LEONARD P. STARK, District Judge.
Plaintiff Cronos Technologies, LLC ("Cronos" or "Plaintiff') filed separate patent infringement actions against Expedia, Inc., ("Expedia") (C.A. No. 13-1538), priceline Incorporated (n/k/a The Priceline Group Inc.) and priceline.com LLC (collectively "priceline") (C.A. No. 13-1541), as well as against Travelocity.com, L.P. ("Travelocity") (C.A. No. 13-1544) (collectively, "Defendants"). (D.I. 1)
Pending before the Court is the issue of claim construction of various disputed terms of the patent-in-suit.
The ultimate question of the proper construction of a patent is a question of law. See Teal 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." Phillips, 415 F.3d 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 "[d]ifferences 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 ordinary 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).
The '110 Patent discloses two embodiments, one of which is the "dumb terminal" embodiment wherein the "database of [user-discernible] representations is found
The parties agree this claim term is in means-plus-function format. See 35 U.S.C. § 112(6). They further agree on the claimed functions. Their dispute goes to the corresponding structure.
Defendants' read the function to include a sorting function as part of step 3, based on the phrase "said new and/or replacement user-discernible item data corresponding
The Court agrees with Plaintiff's reading of the function, and finds that the "communication means" does not execute any sorting function. The specification discloses, "Depending upon the actual physical location of the merchant database 14, this communication can be a telephonic serial data transfer, a serial or parallel transfer of information over a data bus or link, or a serial transfer of information over a communications network such as the Internet. Other known communication means are envisioned." (Id.) The Court agrees with Plaintiff that this satisfies the requirement for a corresponding structure under§ 112(6).
The central dispute in relation to these terms is whether the data entry device "provides" data to the remote ordering terminal or whether it must "transfer" such data. While the specification discloses that an optical scanning wand can transfer coded information to the DPU 10, it goes on to state that "alternative embodiments of the data entry device 16 of the present invention employ a standard `QWERTY' keyboard or custom keypad in communication with the remainder of the DPU 10 for manual data input, or voice recognition circuitry or magnetic stripe input means." (Id. at col. 3 ll. 29-38) A keyboard does not "transfer" coded information in the same way as an optical scanning wand, since a keyboard utilizes manual user input for data. (See D.I. 51 ¶ 43) (Rhyne Declaration, stating: "One of skill in the art would typically speak of `inputting' something to a computer on a keyboard, not `transferring' from a keyboard.") Defendants' proposed construction of "data entry device" would exclude the disclosed keyboard embodiment.
A second dispute is whether the construction of data entry device must be limited to a device providing "item, user, and merchant" data to the remote ordering terminal. The claim language contains a description of the coded information which is provided, so limiting the term "data entry device" is unnecessary. What is claimed is a "remote ordering terminal comprising ... at least one data entry device for providing said terminal with said item associated item codes and with data from said user
There does not appear to be a meaningful dispute as to the proper construction of "machine recognition," which appears in claims 22 and 26 and relates to the function performed by the data entry device. Defendants argue that the data entry device cannot be a mouse, and, further, that clicking on a link would not meet the claim limitation requiring "machine recognition." Defendants' proposal for "machine recognition" contains the limitation that the coded information must be "transferred" from one source to another, as an attempt to distinguish from simply clicking on a link. Plaintiff contends that "machine recognition" is a term "readily understandable" to one of skill in the art, and its expert, Dr. Rhyne, expressed this opinion. (See D.I. 51 ¶ 39; see also id. at ¶ 43 ("In my opinion, one of skill in the art would not understand `machine recognition' to mean `transferring said identifying code to the user's ordering device' as Defendants have proposed.... Defendants' use of the word `transferring' would be awkward to one of skill in the art.")) Defendants' expert Dr. Taylor, despite submitting a declaration, did not address the meaning of this term. (See D.I. 54) In light of Dr. Rhyne's declaration and the lack of record evidence contradicting his statements, the Court finds that one of ordinary skill in the art would readily understand the term "machine recognition" and will adopt the plain and ordinary meaning to one of ordinary skill in the art.
The parties agree that this term is a means-plus-function limitation and also agree as to the function. Defendants contend that no corresponding structure is disclosed. Plaintiff asserts that the data format/transfer computer or DFTC 12 is the corresponding structure, a position supported by the detailed description in the specification. (See '110 Patent, col. 2 ll. 53-57) ("A remote ordering system according to the present invention and FIG. 1 includes at least ... a data format/transfer computer (DFTC) 12 (also referred to as a central processing means or a central computer) ...")
The DFTC is disclosed as conducting the first function: "providing remote communication over a multi-user network between said central inventory database and said user-specific database in response to a user action for teaching user-discernable item data received from said central inventory database to said user-specific database." In particular, the specification states:
The DFTC 12 controls the flow of information between the DPU 10 and the merchant database 14 during such an interactive session. The DFTC 12 communicates with the merchant database 14 to ascertain product availability, product identification information such as name, container size, and nutritional data, and current product price. This information is then relayed back to the DPU 10 for display to the user and for addition to or substitution within the DPU 10 database.
(Id. at col. 5 ll. 7-15)
Figure 1 also shows this communication among the DFTC 12, multiple merchant databases 14, and multiple DPUs 10. Figure 14 contains a flow chart algorithm in which Step 252 ("Order or Price Check?") triggers communication between the user database and merchant databases to interactively update the price information. While Defendants assert that the role of the DFTC 12 is merely as a pass-through for information, and it therefore does not correspond to the disclosed function, the Court finds there is adequate disclosure to show that the DFTC completes the first function.
Second, the DFTC is disclosed as "interactively updating said user-discernable item data contained within said user-specific database with replacement user-discernable item data received from said central inventory database in response to a user action." According to the specification:
('110 Patent, col. 6 ll. 44-51)
The specification further identifies and describes the role of DFTC 12, which is also illustrated by Figure 14. "The CPU 30 then indicates to the DFTC 12 that availability and price information is being requested for the items in the order list 52 ... The DFTC 12 searches the merchant database for accurate product description information, unit price, and product availability, and returns this information to the DPU 10." (Id. at col. 11 ll. 20-45) This function appears in Fig. 14 as Step 264 ("Teach User Database Code/Product ID Correspondence").
Lastly, the DFTC, alone or in conjunction with CPU 30, is disclosed to "ag[e]-out infrequently accessed user-discernable item data from said user-specific database," but only in the dumb terminal embodiment. Plaintiff concedes that in the smart terminal embodiment the DFTC does not perform the aging out function. (See Tr. at 73) According to Plaintiffs, referring to Figure 12:
(Tr. at 72-73) Figure 12 shows at Step 230 that the data is transmitted from the DFTC to the DPU, and only after that point is the "aging out" function accomplished. However, in the dumb terminal embodiment, the DFTC performs the aging out function since the "DPU 10 is a dumb terminal which must be in communication with the DFTC 12 in order to provide user-discernible representations of scanned items ... [and] the database of such representations is found within the DFTC 12, rather than in the DPU 10 RAM 34." ('110 Patent, col. 14 ll. 6-11)
The DFTC is not disclosed to work with the CPU in the smart terminal embodiment as the DPU does the aging out function in that embodiment. The DFTC is not disclosed anywhere in the description of the aging out function with the smart terminal embodiment. (See id. at col. 9 ll. 2-17) ("[I]f sufficient memory space exists within the DPU database to add a new product description and associated unit price, or if a pre-defined maximum size for the DPU 10 database would be exceeded by adding this new information to the database, the CPU 30 determines the oldest, or least accessed, product information based on access date. This oldest information is aged out, or deleted, from the database . . . In another embodiment, the CPU 30 can automatically age out information based upon frequency of use.") Hence, the Court's conclusion that adequate structure is disclosed is limited to the dumb terminal embodiment.
In regard to the term "database," the parties dispute whether the data must be externally structured and whether the data must be searchable by "any" field or instead by "a particular field." Any proposed construction which reads out of the claims the dumb terminal embodiment cannot be correct. The dumb terminal embodiment, in which the database of user-discernible data is "found within the DFTC" (see '110 Patent, col. 14 ll. 5-15), would be excluded if the Court adopted Defendants' construction requiring an "externally structured" collection of data.
Defendants provide no persuasive reason for why the database must be searchable by "any" field, so long as it is organized and searchable in some way, by some particular field. Hence, the Court will adopt Cronos' alternative construction (which includes a "database management system" limitation), which also addresses Defendants' concern that the claim limitation does not encompass a list. (See Tr. at 82-83)
Turning to `"user-specific database" and "identifier database," the parties dispute whether the database must be specific to the remote ordering terminal at the DPU. Again, Defendants' proposed construction would read out of the claims the dumb terminal embodiment, in which the database is found within the DFTC rather than in the DPU. (See '110 Patent, col. 14 ll. 9-10) Therefore, the user-specific database and identifier database are not specific to the remote ordering terminal. Instead, the specification and claim language support Cronos' proposal, in which the user-specific database is associated with a particular user.
The parties further dispute the relative size of the user-specific or identifier database. Defendants propose that it "contains substantially less data" than the order processing system as a whole, but they explained at the hearing they would be satisfied with any construction that makes clear there is a "meaningfully different" amount of data in the user database than in the larger database. (See Tr. at 93-94) The Court finds that "substantially less" introduces confusing ambiguity into the claims. Plaintiff's proposal that the user database contain only "a portion of' the total data accurately conveys the relative size of the user database.
Finally, with respect to "central inventory database" and "merchant database," the parties dispute whether the merchant database must be "separate and remote" from the user database. The specification states,
('110 Patent, col. 2 l. 64-col. 3 l. 4) This portion of the specification explicitly discloses an embodiment in which the location of the merchant database is within the DFTC 12, as in the dumb terminal embodiment. Defendants' proposed construction would read out this limitation and, therefore, is not correct.
The parties agree that the term "management means" is a means-plus-function limitation and agree as to the function of the claim term. They disagree about whether: (1) a structure has been disclosed, and (2) if the disclosed structure is a general purpose computer, whether an algorithm must also be disclosed. Plaintiff asserts that the CPU 30 is the corresponding structure and, further, that it needs no special programming to do the function so no algorithm is required. (See Tr. at 99-100) The Court concludes that even if an algorithm is necessary, one has been adequately disclosed in Figure 11.
Defendants' position that an algorithm is required is largely based on the portion of the specification which states, "The CPU 30 is in charge of creating and displaying order lists on the display 36." ('110 Patent, col. 4 ll. 33-34) Defendants contend that no algorithm has been disclosed for "creating and displaying." (D.I. 76 at 2) "A microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm." EON Corp. IP Holdings LLC v. AT&T Mobility LLC, et al., No. 2014-1392 (Fed. Cir. May 6, 2015). However, "[w]hen the function can be achieved by any general purpose computer without special programming no algorithm need be disclosed." Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1362, 1364 (Fed. Cir. 2012) (internal quotation marks omitted); see also In Re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316-17 (Fed. Cir. 2011). Here, to the extent the CPU 30 is performing a specialized function, Fig. 11 provides the algorithm to satisfy the requirement that a structure be disclosed.
The parties dispute whether it is proper as part of the claim construction process to order claim steps and, if so, whether the above steps should be ordered. Claim 22 is a method claim comprising seven individual steps, and Defendants propose that steps 3 through 6 must be carried out in a precise order, and that this should be made clear through claim construction.
"Unless the steps of a method actually recite an order, the steps are ordinarily not construed to require one. However, such a result can ensue when the method steps implicitly require that they be performed in the order written." Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (2003). "First, we look to the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written. . . . If not, we next look to the rest of the specification to determine whether it `directly or implicitly requires such a narrow construction.'" Id. at 1369-70 (emphasis in original; internal citations omitted) There is nothing improper about considering the order of steps issue in connection with claim construction.
Here, however, Defendants have failed to persuade the Court that the order of steps they seek to impose on claim 22 is correct.
Defendants assert that Claim 45 is indefinite because it attempts to claim a system but includes method steps. Such hybrid claims are ambiguous and, therefore, indefinite, because it is unclear whether infringement of such claims occurs when one creates the system or when one performs the method. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005). Here, however, the claim language makes clear that the claim does not recite method steps, even though it uses active verbs to define "interactively receivable."
Defendants have to prove indefiniteness by clear and convincing evidence. See Intel Corp. v. VIA Techs. Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003). Defendants attempt to meet this burden by relying on Cronos' expert's deposition, in which he opined that Claim 45 includes method steps. (See D.I. 79 at 4) (quoting Rhyne deposition)
This case is distinguishable from IPXL, which required that the "user use[ ]" the system, making it unclear whether infringement occurred when the system was created or only when the user used the system.
Turning to the proper construction, there is a genuine dispute as to claim scope and — particularly in light of the testimony of Dr. Rhyne — the Court finds it is necessary to construe the term. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008) ("When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute."). Defendants' proposal correctly identifies "steps" that a system must be capable of undertaking in order to practice the claim. However, Defendants proposed construction would require these steps to always be performed (i.e. "received"), while the claim language is written in the form of a capability to perform these steps (i.e. "receivable"). The Court's construction amends Defendants' proposed construction to reflect these conclusions.
The parties disagree as to whether this term is a means-plus-function term subject to 35 U.S.C. § 112(6). The Court finds it is not. Although it contains the term "means," there is no indication that it is claiming a function. "Without an identified function, the term `means' in this claim cannot invoke 35 U.S.C. § 112, ¶ 6. Without a `means' sufficiently connected to a recited function, the presumption in use of the word `means' does not operate." York Prods., Inc. v. Cent. Tractor Farm &Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996).
The Court will adopt Plaintiffs proposal, which is based on the specification. (See '110 Patent, col. 5 ll. 36-38) ("[I]nformation identifying the user and the desired merchant, among other transaction specific information, is referred to as a transaction identifier or as identifier means.")
The parties agree this is a means-plus-function term, but disagree as to the disclosed structure. The specification states:
The DFTC 12 also interprets information entered from user identification control cards 40 reflective of user and merchant identification. Typically, these identification control cards 40 provide information from which merchant name and location, user name, address and account number, payment arrangements, preferred product delivery option, and consumer profile can be determined. In alternative embodiments of the present invention, the DPU 10 has such user and merchant identification pre-stored therein, such that the user selects a merchant from a displayed menu of merchants. . . . In any case, information identifying the user and the desired merchant, among other transaction specific information, is referred to as a transaction identifier or identifier means.
('110 Patent, col. 5 ll. 22-38) The specification is clear that either the identification control card 40 or the DPU 10, in an alternative embodiment, are corresponding structures for the identifier means. Defendants' proposal would read out of the claims the disclosed embodiment in which the identifier means are pre-loaded onto the DPU 10. The Court will adopt Plaintiff's proposal.
The parties' dispute is whether "providing said order service," as recited in Claim 45, is a typographical error. Plaintiff contends the claim should be read to recite "said order device," while Defendants adhere to the language actually used in the claim, which is "said order service."
The parties further disagree as to the function and structure of what they agree is a means-plus-function claim term. Plaintiff argues that "input means" refers to the data entry device, while Defendants rely on the term "service" to support their argument that "input means" is a processor which completes Steps 273 and 274 of Figure 14 (namely, the "Order pushed?" step and the "User places final order" step).
Plaintiff essentially asks the Court through claim construction to correct what Plaintiff asserts is an error in the claim language. The Court can correct an error in a patent only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification, and (2) the prosecution history does not suggest a different interpretation of the claim. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003).
Plaintiff provides a portion of the prosecution history which uses the words "order device" (see D.I. 46-3 at 129) and, from this, contends that the phrase "order service" was a scrivener's error on the part of the PTO. (D.I. 50 at 20) Even assuming this satisfies the second requirement stated above (i.e., the prosecution history may not suggest a different interpretation of the claim), there is here a reasonable debate regarding the correction of the term. Although the term "order service" does not appear elsewhere in the patent, in the context of the claim as a whole it is not apparent from the face of the patent this is an error, especially as Dr. Taylor opines there is structure present in the specification associated with the issued claim language. (See D.l. 76) Therefore, the Court will adopt Defendants' proposed construction.
An appropriate Order follows.
