specification "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).

While "the claims themselves provide substantial guidance as to the meaning of particular claim terms," the context of the surrounding words of the claim also must be considered. Phillips, 415 F.3d at 1314. Furthermore, "[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment. . . [b]ecause claim terms are normally used consistently throughout the patent. . . ." Id. (internal citation omitted).

It is likewise true that "[differences among claims can also be a useful guide . . . . For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Id. at 1314-15 (internal citation omitted). This "presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).

It is also possible that "the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481 F.3d 1371 (Fed. Cir. 2007).

In addition to the specification, a court "should also consider the patent's prosecution history, if it is in evidence." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). The prosecution history, which is "intrinsic evidence," "consists of the complete record of the proceedings before the PTO [Patent and Trademark Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d at 1317. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id.

In some cases, "the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period." Teva, 135 S. Ct. at 841. Extrinsic evidence "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the meaning of a term to those of skill in the relevant art because such dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be useful" to the court, it is "less reliable" than intrinsic evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously describes the scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d at 1583).

Finally, "[t]he 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." Renishaw PLC v. Marposs Societa'per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (quoting Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).

III. DISPUTED TERMS3

A. "presentation"

The parties dispute whether the term "presentation" needs to be construed. In arguing that no construction is necessary, Plaintiff objects to a construction whereby media components would have to be "played together in that arrangement."4 Whether such a limitation is in the claims presents a genuine dispute, which the Court must resolve by construing "presentation." See 02 Micro Int'l Ltd. v. Beyond Innovation Tech. Co. Ltd., 521 F.3d 1351, 1362 (Fed. Cir. 2008) ("When the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it.").

The parties further dispute whether a "presentation" must be limited to a "played" presentation and whether it is a fixed arrangement. Plaintiff contends a presentation need not be "played," so long as it is playable. (Tr. 8-9) The Court sees no support in the specification for Defendants' assertion that "to even qualify as a presentation, it needs to be presented." (Id. at 10) So long as the presentation is playable, as an arrangement of media components, the claims do not require that presentation actually be played before falling within the scope of the claims.

The Court does agree with Defendants that the specification is clear that a presentation is a compilation or arrangement of media components.5 For example, the figures show multiple media components making up the presentations. (See '245 patent, Figs. 6 and 7) In addition, the specification teaches that the components are selected to create a customized presentation. (See id. at col. 5 ll. 2-6) ("The set top box 18 then can combine the selected ones of the data object components to create a customized presentation for the user.")

However, the Court finds that Defendants' proposed limitation that the media components be "played together in that arrangement" is confusing and in tension with the specification, which teaches presentations that may be modified more easily than with prior art technologies. In describing the advantages of the present invention, the specification states, "The presentations can be updated or otherwise modified periodically in a flexible and efficient manner." (Id. at col. 3 ll. 14-16) Requiring the media components to be "played together in that arrangement" invokes the idea of "fixed" presentations (which Defendants no longer explicitly include in their construction).

B. "presentation logic objects"

Defendants contend the term "presentation logic objects" is indefinite. Plaintiff disagrees and proposes a construction, but alternatively would be content if the Court does not adopt a construction.

Plaintiff argues that "logic and objects are terms of art in Computer Science and . . . a person of ordinary skill in the art at the time of the invention would understand that, in the context of the intrinsic evidence, logic for selecting certain media components would be included in a data structure." (D.L 58 at 7) Defendants assert that the intrinsic record fails to define with reasonable certainty the function, structure, or properties of a presentation logic object. (See D.I. 60 at 15) (citing Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014))

The claim language identifies two functions for the presentation logic objects:

What is claimed is:

('275 Patent, col. 8 l. 60-col. 9 l. 16) As set out in the claim, the presentation logic objects work with the data objects "to facilitate" the creation of individualized presentations, and also allow the system as a whole to "select[] certain . . . media components" in response to the presentation logic object and the data object. This is consistent with the specification, which explains the role of the presentation logic objects in the abstract and in the description of the present invention. (See, e.g., id. at col. 3 ll. 22-30) ("Presentation logic objects used in conjunction with data objects facilitate the creation of individual customized presentations, at the user sites. . . . Certain ones of the media components of the media objects are selected in response to the individual presentation logic objects and the individual data objects to create customized presentations for the users at their user sites.") The figures of the patent also show the presentation logic object working with the user profile. (See id. at Fig. 9) (Step 65 recites "For each recipient, use profile and presentation logic object to combine objects for presentation")

In addition, the examples in the specification help give meaning to the term "presentation logic objects." In the Physical Therapy Example, a data object (including patient's name, therapeutic objective, and exercise regimen) is transmitted to a fulfilling server, and "[t]he fulfilling server does appropriate billing and creation of the presentation logic object for the patient." (See id. at col. 7 ll. 21-32) "The presentation logic object is transmitted via email to the patient's set top box . . . The set top box of the patient stores the relevant objects from the multicast based on instructions from the presentation logic portion of the email." (Id. at 11. 32-46)

Extrinsic evidence also supports Plaintiffs position. The Edwards Declaration states: "It is self-evident that presentation logic objects (1) are objects and (2) include logic, i.e., computer program instructions. The '275 patent further makes clear that this logic is for selecting one or more media components from a set of media components." (D.I. 69 4) "[I]t has been well understood for many years than an object may include information (data) and/or logic (methods). Therefore, a profile data object is an object that contains a specific type of data, and a presentation logic object is an object that contains a specific type of logic." (Id. at ¶[11) Edwards concludes, "the '275 patent provides one of ordinary skill in the art with a precise delineation of what falls within the scope of the claims and what does not fall within the scope of the claims." (Id. at ¶[16)

The specification need not describe more fully the scope of the presentation logic object in terms of timing, programming, or other properties which Defendants contend are lacking in the description — in order to not be indefinite. While the appropriate construction is certainly broad, it is supported by intrinsic and extrinsic evidence and is the appropriate construction.

C. "creating presentation logic objects based on corresponding ones of the data objects"

The parties dispute whether this claim term is indefinite. Plaintiff proposes the construction adopted by the Patent Trial and Appeal Board ("PTAB") in the inter partes review ("IPR") proceeding instituted by Cisco Systems, Inc. ("Cisco") on the '275 patent. (See D.I. 58 at 7) (citing D.I. 59-4 Ex. D at 13) Defendants argue, "Neither the specification nor the file history describe how to create PLOs [presentation logic objects] based on corresponding PDOs [profile data objects]" (D.I. 60 at 19), and, therefore, the term is indefinite. Defendants also contend that Plaintiffs proposal only construes the "corresponding" limitation, but does not give any construction to the term "based on." (D.I. 67 at 15) ("[T]he Board only considered whether the specification describes `corresponding.'")

Plaintiffs declarant, Dr. Edwards, identified portions of the specification that refer to where and why the presentation logic objects are created (see D.I. 61 ¶ 22), but Defendants assert that the claim is indefinite since the specification does not teach how presentation logic objects are created. However, Dr. Edwards explains that "the technique of creating objects of different types based on a correspondence of those types was well known in the field of computer programming. . . . A person of ordinary skill would not require any specific teaching within the '275 patent specification itself to use such a technique to create presentation logic objects based on profile data objects." (Id. at ¶ 24)

Defendants have failed to persuade the Court that this term is indefinite. Based largely on the expert testimony submitted, the Court finds that one of ordinary skill in the art would be able to determine, with reasonable certainty, how to create a presentation logic object based on a profile data object. (See id. at ¶ 25) ("A person of ordinary skill in the art would understand that a data structure comprising logic for a selection process can be created based on other data structures containing information (e.g., demographic information, preferences, interests, etc.) about an individual user.")

D. "gathering user profile information"

The parties have agreed that the term "user profile information" is construed to mean "information about one or more user(s)." Therefore, the only dispute remaining is whether the term "gathering" should be construed. Defendants propose limiting "gathering" to "collecting . . . at a computer remote from the group of user computer means." This limitation is not consistent with the disclosures of the specification.

Defendants' proposal would limit the "gathering" of user profile information to a remote computer, the "profile compiling computer," which appears in Fig. 1 as personal computer 43. Defendants argue:

(D.I. 60 at 7) (internal citations omitted; emphasis in original) Defendants contend that the invention only works if the user profile information is gathered at a remote central location. (Tr. 46)

However, there is no limitation in the claims which specifies any particular location at which the gathering must be performed. While the profile compiling computer appears as a remote computer in Figure 1, Defendants' construction would improperly narrow the claim scope to a preferred embodiment. The claims do not limit gathering to a remote computer.

At the hearing, both parties made reference to the same dictionary definition of "gathering" as support for their proposal. (See id. at 44, 48) ("to bring together or assemble from various places, sources, or people") The Court has used that definition as a guide in construing this claim term, as it encompasses the plain meaning of "gathering" and does not import unwarranted limitations from the specification.

E. "user computer means"

The parties dispute whether this is a means-plus-function claim and, if it is, Defendants argue that it is indefinite for lack of a corresponding structure. Plaintiff offers a construction should the Court determine this is not a means-plus-function claim, which is also the construction adopted by the PTAB.6

The claim term appears several times. For example, claim 1 recites:

(275 patent, col. 8 l. 61-col. 9 l. 18) (emphasis added)

Using the word "means" raises a presumption that 35 U.S.C. § 112(6) is invoked. See Williamson v. Citrix Online, LLC, 2015 WL 3687459, at *6 (Fed. Cir. June 16, 2015) ("[T]he use of the word `means' in a claim element creates a rebuttable presumption that § 112, para. 6 applies."). Plaintiff has pointed only to a general purpose computer or set top box (but no algorithm for completing the functions) to satisfy the structure required by § 112(6), and contends that this is not a means-plus-function term. Plaintiff conceded at the hearing that "[t]he specification does not describe a specific programming algorithm for the personal computer." (Tr. 74)

"User computer means" appears in Claim 1 six times. Plaintiff emphasizes two of the instances — "creating presentation logic objects . . . for each one of the user computer means" and "broadcasting . . . to each one of a group of remotely located user computer means" — as support for its contention that the user computer means "does not require that the user computer means performs each of the recited steps." (D.I. 58 at 18) However, at least the other four instances of the term are linked to functional language. In this situation, Plaintiff has failed to rebut the presumption that the term is used as a means-plus-function term. See Personalized Media Commons, LLC v. Int'l Trade Comm'n, 161 ¶.3d 696, 703-04 (Fed Cir. 1998) ("[U]se of the word `means' creates a presumption that § 112, ¶ 6 applies. . . . [This] presumption can be rebutted if the evidence intrinsic to the patent and any relevant extrinsic evidence so warrant.").

"[A] means-plus-function claim element for which the only disclosed structure is a general purpose computer is invalid if the specification fails to disclose an algorithm for performing the claimed function." NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008). Plaintiff has identified only a general purpose computer or set top box as the associated structure.7 For at least the "selecting" function of claim 1, there is no identified algorithm. Because there is no corresponding algorithm associated with the "selecting" function, the claim term "user computer means" lacks a corresponding structure.

At the hearing, Plaintiff argued that for at least some of the uses of "user computer means," no algorithm need be disclosed, invoking the exception of In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011) (holding that there is exception to rule requiring algorithm when claimed functions "can be achieved by any general purpose computer without special programming"). Plaintiffs position is unavailing. Because not all of the uses of the term come within the Katz exception, the claim term lacks a corresponding structure. See NetMoneyIN, 545 F.3d at 1367 ("[I]n a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.") (internal quotation marks omitted).

F. "group of [remotely located] user computer means"

The parties dispute whether this term requires construction. Defendants' proposal substitutes "large number" for "group." The intrinsic evidence does not support such a narrow construction (e.g., eliminating "small numbers"). Further, Defendants' proposed phrase, "large number," is itself ambiguous and, therefore, unhelpful to a jury.

Defendants assert that limiting "group" to a "large number" is required by the prosecution history, because the applicant disclaimed a method comprising a small number of user computers, as the solution of the invention was directed to bandwidth problems that would not exist with only "a small number of users" involved. (C.A. 13-1419 D.I. 56 at 5) The statements on which Defendants rely, including those in which the applicant distinguished a prior art reference, Rapaport, arguably based on the number of users (see id. at 6), do not constitute a clear and unambiguous disavowal.8 See Seachange Int'l, Inc. v. C-CORInc, 413 F.3d 1361, 1373 (Fed. Cir. 2005). The Court agrees with Plaintiff that the distinction over Rapaport was not dependent on the "large number" of customized individualized presentations, as Rapaport required a browser to build a profile wherein users could retrieve media files. (See C.A. 13-1419 D.I. 57 Ex. D at 5-6) Although the prosecution history highlights that an advantage of the present invention is that it could broadcast to a "large number" of users, the claims were not amended to include a "large number" limitation.

Having rejected Defendants' position, and because "group" will be understandable to the jury without clarification, no construction is necessary.

G. "single universal presentation media object including a set of media components"

The term "single universal presentation media object" does not appear in the specification. Instead, as Defendants explain, "[t]o overcome rejections over prior art, Applicant modified the `presentation media object' with a pair of adjectives: `single' and `universal.'" (D.I. 60 at 2) The original claims, directed to "a common presentation media object," were rejected by the PTO. (See C.A. No. 13-1424 D.I. 62-1 Ex. 1 at 3) The Court agrees with Defendants' discussion of the prosecution history as follows:

(D.I. 60 at 3-4 (internal citations omitted; emphases in original)) (quoting D.L 60-1 Ex. 3 at 4-5)

H. "media components"

The parties dispute whether the "media components" must be "playable." Plaintiff argues that only some potential media components are playable, such as audio and video components, while others, such as text, graphics, or programming objects, need not be playable, as explained by the specification. (See D.I. 58 at 5) Defendants contend that "being able to `play' a presentation is integral to [the invention's] very nature." (D.L 60 at 20)

Plaintiffs proposed construction is supported by the specification, which states:

('275 Patent, col. 5 ll. 54-61) Construing "media components" to be limited to "playable segments" could exclude text, graphics, or programming objects, a result which would be inconsistent with the specification.

I. "in response to its presentation logic object and its data object"

The only dispute in regard to this claim term is whether to add the qualifiers "both" and "separately" to the claim language. The claim requires "selecting certain ones of the media components at each one of the user computer means in response to its presentation logic object and its data object." ('275 Patent, col. 9 ll. 14-16; see also id. col. 5 ll. 2-4 ("The set top box 18 then selects certain ones of the media components in response to its presentation logic object and its data object")) In the Court's view, the claim's use of "and" is adequately accounted for by adding `'both" to the construction; "separately" is not also needed.9

J. "arranging the selected ones of said media components to create customized presentations for the users"

The specification requires that the user computer makes the presentation by "arranging." Plaintiff asserts that this claim term is clear and requires no construction, while Defendants propose (1) substituting "assembling" for "arranging," (2) adding the limitation that the assembling is done "without user intervention," and (3) adding a limitation that the presentations correspond to a user." Much of the claim term other than "arranging" has already been construed.

The Court agrees with Plaintiff. Defendants have failed to persuade the Court that substituting "assembling" for "arranging" is required by the specification or clarifies how the invention works in a way that the claim language does not. Defendants have further failed to show that the "without user intervention" limitation is supported by the specification. Claim 1 recites that the media components are selected "at each one of the user computer means." Defendants' proposed requirement of automatic arranging is based on the embodiments disclosed in the specification, but there is no basis to import this as a limitation into the claims. Lastly, the proposal by Defendants that each presentation must correspond to a user is also unsupported.

IV. CONCLUSION

An appropriate Order follows.