Cronos Technologies LLC v. Expedia Inc.

Filing 86

MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 6/8/15. Associated Cases: 1:13-cv-01538-LPS, 1:13-cv-01541-LPS, 1:13-cv-01544-LPS (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CRONOS TECHNOLOGIES, LLC,
Plaintiff,
v.
EXPEDIA, INC.,
Defendant.

CRONOS TECHNOLOGIES, LLC,
Plaintiff,

v.
PRICELINE.COM, INC.,
Defendant.

CRONOS TECHNOLOGIES, LLC,
Plaintiff,

v.
TRAVELOCITY.COM L.P .,
Defendant.

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C.A. No. 13-1538-LPS

C.A. No. 13-1541-LPS

C.A. No. 13-1544-LPS

Richard D. Kirk, Stephen B. Brauerman, Vanessa R. Tiradentes, Sara E. Bussiere, BAYARD,
P.A., Wilmington, DE
Brian A. Ledahl, Paul A. Kroeger, Shani M. Tutt, RUSS, AUGUST & KABAT, Los Angeles,
CA
Attorneys for Plaintiffs

Jack B. Blumenfeld, Julia Heaney, Michael J. Flynn, MORRIS, NICHOLS, ARSHT &
TUNNELL LLP, Wilmington, DE
John M. Jackson, Nathaniel (Nate) St. Clair II, Matthew C. Acosta, JACKSON WALKER LLP,
Dallas, TX

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David Folsom, JACKSON WALKER LLP, Texarkana, TX
Attorneys for Defendants

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MEMORANDUM OPINION

June 8, 2015
Wilmington, DE

k~P.rJ_ ~
STARK, U.S. District Judge:

I.

BACKGROUND
Plaintiff Cronos Technologies, LLC ("Cronos" or "Plaintiff') filed separate patent

infringement actions against Expedia, Inc., ("Expedia") (C.A. No. 13-1538), priceline
Incorporated (n/k/a The Priceline Group Inc.) and priceline.com LLC (collectively "priceline")

(C.A. No. 13-1541), as well as against Travelocity.com, L.P. ("Travelocity") (C.A. No. 13-1544)

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(collectively, "Defendants"). (D.I. 1) 1 Cronos alleges Defendants infringe U.S. Patent No.
5,664, 110 ("the '110 Patent"), entitled "Remote Ordering System," a patent which issued on
September 2, 1997. (D.I. 1 Ex. A).
Pending· before the Court is the issue of claim construction of various disputed terms of
the patent-in-suit. 2 The parties initially completed briefing on claim construction on March 23,
2015. (D.I. 50, 52, 67, 70) Although the cases are not consolidated, the Court heard argument
on claim construction on all of the cases together, on April 13, 2015. (D.I. 82) (hereinafter
"Tr.")3 Following the hearing, the parties submitted supplemental briefing and advised the Court
of supplemental authority. (See D.I. 75, 76, 77, 78, 79, 80, 83)

1

Unless otherwise specified, citations to the docket are to the 13-1538 action.

2

Also pending is Defendants' motion for partial judgment on the pleadings based on lack
of patentable subject matter. (See D.I. 27) That motion will be addressed in due course in a
separate opinion.
3

This is the first claim construction hearing conducted by Chief Judge Stark under a
scheduling order that, consistent with revised patent procedures announced in June 2014 (see
http://www.ded.uscourts.gov/sites/default/files/Chambers/LPS/PatentProcs/LPS-PatentProcedure
s.pdf at p.8), includes a provision by which the Court states an intention to issue a claim
construction decision within 60 days after the Markman hearing- or, at minimum, to provide the
parties notice that this goal will not be achieved. (See also Tr. at 150-51)
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II.

LEGAL STANDARDS
The ultimate question of the proper construction of a patent is a question oflaw. See

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

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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).

2

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).
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 131 7. "[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
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invention in the course of prosecution, making the claim scope narrower than it would otherwise
be." Id.

In some cases, "the district court will need to look beyond the patent's intrinsic evidence
and to consult extrinsic evidence in order to understand, for example, the background science or
the meaning of a term in the relevant art during the relevant time period." Teva, 135 S. Ct. at
841. Extrinsic evidence "consists of all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d
at 980. For instance, technical dictionaries can assist the court in determining the meaning of a
term to those of skill in the relevant art because such dictionaries "endeavor to collect the
accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d
at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of
the technical aspects of the patent is consistent with that of a person of ordinary skill in the art, or
to establish that a particular term in the patent or the prior art has a particular meaning in the
pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and
testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from
bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be
useful" to the court, it is "less reliable" than intrinsic evidence, and its consideration "is unlikely
to result in a reliable interpretation of patent claim scope unless considered in the context of the
intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously describes the
scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90
F.3d at 1583).
4

Finally, "[t]he construction that stays true to the claim language and most naturally aligns
with the patent's description of the invention will be, in the end, the correct construction."
Renishaw PLC v. Marposs Societa 'per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows
that "a claim interpretation that would exclude the inventor's device is rarely the correct
interpretation." Osram GmbH v. Int'/ Trade Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007).

III.

DISPUTED TERMS4
A.

"Remote ordering terminal" I "user device" I "order device"5

Term

Plaintiff's Proposal

Defendants'
Proposal

Court's
Construction

Remote ordering
terminal

A display/processor
unit with the ability
to order items from
one or more
merchants without
the need to travel to a
merchant location

A display/processor
unit that is distinct
and remote from the
order processing
system

A display/processor
unit with the ability
to order items from
one or more
merchants without
the need to travel to a
merchant location

User device

Remote ordering
terminal

A display/processor
unit that is distinct
and remote from the
central computer

Remote ordering
terminal

Order device

Remote ordering
terminal

A display/processor
unit that is distinct
and remote from the
central inventory
database and central
processmg means

Remote ordering
terminal

4

The parties have agreed on the construction of certain terms, and the Court will adopt
those constructions.
5

The Court agrees with the parties that the disputes presented by each of these three claim
terms are identical. (See Tr. at 29)
5

The '110 Patent discloses two embodiments, one of which is the "dumb terminal"
embodiment wherein the "database of [user-discernible] representations is found within the
DFTC 12, rather than in the DPU 10 RAM 34." ('110 Patent, col. 1411. 9-11) (emphasis added)
Defendants' proposed construction, which adds the limitation that the display/processor unit
("DPU") is distinct and remote, would improperly exclude from the claims this dumb terminal
embodiment. Even recognizing that the dumb terminal embodiment is the subject of very few
lines of the specification, the Court is not persuaded that there is a clear and unambiguous
disclaimer or that the patentee dedicated this embodiment to the public. Therefore, the Court
will adopt Plaintiff's proposal, which is based on the specification language and does not exclude
any disclosed embodiment. (See id. at col. 1 11. 12-15) ("Remote ordering systems have been
proposed for providing homeowners and business-persons the ability to order staple items from
one or more merchants without the need to travel to a merchant location.")

B.

"Communication means"

Plaintiff's Proposal

Defendants' Proposal

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Court's construction

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Term is subject to 35 U.S.C.
§ 112(6).

Function is: "(1) associating
said memory and said order
processing system upon user
command for remotely
accessing said order
processing system over a
multi-user network,

Function is: "( 1) associating
said memory and said order
processing system upon user
command for remotely
accessing said order
processing system over a
multi-user network,

Function is: "( 1) associating
said memory and said order
processing system upon user
command for remotely
accessing said order
processing system over a
multi-user network,

(2) transmitting said at least
one list to said order
processing system using said
data from said user and/or
merchant identifier means,
and

(2) transmitting said at least
one list to said order
processing system using said
data from said user and/or
merchant identifier means,
and

(3) receiving new and/or
replacement user-discernible
item data from said order
processing system during
association of said memory
and said order processing
system, said new and/or
replacement user-discernible
item data corresponding only
to said at least one item or
group of items of said at least
one list."

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Term is subject to 35 U.S.C.
§ 112(6).

(2) transmitting said at least
one list to said order
processing system using said
data from said user and/or
merchant identifier means,
and

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Term is subject to 35 U.S.C.
§ 112(6).

(3) receiving new and/or
replacement user-discernible
item data from said order
processing system during
association of said memory
and said order processing
system, said new and/or
replacement user-discernible
item data corresponding only
to said at least one item or
group of items of said at least
one list."

(3) receiving new and/or
replacement user-discernible
item data from said order
processing system during
association of said memory
and said order processing
system, said new and/or
replacement user-discernible
item data corresponding only
to said at least one item or
group of items of said at least
one list."

Structure for (1 ), (2) and (3)
is "device that communicates
via a telephonic serial data
transfer, a serial or parallel
transfer of information over a
data bus or link, or a serial
transfer of information over a
communications network
such as the internet," ' 110
Patent 5:15-21.

Structure is (1) modem 38,
(2) modem 38, (3) no
structure disclosed.

Structure for (1 ), (2) and (3)
is "device that communicates
via a telephonic serial data
transfer, a serial or parallel
transfer of information over a
data bus or link, or a serial
transfer of information over a
communications network
such as the internet"

The parties agree this claim term is in means-plus-function format. See 35 U.S.C.
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§ 112(6). They further agree on the claimed functions. Their dispute goes to the corresponding
structure.
Defendants' read the function to include a sorting function as part of step 3, based on the
phrase "said new and/or replacement user-discernible item data corresponding only to said at
least one item or group of items of said at least one list" (emphasis added). The parties agree that
there is no disclosed structure for sorting the data, but Plaintiff contends that the function is
limited to "receiving" data, which is performed by a modem or other disclosed structure. (See
'110 Patent, col. 5 11. 15-21) In other words, Plaintiff reads the "only" limitation as a descriptor
for the type of information which is received, rather than as an additional function.
The Court agrees with Plaintiff's reading of the function, and finds that the
"communication means" does not execute any sorting function. The specification discloses,
"Depending upon the actual physical location of the merchant database 14, this communication
can be a telephonic serial data transfer, a serial or parallel transfer of information over a data bus
or link, or a serial transfer of information over a communications network such as the Internet.
Other known communication means are envisioned." (Id.) The Court agrees with Plaintiff that
this satisfies the requirement for a corresponding structure under§ 112(6).

C.

"Data entry device" I "machine recognition"

Term

Plaintiff's Proposal

Defendants'
Proposal

Court's
Construction

Data entry device

Device that provides
coded information to
the remote ordering
terminal

Device that transfers
coded item, user and
merchant data to the
remote ordering
terminal

Device that provides
coded information to
the remote ordering
terminal

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Machine
recognition

Plain and ordinary
meanmg

Transferring said
identifying code to
the user's ordering
device

Plain and ordinary
meanmg

The central dispute in relation to these terms is whether the data entry device "provides"
data to the remote ordering terminal or whether it must "transfer" such data. While the
specification discloses that an optical scanning wand can transfer coded information to the DPU
10, it goes on to state that "alternative embodiments of the data entry device 16 of the present
invention employ a standard 'QWERTY' keyboard or custom keypad in communication with the
remainder of the DPU 10 for manual data input, or voice recognition circuitry or magnetic stripe
input means." (Id. at col. 3 11. 29-38) A keyboard does not ''transfer" coded information in the
same way as an optical scanning wand, since a keyboard utilizes manual user input for data. (See
D.I. 51if43) (Rhyne Declaration, stating: "One of skill in the art would typically speak of
'inputting' something to a computer on a keyboard, not 'transferring' from a keyboard.")
Defendants' proposed construction of"data entry device" would exclude the disclosed keyboard
embodiment.
A second dispute is whether the construction of data entry device must be limited to a
device providing "item, user, and merchant" data to the remote ordering terminal. The claim
language contains a description of the coded information which is provided, so limiting the term
"data entry device" is unnecessary. What is claimed is a "remote ordering terminal comprising
... at least one data entry device for providing said terminal with said item associated item codes
and with data from said user and/or merchant identifier means." (' 110 Patent, claim 1)
(emphasis added) Therefore, the types of data which are transferred are described in the claims.

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Further, the claims do not require "item, user, and merchant" data as proposed by Defendants.
Thus, the Court will adopt Plaintiff's proposed construction of "data entry device."
There does not appear to be a meaningful dispute as to the proper construction of
"machine recognition," which appears in claims 22 and 26 and relates to the function performed
by the data entry device. Defendants argue that the data entry device cannot be a mouse, and,
further, that clicking on a link would not meet the claim limitation requiring "machine
recognition." Defendants' proposal for "machine recognition" contains the limitation that the
coded information must be "transferred" from one source to another, as an attempt to distinguish
from simply clicking on a link. Plaintiff contends that "machine recognition" is a term "readily

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understandable" to one of skill in the art, and its expert, Dr. Rhyne, expressed this opinion. (See
D.I. 51

if 39; see also id. at if 43 ("In my opinion, one of skill in the art would not understand

'machine recognition' to mean 'transferring said identifying code to the user's ordering device'
as Defendants have proposed .... Defendants' use of the word 'transferring' would be awkward
to one of skill in the art.")) Defendants' expert Dr. Taylor, despite submitting a declaration, did
not address the meaning of this term. (See D.l. 54) In light of Dr. Rhyne's declaration and the
lack of record evidence contradicting his statements, the Court finds that one of ordinary skill in
the art would readily understand the term "machine recognition" and will adopt the plain and
ordinary meaning to one of ordinary skill in the art. 6

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In doing so, the Court does not intend to resolve the apparent dispute as to whether a
mouse click satisfies the limitations of claims 22 and 26. The Court views Defendants'
contentions on this issue to be premature.
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D.

"central processing means"

Plaintiff's Proposal

Defendants' Proposal

Court's construction

Term is subject to 35 U.S.C.
§ 112(6).

Term is subject to 35 U.S.C.
§ 112(6).

Term is subject to 35 U.S.C.
§ 112(6).

Function is "(l) providing
remote communication over a
multi-user network between
said central inventory
database and said
user-specific database in
response to a user action for
teaching user-discernable
item data received from said
central inventory database to
said user-specific database

Function is "(l) providing
remote communication over a
multi-user network between
said central inventory
database and said
user-specific database in
response to a user action for
teaching user-discemable
item data received from said
central inventory database to
said user-specific database

Function is "(1) providing
remote communication over a
multi-user network between
said central inventory
database and said
user-specific database in
response to a user action for
teaching user-discernable
item data received from said
central inventory database to
said user-specific database

(2) interactively updating said
user-discernable item data
contained within said
user-specific database with
replacement user-discemable
item data received from said
central inventory database in
response to a user action, and

(2) interactively updating said
user-discernable item data
contained within said
user-specific database with
replacement user-discemable
item data received from said
central inventory database in
response to a user action, and

(2) interactively updating said
user-discernable item data
contained within said
user-specific database with
replacement user-discernable
item data received from said
central inventory database in
response to a user action, and

(3) aging-out infrequently
accessed user-discemable
item data from said
user-specific database."

(3) aging-out infrequently
accessed user-discernable
item data from said
user-specific database."

(3) aging-out infrequently
accessed user-discemable
item data from said
user-specific database."

Structure is (1) DFTC 12;
(2) DFTC 12; and (3) DFTC
12 by itself or in connection
with CPU 30. ('110 Patent,
col. 2 11. 55-57, col. 6 11. 4454, col. 9 11. 2-21, and col. 14
11. 5-39)

Structure is (1) no structure
disclosed (2) no structure
disclosed, and (3) no
structure disclosed

Structure is (1) DFTC 12;
(2) DFTC 12; and (3) DFTC
12.

The parties agree that this term is a means-plus-function limitation and also agree as to

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the function. Defendants contend that no corresponding structure is disclosed. Plaintiff asserts
that the data format/transfer computer or DFTC 12 is the corresponding structure, a position
supported by the detailed description in the specification. (See '110 Patent, col. 2 11. 53-57) ("A
remote ordering system according to the present invention and FIG. 1 includes at least ... a data
format/transfer computer (DFTC) 12 (also referred to as a central processing means or a central

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computer) ... ")
The DFTC is disclosed as conducting the first function: "providing remote
communication over a multi-user network between said central inventory database and said
user-specific database in response to a user action for teaching user-discernable item data
received from said central inventory database to said user-specific database." In particular, the
specification states:
The DFTC 12 controls the flow of information between the DPU
10 and the merchant database 14 during such an interactive
session. The DFTC 12 communicates with the merchant database
14 to ascertain product availability, product identification
information such as name, container size, and nutritional data, and
current product price. This information is then relayed back to the
DPU 10 for display to the user and for addition to or substitution
within the DPU 10 database.

(Id. at col. 5 11. 7-15)
Figure 1 also shows this communication among the DFTC 12, multiple merchant

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databases 14, and multiple DPUs 10. Figure 14 contains a flow chart algorithm in which Step
252 ("Order or Price Check?") triggers communication between the user database and merchant
databases to interactively update the price information. While Defendants assert that the role of
the DFTC 12 is merely as a pass-through for information, and it therefore does not correspond to

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the disclosed function, the Court finds there is adequate disclosure to show that the DFTC
completes the first function.
Second, the DFTC is disclosed as "interactively updating said user-discemable item data
contained within said user-specific database with replacement user-discemable item data
received from said central inventory database in response to a user action." According to the
specification:
[I]f a DPU 10 user believes a price associated with a displayed
product description is out-of-date, the user can command the DPU
10 to update the price in the DPU database within RAM 34 by
accessing the merchant database via the DFTC 12. The merchant
database 14 can indicate the current price, which the DFTC 12
returns to the DPU CPU 30 for substitution into the database in
RAM34.
('110 Patent, col. 611. 44-51)
The specification further identifies and describes the role of DFTC 12, which is also
illustrated by Figure 14. "The CPU 30 then indicates to the DFTC 12 that availability and price
information is being requested for the items in the order list 52 ... The DFTC 12 searches the
merchant database for accurate product description information, unit price, and product
availability, and returns this information to the DPU 1O." (Id. at col. 11 11. 20-45) This function
appears in Fig. 14 as Step 264 ("Teach User Database Code/Product ID Correspondence").
Lastly, the DFTC, alone or in conjunction with CPU 30, is disclosed to "ag[ e]-out
infrequently accessed user-discemable item data from said user-specific database," but only in
the dumb terminal embodiment. Plaintiff concedes that in the smart terminal embodiment the
DFTC does not perform the aging out function. (See Tr. at 73) According to Plaintiffs, referring
to Figure 12:

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This is the disclosure of the algorithm for aging out. As you see
here, after it has transmitted the product description from the
DFTC and DPU in 230, it asks is the rule in the consumer
database? Yes or no. And if the answer is no, delete item with
user database. And as the specification describes, this is referred to
as aging out . . . And worthy of note, ... this [user] database in the
dumb terminal embodiment is located on the DFTC 12. So this is
the one case where in the smart terminal embodiment, defendants
are correct this would be done on the DPU by the CPU 30, but in
the dumb terminal embodiment this is performed by the DFTC 12.
(Tr. at 72-73) Figure 12 shows at Step 230 that the data is transmitted from the DFTC to the
DPU, and only after that point is the "aging out" function accomplished. However, in the dumb
terminal embodiment, the DFTC performs the aging out function since the "DPU 10 is a dumb
terminal which must be in communication with the DFTC 12 in order to provide user-discernible
representations of scanned items ... [and] the database of such representations is found within
the DFTC 12, rather than in the DPU 10 RAM 34." ('110 Patent, col. 1411. 6-11)
The DFTC is not disclosed to work with the CPU in the smart terminal embodiment as
the DPU does the aging out function in that embodiment. The DFTC is not disclosed anywhere
in the description of the aging out function with the smart terminal embodiment. (See id. at col.
9 11. 2-17) ("[I]f sufficient memory space exists within the DPU database to add a new product
description and associated unit price, or if a pre-defined maximum size for the DPU 10 database
would be exceeded by adding this new information to the database, the CPU 30 determines the
oldest, or least accessed, product information based on access date. This oldest information is
aged out, or deleted, from the database . . . In another embodiment, the CPU 30 can
automatically age out information based upon frequency of use.") Hence, the Court's conclusion
that adequate structure is disclosed is limited to the dumb terminal embodiment.

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E.

"Database," "User-specific database/identifier database," "central inventory
database/merchant database"

Term

Plaintiff's Proposal

Defendants' Proposal

Court's construction

Database

A structured collection
of data stored in a
memory that can be
searched, modified, and
sorted by the content of
a particular field of the
data stored therein

An externally structured
repository of data stored
in a memory in a format
that can be updated,
modified, and searched
by a database
management system
using any field of the
data stored therein

A structured collection
of data stored in a
memory in a format that
can be updated,
searched, modified, and
sorted by a database
management system by
the content of a
particular field of the
data stored therein

Alternatively:
A structured collection
of data stored in a
memory in a format that
can be updated,
searched, modified, and
sorted by a database
management system by
the content of a
particular field of the
data stored therein

User-specific
database/
identifier
database

A database associated
with a particular user
identifier means that
contains a portion of the
data of an associated
database of the order
processing system

A terminal-specific
database of the remote
ordering terminal that
contains substantially
less data than an
associated database of
the order processing
system

A database associated
with a particular user
identifier means that
contains a portion of the
data of an associated
database of the order
processing system

Central
inventory
database I
merchant
database

One or more
databases of merchant
information

A database separate and
remote from the userspecific database

One or more
databases of merchant
information

In regard to the term "database," the parties dispute whether the data must be externally

structured and whether the data must be searchable by "any" field or instead by "a particular

15

l
field." Any proposed construction which reads out of the claims the dumb terminal embodiment
cannot be correct. The dumb terminal embodiment, in which the database of user-discernible
data is "found within the DFTC" (see '110 Patent, col. 14 11. 5-15), would be excluded if the
Court adopted Defendants' construction requiring an "externally structured" collection of data.
Defendants provide no persuasive reason for why the database must be searchable by
"any'' field, so long as it is organized and searchable in some way, by some particular field.
Hence, the Court will adopt Cronos' alternative construction (which includes a "database
management system" limitation), which also addresses Defendants' concern that the claim
limitation does not encompass a list. (See Tr. at 82-83)
Turning to '"user-specific database" and "identifier database," the parties dispute whether
the database must be specific to the remote ordering terminal at the DPU. Again, Defendants'
proposed construction would read out of the claims the dumb terminal embodiment, in which the
database is found within the DFTC rather than in the DPU. (See '110 Patent, col. 14 11. 9-10)
Therefore, the user-specific database and identifier database are not specific to the remote
ordering terminal. Instead, the specification and claim language support Cronos' proposal, in
which the user-specific database is associated with a particular user.
The parties further dispute the relative size of the user-specific or identifier database.
Defendants propose that it "contains substantially less data" than the order processing system as a
whole, but they explained at the hearing they would be satisfied with any construction that makes
clear there is a "meaningfully different" amount of data in the user database than in the larger
database. (See Tr. at 93-94) The Court finds that "substantially less" introduces confusing
ambiguity into the claims. Plaintiff's proposal that the user database contain only "a portion of'
16

the total data accurately conveys the relative size of the user database.
Finally, with respect to "central inventory database" and "merchant database," the parties
dispute whether the merchant database must be "separate and remote" from the user database.
The specification states,
[I]t is to be understood that throughout this document the merchant
database 14 refers to a database of information not having one
specific physical location. That is, the merchant database 14 can
be physically located within the DFTC 12, within another
computer or memory device located at the site of the DFTC 12 and
connected thereto, or within a computer or memory device at a
merchant location.
(' 11 O Patent, col. 2 1. 64-col. 3 1. 4) This portion of the specification explicitly discloses an
embodiment in which the location of the merchant database is within the DFTC 12, as in the
dumb terminal embodiment. Defendants' proposed construction would read out this limitation
and, therefore, is not correct.

F.

"management means"

Plaintiff's Proposal

Defendants' Proposal

Court's Construction

Term is subject to 35 U.S.C.
§ 112(6).

Term is subject to 35 U.S.C.
§ 112(6).

Term is subject to 35 U.S.C.
§ 112(6).

Function is "controlling said
display and said
communication means, said
Illanagementmeans
responsive to said user input
and said central processing
means."

Function is "controlling said
display and said
communication means, said
management means
responsive to said user input
and said central processing
means."

Function is "controlling said
display and said
communication means, said
management means
responsive to said user input
and said central processing
Illeans."

Structure is disclosed in '110
Patent, col. 4 11. 30-39; the
CPU 30.

No structure defined.

Structure is the CPU 30.

17

The parties agree that the term "management means" is a means-plus-function limitation
and agree as to the function of the claim term. They disagree about whether: ( 1) a structure has
been disclosed, and (2) ifthe disclosed structure is a general purpose computer, whether an
algorithm must also be disclosed. Plaintiff asserts that the CPU 30 is the corresponding structure
and, further, that it needs no special programming to do the function so no algorithm is required.
(See Tr. at 99-100) The Court concludes that even if an algorithm is necessary, one has been

adequately disclosed in Figure 11.
Defendants' position that an algorithm is required is largely based on the portion of the
specification which states, "The CPU 30 is in charge of creating and displaying order lists on the
display 36." ('110 Patent, col. 411. 33-34) Defendants contend that no algorithm has been
disclosed for "creating and displaying." (D.I. 76 at 2) "A microprocessor or general purpose
computer lends sufficient structure only to basic functions of a microprocessor. All other
computer-implemented functions require disclosure of an algorithm." EON Corp. IP Holdings
LLC v. AT&T Mobility LLC, et al., No. 2014-1392 (Fed. Cir. May 6, 2015). However, "[w]hen

the function can be achieved by any general purpose computer without special programming no
algorithm need be disclosed." Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1362,
1364 (Fed. Cir. 2012) (internal quotation marks omitted); see also In Re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1316-17 (Fed. Cir. 2011). Here, to the extent the CPU

30 is performing a specialized function, Fig. 11 provides the algorithm to satisfy the requirement
that a structure be disclosed.

18

G.

Claim 22 - Order of Steps

Term

Plaintiff's
Proposal

Defendants'
Proposal

Court's
construction

Accumulating from said
identifier database
selected ones of said usercognizable identifiers

No construction
necessary.

Occurs at the user
device prior to the
commanding step.

No construction
necessary.

Occurs at the user
device prior to the
commanding step.

No construction
necessary.

Occurs after the
accumulating and
selectively
associating steps.

No construction
necessary.

Selectively associating a
transaction identifier
having user and/or
merchant identification
with said user device to
identify a selected
merchant database and/or
to identify said user to a
selected merchant
database
Commanding said user
device to establish remote
communication between
said user device and said
selected merchant
database corresponding to
said merchant
identification through said
central computer over
said communications link
including said multi-user
network

Improper to use
Markman
proceedings to
order claim
limitations.
No construction
necessary.
Improper to use
Markman
proceedings to
order claim
limitations.

No construction
necessary.
Improper to use
Markman
proceedings to
order claim
limitations.

19

Interactively updating
only said selected one of
said user-cognizable
identifiers in said
identifier database or
user-specific items with
current information
provided by said
merchant database over
said communications link
in response to a user
action at said user device

No construction
necessary.
Improper to use
Markman
proceedings to
order claim
limitations.

Occurs after the
accumulating,
selectively
associating, and
commanding
steps.

No construction
necessary.

The parties dispute whether it is proper as part of the claim construction process to order
claim steps and, if so, whether the above steps should be ordered. Claim 22 is a method claim
comprising seven individual steps, and Defendants propose that steps 3 through 6 must be carried
out in a precise order, and that this should be made clear through claim construction. 7
"Unless the steps of a method actually recite an order, the steps are ordinarily not
construed to require one. However, such a result can ensue when the method steps implicitly
require that they be performed in the order written." Altiris, Inc. v. Symantec Corp., 318 F.3d
1363, 1369 (2003). "First, we look to the claim language to determine if, as a matter oflogic or
grammar, they must be performed in the order written. . . . If not, we next look to the rest of the
specification to determine whether it 'directly or implicitly requires such a narrow construction."'
Id. at 1369-70 (emphasis in original; internal citations omitted) There is nothing improper about

considering the order of steps issue in connection with claim construction.
Here, however, Defendants have failed to persuade the Court that the order of steps they

7

Defendants state this dispute "relates to Cronos' s infringement contention that the
alleged 'user device' in the accused methods is in communication with the web server (Step 5)
prior to performing steps 3 and 4." (D.I. 52 at 25)
20

seek to impose on claim 22 is correct. 8 Adopting Defendants' proposal would read out of the
claims a disclosed embodiment, i.e., the dumb terminal. While the specification largely
describes the use of the smart terminal embodiment to allow the user to create an off-line list
prior to contacting a merchant - and in this embodiment Defendants' proposed order of steps
does appear to be required - the claims are not limited to the smart terminal embodiment.
Defendants' proposed order of steps is not required as a matter of either logic or grammar.

H.

"Interactively receivable as a result of said central processing means,
responding to said user input at said order device, transmitting to said
central inventory database said at least one order list comprising a list of
items to be ordered or a provisional list of items for which updated userdiscernable item data is desired"

8

In the dumb terminal embodiment, the database of user-discernible representations is
stored within the DFTC 12. (See '110 Patent, col. 14 11. 9-10) The merchant database can also
be located in the DFTC 12. (See id. at col. 21. 67-col. 3 1. 1) In such an embodiment, Step 5 "commanding said user device to establish remote communication between said user device and
selected merchant database" - may occur prior to steps 3 and 4, contrary to Defendants' proposed
order, since the user device and the merchant databases are both stored within the DFTC 12.
Further, the dumb terminal embodiment contemplates that Step 6, "interactively updating" the
selected items from the user database, can be performed at "regular interval[ s]" without any
relation to the prior steps. (See id. at col. 14 11. 11-15)

21

Plaintiff's Proposal

Defendants' Proposal

Court's Construction

Plain and ordinary meaning

Indefinite.

Interactively receivable at the
central processing means in
response to a user input at the
order device that causes the
central processing means to
receive the order list or
provisional list, to transmit
the order list or provisional
list to the central inventory
database, to receive
replacement user-discernible
item data for each item in the
order list or provisional list
from the central inventory
database, and to transmit the
replacement user-discernible
item data.

Or, alternatively:
Received at the central
processing means in response
to a user input at the order
device that causes the central
processing means to receive
the order list or provisional
list, to transmit the order list
or provisional list to the
central inventory database, to
receive replacement userdiscernible item data for each
item in the order list or
provisional list from the
central inventory database,
and to transmit the
replacement user-discernible
item data.

Defendants assert that Claim 45 is indefinite because it attempts to claim a system but
includes method steps. Such hybrid claims are ambiguous and, therefore, indefinite, because it is
unclear whether infringement of such claims occurs when one creates the system or when one
performs the method. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir.
2005). Here, however, the claim language makes clear that the claim does not recite method
steps, even though it uses active verbs to define "interactively receivable."9

9

Plaintiff also asserts that Defendants' indefiniteness argument is untimely. Defendants
respond that their argument arises from Dr. Rhyne's deposition testimony, and therefore was
brought before the Court at the earliest opportunity. The Court finds that Defendants'
indefiniteness argument, which relies heavily on Dr. Rhyne's testimony, was not untimely.
Additionally, the Court accepted supplemental briefing on the issue of indefiniteness, giving
Plaintiff a "full and fair opportunity" to be heard on the issue.
22

Defendants have to prove indefiniteness by clear and convincing evidence. See Intel
Corp. v. VIA Techs. Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003). Defendants attempt to meet this
burden by relying on Cronos' expert's deposition, in which he opined that Claim 45 includes
method steps. (See D.I. 79 at 4) (quoting Rhyne deposition) 10 However, the extrinsic evidence
(Rhyne's testimony) does not supplant the meaning that emerges from the intrinsic evidence,
including the language of the claim itself. The limitations to which Defendants point "transmitting to said central inventory database" and "comprising a list of items to be ordered" are not, here, method steps and do not create confusion as to when infringement occurs.
This case is distinguishable from IPXL, which required that the ''user use[]" the system,
making it unclear whether infringement occurred when the system was created or only when the
user used the system.
Turning to the proper construction, there is a genuine dispute as to claim scope and particularly in light of the testimony of Dr. Rhyne - the Court finds it is necessary to construe the
term. See 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."). Defendants' proposal correctly identifies
"steps" that a system must be capable of undertaking in order to practice the claim. However,
Defendants proposed construction would require these steps to always be performed (i.e.
"received"), while the claim language is written in the form of a capability to perform these steps
(i.e. "receivable"). The Court's construction amends Defendants' proposed construction to

10

Defendants' expert, Dr. Taylor, did not opine that this claim language is indefinite.
(See, e.g., D.I. 75 at 3) (citing Taylor's declarations and deposition testimony)
23

reflect these conclusions.

I.

"user and/or merchant identifier means"

Plaintiff's Proposal

Defendants' Proposal

Court's Construction

Term is not subject to 35
u.s.c. § 112(6).

Term is subject to 35 U.S.C.
§ 112(6).

Term is not subject to 35
U.S.C. § 112(6).

Should be construed as:

Function is "storing user and
or merchant identifier."

Information identifying the
user and/or the desired
merchant

Information identifying the
user and/or the desired
merchant

Structure is user
identification control card 40.

The parties disagree as to whether this term is a means-plus-function term subject to 35
U.S.C. § 112(6). The Court finds it is not. Although it contains the term "means," there is no
indication that it is claiming a function. "Without an identified function, the term 'means' in this
claim cannot invoke 35 U.S.C. § 112, ~ 6. Without a 'means' sufficiently connected to a recited
function, the presumption in use of the word 'means' does not operate." York Prods., Inc. v.
Cent. Tractor Farm &Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996).
The Court will adopt Plaintiffs proposal, which is based on the specification. (See '110
Patent, col. 5 11. 36-38) ("[I]nformation identifying the user and the desired merchant, among
other transaction specific information, is referred to as a transaction identifier or as identifier
means.")

24

J.

"identifier means"

Plaintiff's Proposal

Defendants' Proposal

Court's Construction

Term is subject to 35 U.S.C.
§ 112(6).

Term is subject to 35 U.S.C.
§ 112(6).

Term is subject to 35 U.S.C.
§ 112(6).

Function is "providing said
remote ordering system with
user and/or merchant
information."

Function is "providing said
remote ordering system with
user and/or merchant
information"

Function is "providing said
remote ordering system with
user and/or merchant
information."

Structure is disclosed in '110
Patent, col. 5 11. 24-38:
identification control card 40
or user and merchant
identification information
pre-stored in the DPU 10.

Structure is user
identification control card 40.

Structure is identification
control card 40 or user and
merchant identification
information pre-stored in the
DPU 10.

The parties agree this is a means-plus-function term, but disagree as to the disclosed
structure. The specification states:
The DFTC 12 also interprets information entered from user
identification control cards 40 reflective of user and merchant
identification. Typically, these identification control cards 40
provide information from which merchant name and location, user
name, address and account number, payment arrangements,
preferred product delivery option, and consumer profile can be
determined. In alternative embodiments of the present invention,
the DPU 10 has such user and merchant identification pre-stored
therein, such that the user selects a merchant from a displayed
menu of merchants. . . . In any case, information identifying the
user and the desired merchant, among other transaction specific
information, is referred to as a transaction identifier or identifier
means.
(' 110 Patent, col. 5 11. 22-38) The specification is clear that either the identification control card
40 or the DPU 10, in an alternative embodiment, are corresponding structures for the identifier
means. Defendants' proposal would read out of the claims the disclosed embodiment in which

25

the identifier means are pre-loaded onto the DPU 10. The Court will adopt Plaintiff's proposal.
K.

"input means"

Plaintiff's Proposal

Defendants' Proposal

Court's construction

Term is subject to 35 U.S.C.
§ 112(6).

Term is subject to 35 U.S.C.
§ 112(6).

Term is subject to 35 U.S.C.
§ 112(6).

Function is "providing said
order device with said item
codes corresponding to said
at least one user-selected item
to be ordered."

Function is "providing said
order service with said item
codes corresponding to said
at least one user-selected item
to be ordered."

Function is "providing said
order service with said item
codes corresponding to said
at least one user-selected item
to be ordered."

Structure is disclosed in '110
Patent, col. 3 11. 5-37; col. 4
11. 44-60; data entry device
16.

Structure is a processor
programmed to perform 273
and 274 of Figure 14.

Structure is a processor
programmed to perform 273
and 274 of Figure 14.

The parties' dispute is whether ''providing said order service," as recited in Claim 45, is a
typographical error. Plaintiff contends the claim should be read to recite "said order device,"
while Defendants adhere to the language actually used in the claim, which is "said order service."
The parties further disagree as to the function and structure of what they agree is a meansplus-function claim term. Plaintiff argues that "input means" refers to the data entry device,
while Defendants rely on the term "service" to support their argument that "input means" is a
processor which completes Steps 273 and 274 of Figure 14 (namely, the "Order pushed?" step
and the "User places final order" step).
Plaintiff essentially asks the Court through claim construction to correct what Plaintiff
asserts is an error in the claim language. The Court can correct an error in a patent only if (1) the
correction is not subject to reasonable debate based on consideration of the claim language and
the specification, and (2) the prosecution history does not suggest a different interpretation of the
26

claim. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003).
Plaintiff provides a portion of the prosecution history which uses the words "order
device" (see D.l. 46-3 at 129) and, from this, contends that the phrase "order service" was a
scrivener's error on the part of the PTO. (D.I. 50 at 20) Even assuming this satisfies the second
requirement stated above (i.e., the prosecution history may not suggest a different interpretation
of the claim), there is here a reasonable debate regarding the correction of the term. Although the
term "order service" does not appear elsewhere in the patent, in the context of the claim as a
whole it is not apparent from the face of the patent this is an error, especially as Dr. Taylor opines
there is structure present in the specification associated with the issued claim language. (See D.l.
76) Therefore, the Court will adopt Defendants' proposed construction.
IV.

CONCLUSION
An appropriate Order follows.

27