MAZ Encryption Technologies LLC v. Lenovo (United States) Inc.
Filing
102
MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 6/30/15. Associated Cases: 1:13-cv-00303-LPS, 1:13-cv-00304-LPS, 1:13-cv-00305-LPS (ntl)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELA WARE
MAZ ENCRYPTION TECHNOLOGIES, LLC
Plaintiff,
v.
LENOVO (UNITED STATES) INC.,
Defendant.
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C.A. No. 13-303-LPS
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MAZ ENCRYPTION TECHNOLOGIES, LLC
Plaintiff,
v.
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C.A. No. 13-304-LPS
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BLACKBERRY CORPORATION,
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Defendant.
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MAZ ENCRYPTION TECHNOLOGIES, LLC
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Plaintiff,
v.
TOSHIBA AMERICA INFORMATION,
SYSTEMS, INC.
Defendant.
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C.A. No. 13-305-LPS
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Richard D. Kirk, Stephen B. Brauerman, Vanessa R. Tiradentes, Sara E. Bussiere, BA YARD,
P.A., Wilmington, DE
Neal G. Massand, Hao Ni, Timothy Wang, NI, WANG & MASSAND, PLLC, Dallas, TX
Attorneys for Plaintiff
Richard D. Horwitz, David E. Moore, Bindu A. Palapura, POTTER ANDERSON & CORROON
LLP, Wilmington, DE
John Flock, Vincent Rubino, KENYON & KENYON LLP, New York, NY
Douglas E. Ringel, KENYON & KENYON LLP, Washington, DC
Attorneys for Defendant Lenovo (United States) Inc.
Jamie L. Edmonson, Darek S. Bushnaq, VENABLE LLP, Wilmington, DE
William D. Coston, Jeffri A Kaminski, Justin E. Pierce, Calvin R. Nelson, VENABLE LLP,
Washington, DC
Attorneys for Defendant BlackBerry Corporation
Steven J. Balick, Tiffany Geyer Lydon, Andrew Colin Mayo, ASHBY & GEDDES, Wilmington,
DE
John J. Feldhaus, Pavan K. Agarwal, FOLEY & LARDNER LLP, Washington, DC
Justin M. Sobaje, FOLEY & LARDNER LLP, Los Angeles, CA
Kevin J. Malaney, FOLEY & LARDNER LLP, Milwaukee, WI
Attorneys for Defendant Toshiba America Information Systems, Inc.
MEMORANDUM OPINION
June 30, 2015
Wilmington, Delaware
ST:f:s.tEt~
I.
BACKGROUND
Plaintiff MAZ Encryption Technologies LLC ("Plaintiff' or "MAZ") filed patent
infringement actions against Defendants Lenovo (United States) Inc. ("Lenovo"), BlackBerry
Corporation ("BlackBerry"), and Toshiba America Information Systems, Inc. ("TAIS")
(collectively, "Defendants"). Plaintiff asserts U.S. Patent No. 6,185,681 ("the '681 Patent")
against BlackBerry, and asserts U.S. Patent No. 8,359,476 ("the '476 Patent") against Lenovo
and TAIS. The '681 patent and '476 patent relate generally to a method for encrypting and
decrypting data. The '476 patent is a descendant of the '681 patent and the two largely share a
specification.
Pending before the Court is the issue of claim construction of various disputed terms of
the patents-in-suit. The parties completed briefing on claim construction on February 5, 2015.
(C.A.13-303 D.I. 58, 62, 67, 70; C.A. 13-304 D.I. 56, 59, 64, 66; C.A. 13-305 D.I. 58, 62, 67,
70) The Court heard argument on claim construction on May 4, 2015. (C.A. No. 13-303 D.I.
93) (hereinafter "Tr.")
II.
LEGAL ST AND ARDS
The ultimate question of the proper construction of the patent is a question of law. Teva
Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837 (2015) (citing Markman v. Westview
Instruments, Inc., 517 U.S. 370, 388-91 (1996)). "It is a bedrock principle of patent law that the
claims of a patent define the invention to which the patentee is entitled the right to exclude."
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted).
"[T]here is no magic formula or catechism for conducting claim construction." Phillips, 415
F .3d at 1324. Instead, the court is free to attach the appropriate weight to appropriate sources "in
light of the statutes and policies that inform patent law." Id.
"[T]he words of a claim are generally given their ordinary and customary meaning ...
[which is] the meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the patent application."
Id. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a
claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321
(internal quotation marks omitted). The patent specification "is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
While "the claims themselves provide substantial guidance as to the meaning of
particular claim terms," the context of the surrounding words of the claim also must be
considered. Phillips, 415 F .3d at 1314. Furthermore, "[ o]ther claims of the patent in question,
both asserted and unasserted, can also be valuable sources of enlightenment ... [b]ecause claim
terms are normally used consistently throughout the patent .... " Id. (internal citation omitted).
It is likewise true that "[d]ifferences among claims can also be a useful guide .... For
example, the presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent claim." Id. at 131415 (internal citation omitted). This "presumption is especially strong when the limitation in
dispute is the only meaningful difference between an independent and dependent claim, and one
party is urging that the limitation in the dependent claim should be read into the independent
claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
2
It is also possible that "the specification may reveal a special definition given to a claim
term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]ven
when the specification describes only a single embodiment, the claims of the patent will not be
read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
using words or expressions of manifest exclusion or restriction." Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481
F.3d 1371 (Fed. Cir. 2007).
In addition to the specification, a court "should also consider the patent's prosecution
history, if it is in evidence." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
1995), aff'd, 517 U.S. 370 (1996). The prosecution history, which is "intrinsic evidence,"
"consists of the complete record of the proceedings before the PTO [Patent and Trademark
Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d
at 1317. "[T]he prosecution history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the
invention in the course of prosecution, making the claim scope narrower than it would otherwise
be." Id.
In some cases, "the district court will need to look beyond the patent's intrinsic evidence
and to consult extrinsic evidence in order to understand, for example, the background science or
the meaning of a term in the relevant art during the relevant time period." Teva, 135 S. Ct. at
841. Extrinsic evidence "consists of all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d
3
at 980. For instance, technical dictionaries can assist the court in determining the meaning of a
term to those of skill in the relevant art because such dictionaries "endeavor to collect the
accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d
at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of
the technical aspects of the patent is consistent with that of a person of ordinary skill in the art,
or to establish that a particular term in the patent or the prior art has a particular meaning in the
pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and
testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from
bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be
useful" to the court, it is "less reliable" than intrinsic evidence, and its consideration "is unlikely
to result in a reliable interpretation of patent claim scope unless considered in the context of the
intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously describes the
scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90
F.3d at 1583).
Finally, "[t]he construction that stays true to the claim language and most naturally aligns
with the patent's description of the invention will be, in the end, the correct construction."
Renishaw PLC v. Marposs Societa 'per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows
that "a claim interpretation that would exclude the inventor's device is rarely the correct
interpretation." Osram GmbHv. Int'/ Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007).
4
III.
DISPUTED TERMS
A.
The '681 Patent
1.
"Crypto module"
Plaintiffs Proposal
Defendant BlackBerry's
Proposal
Court's Construction
A software module which
transparently handles the
encryption of documents and
the decryption of encrypted
documents
Module - a program unit that
is discrete and identifiable
with respect to compiling,
combining with other units,
and loading
A portion of a software
program which transparently
handles the encryption of
documents and the
decryption of encrypted
documents
Alternatively:
a program unit that is discrete
Crypto module - a module
functionally disposed
between the application and
electronic document
management system, which
transparently handles the
encryption of documents and
the decryption of encrypted
documents
The parties agree that the crypto module "transparently handles the encryption of
documents and the decryption of encrypted documents." However, the parties disagree as to
whether the "module" portion of this term must be construed and whether the "module" must be
discrete and identifiable. BlackBerry asserts that "module" must be construed separately from
crypto module in order to provide the jury guidance. The parties further disagree as to whether
the crypto module must be located between the application and the electronic document
management system (EDMS).
The Court finds that a separate construction of "module" is necessary in order to provide
5
the jury with appropriate guidance, given that there is a dispute among the parties as to whether a
"module" is discrete and identifiable. Unfortunately, Plaintiff does not offer a construction of
just "module" and BlackBerry's proposed "program unit" is unhelpful. At the hearing, however,
Plaintiff offered a constructive alternative, describing "module" as "a portion of a device and/or
software program" and similarly as "just a smaller portion of a program." (Tr. at 24) This
description is consistent with the intrinsic evidence, does not improperly import limitations from
the specification into the claims, and will be helpful to the jury. Defendants have failed to point
to a persuasive basis for requiring that a module be entirely discrete and identifiable, apart from
all other portions of a software program. Accordingly, the Court has altered Plaintiffs proposed
construction of crypto module to include Plaintiffs description at the hearing of a module.
Although the preferred embodiment depicted in Figure 3 of the patent and in the
specification 1 places the crypto module between the application and the EDM client, no
persuasive basis has been given for requiring this location as a limitation in the claim language.
BlackBerry identifies no disclaimer of alternate embodiments. See Omega Eng 'g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003) (stating that disclaimer must be clear and
unambiguous). Instead, the specification discloses an alternative embodiment, in which "[a]
crypto server is also included in the electronic document management system of the invention."
('681 Patent, col. 4 11. 59-60) (emphasis added) This embodiment would be read out of the
claims were the Court to accept BlackBerry's construction.
1
"ln typical prior art systems, the application 350 would communicate directly with the
EDM client 310. However, in accordance with the invention, the crypto server 330 is
functionally disposed between the application 350 and the EDM client 310." ('681 Patent, col. 7
11.47-51)
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l
2.
"Electronic document management system"
Plaintiffs Proposal
Defendant BlackBerry's
Proposal
Court's Construction
This term does not need
further construction.
A combination of databases,
indexes, and search engines,
which provide organizations
with the ability to find any
document, created in any
application, by anyone, at
any time, dealing with any
subject, at any place in the
world.
A combination of databases,
indexes, and preferably
search engines, utilized to
store and retrieve electronic
documents distributed across
an organization
The parties dispute whether "electronic document management system" (EDMS) requires
construction and whether, if so, the construction must distinguish an "EDMS" from an operating
system or file system used to store and organize files locally on a computer. (See C.A. No. 13304 D.I. 56 at 15) The parties additionally dispute the scope of the capability of the EDMS.
The Court finds that the parties' dispute with respect to this term can and should be
resolved by claim construction. See 02 Micro Int'! Ltd. v. Beyond Innovation Tech. Co., Ltd.,
521F.3d1351, 1360 (Fed. Cir. 2008) ("When the parties raise an actual dispute regarding the
proper scope of these claims, the court, not the jury, must resolve that dispute."). As for the
proper construction, the Court is not persuaded by BlackBerry that the claim language or
specification requires distinguishing an EDMS from an operating system. Nor does the Court
find that a search engine is required to be part of an EDMS, but the Court recognizes it is
preferred that this be the case.
The specification states, "An electronic document management system (EDMS) is a
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combination of databases, indexes, and search engines utilized to store and retrieve electronic
documents distributed across an organization." ('681 Patent, col. 1 11. 44-47) The Court
concludes this is the basis for an appropriate construction ofEDMS - although it is not quite a
definition, for reasons including that the statement appears in the patent's background and not as
part of the section explicitly defining terms for purposes of the patent. BlackBerry proposes
incorporating additional language from the specification, particularly that it can "provide
organizations with the ability to find any document, created in any application, by anyone, at any
time, dealing with any subject, at any place in the world." ('681 Patent, col. 1 11. 33-36) It is
clear that this is an "aim[]" of "Electronic Document Management" as disclosed in the
specification (see id.), but it does not follow that a system's failure to fully accomplish this
ambitious aim renders the system something other than an embodiment of the claimed EDMS.
3.
"Table"
Plaintiffs Proposal
Defendant BlackBerry's
Proposal
Court's Construction
This term does not need
further construction.
A data structure stored in the
EDM database with rows
and columns, with data
occupying or potentially
occupying each cell formed
by a row-column
intersection
A collection of data in which
each item is uniquely identified
by a label, by its position
relative to other items, or by
some other means
The parties dispute whether this term needs any construction and, if so, whether the
construction must distinguish a table from a list or other means of organizing information. The
parties' dispute here (e.g., whether a "list" is a "table") must be resolved by claim construction.
The ordinary meaning of "table" in the context of the patent-in-suit is not quite as plain as
Plaintiff insists.
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Plaintiff asserts that a table "simply means 'collection of records' or 'collection of data"'
(C.A. No. 13-304 D.I. 66 at 7), in contrast to BlackBerry's more limited proposal, which requires
"rows and columns." The claim language states that "for each of the names of encrypted
documents in the first table, key names [are] associated with the encryption key values for the
encrypted documents ... " (' 681 Patent, claim 31) There is nothing in the claims or the
specification which define a table as being limited to rows and columns, with data stored only at
the appropriate intersections. To the contrary, as Plaintiff points out, the specification discloses:
"The crypto server 330 preferably utilizes and updates an encrypted files table in the EDM
database 345 which lists each encrypted file." ('681 Patent, col. 8 11. 4-6) (emphasis added)
While other language in the claim requires data to be "associated" with an encrypted document,
the specification seems to contemplate "table" as something broader than BlackBerry's proposal.
While the Court will not import the necessity of rows and columns into the claims, the
claim language conveys that a mere "collection of data" is not a table. Instead, a table must be
something more than a list, i.e., a way to "associate" the data. What is required is some form of
an "association" of data. (See Tr. at 49) (Plaintiff explaining that association is needed) The
IEEE definition cited by Plaintiff is informative. (See D.I. 60-3 at 7)
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4.
"First table" /"second table"
Term
Defendant
BlackBerry's Proposal
Court's Construction
First
Table2
l
Plaintiffs Proposal
This term does not
need further
construction.
A data structure stored in
the EDM database with
rows and columns, with
data occupying or
potentially occupying
each cell formed by a
row-column intersection
A collection of data in
which each item is uniquely
identified by a label, by its
position relative to other
items, or by some other
means
Second
Table
This term does not
need further
construction.
A data structure stored in
a smart card or file
server with rows and
columns, with data
occupying or potentially
occupying each cell
formed by a row-column
intersection
A collection of data in
which each item is uniquely
identified by a label, by its
position relative to other
items, or by some other
means
Having already construed "table," the remaining dispute in regard to these terms is
whether the "first table" must be "stored in the EDM database," and whether the "second table"
must be "stored in a smart card or file server." BlackBerry asserts that its proposed
constructions do not improperly import limitations from the specification but, rather, "illustrate a
practical necessity that helps to establish an effective construction of the term[s]. The first table
must be stored somewhere in order to function in the invention, and the specification shows that
the only effective space would be within the EDM database." (C.A. No. 13-304 D.I. 64 at 7)
Furthermore, BlackBerry argues that its proposed construction distinguishes the location of the
2
The briefing on "table" and "first table" overlaps at times, and each party's proposals for
the two terms are identical (i.e., Plaintiff advocates the same position for "table" and "first
table," as does BlackBerry). The Court addresses "first table" separately from "table" based on
the parties' dispute as to whether a "first table" must be "stored in the EDM database."
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first table from the second table, which is required by the claim language. (See C.A. No. 13-304
D.I. 56 at 19) Plaintiff counters that BlackBerry' s constructions would improperly import
limitations into the claims from preferred embodiments. (See C.A. No. 13-304 D.I. 66 at 8)
The specification contains ample information as to the purpose and function of the first
and second tables. It is not Plaintiffs burden to show there are other potential locations for the
tables; the construction of first table and second table do not necessarily need a location
reference at all, especially given the claim language specifying the purpose of each table and
outlining methods for using tables to encrypt and decrypt documents. Furthermore, the
construction adopted by the Court need not distinguish between the first and second table; the
claim language elsewhere does so. Finally, while the preferred embodiment may locate the first
table in the EDM database and the second table on a smart card, the claims do not exclude other
possibilities. (See C.A. No. 13-304 D.I. 66 at 9 (pointing to "disk 280" as additional location for
the second table, as alternative to smart cards); '681 Patent, col. 611. 9-13)
Thus, the Court construes "first table" and "second table" consistent with its construction
of "table." The Court will not import additional limitations from the specification into these
terms and will not read out of the claims an embodiment disclosed in the specification.
5.
"Application program"
Plaintiffs Proposal
Defendant BlackBerry's
Proposal
Court's Construction
This term does not need
further construction.
A computer software
program designed for a
specific job, such as word
processing, accounting,
spreadsheet, etc.
A computer software
program designed for a
specific job, such as word
processing, accounting,
spreadsheet, etc.
The parties dispute whether the term "application program" needs construction and, if so,
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l
whether it must be limited to a computer program designed for a specific job. In particular,
BlackBerry is concerned that without construction, the claim term could be interpreted to
encompass something like an operating system, which, in its view, would be much broader than
the intended scope of the term "application program." (Tr. at 60)
The specification states: "The application 350 is a collection of software components
used to perform specific types of user-oriented work and may be, for example, a graphic editor, a
word processor or a spreadsheet." ('681 Patent, col. 6 II. 49-52) Based on this guidance, the
Court concludes that the application program is something distinct from an operating system,
and is, instead, something which performs specific tasks. 3 Additionally, the Court's construction
includes BlackBerry's exemplary list, which is not exhaustive of everything that could be an
"application program."
6.
"Selecting"
Plaintifrs Proposal
Defendant BlackBerry's
Proposal
Court's Construction
This term does not need
further construction.
To choose from a number of
options or alternatives
To choose from one or more
options or alternatives
The parties dispute whether construction of the term "selecting" is necessary and, if so,
whether it requires a "number of options or alternatives." The Court concludes it must construe
the term "selecting," as the parties dispute whether a system containing only one document and, therefore, presenting no alternative choices to the user - still involves a user "selecting" a
3
Plaintiff agreed that an operating system, as a whole, is not an application program in the
context of the patent-in-suit, but asserted that application programs could be built into an
operating system. (Tr. at 64) The Court's construction is not intended to preclude an application
program that is built into an operating system from being an application program as used in the
claims.
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document to open. BlackBerry's proposed construction, which would appear to take this
scenario outside the scope of the claims, is based on an extrinsic dictionary definition, and is
unconvincing in the context of the patent-in-suit. In any event, at the hearing BlackBerry agreed
to the construction the Court now adopts. (See Tr. at 68)
7.
"Key names"
Plaintiffs Proposal
Defendant BlackBerry's
Proposal
Court's Construction
A descriptor for
administering an encryption
key value or a decryption key
value
An identifier for an
encryption key value or
decryption key value which
is used by the user and/or
system administrator for
administering the encryption
key value or decryption key
value 4
A descriptor for an
encryption key value or a
decryption key value which
may be used by the user
and/or system administrator
for administering an
encryption key value or
decryption key value
The parties agree that the key name is an identifier (or descriptor) for an encryption or
decryption key value. The dispute is whether the key name must be used by a human user
(system administrator). BlackBerry supports its proposed construction, requiring such
involvement, by arguing as follows:
The '681 Patent specification describes the problem with
encryption/decryption keys - long, multi digit numbers, "which are
difficult to remember and even difficult to transcribe." '681 Patent
at 9:20-24. This problem is inherently a human one; a computer
does not have difficulty remembering or transcribing multi-digit
numbers. Therefore, the specification necessarily implies that the
key name may be used by a person (user, system administrator) to
administer key values.
4
Although the joint claim construction chart states "for administering the encryption key
value" (C.A. No. 13-303 D.l. 85-1 ), Defendant's responsive brief states that "BlackBerry will
modify its definition by changing the phrase "for administering the encryption key value" to "for
administering the encryption key value or decryption key value" (C.A. No. 13-304 D.l. 64 at 12).
13
(C.A. No. 13-304 D.l. 56 at 22) Plaintiff responds that BlackBerry's proposal "converts a
permissive and optional characteristic ('may be used') into a requirement ('is used')." (C.A. No.
13-304 D.I. 66 at 10)
The specification states, "The encryption key name is preferably an alphanumeric
descriptor which may be used by the user and/or system administrator for administering the
encryption key value." ('681 Patent, col. 9 IL 25-28) (emphasis added) This is not a statement
that the key name must be used by the user and/or system administrator. Therefore, the Court
modifies BlackBerry' s construction to permit (rather than require) use by a human user and/or
system administrator.
8.
"Associated"
Plaintifrs Proposal
Defendant BlackBerry's
Proposal
Court's Construction
This term does not need
further construction.
A one-to-one correlation
between a key name and key
value or a key name and
names of encrypted files
A correlation between a key
name and key value or a key
name and names of encrypted
files
BlackBerry's proposed construction requires a "one-to-one correlation between a key
name and key value or a key name and names of encrypted files," based on statements made by
MAZ during reexamination of the '681 Patent. (See C.A. No. 13-303 D.l.
61Ex.5~10
(declaration of software engineer John Cosgrove to U.S. PTO on February 10, 2003, stating that
the ordinary computer programmer would recognize "a 'direct' or one-to-one association
between the documents and the key names through the 'encrypted files table"'))
Plaintiff contends that the statements by Mr. Cosgrove were in relation to the unasserted,
and now cancelled, claim 1, which explicitly stated that the "key name [is] directly associated
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with the document." (C.A. No. 13-304 D.I. 66 at 11; see also C.A. No. 13-303 D.I. 61 Ex. 5 if
11) In connection with that claim, MAZ argued that a person of skill in the art would recognize
the one-to-one association. (C.A. No. 13-303 D.I. 61 Ex. 5 if 10) ("This feature is at least
implicit or inherent in the '681 Patent in columns 7-1 O.") Mr. Cosgrove stated, "If the disclosure
had intended anything but a 'direct' or one-to-one association between one key name and one
document, it would have been written quite differently." (Id. at if 12)
The dispute before the Court arises in the context of claims that do not include a "direct"
limitation, but instead claim a general "association." As Plaintiff states, "none of the asserted
claims include the phrase 'directly associated."' (C.A. No. 13-304 D.I. 66 at 11-12)
Furthermore, the specification does not disclose that a direct association is required. (See '681
Patent, col. 911. 17-19) (" ... the crypto server preferably obtains an encryption key name which
is associated with the document ....") In this context, the Court is not persuaded by
BlackBerry's reliance on the Cosgrove statement. Instead, based on the entirety of the intrinsic
evidence (including prosecution history), and having considered the extrinsic evidence, the Court
finds that "associated" is not limited to a one-to-one correlation, and instead construes the term
to include the more general phrase "a correlation."
B.
The '476 Patent
1.
Plaintiffs Proposal
"Encryption and decryption computer"
Defendants' Proposal
15
Court's Construction
This term does not need
further construction
a computer, including at least
a central processing unit
(CPU), short-term memory
(e.g. RAM), long-term
memory (e.g. hard disk
drive), and instructions for
cryptography, which
computer encrypts nonencrypted data and decrypts
encrypted data
A computer, including at
least a central processing unit
(CPU), short-term memory
(e.g. RAM), long-term
memory (e.g. hard disk
drive), and instructions for
cryptography, which
computer encrypts nonencrypted data and decrypts
encrypted data
The parties dispute whether this term needs construction and, if so, whether an
"encryption and decryption computer" requires at least the components proposed by Defendants
and needs to incorporate a definition of "encryption and decryption." The Court concludes that
construction is required, given the parties' dispute as to what the claims mean by "computer" and
what functions it must serve. In particular, the parties dispute whether the encryption and
decryption computer must have memory components. The Court agrees with Defendants that it
must.
Defendants contend that a person of ordinary skill in the art as of May 1998 understood
the "customary meaning of 'computer' to include at least a central processing unit (CPU), shortterm memory (e.g., RAM), and long-term memory (e.g., hard disk drive)." (C.A. No. 13-303
D.l. 67 at 13) This conclusion is supported by an embodiment of a general purpose computer
disclosed in the patent specification:
FIG. 2 shows a general purpose computer 200 which is
representative of the workstations 150 and file servers 120. The
computer 200 preferably includes an Intel Corporation (San Jose,
Calif.) processor 255 and runs a Microsoft Corporation (Redmond,
Wash.) Windows operating system. In conjunction with the
processor 255, the computer 200 has a short term memory 250
(preferably RAM) and a long term memory 280 (preferably a hard
disk) as known in the art. The computer 200 further includes a
16
LAN interface 215, a display 205, a display adapter 220, a
keyboard 230, a mouse 240, a smart card reader 260 and a bus 210
as known in the art.
('476 Patent, col. 41. 65 - col. 5 1. 8) Plaintiff, however, asserts that "[a] computer generally
means a 'machine capable of executing instructions on data,'" which does not require memory.
(C.A. No. 13-303 D.I. 62 at 22) Plaintiff points to no persuasive evidence that even such a
computer would not require some memory (e.g., to know how to execute instructions). Hence,
the Court adopts Defendants' proposal, which is expressly supported by the specification.
2.
"Bio-metric user authentication apparatus"
Plaintifrs Proposal
Defendants' Proposal
Court's Construction
This term does not need
further construction.
a device, distinct from the
encryption and decryption
computer, that accepts
biometric data input from a
user for authentication
A device that accepts
biometric data input from a
user for authentication
Alternatively:
A device that accepts
biometric data input from a
user for authentication
Defendants assert that the "bio-metric user authentication apparatus" must be distinct
from the encryption and decryption computer, based on the structure and language of the claims.
(See C.A. No. 13-303 D.I. 58 at 27) They further insist that for the biometric user authentication
apparatus to interface with the encryption and decryption computer, as claimed in Claim 4, the
components must be separate. Defendants rely on case law indicating that "[w]here a claim lists
elements separately, the clear implication of the claim language is that those elements are
distinct components of the patented invention." Becton, Dickinson and Co. v. Tyco Healthcare
Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal quotation marks omitted). However, in
the Court's view, applying Becton here does no more than give rise to a presumption that the
17
bio-metric user authentication apparatus and the encryption and decryption computer are distinct.
This is the beginning, not the end, of the analysis.
The specification discloses that the smart card reader can be substituted for the bio-metric
user authentication apparatus, stating: "Instead of the smart card reader 260 and smart card 265,
there could be provided, for example, a biometric recognition system .... " (' 4 76 Patent, col. 5
IL 30-32) The specification further discloses that the smart card reader (or, in an alternative
embodiment, the substituted bio-metric user authentication apparatus) is a part of the computer
itself. (See '476 Patent, col. 5 ll. 5-8) Defendants' proposed construction would read out of the
claims this disclosed embodiment (i.e., an embodiment in which the bio-metric user
authentication apparatus is not distinct from the encryption and decryption computer). The
Court adopts Plaintiffs alternative proposed construction, which avoids importing limitations
into the claims.
3.
"A computer-readable medium storing bio-metric user identifying
information and encryption and decryption data"
Plaintifrs Proposal
Defendants' Proposal
Court's Construction
This term does not need
further construction.
a non-volatile storage device,
distinct from the encryption
and decryption computer,
storing both the bio-metric
user identifying information
and the encryption and
decryption data
A storage device storing both
the bio-metric user
identifying information and
the encryption and decryption
data
This dispute is identical to that the Court just resolved regarding the construction of "biometric user authentication apparatus." The specification discloses that a smart card is the
preferred storage device, and in such an embodiment it would be both distinct and non-volatile.
(See, e.g., '476 Patent, col. 5 ll. 28-30) ("[A] data reader device and portable data storage device
18
such as the smart card reader 260 and smart card 265 are preferred."). However, a smart card is
just one example of a computer-readable medium. As was just discussed, a bio-metric user
authentication apparatus can be substituted for a smart card. Therefore, the Court will not import
Defendants' proposed limitations, which are based on a smart card as a preferred embodiment
and would read out of the claims an alternative disclosed embodiment.
Defendants also seek by their construction that the use of "and" in the claim term be
found to require that the storage device meet the limitations of storing both bio-metric user
identifying information and encryption and decryption data. (C.A. No. 13-303 D.I. 58 at 32)
This limitation is supported in the '476 specification, which- although it does not refer to biometric data - contemplates that the computer-readable medium would hold user identifying
information and the encryption keys. ('476 Patent, col. 711. 25-28)
4.
"Receive an application programming interface (API) for interfacing
with the user authentication apparatus"
Plaintiffs Proposal
Defendants' Proposal
Court's Construction
This term does not need
further construction.
Indefinite due to recitation of
"receive" in this context
The term is not indefinite.
Alternatively:
Receive code for interfacing
with the user authentication
apparatus.
Alternatively:
Receive a package of
functions, which functions
are callable by application
programs executing on the
encryption and decryption
computer for interfacing with
any of a variety of different
user authentication
apparatuses.
Receive code for interfacing
with the user authentication
apparatus.
Defendants contend claim 1 is indefinite because it is an apparatus claim that
simultaneously requires that the computer be configured to "receive an API" (software) and to
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"receive from the computer-readable medium via the API" the data. Defendants argue:
Claim 1 is not infringed by a system including the API because it
is not "configured to receive" the API as required by claim 1.
Similarly, claim 1 cannot be infringed by a system without API,
because it is not at that time configured to receive information and
read data "via the API'' as required by claim 1.
(C.A. No. 13-303 D.I. 58 at 37) At bottom, Defendants' argument is that claim 1 fails to inform
a person of skill in the art as to when infringement occurs. (See id. at 36) Plaintiff responds that
claim 1 is a system or apparatus claim rather than a method claim and, as such, there is no timing
requirement and the claim is not indefinite.
Defendants bear the burden of proving by clear and convincing evidence that a claim is
indefinite. See Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003). "[A]
patent is invalid for indefiniteness if its claims, read in light of the specification delineating the
patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the
art about the scope of the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2124 (2014).
The relevant portion of Claim 1 recites:
1. A biometric system configured to authenticate a user for
encryption or decryption, the system comprising:
a bio-metric user authentication apparatus;
a computer-readable medium storing bio-metric user
identifying information and encryption and
decryption data; and
an encryption and decryption computer communicating
with the user authentication apparatus and
configured to:
receive an application programming
20
interface (AP/) for interfacing with the user
authentication apparatus;
receive from the computer-readable
medium via the API the bio-metric
user identifying information ...
('476 Patent, claim 1) (emphasis added) The term in dispute modifies the encryption and
decryption computer as part of the system. That the claim language requires the computer to be
"configured to ... receive" certain information does not render the claim a method claim.
Defendants argue that this claim is "like a hybrid [apparatus and method] claim" (Tr. at 134; see
also IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005) (holding hybrid
claim indefinite), however, because the claim does not require the apparatus to "receive," which
would imply a method, but instead that the apparatus be "configured to"
receive/authenticate/read, it is an apparatus claim, and therefore not indefinite.
Defendants further contend that Claim 1 "claims a system with a computer that at the
same time does not yet include an API and does include that APL . . . It is internally
contradictory, it is uncertain in scope. And for that reason, it is indefinite." (Tr. at 133)
Defendants support their contention with an expert declaration, from Jean Renard Ward, who
opmes:
The "configured to: receive" an API language indicates that the
computer does not yet have the API loaded on it. However, other
language in claim 1, such as the computer being "configured to:
receive ... information" "via the API" and "configured to: read ..
. data" "via the API," indicates that the computer is configured to
perform certain functions requiring an API, indicating that the
computer must already have the API loaded on it in order to be
configured to perform these functions.
(C.A. No. 13-303 D.I. 59 ~ 33) (emphasis in original) Plaintiffs expert, Craig Will, counters
21
with his opinion:
I disagree with Mr. Ward that "[t]he 'configured to: receive' an
API language indicates that the computer does not yet have the
API loaded on it." For instance, a computer that had a
configuration to receive a software package continues to have a
configuration to receive the software package even after the
package has been installed on the computer. The fact that a
software package was able to be installed on a computer is an
indication that the computer had and continues to have
configuration to receive the software package. Whether or not a
computer has a configuration to receive a particular software
package is not dependent on whether or not the computer has the
software package already installed. A person of skill in the art
would understand that claim 1 of the '476 patent requires only that
an encryption and decryption computer be configured to receive an
API, as opposed to actually receiving an APL
(C.A. No. 13-303 D.I. 72 i! 31) On this record, the Court is not persuaded that Defendants have
met their burden to prove by clear and convincing evidence that the claim is indefinite.
The Court reads the "configured to: receive an ... API'' limitation as not requiring any
timing element. In other words, if an accused product is found to be receiving information via
the API, that product also necessarily is configured to receive such APL
The parties further
disagree as to the construction of Application Programming Interface (API). Plaintiffs proposed
construction replaces the term API with "code." Defendants replace API with "a package of
functions, which functions are callable by application programs executing on the encryption and
decryption computer." Defendants' proposal additionally allows for interfacing with "any of a
variety of different user authentication apparatuses," rather than simply "interfacing with the
user authentication apparatus," as called out in the claim language and Plaintiffs proposed
construction. Plaintiffs proposal does not import extraneous limitations; it also still
encompasses the "code for interfacing," which the Court believes will helpfully and accurately
22
clarify for the jury what is done by the APL
5.
"Receive from the computer-readable medium via the API the biometric user identifying information"
Plaintiffs Proposal
Defendants' Proposal
Court's Construction
This term does not need
further construction
Receive the biometric user
identifying information from
the computer-readable
medium by an application
program calling one or more
functions of the API package
of functions that interface
with the user authentication
apparatus.
Receive from the computerreadable medium via the code
for interfacing with the user
authentication apparatus the
bio-metric user identifying
information
The parties agree that the construction of this term follows from the discussion of the
term "receive an application programming interface (API) for interfacing with the user
authentication apparatus." Therefore, consistent with the discussion above, the Court will refrain
from importing the specific limitations proposed by Defendants, and instead adopts a broader
construction.
6.
"Authenticate a user based on the bio-metric user identifying
information" (claim 1)
Plaintiffs Proposal
Defendants' Proposal
Court's Construction
This term does not need
further construction.
compare inputted biometric
data of a user to the biometric
user data retrieved from the
computer-readable medium
to determine whether there is
a match
Plain and ordinary meaning.
Defendants contend that a construction is necessary "to ensure that the jury understands
that any asserted encryption and decryption computer must perform an actual comparison
23
between inputted data and reference data to determine ifthere is a match." (C.A. No. 13-303
D.I. 58 at 43) Plaintiff contends that the claim and specification "use 'authenticate' in a general
sense, and do not limit the term or the phrase to a specific type of authentication." (C.A. No. 13303 D.l. 62 at 28)
As reasonable as Defendants' proposal may otherwise be, it is not based on the
specification or the claim language. Rather, Defendants are attempting to limit authentication to
a "compare and match" method, which is not described in the specification.
7.
"Read via the API the encryption and decryption data once the user is
authenticated"
Plaintiffs Proposal
Defendants' Proposal
Court's Construction
This term does not need
further construction
once the user is
authenticated, read the
encryption and decryption
data by an application
program calling one or more
functions of the API package
of functions that interface
with the user authentication
apparatus
Read via the code for
interfacing with the user
authentication apparatus the
encryption and decryption
data once the user is
authenticated
Defendants' proposed construction for this term imports limitations which the Court has
already rejected in connection with other claim terms. For the same reasons, the Court will not
import the API-related limitations proposed by Defendants.
8.
Plaintifrs Proposal
"Storing user identifying information, encryption and decryption data
on a computer-readable medium"
Defendants' Proposal
24
Court's Construction
This term does not need
further construction
storing both biometric data
relating to the user and
encryption and decryption
data on a non-volatile storage
device that is distinct from
the encryption and decryption
computer.
Storing both biometric data
relating to the user and
encryption and decryption
data on a storage device
This limitation in claim 4 is nearly identical to the limitation in claim 1 addressed above,
"A computer-readable medium storing bio-metric user identifying information and encryption
and decryption data." For the same reasons, the Court construes this term to require storing both
the biometric data and encryption/decryption data. The Court also similarly rejects Defendants'
position that the storage device must be non-volatile and distinct.
IV.
UNDISPUTED TERMS
The briefing on the '681 Patent includes argument on four additional terms: "event,"
"encryption key value," "decryption key value," and "document." These terms are not, however,
listed in the most recent version of the joint claim construction chart. (See C.A. No. 13-303 D.I.
85-1) It is the Court's understanding that the parties do not have a dispute as to the proper
construction of any of these four terms.
V.
CONCLUSION
An appropriate Order follows.
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