ROY S. PAYNE, Magistrate Judge.
On May 8, 2015, the Court held a hearing to determine the proper construction of the disputed claim terms in United States Patent No. 6,981,222. After considering the arguments made by the parties at the hearing and in the parties' claim construction briefing (Dkt. Nos. 77, 83 & 85),
Plaintiff has brought suit alleging infringement of United States Patent No. 6,981,222 ("the '222 Patent") by Defendants Cabela's Incorporated ("Cabela's"), Crocs, Inc., Crocs Retail LLC, Hallmark.com, LLC, and Nordstrom, Inc. (collectively, "Defendants").
In general, the '222 Patent relates to electronic commerce ("e-commerce") and the use of eXtensible Markup Language ("XML") documents. The Abstract of the '222 Patent states:
"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) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by considering the intrinsic evidence. See id. at 1313; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R. Bard, 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art at the time of the invention in the context of the entire patent. Phillips, 415 F.3d at 1312-13; accord Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
The claims themselves provide substantial guidance in determining the meaning of particular claim terms. Phillips, 415 F.3d at 1314. First, a term's context in the asserted claim can be very instructive. Id. Other asserted or unasserted claims can aid in determining the claim's meaning because claim terms are typically used consistently throughout the patent. Id. Differences among the claim terms can also assist in understanding a term's meaning. Id. For example, when a dependent claim adds a limitation to an independent claim, it is presumed that the independent claim does not include the limitation. Id. at 1314-15.
"[C]laims `must be read in view of the specification, of which they are a part.'" Id. at 1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). "[T]he 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.'" Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); accord Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own terms, give a claim term a different meaning than the term would otherwise possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor's lexicography governs. Id. The specification may also resolve the meaning of ambiguous claim terms "where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone." Teleflex, 299 F.3d at 1325. But, "[a]lthough the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims." Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); accord Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim construction because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) ("As in the case of the specification, a patent applicant may define a term in prosecuting a patent."). "[T]he prosecution history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance." Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
Although extrinsic evidence can be useful, it is "less significant than the intrinsic record in determining the legally operative meaning of claim language." Phillips, 415 F.3d at 1317 (citations and internal quotation marks omitted). Technical dictionaries and treatises may help a court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but technical dictionaries and treatises may provide definitions that are too broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid a court in understanding the underlying technology and determining the particular meaning of a term in the pertinent field, but an expert's conclusory, unsupported assertions as to a term's definition are entirely unhelpful to a court. Id. Generally, extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms." Id.
In their Joint Claim Construction and Prehearing Statement, the parties submit that "[a]t this time the parties do not identify any agreed terms." Dkt. No. 70 at 1.
Shortly before the start of the May 8, 2015 hearing, the Court provided the parties with the Court's preliminary constructions of the disputed terms, based upon review of the parties' briefing, with the aim of focusing the parties' arguments and facilitating discussion. Those preliminary constructions are set forth within the discussion of each term, below.
Shortly before the start of the May 8, 2015 hearing, the Court provided the parties with the following preliminary constructions: "selector component" is not a means-plus-function term and means "a component that reads the header information in the XML document, selects an adapter component based on that header information, and sends the XML document to the selected adapter component"; "adapter component" is not a means-plus-function term and means "a component that enables preprocessing of the XML message, invokes a proxy component, and defines a specific remote procedure call and parameter list"; and "integration component" is not a means-plus-function term and means "a component that processes incoming information, accesses the appropriate database to retrieve the requested information or perform the requested manipulation, and creates a return XML document with the appropriate information."
At the May 8, 2015 hearing, both sides agreed to the Court's preliminary construction as to "selector component." Plaintiff also agreed with the Court's preliminary constructions as to "adapter component" and "integration component," but Defendant Cabela's was opposed.
Plaintiff argues:
Dkt. No. 77 at 5. Alternatively, Plaintiff argues that no "formal description of the XML" is necessary because "[c]reating a formal description of XML is well within the abilities of a novice programmer." Dkt. No. 77 at 2. That is, Plaintiff argues, "there are different ways to write source code to carry out a given function, and this choice of implementation in code is precisely the skill that is possessed by a POSA [(person of ordinary skill in the art)]." Id. at 9.
Defendants respond that "Defendants do not contend that the `extensible markup language document' claim limitation renders claim 7 indefinite. Rather, claim 7 is indefinite because each of the claimed `components' identify a function without structure." Dkt. No. 83 at 3. "The inventors coined the component terms to describe key steps of the claimed method," Defendants argue, "but the '222 patent provides insufficient guidance on how to construct what is claimed." Id. For example, Defendants argue that "[a]lthough the words `adapter' and `component' may have individual meanings in the art, those meanings are, at best, generic and not the type of `well understood meaning' that would confer the term `adapter component' with sufficient structure." Id. at 5.
Plaintiff replies that whereas "the specified function must come from the claim language itself and cannot be read into the claims from the specification," "the claims do not recite the purported `functions' that [Defendants] identify." Dkt. No. 85 at 1. Plaintiff also reiterates that "the term `component' is not a nonce word, but rather recites sufficiently definite structure in the form of a software program." Id. at 2. Alternatively, Plaintiff argues that the specification discloses algorithms. See id. at 3-4.
The Supreme Court of the United States has "read [35 U.S.C.] § 112, ¶ 2 to require that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). "A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims." Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134 S.Ct. 2120.
Title 35 U.S.C. § 112, ¶ 6 provides: "An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."
Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1371-1372 (Fed. Cir. 2003) (citations and internal quotation marks omitted); Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) ("[A] claim term that does not use `means' will trigger [a] rebuttable presumption that [35 U.S.C.] § 112 ¶ 6 does not apply.").
Although Lighting World characterized this presumption against means-plus-function treatment as "a strong one," the Court of Appeals for the Federal Circuit recently abrogated Lighting World in this regard. See Williamson v. Citrix Online, LLC, ___ F.3d ___, 2015 WL 3687459, at *7 (Fed. Cir. June 16, 2015).
Instead, "[t]he standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. When a claim term lacks the word `means,' the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to `recite sufficiently definite structure' or else recites `function without reciting sufficient structure for performing that function.'" Id. (citations and internal quotation marks omitted).
Claim 7 of the '222 Patent recites (emphasis added):
Defendants' expert has opined that the term "component" "can be applied to either hardware or software" and "[w]hen used in a software context a component generally refers to `a software package or module that encapsulates a set of related functions or data, though many definitions also mention interfaces, context dependencies, and other characteristics related to inputs and outputs." Dkt. No. 70, Ex. A, 2/10/2015 Declaration of Edward R. "Ed" Tittel at ¶ 35 (footnotes omitted). Further, Defendants' expert opines:
Id. at ¶ 59.
On one hand, in some circumstances the use of a generic word that does not connote structure to a person of ordinary skill in the art can result in rebuttal of the presumption against means-plus-function treatment for terms that do not use the word "means." See Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014) (affirming findings of indefiniteness as to "program recognition device" and "program loading device," finding "`device' to be a nonstructural, `nonce' word" and finding that "the other words do nothing more than identify functions for the `device' to perform");
On the other hand, the "prefix" that appears before a purported nonce word may impart structural meaning. Williamson, 2015 WL 3687459, at *8; see id. ("the presence of modifiers can change the meaning of `module'"). Further, "the essential inquiry is not merely the presence or absence of the word `means' but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Id., at *6 (citing Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996)); see Greenberg, 91 F.3d at 1583 (because "detent mechanism" refers to a type of device with an understood meaning in the mechanical arts, term was not a means-plus-function term"); see also id. ("[T]he fact that a particular mechanism—here `detent mechanism'—is defined in functional terms is not sufficient to convert a claim element containing that term into a `means for performing a specified function' within the meaning of section 112(6). Many devices take their names from the functions they perform. The examples are innumerable, such as `filter,' `brake,' `clamp,' `screwdriver,' or `lock.'").
At the May 8, 2015 hearing, Defendant Cabela's urged that the word "component" merely refers to software in general and requires disclosure of an algorithm in the specification. Defendant Cabela's emphasized Bosch, including the finding therein that "the specification does not teach how" the limitation at issue operates. Bosch, 769 F.3d at 1100. Plaintiff responded that the problem in Bosch was that the limitation at issue could have been "hardware, software, or both." Id. Here, Plaintiff submits, Defendant acknowledges that the word "component" is being used in a software context.
As to the "selector component," at the May 8, 2015 hearing the parties agreed to the Court's above-noted preliminary construction that "selector component" is not a means-plusfunction term.
This now-agreed-upon finding comports with the context provided by the specification, which discloses:
SQL adapter 216 or 3.2 adapter 218. '222 Patent at 10:25-33 (emphasis added). This disclosure supports Plaintiff's position that a person of ordinary skill in the art would understand a "selector component" as a particular software structure. Further, the specification thus provides context as to the "inputs and outputs" and how the "selector component" "interacts with other components . . . in a way that . . . inform[s] the structural character of the limitation-in-question or otherwise impart[s] structure." Williamson, 2015 WL 3687459, at *8.
As to "adapter component" and "integration component" the specification discloses:
'222 Patent at 10:34-11:24 (emphasis added); see id. at 9:63-64 ("integration component 306 which comprises DBQuery object 310").
On balance, this disclosure supports Plaintiff's position that a person of ordinary skill in the art would understand "adapter component" and "integration component" as particular software structures. Further, the specification thus provides context as to the "inputs and outputs" and how the "adapter component" and "integration component" "interact[] with other components . . . in a way that . . . inform[s] the structural character of the limitation[s]-inquestion or otherwise impart[s] structure." Williamson, 2015 WL 3687459, at *8. In other words, the above-quoted disclosures provide sufficient context such that the prefixes "adapter" and "integration" impart sufficient structural meaning to the disputed terms. Williamson, 2015 WL 3687459, at *8; see Greenberg, 91 F.3d at 1583.
Finally, at the May 8, 2015 hearing Defendant Cabela's argued that there is no disclosed structure for "process[ing] incoming information" or "access[ing] the appropriate database" as set forth in Plaintiff's proposed construction for "integration component." Defendant Cabela's cited Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382-83 (Fed. Cir. 2009). To whatever extent Defendants maintain that this is a basis for finding indefiniteness, such an argument improperly conflates the issue of whether a term is a means-plus-function term with the issue of whether the specification discloses corresponding structure for a term that has been found to be a means-plus-function term. See Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1296-97 (Fed. Cir. 2014) (noting that these inquiries are "distinct").
The Court therefore hereby expressly rejects Defendants' argument that these disputed terms are means-plus-function terms governed by 35 U.S.C. § 112, ¶ 6.
Plaintiff argues that no construction is necessary, but Defendants urge that "[t]he inventors coined the component terms to describe key steps of the claimed method." Dkt. No. 83 at 3.
Although the disputed terms connote structure (as discussed above), these are "coined" terms, and the specification thus provides the meanings for these terms. See Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1287 (Fed. Cir. 2010) (citing Phillips, 415 F.3d at 1315) ("Idiosyncratic language, highly technical terms, or terms coined by the inventor are best understood by reference to the specification.");
As to the "selector component," the parties agreed to the Court's preliminary construction at the May 8, 2015 hearing, as noted above.
As to the "adapter component," Defendants urge that this component must "invoke a proxy component and define a specific remote procedure call and parameter list" as set forth in the specification. Dkt. No. 83 at 13; '222 Patent at 10:35-36 (quoted above). Because this is a coined term, the Court construes "adapter component" as having the disclosed characteristics: "enable preprocessing of the XML message, invoke a proxy component[,] and define a specific remote procedure call and parameter list." Id. at 10:34-36.
At the May 8, 2015 hearing, Defendant Cabela's argued that the Court's preliminary construction for "adapter component" was unclear because "preprocessing" lacks clear meaning. Defendants' expert has opined that "[t]he details as to what kind of preprocessing is to be performed are not disclosed," but Defendants' expert has also opined that "[i]n general computer science terms, preprocessing a file means reading and interpreting its contents, then applying various transforms or substitutions to create a new file based on, but not identical to, the original." Dkt. No. 70, Ex. A, 2/10/2015 Tittel Decl. at ¶ 64 & n.27. Further, Defendant Cabela's expressed at the May 8, 2015 hearing that the meaning of "preprocessing" may or may not be an issue depending upon whether Plaintiff's infringement contentions are amended. Upon the present record, the dispute, if any, underlying "preprocessing" appears to relate to factual issues of infringement rather than legal issues of claim construction. See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) ("[A]fter the court has defined the claim with whatever specificity and precision is warranted by the language of the claim and the evidence bearing on the proper construction, the task of determining whether the construed claim reads on the accused product is for the finder of fact.").
As to the "integration component," Defendants argue that Plaintiff's proposal improperly excludes "creat[ing] a return XML document with the appropriate information." Dkt. No. 83 at 13. Because this is a coined term, the Court construes "integration component" as proposed by Plaintiff but with the addition that, as disclosed, the "integration component" "creates a return XML document with the appropriate information." '222 Patent at 11:19-21 (quoted above). As to the disclosure that what is processed by the "integration component" is a "SOAP call" (see id. at 11:4-5 (quoted above)), however, use of the Simple Object Access Protocol ("SOAP") is a specific feature of a particular disclosed embodiment that should not be imported into the claim. See, e.g., Comark, 156 F.3d at 1187.
Finally, to whatever extent Defendants are disputing the capabilities of a person of ordinary skill in the art to implement the claimed invention based on the disclosure in the specification, such arguments perhaps might pertain to enablement but are not relevant to the present claim construction proceedings. See Dkt. No. 83 at 3 ("the '222 patent provides insufficient guidance on how to construct what is claimed"); Phillips, 415 F.3d at 1327 ("[W]e have certainly not endorsed a regime in which validity analysis is a regular component of claim construction.").
The Court accordingly hereby construes these disputed terms as set forth in the following chart:
Dkt. No. 77 at 12; Dkt. No. 83 at 14.
Shortly before the start of the May 8, 2015 hearing, the Court provided the parties with its preliminary construction that the preamble is not limiting.
Plaintiff argues that "the preamble merely states the purpose or intended use of the invention, can even be deleted without affecting the structure or steps of the claim, and does not provide antecedent basis for any elements recited in the body of the claim — all of which demonstrate that it is not limiting." Dkt. No. 77 at 2; see id. at 12-14. As to Defendants' proposed construction, Plaintiff argues that "Defendants seek to import language from extrinsic dictionary definitions of `manufacture'. . . ." Id. at 14.
Defendants respond: "`[E]xchanging information in a manufacturing environment between a manufacturer and a customer' is an essential aspect of the disclosed invention, emphasized repeatedly by the inventors as a distinction over the prior art and resolving the alleged prior art problem of information exchange in a specific environment . . . ." Dkt. No. 83 at 16. Defendants also argue that even though the preamble may not provide explicit antecedent basis for terms recited in the body of the claim, "the reason `a customer' is recited in the body of claim 7 is because the customer is providing `a request for information' to a manufacturer as recited in the preamble. If there were no manufacturer, the entire step would be meaningless." Id. at 20-21.
Plaintiff replies that "the patentees never made any distinction based on the definition of "manufacturer" being "a maker, by hand or by machinery, of tangible goods" or a customer being "a purchaser of tangible goods." Dkt. No. 85 at 6. Likewise, Plaintiff urges that in discussing prior art, "[t]he patentees never indicated that any particular difference was `key' or that addressing such challenges [(`challenges present in a manufacturing environment')] was the only distinguishing factor." Id.
Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); see, e.g., In re Cruciferous Sprout Litig., 301 F.3d 1343, 1348 (Fed. Cir. 2002) (finding the preamble limiting because of "clear reliance by the patentee on the preamble to persuade the Patent Office that the claimed invention is not anticipated by the prior art"); Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) ("When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.").
Defendants urge that a "manufacturing" limitation is warranted based on various disclosures in the specification, including in the Field of the Invention, the Background of the Invention, the Summary of the Invention, and the Detailed Description. See Dkt. No. 83 at 17-18 (citing '222 Patent at 1:15-25, 3:31-63, 4:56-6:1, 6:6-10, 6:13-15, 6:42-48 & 8:40-42). In some circumstances, statements characterizing the invention as a whole can warrant a narrow construction. See Regents of the Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013) ("When a patent . . . describes the features of the `present invention' as a whole, this description limits the scope of the invention.") (quoting Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007)); see also Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (construing term in light of description of "the present invention").
Defendants have also cited various cases in which the court either found a preamble limiting or noted that preamble language can be found limiting. See Vizio, Inc. v. Int'l Trade Comm'n, 605 F.3d 1330, 1340-41 (Fed. Cir. 2010) ("[W]e conclude that the `for decoding' language in the preamble . . . is properly construed as a claim limitation, and not merely a statement of purpose or intended use for the invention, because `decoding' is the essence or a fundamental characteristic of the claimed invention"); see also Poly-America, L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004) (finding the preamble term "blown-film" limiting where: "The specification is replete with references to the invention as a `blown-film' liner, including the title of the patent itself and the `Summary of the Invention.' The phrase is used repeatedly to describe the preferred embodiments, and the entire preamble `blown-film textured liner' is restated in each of the patent's seven claims. Our analysis shows that the inventor considered that the `blown-film' preamble language represented an important characteristic of the claimed invention.").
On balance, the preamble of Claim 7 (which is reproduced in the discussion of the "component" terms, above) does not provide antecedent basis for any term recited in the body of the claim and is not "necessary to give life, meaning, and vitality" to the claim. Catalina Mktg., 289 F.3d at 808. In particular, as Plaintiff has noted, the term "manufacturer" does not appear anywhere in the body of the claim. Instead, the preamble's reference to manufacturing is merely a "purpose or intended use for the invention." Id. Also of note, Defendants have not shown that the patentee relied upon the "manufacturer" language in the preamble in order to overcome any rejection by the patent examiner. Defendants' proposal to include a manufacturing limitation would thus improperly limit the claim to features of a preferred embodiment.
The Court therefore hereby expressly rejects Defendants' proposal that the preamble of Claim 7 is limiting. No further construction is necessary.
Dkt. No. 77 at 16 (square brackets Plaintiff's); Dkt. No. 83 at 23 (square brackets Defendants').
Shortly before the start of the May 8, 2015 hearing, the Court provided the parties with the following preliminary construction: "Plain and ordinary meaning."
Plaintiff has argued:
Dkt. No. 77 at 17. Plaintiff has urged that "the XML document is not limited to a single piece of data that remains unchanged from its inception to when it is passed to the integration component. Instead, its content can be modified as it is processed by, and transferred between, the various components in the system." Id. at 18.
Defendants have responded that "[w]hereas Plaintiff ambiguously identifies the XML document as the `processed' XML document, the Defendants' proposal clarifies that the entirety of claim 7 refers to a single XML document—regardless of whether that document is modified throughout the claimed steps—based on the term's plain language and particularly its antecedent basis." Dkt. No. 83 at 23. Defendants have emphasized that in Claim 7, "there is no antecedent basis for a second XML document." Id. at 24.
Plaintiff has replied that "neither the claim nor Defendants' proposed construction requires a `single' XML document. Moreover, requiring a `single' document is improper and confusing for the same reasons as requiring the `same' document, namely that computers store documents as bits of data in different locations, on different computer systems, in different formats." Dkt. No. 85 at 8.
At the May 8, 2015 hearing, both sides agreed to the Court's preliminary construction of this term as having its plain and ordinary meaning. Both sides also expressed a mutual understanding that although "the extensible markup language document" refers to the same XML document throughout the claim, that XML document could be processed or modified yet still be the "same" XML document.
The Court therefore hereby construes
Shortly before the start of the May 8, 2015 hearing, the Court provided the parties with the following preliminary construction: "ISAPI component, which is a dynamic link library (DLL) used by Microsoft Internet Information Server (IIS)."
Plaintiff argues that "[w]hile th[e] example [of a specific Microsoft `DLL' and `IIS' technology] is provided in the specification, the claims of the patent are not limited to the examples provided in the specification." Dkt. No. 77 at 3; see id. at 21 (citing '222 Patent at 8:55-63). Plaintiff also argues that Defendants' proposed construction is incorrect because "[i]n the claim, the component is used to `pass the extensible markup language document to an integration component,' which Defendants' construction converts to a component used `to handle requests.' Passing information is the opposite of handling requests for information — in the former information is being sent, but in the latter it is being received." Dkt. No. 77 at 22.
Defendants respond that the term "internet server application program interface" is a term of art that "refers to the specific application program interface for Microsoft's web server software (`Internet Information Server,' or `IIS'). . . ." Dkt. No. 83 at 25. Defendants emphasize that "nothing in the '222 Patent refers to an ISAPI as anything other than a component of IIS software (see, e.g., '222 Patent, at 9:63-64.), or otherwise mentions a generic `application program interface' or API." Dkt. No. 83 at 27. As for the prosecution history, Defendants submit that "the Examiner merely required that the term `ISAPI' in the original application's claim language `be spelled out.'" Id. (citing id., Ex. I, 8/12/2004 Office Action at 3). Defendants conclude that contrary to Plaintiff's invocation of the general rule that claims should not be limited to specific features of preferred embodiments, here "the limitation is found in the claim language itself." Dkt. No. 83 at 27 (emphasis omitted). Finally, Defendants submit that the phrase "to handle requests" is broader than, and encompasses, the concept of "pass[ing]." Id. at 28.
Plaintiff replies that whereas "Defendants . . . rely primarily on extrinsic dictionary definitions for the term "Internet Server Application Programming Interface," "the specification and claims refer to `internet server application program interface component,' a broader term using all lowercase letters to indicate that it does not refer to a particular API provider." Dkt. No. 85 at 8 (citing '222 Patent at 8:59-60 & 19:25). Plaintiff emphasizes that "the claim makes no reference whatsoever to Microsoft, `DLL,' or `IIS' technology that Defendants seek to add to the claim." Dkt. No. 85 at 9. Finally, Plaintiff replies that even assuming that "handling" encompasses "passing," "this is only further evidence that Defendants' construction improperly narrows the claim in an arbitrary and unjustified manner." Id. at 10.
Plaintiff appears to acknowledge that "ISAPI" is commonly used as an acronym for a dynamic link library ("DLL") used by Internet Information Server ("IIS"), a product of Microsoft Corporation. See Dkt. No. 77 at 20-21; see also Dkt. No. 85 at 8 (quoted above); Dkt. No. 83, Ex. B (identified by Defendants as Provisional Application No. 50-225339, App'x A (Dkt. No. 83 at 7)) at 8 (discussing ISAPI in the context of Microsoft IIS).
Also, Defendants have submitted extrinsic evidence in this regard. See Dkt. No. 70, Ex. A, 2/10/2015 Tittel Decl. at ¶¶ 27-28 ("IIS and ISAPI are both Microsoft technologies"); see also Dkt. No. 83, Ex. D, Microsoft Press Computer Dictionary 265-66 (3d ed. 1997) ("Acronym for Internet Server Application Programming Interface. An easy-to-use, high-performance interface for back-end applications for Microsoft's Internet Information Server (IIS). ISAPl has its own dynamic-link library, which offers significant performance advantages over the CGI (Common Gateway Interface) specification."); see id., Ex. E, C.-S. Peng, et al., Accessing existing business data from the World Wide Web, IBM Systems J., vol. 37, no. 1 (1998) at 117 ("Proprietary application programming interfaces (APIs) that can be used to perform specific database operations have also been developed for popular Web servers. Examples of such interfaces are ISAPI for Microsoft. . . .").
Plaintiff has not identified any expert opinion in support of its apparent contention at the May 8, 2015 hearing that the term ISAPI is not known in the art to refer to a component used by Microsoft IIS. A review of the submitted declaration of Plaintiff's expert reveals no such opinion (aside from, in the penultimate paragraph, a categorical agreement with Plaintiff's claim construction positions). See Dkt. No. 70, Ex. B, 2/10/2015 Smedley Decl. Also, although Plaintiff suggested at the May 8, 2015 hearing that "ISAPI" could be used with products other than Microsoft's, such as "Apache," Plaintiff has not submitted any evidence in that regard.
The claim originally recited "ISAPI," and the patentee spelled out the "ISAPI" acronym as "internet server application program interface" in response to an objection by the examiner. See Dkt. No. 77, Ex. F, 11/12/2004 Response to Office Action at 9 & 12; see also Dkt. No. 83, Ex. I, 8/12/2004 Office Action at 3 ("Claim 12 is objected to because of the following informalities: The acronym elements RPC and ISAPI should be spelled out. Appropriate correction is required.").
Plaintiff argues that "[i]t is impermissible to read back into the claims limitations that were removed during prosecution." Dkt. No. 77 at 22 n.7 (citing Laryngeal Mask Co. Ltd. v. Ambu A/S, 618 F.3d 1367, 1372-73 (Fed. Cir. 2010) (citing Kistler Instrumente Ag v. United States, 628 F.2d 1303 (Ct. Cl. 1980) ("[D]efendant's insist[e]nce upon this court's reading back into the claims limitations which were originally there and were removed during prosecution of the application through the Patent Office cannot be permitted.")). Plaintiff also urges that "[t]he term `application program interface,' or `API,' is commonly used in the software industry to refer to a set of routines, protocols, and tools for building software applications. In the claim, the API in question pertains generally to an `internet server,' but is not limited to a specific type of server or specific set of APIs from a particular company such as Microsoft." Dkt. No. 77 at 20 (footnote omitted).
Because the patentee did not remove the "ISAPI" limitation entirely but rather merely spelled out that acronym in response to the examiner's objection, any rule against "read[ing] back into the claims limitations that were removed during prosecution" is inapplicable. Laryngeal Mask, 618 F.3d at 1372-73.
As to the proper construction, the specification refers to "back-office database server software, such as, for example, Internet Information Service (IIS) software and an internet server application program interface (ISAPI) dynamically linked library (DLL)." '222 Patent at 8:57-61. At first blush, this reference to IIS and ISAPI as part of an "example" weighs against including such limitations in the construction of the disputed term. Id. Moreover, the Court of Appeals for the Federal Circuit has "expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment." Phillips, 415 F.3d at 1311.
Nonetheless, the patentee used a term with a well-known meaning in the relevant art (as discussed above), and the specification contains no clear basis for departing from that wellknown meaning. Under such circumstances, the well-known meaning in the relevant art applies. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1348 (Fed. Cir. 2003) (construing the term "ATCC-VR2332" as a "particular strain of . . . virus . . . deposited with the ATCC [(American Type Culture Collection)]"; "Boehringer did not choose to define the term `ATCC-VR2332' in the specification, nor did Boehringer state that ATCC-VR2332 was a `generic' or `prototype' virus, nor did Boehringer assert that viruses related to but not identical to the isolated strain were within the scope of the invention. These choices must be held against it."); see also Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) ("The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history. There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.") (citations omitted).
Plaintiff has cited Celltrace LLC v. AT&T Inc., which found that whereas "Short Message Service" ("SMS") refers to a particular standard, the lowercase "short message service" is "a generic term for a service that sends short messages." No. 6:09-CV-294, 2011 WL 738927, at *13 (E.D. Tex. Feb. 23, 2011) (Love, J.). In that case, however, the Court cited the doctrine of claim differentiation. Id. Specifically, the patent-at-issue included a dependent claim that recited, in relevant part, "wherein the short message service protocol is an SMS protocol compliant with a GSM cellular telephony standard." Id., at *12. Celltrace is thus distinguishable.
The remaining issue is whether, as Plaintiff argues, Defendants' proposed construction improperly replaces the word "pass," which appears in the claim, with the phrase "to handle." Claim 7 recites, in relevant part (emphasis added): "invoking an internet server application program interface component to pass the extensible markup language document to an integration component." Because surrounding claim language thus recites that the component at issue is "invoke[ed] . . . to pass the extensible markup language document to an integration component," such a limitation need not, and should not, be included in the construction of the disputed term. The Court therefore rejects Defendants' proposal in that regard.
The Court accordingly hereby construes
The Court adopts the constructions set forth in this opinion for the disputed terms of the patents-in-suit.
The parties are ordered that they may not refer, directly or indirectly, to each other's claim construction positions in the presence of the jury. Likewise, the parties are ordered to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the Court, in the presence of the jury. Any reference to claim construction proceedings is limited to informing the jury of the definitions adopted by the Court.
