WILEY Y. DANIEL, Chief District Judge.
THIS MATTER comes before the Court for construction of U.S. Patent No. 5,799,320 (the "`320 patent"), which has been assigned to Plaintiff EdiSync Systems, LLC ("EdiSync"). The parties have filed claim construction briefs and responses to those briefs. On March 12, 2012, I held a full-day hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), during which the parties offered additional evidence and support of their proposed claim constructions, as well as a stipulation concerning claim construction issues. At the conclusion of the hearing, I requested that the parties file supplemental claim construction briefs, which were filed on March 19, 2012. Having fully considered the parties' claim construction briefs and the responses thereto, the parties' stipulation, the arguments offered during the Markman hearing, the parties' supplemental briefs and replies thereto, and the parties' various submissions of supplemental authority, I am prepared to issue a ruling construing the disputed claims in the `320 patent.
Edisync initiated this patent infringement case against Defendant Centra Software, Inc. on August 19, 2003, with the filing of its Complaint for damages and injunctive relief alleging infringement of the `320 patent, titled "Remote Multiple-User Editing System and Method," and another patent which is no longer subject to this litigation. The invention set forth in the `320 patent is a computer file editing system that would allow multiple computer users to edit the same document from remote locations, such that multiple parties could collaboratively edit a computer file substantially in real-time. As originally issued, the `320 patent contained claims 1-20.
On March 25, 2004, the United States Patent and Trademark Office ("USPTO") ordered a reexamination of the `320 patent.
The case was stayed during the pendency of the First Reexamination proceeding and reopened at EdiSync's request on February 2, 2009. On April 10, 2009, I entered an Amended Scheduling Order, setting new discovery deadlines, and a briefing schedule on the issue of pre-reexamination certificate liability. Given the changes made to the `320 patent during the First Reexamination, Defendants requested that the Court address whether the newly-added claims of the `320 patent were amended such that they are no longer "substantially identical" to the claims as they existed prior to reexamination. A finding that the new claims were not "substantially identical" to the claims prior to reexamination would mean that Defendants are not liable for alleged infringement occurring prior to issuance of the First Reexamination certificate. Engineered Data Products, Inc. v. GBS Corp., 506 F.Supp.2d 461 (D. Colo. 2007). The parties filed opposing Motions for Partial Summary Judgment on this issue. In those motions, the parties' requested construction of three disputed claim terms: "personal computer," "host computer," and "single user application program."
I held a hearing on the motions for summary judgment and the parties' competing claim constructions on September 3, 2009. However, on September 10, 2009, before an order resolving pre-reexamination liability could be issued, the parties informed the Court that the USPTO granted Defendants' request for a second reexamination of the claims that appeared in the newly-issued reexamination certificate for the `320 patent, based on prior art. On November 5, 2009, I granted Defendants' motion to stay the case pending resolution of the second reexamination proceeding.
I entered an Order lifting the second stay on August 19, 2011. On October 4, 2011, the USPTO issued a second reexamination certificate (the "Second Reexamination"), which resulted in amendments to several claims. EdiSync then filed an Amended Complaint on October 17, 2011, which names several additional Defendants including Centra Software, LLC, and Defendant Saba Software, Inc. ("Saba").
At this stage of the litigation, the parties both request construction of certain claims, as amended by the Second Reexamination. In addition, EdiSync maintains that the issue of pre-reexamination liability, as set forth in the parties' 2009 motions for summary judgment remains ripe for consideration. In conjunction with this claim construction order, I am prepared to resolve the issue of pre-reexamination liability set forth in EdiSync's Motion for Partial Summary Judgment, filed May 13, 2009 [ECF No. 95], and Defendants' Motion for Partial Summary Judgment, also filed May 13, 2009 [ECF No. 93].
In a simple patent infringement case, the court first determines, as a matter of law, the construction given to each patent claim. Markman v. Westview Instruments, Inc., 517 U.S. 370, 385 (1996). Whether infringement actually occurred is a question of fact submitted to the jury. Id. "The goal of patent claim construction is to spell out in layman's simple language the meaning and the scope of the legal language contained in a patent." Phillips v. AWH Corp., 2002 WL 32827996, at *3 (D. Colo. Nov. 22, 2002). The Federal Circuit laid out the basic principles of claim construction in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). "`[T]he claims of the patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d at 1312-13 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). When construing a claim, courts must give the words of the claim their "ordinary and customary meaning" as understood by "a person of ordinary skill in the art in question at the time of the invention." Phillips, 415 F.3d at 1312-13 (citation omitted). "[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent including the specification." Id. at 1313.
Deciphering claim language does not always turn on the parsing of erudite terms. "In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314. However, when the claim terms have a particular meaning in the field, courts determine the ordinary and customary meaning by looking first to "intrinsic evidence," which is the claims themselves, the specification,
There are two exceptions to the general rule that claims are given their "ordinary and customary meaning as understood by a person of ordinary skill in the art." First, when a patentee sets out a definition and acts as his own lexicographer, and second, when a patentee disavows the full scope of a claim term either in the specification or during prosecution. Vitronics Corp., 90 F.3d at 1580.
However, to act as its own lexicographer, a patentee must "clearly set forth a definition of the disputed claim term" other than its plain and ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Similarly, courts have declined to apply the doctrine of prosecution disclaimer where the alleged disavowal of claim scope is ambiguous. See Omega Eng'g, Inc. v. Rayteck Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003); see also Storage Tech. Corp. v. Cisco Systems, Inc., 329 F.3d 823, 833-34 (Fed. Cir. 2003) (prosecution disclaimer cannot be used to depart from the meaning of a term provided by the written description unless applicant's statements constitute a clear and unambiguous disavowal of claim scope).
The patent at issue describes a computer file editing system that would allow multiple computer users to edit the same document from remote locations, such that multiple parties could collaboratively edit a computer file substantially in real-time. The invention converts a set of personal computers ("PCs"), each set up to run programs that would recognize edits from only one user, into a system that could recognize edits from multiple users at the same time. One or more of the PCs is designated as a host computer that will coordinate edits to a file from the other PCs in the system, and coordinate the transfer of data about the edits so that the other PCs can display the updated file edits.
As set forth in the `320 patent specification, the purpose of the invention "is to provide an interactive editing system for a plurality of remotely located personal computers which allows substantially simultaneous real time editing of a document being edited by any of the personal computers at virtually any time." See `320 Patent at 4:35-40.
All of the disputed terms appear in Claim 21. Claim 21 of the `320 patent, as set forth in the Second Reexamination Certificate, describes:
See JA001573 (Second Ex Parte Reexamination Certificate) at 1:27-2:2 (italicized matter was added to the patent following the Second Reexamination proceeding).
Prior to the hearing, the parties filed a Stipulation in which they set forth the terms in Claim 21 that they seek to have the Court construe. While the parties briefed additional claim construction issues in their opening claim construction briefs, they agreed to have the Court first construe only the following terms that they believe are most likely to impact the outcome of the case.
EdiSync proposes that the term "personal computer" be construed to mean "a single user microcomputer, not connected to a mainframe, designed for personally controllable applications." This definition follows the express language of the `320 patent specification, with the additional statement that a personal computer is not connected to a mainframe. See `320 Patent at 7:5-7.
Defendants agree EdiSync's proposed construction is supported by the patent specification as far as the original claims are concerned, but contend that during the First Reexamination proceeding, EdiSync expressly redefined the term "personal computer" to be a machine of a certain configuration and limited capabilities so that certain high-end or high performance computing devices that were covered by the original claims of the `320 patent are not longer covered by the claims in the reexamined patent. Thus, Defendants would construe "personal computer" by reference to the technical capabilities of personal computers in use at the time the patent application was originally filed (i.e. — a personal computer must not operate faster than 59MHz or use data addresses in excess of 16 bits).
In support of their contention that EdiSync expressly redefined the term "personal computer," Defendants highlight statements made by EdiSync's expert, Gary J. Nutt Ph.D., during the First Reexamination proceeding, in which Dr. Nutt described the technical capabilities of a personal computer prior to the filing of the `320 patent application in 1989 as significantly less capable than workstations. See JA000358-59 (Second Declaration of Gary J. Nutt under 37 C.F.R. § 1.132) at ¶¶ 7-8.
However, Dr. Nutt's comments must be viewed in the context of the issues being addressed during the First Reexamination proceeding. During this proceeding, the `320 patent was reexamined in view of an article by Sunil Sarin and Irene Grief (the "Sarin reference") titled "Computer-based Real-Time Conferencing Systems."
The statements of Dr. Nutt before the USPTO do not constitute a clear disavowal of the scope of the term "personal computer," as used in the `320 patent. See Storage Tech., 392 F.3d at 833-34. Rather, these statements were merely descriptions of the abilities of personal computers in 1990 in the context of what developments were obvious to those skilled in the art at that time. As the patent examiner stated in the Notice of Intent to Issue Reexamination Certificate:
See JA000758 (Notice of Intent to Issue Reexamination Certificate). Moreover, the `320 patent expressly anticipates advances in the capabilities of PCs stating in the specification "`[w]ith the introduction of yet more powerful machines, the capabilities of personal computes will continue to evolve and expand." See `320 Patent at 7:15-17.
Thus, I see no reason to limit the construction of the term "personal computer" in the manner urged by Defendants. Therefore, I construe the term "personal computer" to mean: "a single user microcomputer, not connected to a mainframe, designed for personally controllable applications."
The limitation "data corresponding with . . ." was added to the `320 patent as a clarifying amendment at the conclusion of the Second Reexamination proceeding. The entire clause is recited as:
See JA001573 (Second Ex Parte Reexamination Certificate) at 1:42-1:46 (emphasis supplied).
According to EdiSync, there is no need to construe the term "data corresponding with . . ." and it should be given its ordinary meaning. Further, EdiSync would construe the term "file information" to mean "computer renderable information that identifies the file editing operations then occurring." In the alternative, EdiSync would construe the term "data corresponding with . . ." to equal "file information," as defined. In its supplemental claim construction brief submitted after the hearing, EdiSync proposed an amended construction of "computer renderable data, that identifies the given file editing operations, which can be edited using the host computer."
Defendants have also offered several proposed constructions of these two terms. Prior to and during the hearing, Defendants proposed that the terms "data corresponding with . . ." and "file information" be limited such that the data coordinated for transfer by the host PC includes only "editable data resulting from the given file editing operations." In supplemental briefing submitted after the hearing, Defendants propose construing the terms to mean "the actual information resulting from the file editing operations, and not merely data representing an image of such information."
EdiSync's proposed construction would broadly define the scope of the information coordinated for transfer by the host PC to include any information that can be "rendered" on a computer display, while Defendants seek a more limited definition. Defendants assert that a limited construction is warranted based on statements made by EdiSync during the Second Reexamination proceeding.
Because the terms at issue were added as clarifying amendments following the Second Reexamination of the `320 patent, and because Defendants arguments regarding construction of these terms are based on the doctrine of "prosecution disclaimer," it is useful to briefly summarize the Second Reexamination proceedings.
During the Second Reexamination, the USPTO rejected several of the claims in the `320 patent (including Claim 21) as obvious based on newly cited prior art, including the Bartholomew Patent.
In an interview with the USPTO Examiner on May 10, 2011, EdiSync maintained that Bartholomew also teaches that the display data or "screen display changes" sent from PC1 to PC2 corresponds to pixel changes on a display. See JA01470. In the interview summary, the Examiner acknowledged that "while in Bartholomew any changes to the screen buffer are transferred to other PCs, the present invention transfers data limited to file editing operations," but requested "further clarification and additional explanation of the differences between the data sent from a host computer to a remote computer in accordance with the Bartholomew reference versus the data sent between the recited `host computer' to the `others of said plurality of personal computers' in accordance with the limitations of claim 21." See JA01438; JA001476.
In an attempt to provide further clarification, EdiSync submitted a written interview statement and the Fifth Declaration of Gary J. Nutt. See JA001475-1481. In the written statement, EdiSync noted that:
JA001476. In Dr. Nutt's Fifth Declaration, he further clarified that:
JA001481. Thus, the PCs operating under the system described in Bartholomew exchanged "bit map" or screen display changes that could not be edited. In contrast, under the `320 patent, the information stored in a file of the host computer and provided to the remote PCs is "information" that is "editable."
The Examiner nevertheless rejected claims in the `320 patent over Bartholomew, stating that when in "editor" mode, the information Bartholomew sends corresponds "to the file editing operations." See JA001486.
EdiSync appealed, and offered the following clarifying amendment:
JA001487. EdiSync asserted that "the limitation of `data corresponding with and limited to' is properly construed as teaching the coordinated transfer of a specific type of data, namely `the information itself.'" And that a person of ordinary skill in the art would understand that a "fundamental tenet" of the `320 patent is that it teaches the transfer of "file information," or information with respect to which a remote user could edit a file using the host PC, rather than an "image of information." See Id. at JA001495. Thus, EdiSync highlighted the ability to "access" information per the `320 patent, as distinguished from the ability to see a representation of the information. EdiSync also noted that the source of information in the `320 patent is from that which is being "edited," whereas under Bartholomew, the source of the information comes from the "screen buffer." Id.
The Examiner did not find the proposed clarifying amendment to fully overcome the Bartholomew reference, until an additional phrase was added further clarifying the source of the information communicated. Following a second interview with the Examiner, EdiSync's proposed clarifying amendment:
became:
JA001517. The approved clarifying amendment specified that the source of the "file information" being communicated is the "file editing operations executed by a single user application program," and not simply whatever changes occur in the screen buffer of the one of the PCs, as taught in Bartholomew. In the Notice of Intent to Issue Reexamination Certificate, the Examiner referenced a power point presentation EdiSync introduced during the second interview, and noted that in the presentation, EdiSync demonstrated how in Bartholomew, the sending of screen updates always results in the same image being sent to all PCs, whereas under the `320 patent, "the sending of `the file information' itself allows the data sent to be executed in each remote PC using the single user application program and thereby outputs of the data can differ from one PC to other remote PCs." See JA001559 (Notice of Intent to Issue Reexamination Certificate). A second Ex Parte Reexamination Certificate issued on October 4, 2011, that amended Claim 21 as discussed above. See JA001569-75 (Ex Parte Reexamination Certificate).
Both of Defendants proposed constructions of the terms "data corresponding with. . ." and "file information" are based on the doctrine of prosecutorial disclaimer and their assertion that EdiSync narrowed the scope of Claim 21 during the Second Reexamination. During the hearing, Defendants asserted that EdiSync distinguished the `320 patent from Bartholomew by claiming that the `320 patent required the transmission of only "editable" data, whereas Bartholomew teaches the communication of "non-editable" data or data comprised of an "image of the information." It is true that in Dr. Nutt's Fifth Declaration, and in EdiSync's accompanying interview summary, EdiSync distinguished the type of information communicated under Bartholomew by describing it as "image information" and "non-editable data." Indeed, the interview summary prepared by EdiSync's attorney after the first interview with the Examiner states that "the [`320 patent] teaches the communication of editable data from the `host computer' to the `others of said plurality of personal computers.'" However, a review of the entire context of EdiSync's argument reveals that EdiSync did not, as Defendants contend, agree to give up coverage for systems that transmit only image information to the remote computers. EdiSync merely distinguished the sending of image information generated from a screen display with the sending of file information that corresponds with file editing operations. I agree with EdiSync that the prosecution history, when viewed as a whole, supports this position, and that Defendants' proposed construction is incompatible with the preferred embodiment in the `320 patent, in which file edition operations are executed by one of the plurality of personal computers using the single user application program such that the "editing" occurs on the host computer.
First, upon review of all of the arguments urged by EdiSync during the Second Reexamination proceeding, it is clear that the amendment added to Claim 21 during at the conclusion of that proceeding was crafted to clarify the (1) type of information communicated from the host PC to the remote PCs as file information corresponding with file editing operations, and (2) the source of the file information as originating from the single user application on the host computer.
I note that in the Examiner's second interview statement, she states in the `320 patent the host computer sends "the file information itself," as opposed to an image of the data, "so that data is executed in each remote PC using the single user application program and thereby outputs of the data can differ from one remote PC to other remote PC at the user's preferences." The Examiner further noted that EdiSync "agreed to make amendments to the independent rejected claims to add that the data transfer includes `file information' coming from the `single user application program' and not from the `screen buffer' as disclosed in Bartholomew." See JA001537 (Ex Parte Reexamination Interview Summary). In addition, EdiSync clarified its understanding of the agreement reached during the second interview in its supplemental response following the second interview stating "it is [EdiSync's] understanding that all present at the Interview agree that presently pending claim amendments are clarifying and not narrowing." See JA001529 (Amendment and Supplemental Response). I do not find evidence of a clear disclaimer as it relates to the terms "data corresponding with" and "file information." See Storage Tech., 392 F.3d at 833-34. I find that the amendments to Claim 21 were clarifying amendments, and did not limit the scope of Claim 21.
In addition, I note that Defendants' attempt to limit construction of the term "data corresponding with . . ." and "file information" to require the transmission of only "editable" data is contrary to the preferred embodiment in the `320 patent, which does not utilize the remote PCs to directly edit data. The specification for the `320 patent states that in the preferred embodiment, the central processing unit of the host PC "interacts with the peripherals of the remote PCs like it interacts with its own peripherals. Data input by a user of the remote PC via its keyboard is input directly to the host PC . .. ." `320 Patent at 9:6-10. Thus, "the microprocessors for the remote PCs perform a supporting role only. The keyboard, display and memory of each of the remote PCs act as peripheral devices to the host PC." `320 Patent at 9:39-42. When any of the PCs offers "input" the microprocessor on the host PC "enters the input and performs the requested function on the file image in memory being edited . . . and sends any updates of the file to the displays [of the remote PCs] as they occur." Id. at 10:3-7. Under the `320 patent, the form of the "file information," and whether it is "editable" by the remote PCs is irrelevant because all of the "editing" occurs on the host PC.
Defendants' alternate construction of the term "data corresponding with" to mean the "actual information resulting from the file editing operations, and not merely data representing an image of such information," does not provide additional clarity. This proposed construction is not based on the language found in the `320 patent and its specification; rather, Defendants have plucked the phrase "actual information" from selected statements made by EdiSync's attorneys and expert during the Second Reexamination proceeding. I note that, "because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes." See Digital Vending Servs. Int'l v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1276 (Fed. Cir. 2012) (quoting Phillips, 415 F.3d at 1317). "For this reason it is particularly important not to limit claim scope based on statements made during prosecution `[a]bsent a clear disavowal or contrary definition.'" Digital Vending, 672 F.3d at 1276 (quoting August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1286 (Fed. Cir. 2011). Again, Defendants are attempting to limit the type of data transferred to a particular form of information which must be processed in some way by the remote PCs.
As discussed above, I do not find that any of the arguments urged by EdiSync during the Second Reexamination to be limiting or to constitute a clear disavowal of the scope of the `320 patent. In addition, the specification for the `320 patent makes clear that the information shared with the remote PCs need not be in any particular form which would require the PCs to have specific processing and display capabilities, since the "microprocessors of the remote PCs perform a supporting role only," and "[d]ata input by a user of the remote PC via its keyboard is input directly to the host PC." See `320 Patent at 9:39-42; 9:9-10. Moreover, while it was necessary for EdiSync to explain the difference between "image information" and "actual information" in the context of distinguishing the `320 patent from the Bartholomew reference in the Second Reexamination proceeding, it is not necessary to include that distinction in construing the claims at issue.
Based on the above, I agree with EdiSync that the term "data corresponding with and limited to said file editing operations," should be construed to equate with the term "file information." With respect to the term "file information," the `320 patent teaches that the host PC, after identifying the remote PCs and retrieving the file to be edited, sends the first screen of the file to the display of each PC. See `320 Patent at 9:45-61. The host PC then begins sequentially polling each of the PCs for input. Id. at 9:63-64. If there is input from a remote PC, the microprocessor on the host PC "then enters in the input and performs the requested function on the file image in memory . . . and sends any updates of the file to the displays [of the remote PCs] as they occur." Id. at 10:3-6. Because the remote PCs do not perform editing operations and because they "do not necessarily have to have all of the capabilities of the host PC," (id. at 8:5-7) in order to display file updates that "correspond with" and are "limited to" the file editing operations occurring on the host PC, the "file information" must be in a form that is capable of being rendered on the remote PCs' display. The data communicated, regardless of form, must be capable of being rendered on a remote display — i.e. "computer renderable." Thus the term "file information" is properly construed as "computer renderable information" that "identifies the file editing operations then occurring."
Therefore, I find that the term "data corresponding with and limited to said file editing operations" is limited to "file information," which I construe to mean "computer renderable information that identifies the file editing operations then occurring."
This term did not appear in the `320 patent as originally filed. Following the First
Reexamination proceeding, the `320 patent was amended to include the phrase, "wherein said given file editing operations are executed by one of said plurality of personal computers using a single user application program." See `320 Patent, Claim 21.
EdiSync maintains that the added phrase merely specifies what was already required by the claim language when read in conjunction with the specification. EdiSync contends that it was inherent in the original claims of the `320 patent that the described system uses a single user application program to perform the edits. As EdiSync notes, the purpose of the `320 patent is to permit several users to edit a document through a single user application program running on the designated host computer. As EdiSync pointed out in its briefing on the parties' motions for summary judgment, at the time the `320 patent was filed, multi-user application programs to perform editing functions on personal computers did not exist. Thus, EdiSync contends that the purpose of the'320 patent was to enable PCs to perform collaborative editing despite the lack of available multi-user application programs for PCs.
EdiSync further asserted that the claims are limited to use with personal computers, which inherently contemplates single user applications. During the First Reexamination proceeding, EdiSync maintained that "traditionally a personal computer is defined as a single-user microcomputer designed for personally controllable applications . . . [and] one of ordinary skill would have understood the term `personally controllable applications' to be synonymous with `single user application program' and not with a `multi-user application program.'"
Finally, EdiSync noted that the claims required designation of a host computer, which is only necessary if using a single user application to perform the edits. As noted in the May 13, 2009, Declaration of Gary Nutt:
Declaration of Gary Nutt, May 13, 2009 [ECF No. 95-1], at ¶ 18.
Construction of this term was previously briefed by the parties in connection with the their motions for summary judgment. EdiSync has consistently advocated that this term should be construed to mean "a software program that perceives only a single user is providing inputs to the program at any given time." Initially, Defendants requested that the term be construed to mean "a software program that allows only one user to input, present, view, display, execute, delete or otherwise manipulate audio, video, textual or graphical information." In the March 2012, hearing on claim construction, Defendants modified their proposed construction to include "a software program designed for use by only a single user that is capable of running on a stand-alone personal computer." In their supplemental briefing, Defendants offered an additional construction of the term to include "a software program personally controllable by a single-user, not multiple users, that receives inputs to the program at any given time from only a single user."
Defendants initial construction that would "allow" only one user input information, is contrary to the entire purpose of the `320 patent, which is to facilitate multiple users editing a file through a single user application program. Defendants' modified construction that utilizes the term "designed for use" is beyond the scope of the `320 patent, and its specification and prosecution history, which are silent as to "design" of the "single user application program." As discussed above, I construe the term "personal computer" to mean: "a single user microcomputer, not connected to a mainframe, designed for personally controllable applications." In addition, I agree with EdiSync that it is unnecessary to add "stand alone" as an additional modifier to "personal computer."
Defendants' most recent proposed construction recognizes that a "single user application program" receives inputs from a single user, but requires that it be "personally controllable by a single-user, not multiple users." Again, this limitation is at odds with the purpose of the `320 patent and contrary to its preferred embodiment, in which the host computer's microprocessor polls each of the remote PCs for input, and then coordinates the execution of multiple inputs using the single user application program. See `320 Patent at 9:58-10:10. The significance of the invention set forth in the `320 patent, is that the single user application program "perceives" or "recognizes" only a single user as providing inputs to the application program at any given time, despite the fact that multiple users are providing inputs. Thus, the `320 patent allows for a system of collaborative editing without simultaneous editing, and is distinguishable over systems using multi-user application programs "specifically designed to interact with a multiplicity of users by . . . enabling each user to simultaneously interact with the application program." See JA000455 (Third Declaration of Dr. Gary Nutt at ¶¶ 4-5).
I find EdiSync's proposed construction is supported by the claim language, specification, and prosecution history and, therefore, I construe the term "single user application program" to mean "a software program that perceives only a single user is providing inputs to the program at any given time." In addition, I find and hold that this limitation was inherent in the original `320 patent and that the claim issued at the conclusion of the First Reexamination proceedings are substantially identical to the original claims, and constitute a continuation of the original patent. Engineered Data Products, Inc. v. GBS Corp., 506 F.Supp.2d 461 (D. Colo. 2007).
EdiSync contends that this term need not be separately construed. Alternatively, EdiSync maintains that I should construe this term as "the particular computer file being edited." Defendants would construe the term to mean "a certain set of data residing in persistent memory of the host computer that is edited by a single-user application program running on the host computer." Defendants also offer an alternative construction of "[a] certain complete, named collection of information . . . that binds a conglomeration of instructions, numbers, words or image into a coherent unit that a user can retrieve, change, delete, save or send to an output device."
Defendants only support for their proposed construction is their contention that EdiSync "advocated" for this definition of the term "file" during the Second Reexamination proceedings. I disagree. While EdiSync discussed the definition of this term during those proceedings, it is clear that this discussion does not constitute a "clear disavowal" or an attempt by EdiSync to act as its own lexicographer. See CCS Fitness, Inc., 288 F.3d at 1366; see also Digital Vending, 672 F.3d at 1276. Moreover, the phrase "given computer file" is comprised of easily understood terms and possesses a clear meaning in the context of the `320 patent and its specification. Defendants' proposed construction contains unnecessary and unsupported limitations. Therefore, I find the term requires no additional construction. See Finjan Inc. v. Secure Computing Corp., 626 F.3d 1197, 1206-07 (Fed. Cir. 2010) (a court may construe a claim term to have its plain meaning when such a construction resolves a dispute between the parties); see also Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) ("Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, . . . [but] it is not an obligatory exercise in redundancy.").
I now turn to the "means-plus-function" limitations in the `320 patent. See 35 U.S.C. § 112. A means-plus-function limitation recites a particular function to be performed by a claimed apparatus without specifying the structure that performs that function.
In cases, like the case at bar, involving a computer-implemented invention in which the patentee has invoked means-plus-function limitations, the structure disclosed in the specification has to be more than a general purpose computer programmed to carry out a particular algorithm. See Aristocrat Technologies Australia Pty Ltd v. Intern'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (noting that "[b]ecause general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to `the corresponding structure, material, or acts' that perform the function, as required by section 112."). "A general purpose computer programmed to carry out a particular algorithm creates a `new machine' because a general purpose computer `in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.'" Id. (quoting WMS Gaming, Inc. v. Int'l. Game Tech., 184 F.3d 1339, 1348 (Fed. Cir. 1999)). "Thus, in 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.'" Id. (quoting WMS Gaming, Inc., 184 F.3d at 1349).
However, algorithms need not be disclosed for processes commonly performed in every computer. See In re Katz, 639 F.3d 1303 (Fed. Cir. 2011). In Katz, the Federal Circuit Court noted that the line of cases including Aristocrat, and WMS, supra, involved "specific functions that would need to be implemented by programming a general purpose computer to convert it into a special purpose computer capable of performing those specified functions." In re Katz, 639 F.3d at 1316. In contrast, claimed functions such as "processing," "receiving," and "storing," can be achieved by any general purpose computer without special programming, and, as such, it is "not necessary to disclose more structure than the general purpose processor that performs those functions." Id. (noting that the functions of "processing," "receiving," and "storing" are coextensive with the structure disclosed, i.e., a general purpose processor).
Here, Claim 21 includes four limitations written in a "means-plus function" format including "multitasking processing means," "display means," "voice communication means," and "interconnection means."
In Claim 21, the multi-tasking processing means is expressly recited as performing two operations:
or, "coordinating editing," and
or, "coordinating data transfer."
The parties agree that the functional language related to "coordinating editing" should be given its ordinary and usual meaning. I agree that the words comprising this term are common, non-technical terms that need not be separately construed. The concept of "coordination," is readily understood to mean a "to put in the same order or rank," or "to bring into a common action, movement, or condition (i.e. — we need to coordinate our schedules)." See http://www.merriam-webster.com/ dictionary/coordinate. Similarly, the words "execution," "file editing operations," and "a given computer file," are easily understood.
As to the term "coordinating data transfer," Edisync again asserts that the ordinary meaning of the term applies, whereas Defendants propose construing the term to mean "sending editable data resulting from the given file editing operations to the display means of the other personal computers," or "sending the actual information resulting from the file editing operations, and not merely data representing an image of such information, to the display means of the other personal computers." As discussed above, I am not persuaded by Defendants' argument that the data coordinated for transfer by the host PC is limited to "editable data" or "the actual information resulting from the file editing operations." In addition, Defendants' proposed construction improperly equates the term "coordinating" with "sending." The term "coordinating" is not ordinarily understood to include the concept of "sending." However, to the extent that the coordinating means is responsible for the "sending" of data, the `320 patent need not disclose an algorithm associated with this function because "sending" can be achieved by any general purpose computer without special programming. In re Katz, 639 F.3d at 1316.
As previously discussed, I find that the term "data corresponding with and limited to said file editing operations" equates to "file information," which I construe to mean "computer renderable information that identifies the file editing operations then occurring." The functional limitation of "coordinating data transfer" need not be separately construed because when read in conjunction with those terms, "coordinating data transfer" means "coordinating the transfer of file information," or "coordinating the transfer of computer renderable information that identifies the file editing operations then occurring."
I must next identify the associated structures set forth in the `320 patent that correspond with "coordinating editing" and "coordinating data transfer." EdiSync's latest proposal identifies those structures as "hardware, software and/or a combination thereof which enables a personal computing device to multi-task, and coordinate both editing and data transfer." Defendants contend that the `320 patent is indefinite under Aristocrat, supra, because it does not disclose any special algorithm to "coordinate editing" or "coordinate data transfer." I disagree and find that the functions associated with these terms can be implemented by a general purpose processor and do not constitute specific computer-implemented functions to which corresponding algorithms must be disclosed. See In re Katz, supra.
As discussed at the hearing on claim construction, the `320 patent sets forth eight different embodiments or examples of how the coordination of file editing operations and/or the coordinated transfer of data corresponding and limited to such file editing may occur. These examples include: (1) one for the use of the hardware and software components and/or algorithms shown in the `320 patent in Figures 2 and 3A and described at 7:25-62, 8:1-2, 8:55-65, 9:2-13, 9:48-51 and 11:31-32, namely a host PC's "input/output processor," central processing unit "CPU" and multi-tasking operating system; (2) one for use of the components of the first embodiment except no buffers are used and a polling function is not performed, id. at 11:43-49; (3) one for the use of a software algorithm, in conjunction with the previously identified hardware and software, to accomplish polling, id. at 9:44-10:8; (4) one for the use of a software algorithm, in conjunction with previously identified hardware and software, to perform "complex functions," id. at 10:31-40; (5) one for the use of a software algorithm, in conjunction with previously identified hardware and software, to perform multiple user editing on different portions of a computer file, id. at 10:48-65; (6) one for the use of a software algorithm, in conjunction with previously identified hardware and software, to enable the lock-out of users, id. at 11:11-23; (7) one where the process of editing includes the providing of verbal commands to a single PC user, who inputs all the "edits," in conjunction with previously identified hardware and software, id. at 11:24-42; and (8) one where data compression/decompression hardware and/or software is utilized, in conjunction with previously identified hardware and/or software, id. at 12:37-39.
I find that a person of ordinary skill in the art would appreciate, based on the teachings in the `320 patent, that the hardware and/or software utilized for each of these eight embodiments would commonly include a CPU, and input/output processor ("IOP"), as well as various other hardware and/or software components, such as memory devices, decompression devices. See Declaration of Gary Nutt, Feb. 10, 2012 [ECF No. 218-3] at ¶¶ 16-17; EdiSync's Supplemental Claim Construction Table [ECF No. 218-1] at pp. 1-14. Thus, I find EdiSync's identification of "hardware, software and/or a combination thereof which enables a personal computing device to multi-task, and coordinate both editing and data transfer," to appropriately identify the structure associated with "coordinating editing" and "coordinating data transfer," given the large number of alternative embodiments identified in the `320 patent.
With respect to the "display means," claim 21 recites: "computer file display" and "[t]o operate so [as] to permit said plurality of users . . . to review with their respective display means said edits made to said given computer file." Here, the parties differ on both the function of the "display means," and whether sufficient structure is identified in the `320 patent specification for the "display means."
EdiSync asserts that the functional language should be given its plain and ordinary meaning or, alternatively, should be construed to mean "to visually present the file editing then occurring to a user of each of the PCs." Defendants would construe the functional language as "displaying to a user a representation of the actual information (or editable data) that a personal computer receives from the host computer."
The parties' disagreement with respect to the meaning of the function of the "display means" is closely related to their disagreement concerning the type of information or data coordinated for transfer by the host PC. As previously discussed, I reject Defendants' contention that data coordinated by the host computer is limited to include only "actual information" or "editable data." In addition, having previously construed the term "file information" to mean "computer renderable information" that "identifies the file editing operations then occurring," it follows that the function of the "display means" is simply to "display" the "computer renderable" data received. In addition, the `320 patent refers to the "display" as a device that facilitates visual perception. See `320 Patent at Fig. 1; Fig. 2; 8:9-10; 63-65 (the peripherals of the remote PCs include the keyboard, the display, and memory). Thus I adopt EdiSync's proposed construction and find that the function of the "display means" is "to visually present the file editing then occurring to a user of each of the PCs."
Having construed the functional language of "display means," I must now identify the corresponding structure. EdiSync identifies this structure as "hardware and software that are configured to convert file information into a human visual[ly] perceptible image." Defendants assert that this limitation is indefinite because no corresponding structure or algorithm is disclosed in the specification that could be used to interpret and process the file information for display. EdiSync admits that no special algorithms are taught but asserts that none are needed. EdiSync notes that the function of the "display means" is simply to display data received from the host computer, and contends that the `320 patent provides a disclosure commensurate with the common and ordinary use of "display." I agree. While EdiSync acknowledges that any information intended for presentation on a visual display typically requires some post output or pre-display processing, particularly when a remote PC does not have the same display devices as the host PC, such "post receipt" processing does not require special programming.
The `320 patent refers to "a display device" which facilitates the visual perception of information, but does not otherwise require "special" functions that would require specific programming. Under In re Katz, supra, algorithms need not be disclosed for processes commonly performed in every computer. Because the function of the "display means" is "to visually present the file editing then occurring to a user of each of the PCs," I find that a person of ordinary skill in the art would have understood the `320 patent's reference to PC displays as encompassing the use of any display technologies in existence at the time of the invention. The specification refers to the peripherals of the host PC and the remote PCs and including a keyboard, display and memory. See `320 Patent at Fig. 1; Fig. 2; 8:9-10; 63-65. In the preferred embodiment, the "keyboard, display and memory of each of the remote PCs act as peripheral devices to the host PC." See `320 Patent at 9:39-42. "After the host PC retrieves a file for editing from the memory of any of the PCs, the first screen of the file is typically sent to each PC and displayed on the display of each PC." Thus, "[a] [person of ordinary skill in the art] would recognize that the `320 patent's reference to PC displays as calling forth particular hardware components, namely display devices that are PC compatible." See Declaration of Gary Nutt, Feb. 10, 2012 [ECF No. 218-3] at ¶ 24. Therefore, the structure associated with the "display means" should not be limited to a particular display technology, and appropriately includes all "hardware and associated software that are configure to convert `file information' into a human visually perceptible image."
With respect to the "voice communication means," claim 21 recites: "transmitting audio signals between at least two of said users, said audio signals being representative of the corresponding user's voice." The parties agree that this language should be given its ordinary and usual meaning and need not be separately construed. Because the parties agree that no construction of the functional language is necessary, I need only identify the structure or structures that perform this function.
EdiSync claims the structure includes "hardware and/or software which enables a user of a PC to communicate orally with another remote user." Defendants' claim the structure includes "telephone handsets," per Fig. 1, elements 16, 18, 20, and per Fig. 4, elements 52, 54, 56, that are "linked via either digital communication network 22 or separate analog phone lines." See `320 Patent at 9:18-30 (noting that in Fig. 1 the telephone handsets associated with each of the PCs are also linked over the digital communications network), and 12:31-36 (noting that in Fig. 4 the telephone handsets are connected over a separate analog communication line, which differs from the preferred embodiment where voice and data communications are over the same line).
Defendants note that their proposed construction identifies the structures that are actually disclosed in the specification for performing the claimed function (i.e. — telephone handsets). However, EdiSync contends that its proposed structure best encompasses the various embodiments taught in the `320 patent specification because it recognizes that in all embodiments, a voice communication means typically includes a handset and, depending upon whether analog voice or digital voice is being communicated, may also include software components commonly used to support digital and analog voice. EdiSync maintains Defendants' construction limits the structure to only telephone handsets and ignores the use of standard telephone equipment and other technologies that support digital voice signals (one of the preferred embodiments in the `320 patent).
Here, I find that Defendants' proposed construction is unduly limiting since the `320 patent teaches various embodiments of devices that may be used to communicate human voices to others including: digital telephone handsets and telephones, see `320 Patent at Fig. 1, elements 16, 18, and 20; 6:61-64 ("[t]he telephone handsets 16, 18, 20 are preferably digital telephones and are connected over the same line of the digital communications network as are the PCs;" analog telephone handsets and analog telephones, id. at Fig. 4, elements 52, 54, and 56; 12:31-36 ("[t]he telephone handsets 52, 54, 56 are connected over a separate analog communication line 66"); standard telephone equipment and lines to establish a conference call, id. at 2:48-50; 9:36-39; 11:46. Thus, I adopt EdiSync's proposal and find that the structure associated with "voice communication means" is "hardware and/or software which enables a user of a PC to communicate orally with another remote user."
With respect to the "interconnection means," claim 21 recites: "electrically interconnecting said host computer with the others of said plurality of personal computers to permit transmission of electrical signals corresponding with said file editing operations there between." Again, the parties agree that this language should be given its ordinary and usual meaning and need not be separately construed. Because the parties agree that no construction of the functional language is necessary, I need only identify the structure or structures that perform this function.
EdiSync claims the structure includes "hardware and software, provided in and/or connected to a PC, which enables the PC to connect to an analog and/or digital network." These structures include only those devices (hardware and software) that the host computer utilizes to establish an electrical connection with one or more networks. As EdiSync notes, the `320 patent does not recite a particular form of network but discloses various devices that may be used to "interconnect" including: digital telephones, see `320 Patent at 6:61-634; adapters for connection to an integrated services digital network, id. at 8:41-45; high-speed modems and modems having data compression and decompression capabilities, and associated hardware and software, id. at 12:1-2, 8-11, 17-21, 12:38-39 and 43-44; and multiplexers, id. at 12:61.
Defendants note that the specification describes both a "digital embodiment" and an analog embodiment" and identifies structures associated with each of those specific network embodiments. EdiSync contends that the structure corresponding with "interconnecting means" does not include the "network" or communications system" but only the components that allow the PCs to connect to the network.
Here, I agree with Defendants that "interconnecting means" includes both devices that enable a PC to connect to a network, and various network elements that facilitate communication along a digital or analog network. In addition to the devices identified above, the `320 patent also discloses interconnecting networks including digital communications networks, see `320 Patent at 9:20-23, 24 and 27; integrated services digital networks and non-dedicated digital communications networks, id. at 8:24-29; plain old telephone service networks, id. at 12:2; analog communications networks, id. at 12:51-52, and 62, and the Internet (network bridges and gateways), id. at 5:65-6:2, and 7:1-4.
Thus, I find that the structure associated with "interconnecting means" includes all "hardware and software, provided in or connected to a PC, which enables the host PC to connect to an analog and or/digital network and any networks and/or communications systems utilized to facilitate communications between the host PC and one or more remote PCs."
Therefore, it is ORDERED that the disputed terms in Claim 21 shall be construed as set forth herein. It is
FURTHER ORDERED that EdiSync's Motion for Partial Summary Judgment, filed May 13, 2009 [ECF No. 95] is
FURTHER ORDERED that Defendants' Motion for Partial Summary Judgment, filed May 13, 2009 [ECF No. 93] is
The Amended Complaint also asserted claims against several of Saba's customers. Those claims were dismissed by stipulation of the parties by Order dated February 21, 2012.
