Freeman v. Delta Air Lines Inc

Filing 130

CLAIM CONSTRUCTION ORDER. Signed by Judge Jeffrey S. White on 9/24/15. (jjoS, COURT STAFF) (Filed on 9/24/2015)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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ALBERT JOHN FREEMAN,

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For the Northern District of California

United States District Court

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Plaintiff,

No. C 13-04179 JSW

v.
DELTA AIR LINES, INC.,

CLAIM CONSTRUCTION ORDER

Defendant.
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The Court has been presented with a technology tutorial and briefing leading up to a

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hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). This Order

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construes the disputed claim terms selected by the parties, which appear in the patent at issue in

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this case: United States Patent No. 5,661,284 (“the ’284 Patent”) a continuation-in-part for the

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technology governing a commercial transaction system using multi-purposed

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credit/debit/identification card.

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BACKGROUND
Plaintiff Albert John Freeman (“Freeman”) contends that Defendant Delta Air Lines,

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Inc. (“Delta”) infringes his patent. Freeman’s patent relates to the technology governing

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commercial transactions that require the use of figurecodes to identify information which can be

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read by an associated computer system.

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The Court shall address additional facts as necessary in the remainder of this Order.

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ANALYSIS
A.

Legal Standard.
“It is a bedrock principle of patent law that the claims of a patent define the invention to

Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). The interpretation of the scope and

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meaning of disputed terms in patent claims is a question of law and exclusively within the

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province of a court to decide. Markman, 517 U.S. at 372. The inquiry into the meaning of the

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claim terms is “an objective one.” Innova/Pure Water, 381 F.3d at 1116. As a result, when a

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court construes disputed terms, it “looks to those sources available to the public that show what

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a person of skill in the art would have understood the disputed claim language to mean.” Id. In

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For the Northern District of California

which the patentee is entitled the right to exclude.” Innova/Pure Water, Inc. v. Safari Water

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United States District Court

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most cases, a court’s analysis will focus on three sources: the claims, the specification, and the

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prosecution history. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)

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(en banc), aff’d, 517 U.S. 370 (1996). However, on occasion, it is appropriate to rely on

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extrinsic evidence regarding the relevant scientific principles, the meaning of technical terms,

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and the state of the art at the time at the time the patent issued. Id. at 979-81.

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The starting point of the claim construction analysis is an examination of the specific

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claim language. A court’s “claim construction analysis must begin and remain centered on the

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claim language itself, for that is the language that the patentee has chosen to particularly point

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out and distinctly claim the subject matter which the patentee regards as his invention.”

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Innova/Pure Water, 381 F.3d at 1116 (internal quotations and citations omitted). Indeed, in the

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absence of an express intent to impart a novel meaning to a term, an inventor’s chosen language

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is given its ordinary meaning. York Prods., Inc. v. Cent. Tractor Farm & Family Center, 99

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F.3d 1568, 1572 (Fed. Cir. 1996). Thus, “[c]laim language generally carries the ordinary

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meaning of the words in their normal usage in the field of the invention.” Invitrogen Corp. v.

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Biocrest Mfg., L.P., 327 F.3d 1364, 1367 (Fed. Cir. 2003); see also Renishaw v. Marposs

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Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998) (recognizing that “the claims define

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the scope of the right to exclude; the claim construction inquiry, therefore, begins and ends in

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all cases with the actual words of the claim”). A court’s final construction, therefore, must
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accord with the words chosen by the patentee to mete out the boundaries of the claimed

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invention.

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The court should also look to intrinsic evidence, including the written description, the

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drawings, and the prosecution history, if included in the record, to provide context and

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clarification regarding the intended meaning of the claim terms. Teleflex, Inc. v. Ficosa N. Am.

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Corp., 299 F.3d 1313, 1324-25 (Fed. Cir. 2002). The claims do not stand alone. Rather, “they

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are part of ‘a fully integrated written instrument.’” Phillips v. AWH Corp., 415 F.3d 1303, 1315

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(Fed. Cir. 2005) (en banc) (quoting Markman, 52 F.3d at 978). The specification “may act as a

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sort of dictionary, which explains the invention and may define terms used in the claims.”
Markman, 52 F.3d at 979. The specification also can indicate whether the patentee intended to

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United States District Court

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limit the scope of a claim, despite the use of seemingly broad claim language. SciMed Life Sys.,

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Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001) (recognizing

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that when the specification “makes clear that the invention does not include a particular feature,

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that feature is deemed to be outside the reach of the claims of the patent, even though the

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language of the claims, read without reference to the specification, might be considered broad

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enough to encompass the feature in question”).

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Intent to limit the claims can be demonstrated in a number of ways. For example, if the

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patentee “acted as his own lexicographer,” and clearly and precisely “set forth a definition of

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the disputed claim term in either the specification or prosecution history,” a court will defer to

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that definition. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). In

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order to so limit the claims, “the patent applicant [must] set out the different meaning in the

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specification in a manner sufficient to give one of ordinary skill in the art notice of the change

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from ordinary meaning.” Innova/Pure Water, 381 F.3d at 1117. In addition, a court will adopt

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an alternative meaning of a term “if the intrinsic evidence shows that the patentee distinguished

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that term from prior art on the basis of a particular embodiment, expressly disclaimed subject

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matter, or described a particular embodiment as important to the invention.” CCS Fitness, 288

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F.3d at 1367. For example, the presumption of ordinary meaning will give way where the

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“inventor has disavowed or disclaimed scope of coverage, by using words or expressions of
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manifest exclusion or restriction, representing clear disavowal of claim scope.” Gemstar-TV

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Guide Int’l Inc. v. ITC, 383 F.3d 1352, 1364 (Fed. Cir. 2004). The disclaimer in the prosecution

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history must be “clear and unmistakable.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,

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1325-26 (Fed. Cir. 2003). Likewise, the specification may be used to resolve ambiguity “where

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the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to

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permit the scope of the claim to be ascertained from the words alone.” Teleflex, 299 F.3d at

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1325.

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However, limitations from the specification (such as from the preferred embodiment)

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may not be read into the claims, absent the inventor’s express intention to the contrary. Id. at
1326; see also CCS Fitness, 288 F.3d at 1366 (“[A] patentee need not ‘describe in the

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United States District Court

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specification every conceivable and possible future embodiment of his invention.’”) (quoting

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Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001)). To protect against this

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result, a court’s focus should remain on understanding how a person of ordinary skill in the art

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would understand the claim terms. Phillips, 415 F.3d at 1323. Additionally, “[w]hen

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consulting the specification to clarify the meaning of claim terms, court must take care not to

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import limitations into the claims from the specification.” Abbott Laboratories v. Sandoz, Inc.,

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566 F. 3d 1282, 1288 (Fed. Cir. 2009).

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Similarly, the Federal Circuit has repeatedly cautioned courts against reading limitations

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into the claims based on a preferred embodiment: “although the specification often describes

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very specific embodiments of the invention, we have repeatedly warned against confining the

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claims to these embodiments.” Phillips, 415 F. 3d at 1323. Courts have also “expressly

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rejected the contention that if a patent describes only a single embodiment, the claims of the

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patent must be construed as being limited to that embodiment.” Liebel-Flarsheim Co. v.

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Medrard, Inc., 358 F. 3d 898, 906 (Fed. Cir. 2004).

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If the analysis of the intrinsic evidence fails to resolve any ambiguity in the claim

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language, a court then may turn to extrinsic evidence, such as expert declarations and testimony

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from the inventors. Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1367 (Fed. Cir. 2003)

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(“When an analysis of intrinsic evidence resolves any ambiguity in a disputed claim term, it is
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improper to rely on extrinsic evidence to contradict the meaning so ascertained.”) (emphasis in

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original). When considering extrinsic evidence, a court should take care not to use it to vary or

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contradict the claim terms. Rather, extrinsic evidence is relied upon more appropriately to

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assist in determining the meaning or scope of technical terms in the claims. Vitronics Corp. v.

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Conceptronic, Inc., 90 F.3d 1576, 1583-84 (Fed. Cir. 1996).

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Dictionaries also may play a role in the determination of the ordinary and customary

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meaning of a claim term. In Phillips, the Federal Circuit reiterated that “[d]ictionaries or

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comparable sources are often useful to assist in understanding the commonly understood

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meanings of words . . . .” Phillips, 415 F.3d at 1322. The Phillips court, however, also
admonished that district courts should be careful not to allow dictionary definitions to supplant

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the inventor’s understanding of the claimed subject matter. “The main problem with elevating

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the dictionary to . . . prominence is that it focuses the inquiry on the abstract meaning of the

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words rather than on the meaning of claim terms within in the context of the patent.” Id. at

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1321. Accordingly, dictionaries necessarily must play a role subordinate to the intrinsic

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evidence.

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In addition, a court has the discretion to rely upon prior art, whether or not cited in the

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specification or the file history, but only when the meaning of the disputed terms cannot be

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ascertained from a careful reading of the public record. Vitronics, 90 F.3d at 1584. Referring to

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prior art may make it unnecessary to rely upon expert testimony, because prior art may be

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indicative of what those skilled in the art generally understood certain terms to mean. Id.

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B.

Claim Construction.

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1.

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The term “recording point of sale information” appears in Claim 26 of the ’284 Patent.

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Freeman argues that the term “recording point of sale information” must be construed to

“Recording point of sale information”

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mean “recording sale’s information that was originated at a point where a customer makes

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payment to a merchant in exchange for goods and services.” (Parties’ Second Joint Claim

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Construction and Prehearing Statement at 2.) Delta, on the other hand, argues that the term

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must be construed to mean “automatic collection and storage of information regarding the

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product related to the time and place that the product is paid for.” (Id.)

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The key dispute between the parties is whether the reference to “point-of-sale

specifications make particular reference to “point-of-sale information” and state that it might

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include “date and time of sale, costs, forms of payment, and zip codes of store.” (’284 Patent at

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5:52-54.) The specifications further set out that the mechanism described by the patent causes

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the “automatic collection and storage of point-of-sale information regarding product.” (Id. at

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5:50-52.) The intrinsic evidence supports Delta’s proposed construction. Freeman’s proposal

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is too vague to be helpful and fails to account for the automatic collection of the information at

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information” in the specifications should bear on the definition of the disputed term. The

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United States District Court

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the point in time of the sale of a product.

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Accordingly, the Court adopts the following construction: “automatic collection and

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storage of information regarding the product related to the time and place that the product is

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paid for.”

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2.

“Trigger figurecode”

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The term “trigger figurecode” appears in Claims 23, 26, 29 and 31 of the ’284 Patent.

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Freeman argues that the term “trigger figurecode” must be construed to mean “2-

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dimensional visually discernable nonalphanumeric graphic that is used in the manner recited by

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the claim in which the term is used.” (Parties’ Second Joint Claim Construction and Prehearing

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Statement at 3.) Delta, on the other hand, argues that the term must be construed to mean “a

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figurecode that contains instructions to a computer to take a specific action.” (Id.)

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The proposed construction offered by Freeman does not advance the jury’s

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understanding of the term as the proposal merely states that it is used in the manner recited in

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the claim. The intrinsic evidence also defines the preferred embodiment to have “triggercode”

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that is “graphical and substantially nonalphanumeric.” (’284 Patent at 3:49-51.) First, the

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definition of the term cannot disclaim alphanumeric symbols by virtue of the description of the

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preferred embodiment. Second, the description states that it is “substantially

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nonalphanumeric,” indicating that it the patent envisioned more than wholly nonalphanumeric
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figurecode. Further, there is no support for adopting the description of the “2-dimensional,

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visually discernable graphic trigger figurecode” language from the dependent claim 32.

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However, the parties agreed at the claim construction hearing that the figurecode itself does not

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actually contain instructions, but rather provides instructions to a computer to take specific

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action.

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Accordingly, the Court adopts the following construction: “a figurecode that provides
instructions to a computer to take a specific action.”

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The term “incorporated into” appears in Claims 21 and 23 of the ’284 Patent.
Freeman argues that the term “incorporated into” must be construed to mean “to include

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“Incorporated into”

(something) as part of something” or “united into one body.” (Parties’ Second Joint Claim

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Construction and Prehearing Statement at 3.) Delta, on the other hand, argues that the term

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must be construed to mean “occupies same space as.” (Id.)

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It appears that the key dispute is whether the Court should rely on dictionary definitions

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of the term “incorporate” or rely on the explication of the term in the intrinsic evidence. The

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specifications distinguish between being incorporated into the letters of the trademark itself,

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figurecodes which “could be formed around the trademark, but still in the [same region].” (’284

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Patent at 5:44-49.) The distinction between something formed around a trademark is manifestly

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not incorporated into the trademark. Incorporated into must signify something closer than near

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or around.

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Accordingly, the Court adopts the following construction: “occupies same space as.”

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4.

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The term “providing information-gathering instruction to the computer system” appears

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“Providing information-gathering instruction to the computer system”

in Claim 23 of the ’284 Patent.

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Freeman argues that the term “providing information-gathering instruction to the

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computer system” must be construed to mean “prompting the computer system to automatically

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collect additional information.” (Id. at 4.) Delta, on the other hand, argues that the term must

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be construed to mean “including in the triggercode instructions that command the system to

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record information.” (Id.)

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It appears that the key dispute is whether the Court may rely on the dictionary definition

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of “collect” which is not part of the term to be construed. Further, there is no support for the

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proposition that the triggercode prompts the computer to collect additional information. It is

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unclear from Freeman’s proposal what the information would be in addition to. The Court

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cannot ignore the mention of “instruction” in the disputed term. At the claim construction

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hearing, the parties agreed to change the proposed verb from “command” to “instruct.”

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instructions that instruct the system to record information.”

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United States District Court

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Accordingly, the Court adopts the following construction: “including in the triggercode

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“Start search location in the computer system of a plurality of start-search
locations in the computer system to aid the search”
The term “start search location in the computer system of a plurality of start-search

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locations in the computer system to aid the search” appears in Claim 31 of the ’284 Patent.

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Freeman argues that the term “start search location in the computer system of a plurality

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of start-search locations in the computer system to aid the search” must be construed to mean “a

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location in the computer systems which, if searched first, results in a faster search than if the

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location had not been searched first.” (Id.) Delta, on the other hand, argues that the term must

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be construed to mean “a specific block of memory out of multiple specific blocks of memory.”

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(Id.)

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In context, the object of this element is to aid the search “for the stored electronic

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version of the graphic figurecode” in order to save search time. (’284 Patent at 8:31-34.) But,

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Delta’s proposed construction requires that the position of the start search location be a specific

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block of memory. The Court finds lack of support for this restriction on the construction of the

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term. Rather, as Freeman proposes, the location must be a place that, if searched first, results in

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a faster search than had it not been searched first.

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Accordingly, the Court adopts the following construction: “one location in a plurality of

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multiple locations in the computer systems which, if searched first, results in a faster search

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than if the location had not been searched first.”
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“Product identifier”

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The term “product identifier” appears in Claims 21 and 23 of the ’284 Patent.

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Freeman argues that the term “product identifier” must be construed to mean “product

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identifier region.” (Id. at 4.) Delta, on the other hand, argues that the term must be construed to

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mean “the name of the product or an indicia of source.” (Id.)

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Freeman argues that if this term is not defined to indicate the region of the product

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identifier, the claim would be invalid, thus requiring the Court to assume that to the extent the

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term is unclear or indefinite, it should be resolved to indicate the region around the product

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identifier. This argument is not persuasive. Merely defining the product identifier as a product
identifier region misses the distinction between the two terms. The drawing (figure 4) in the

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patent has an arrow which points to the product identifier region and the specification

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distinguishes this broader area with a reference to “the trademark itself.” (’284 Patent at 5:32-

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35.)

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Accordingly, the Court adopts the following construction: “the name of the product or
an indicia of source.”

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The term “product identifier region” appears in Claims 21 and 26 of the ’284 Patent.

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Freeman argues that the term “product identifier region” must be construed to mean

“Product identifier region”

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“region where the product is identified.” (Id. at 5.) Delta, on the other hand, argues that the

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term must be construed to mean “area in or around the product identifier and closer than other

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graphic or alphanumeric writing on the product.” (Id.)

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It is not clear that Freeman’s proposed construction would aid the jury as it is, for the

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most part, tautological. Delta argues that in order to distinguish itself from prior art (McNair

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patent), the patent at issue had to distinguish relative proximity of the region surrounding the

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product identifier. It is not clear, however, why the Court should adopt Delta’s proposal that

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the area must be closer to the product identifier than to other graphic or alphanumeric writing

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on the product.

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Accordingly, the adopts the following construction: “area in or around and closely
proximate to the product identifier.”

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The last three terms are related and should be construed in tandem.

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8.

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The term “graphic figurecode” appears in Claims 31 of the ’284 Patent.

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Freeman argues that the term “graphic figurecode” must be construed to mean “graphic

“Graphic figurecode”

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form, such as a bar code.” (Id.) Delta, on the other hand, argues that the term must be

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construed to mean “a visually discernable object containing encoded information associated

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with an individual.” (Id.)
9.

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The term “graphic product I.D. figurecode” appears in Claim 21 of the ’284

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“Graphic product I.D. figurecode”

Patent.
Freeman argues that the term “graphic product ID figurecode” must be construed to

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mean “graphic form, such as a bar code, identifying the chosen product.” (Id.) Delta, on the

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other hand, argues that the term must be construed to mean “a visually discernable object

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containing encoded information associated with a retail product.” (Id.)

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10.

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The term “graphic I.D. figurecode” appears in Claim 26 of the ’284 Patent.

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Freeman argues that the term “graphic I.D. figurecode” must be construed to mean

“Graphic I.D. figurecode”

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“graphic form, such as a bar code, identifying the chosen product.” (Id. at 6.) Delta, on the

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other hand, argues that the term must be construed to mean “a visually discernable object

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containing encoded information associated with an item.” (Id.)

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Freeman basically contends that each of these terms should be construed to mean nearly

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the same thing. However, different elements in the claim must recite different structures.

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However, the Court finds that portions of Freeman’s proposed constructions conform to the

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patent’s specifications and definitions.

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Accordingly, the Court adopts the following constructions:

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For graphic figurecode: “graphic form, such as a bar code, containing encoded

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information.”

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For graphic I.D. product figurecode: “graphic form, such as a bar code, containing
encoded information associated with a retail product.”

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For graphic I.D. figurecode: “graphic form, such as a bar code, containing encoded
information associated with a retail product.”

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CONCLUSION

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Based on the analysis set forth above, the Court adopts the foregoing constructions of
the disputed terms. The parties are ORDERED to submit a further joint case management

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report pursuant to Patent Standing Order ¶ 13 by no later than October 16, 2015.

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IT IS SO ORDERED.
Dated:

September 24, 2015
JEFFREY S. WHITE
UNITED STATES DISTRICT JUDGE

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