Prism Technologies v. Adobe Systems Incorporated et al

Filing 469

MEMORANDUM AND ORDER as to United States Patent No. 7,290,288 - As jointly stipulated by the parties (Filing No. 440 ), the preambles of the asserted claims are limiting. As jointly stipulated by the parties, the following terms are construed as indicated... The Court construes the remaining disputed terms as follows... Ordered by Senior Judge Lyle E. Strom. (TEL)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
PRISM TECHNOLOGIES, LLC,

)
)
Plaintiff,
)
)
v.
)
)
ADOBE SYSTEMS, INCORPORATED, )
AUTODESK, INC., McAFEE, INC., )
NATIONAL INSTRUMENTS
)
CORPORATION, SAGE SOFTWARE,
)
INC., SYMANTEC CORPORATION,
)
and TREND MICRO INCORPORATED, )
)
Defendants.
)
______________________________)

8:10CV220

MEMORANDUM AND ORDER

This matter is before the Court to construe patent
claim terms pursuant to Markman v. Westview Instruments, Inc.,
517 U.S. 370 (1996).

Plaintiff Prism Technologies, LLC (“Prism”)

has alleged infringement of its patent, United States Patent No.
7,290,288 (“‘288 Patent”, Ex. 1, Filing No. 1), by defendants
Adobe Systems, Incorporated, Autodesk, Inc., McAfee, Inc.,
National Instruments Corporation, Sage Software, Inc., Symantec
Corp., and Trend Micro, Incorporated (collectively,
“Defendants”).
I.

Background and Procedural History.
The ‘288 Patent, entitled “Method and System for

Controlling Access, by an Authentication Server, to Protected
Computer Resources Provided via an Internet Protocol Network,”
issued on October 30, 2007, from an application filed August 29,

2002.

Prism contends that the ‘288 Patent is a continuation-in-

part of another Prism patent, U.S. Patent No. 6,516,416 (“‘416
Patent”), entitled “Subscription Access System for Use with an
Untrusted Network,” which issued on February 4, 2003, from an
application filed June 11, 1997 (Ex. 6, Filing No. 179).
The claims of the ‘416 Patent include several of the
same terms whose construction is presently disputed in the ‘288
Patent.

In previous litigation initiated in 2005 by Prism

against other defendants (the “Delaware Case”), the United States
District Court for the District of Delaware (the “Delaware
Court”) construed the term “hardware key” in the context of the
‘416 Patent to mean “external hardware device or object from
which the predetermined digital identification can be read”
(Prism Tech. LLC v. Verisign, Inc., No. 05-214-JJF, Filing No.
449 (D. Del. Apr. 2, 2007), Ex. 6, Filing No. 173, at 3 (the
“Delaware Order”)).

See also Prism Tech. LLC v. Verisign, Inc.,

No. 05-214-JJF, Filing No. 448 (D. Del. Apr. 2, 2007) (the
“Delaware Memorandum”).

The district court in the Delaware Case

also construed other terms in the ‘416 Patent that are common to
the ‘288 Patent.
Prism appealed the Delaware Order, which the Federal
Circuit affirmed without comment.

Prism Tech. LLC v. Verisign,

Inc., 263 F. App’x 878 (Fed. Cir. 2008).

However, Prism did not

appeal all of the claim constructions of the Delaware Order, and

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the constructions that it did appeal are not at issue in this
case.
On April 6, 2007, Prism disclosed the Delaware
Memorandum and the Delaware Order to the U.S. Patent and
Trademark Office (“PTO”) in connection with Prism’s then pending
application for the ‘288 Patent (Information Disclosure
Statement, Ex. 17, Filing No. 173, at 3, 16).
Prism filed its complaint in the present action on June
8, 2010 (Filing No. 1).
November 30, 2010.

The Court held a planning conference on

At that time, the parties disputed the

meaning of several of the claim terms in the ‘288 Patent, but it
was thought possible that the Court’s construction of “hardware
key”1 might be dispositive of the case, making it unnecessary to
construe the other disputed terms.
On April 11, 2011, the Court conducted the initial
Markman hearing for the purpose of construing “hardware key.”
Subsequently, this Court construed “hardware key” to mean:
An external hardware device or
object from which the predetermined
digital identification can be read.
(Filing No. 188, at 2).

This construction is identical to the

construction given in the Delaware Case.

1

The parties agree that “hardware key” and “access key”
have the same meaning within the context of the ‘288 Patent. For
ease of reference, the Court hereafter will refer only to
“hardware key.”
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After another hearing with the parties on July 21,
2011, it was determined that the construction of “hardware key”
did not dispose of the issues in the case and that other terms in
the ‘288 Patent were still disputed.

After the parties submitted

claim construction briefs, the Court conducted a second Markman
hearing on January 12, 2012, for the purpose of construing the
additional disputed terms.
On January 20, 2012, after the second Markman hearing,
the parties submitted a joint stipulation on claim construction,
including an agreement as to the significance of claim preambles
and as to the definitions of five claim terms (Filing No. 440).
The Court will adopt the jointly stipulated agreement regarding
the significance of the preambles and the construction of the
five terms.

The Court construes the eight remaining disputed

terms as indicated herein.
II.

Standard of Review.
“It is a ‘bedrock principle’ of patent law that ‘the

claims of a patent define the invention to which the patentee is
entitled the right to exclude.’”

Phillips v. AWH Corp., 415 F.3d

1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water,
Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115
(Fed. Cir. 2004)).

In construing a claim term, the court must

give each term its “ordinary and customary meaning, as [it] would
be understood by one of ordinary skill in the art in question at
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the time of the invention.”

Intervet Inc. v. Merial Ltd., 617

F.3d 1282, 1287 (Fed. Cir. 2010) (citing Phillips, 415 F.3d at
1312-13).
“Because the meaning of a claim term as understood by
persons of skill in the art is often not immediately apparent,
and because patentees frequently use terms idiosyncratically, the
court looks to ‘those sources available to the public that show
what a person of skill in the art would have understood disputed
claim language to mean.’”

Phillips, 415 F.3d at 1314 (quoting

Innova/Pure Water, 381 F.3d at 1116).
public” include:

“Sources available to the

(1) the patent claims’ words; (2) the remainder

of the patent’s specification; (3) the patent’s prosecution
history; and (4) extrinsic evidence pertaining to relevant
scientific principles, such as a technical term’s meaning and the
state of the art.

Phillips, 415 F.3d at 1314; Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
“First, we look to the words of the claims themselves,
both asserted and nonasserted, to define the scope of the
patented invention.”

Vitronics, 90 F.3d at 1582.

“The written

description part of the specification itself does not delimit the
right to exclude.

That is the function and purpose of claims.”

Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed.
Cir. 1995) aff’d, 517 U.S. 370 (1996).

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Because claim terms are typically used consistently
throughout a patent, a term’s usage in one claim can provide
insight to the meaning of the same term in another claim.
Phillips, 415 F.3d at 1314.

In addition, when “patents all

derive from the same parent application and share many common
terms, we must interpret the claims consistently across all
asserted patents.”

NTP, Inc. v. Research in Motion, Ltd., 418

F.3d 1282, 1293 (Fed. Cir. 2005).

“[W]e presume, unless

otherwise compelled, that the same claim term in the same patent
or related patents carries the same construed meaning.”

Omega

Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003)
In addition to the language of the claims, 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.”

Phillips,

415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582).

However,

“[t]he longstanding difficulty is the contrasting nature of the
axioms that (a) a claim must be read in view of the specification
and (b) a court may not read a limitation into a claim from the
specification.”

Innova, 381 F.3d at 1117.

“[A]lthough the

specification often describes very specific embodiments of the
invention, we have repeatedly warned against confining the claims
to those embodiments.”

Phillips, 415 F.3d at 1323.

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“The court has broad power to look as a matter of law
to the prosecution history of the patent in order to ascertain
the true meaning of language used in the patent claims . . . .”
Markman, 52 F.3d at 980.

“This history contains the complete

record of all the proceedings before the [PTO], including any
express representations made by the applicant regarding the scope
of the claims.

As such, the record before the [PTO] is often of

critical significance in determining the meaning of the claims.”
Vitronics, 90 F.3d at 1582.
III.

Claim Construction.
The parties offer differing proposed constructions for

the following terms.

In arriving at a construction of each term,

the Court looks first to the language of the claims themselves in
the ‘288 Patent; second, to the specification of the ‘288 Patent;
third, to the prosecution history, if applicable; and, finally,
to relevant extrinsic evidence, if any.
A.

“digital identification”

Prism’s Proposed
Construction:

Defendants’ Proposed
Construction:

“digital data whose value is
known in advance or calculated
at the moment”

“digital data that uniquely
identifies the account holder
to whom the hardware key (or
access key) is issued”

Prism argues that its proposed construction of “digital
identification” is correct because it is identical to the

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Delaware district court’s construction of the same term in the
‘416 Patent.

Prism also contends that its proposed construction

is consistent with the ‘288 Patent’s other intrinsic evidence.
For example, none of the claims that include the term “digital
identification” refers to an “account holder.”
Meanwhile, Defendants point out that several
embodiments listed in the ‘288 Patent specification identify an
“account holder” who uses a hardware key that contains digital
identification.

However, Prism alleges that not all embodiments

in the specification include such a description of an account
holder.

Prism argues that the claims must not be restricted by

an embodiment listed in the specification when the embodiment “is
by no means the only way in which the invention can be practiced”
(Filing No. 309, at 25).
Because some of the terms presently disputed were
construed in the Delaware Case in the context of the parent ‘416
Patent, the Delaware Court’s constructions are directly relevant.
NTP, Inc., 418 F.3d at 1293.

The Delaware district court

construed the term “predetermined digital identification” exactly
as Prism now proposes for the term “digital identification.”
(Delaware Order, at 2).

Yet, Defendants quote Prism’s

descriptions of the ‘416 Patent, based on its specification, to
support their contention that Prism itself previously argued to
the Delaware Court that digital identification must uniquely

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identify an account holder (or user).

But Defendants’ quotations

would appear to support Prism’s contention that the digital
identification need not identify an account holder, but is a more
general term that could also identify a machine or a device:
“The hardware key’s main function is to uniquely identify a user
(and/or a device) . . .” (Filing No. 370, at 19, quoting Ex. 8,
Filing No. 371, at 34).
The prosecution history also supports Prism’s
definition of “digital identification.”

During the prosecution

of the ‘288 Patent, Prism provided the PTO with copies of the
Delaware Memorandum and the Delaware Order, making those items
part of the ‘288 Patent’s prosecution history and making those
items available to a person of skill in the art in question.
Notably, the defendants in the Delaware Case (none of
whom are Defendants here) had proposed the following construction
for “predetermined digital information:”

“A data string that is

preassigned and unique to the hardware key and that cannot be
shared with other users” (Ex. 7, Filing No. 310, at 21).

This

construction, which the Delaware Court rejected, also included
the limiting concept of uniqueness, as Defendants here propose.
Defendants also argue that the Delaware Memorandum does
not address the Delaware Court’s construction per se, because
“[t]he dispute between the parties in [the Delaware Case]
concerning the digital identification was whether it had to be

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‘known in advance’ (the Defendants’ position) or whether it could
also be ‘calculated at the moment’ (Prism’s position)” (Filing
No. 370, at 23-24).

Thus, Defendants aver that Prism cannot

reasonably claim that “‘the issue of whether the term ‘digital
identification’ includes the requirement of ‘uniquely
identifying’ a specific user was previously considered and
rejected by the Delaware Court’” (Filing No. 370, at 21, quoting
Filing No. 309, at 22).

While the Delaware Court may not have

elaborated on the theory behind its claim construction of
“digital identification,” the fact remains that it rejected the
Delaware defendants’ construction (which included the word
“unique”) in favor of Prism’s construction (which did not).
As this Court noted in its previous claim construction
order regarding the term “hardware key,” “given that the ‘288
Patent and ‘416 Patent are related patents sharing identical
terms, the Delaware district court’s . . . construction of
‘hardware key’ lends substantial support to making an identical
construction in this case” (Filing No. 188, at 14).

The argument

remains the same for the term “digital identification.”

In

addition, because “hardware key” was construed in the ‘416 Patent
to include a “predetermined” digital identification, the
prosecution history of the ‘288 Patent supports a conclusion that
the construction of “digital identification” should have the same
construction as “predetermined digital identification” for the

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‘416 Patent.

The Court construes “digital identification” to

mean “digital data whose value is known in advance or calculated
at the moment.”
B.

“identity data” terms

Prism’s Proposed
Constructions

Defendants’ Proposed
Constructions

“identity data”: “data
sufficient for the system to
determine whether a person,
organization, and/or computer
is authentic and/or is
entitled to access protected
resources”

“identity data”: Defendants
believe that the Court should
not construe the term
“identity data” in isolation,
but rather in the context of
the relevant claim language.

“identity data of [the] client
computer device”: In light of
the proposed construction for
“identity data,” Prism does
not believe that the phrase
“identity data of [the] client
computer device” needs to be
separately construed.

“identity data of [the] client
computer device”: “data,
including the digital
identification as well as some
additional data (e.g., a
username and/or a password)
that uniquely identifies the
account holder using the
client computer device”

The Delaware Court construed the term “‘Identity Data’
as it relates to the Subscriber Client Computer” in the ‘416
Patent to mean “data sufficient for the patented system to
determine whether a person, organization, and/or computer is
authentic and/or is entitle[d] to a[cc]ess said selected computer
resources” (Delaware Order at 3).

Prism “proposes that the

Delaware construction . . . be adopted for the asserted claims of
the ‘288 Patent as well, with only slight modification so that

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the construction comports with the language of the ‘288 claims
(which refer to ‘protected resources’ rather than ‘selected
computer resources’)” (Filing No. 309, at 26).

Prism proposes a

construction of the term “identity data” only, because that term
occurs in some of the other claims without being associated with
a “client computer device” (Filing No. 309, at 27).
Prism objects to Defendants’ proposed construction
because it states that “additional data (e.g., a username and/or
a password)” is part of the identity data, in addition to the
digital identification, which Prism states is not required by
claim 1.

However, Prism notes that “at least one of a username

and a password” is included in claim 3, which is dependent on and
differentiates claim 1 (Filing No. 309, at 27-28).
As with the term “digital identification” above, the
Court will not import the terms “account holder” and “uniquely”
into the claim construction for “identity data.”

In addition,

the Court declines to construe “identity data of [the] client
computer device," because a construction of the term “identity
data” will serve to construe the other phrases in which it
appears.

For the same reasons stated above with regard to

“digital identification,” the Court adopts substantially the same
construction as construed in the Delaware Order.

The Court

construes “identity data” to mean “data sufficient for the
system to determine whether a person, organization, and/or

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computer is authentic and/or is entitled to access protected
resources.”
C.

“authenticating” terms

Prism’s Proposed
Constructions

Defendants’ Proposed
Constructions

“authenticating”: “determining
that something is, in fact,
what it purports to be”

“authenticating”: Defendants
believe that the Court should
not construe the word
“authenticating” in isolation,
but rather in the context of
the relevant claim language,
as set forth below.

Other “authenticating” terms:
In light of the proposed
constructions for
“authenticating,” “digital
identification,” and “identity
data,” Prism does
not believe that the other
phrases where “authenticating”
appears need to be separately
construed.

“authenticating [] the
identity of [the/said] client
computer device”: “to
determine whether the received
identity data, including the
digital identification, for
the account holder matches the
identity data for the account
holder stored on the
clearinghouse”
“to authenticate [said/...the]
digital identification”:
“to determine whether the
received digital
identification for the account
holder matches the digital
identification for the account
holder stored on the
authentication server”
“[to] authenticat[e][ing]
[said/...the] identity data
[of the access server]”:
“to determine whether the
received identity data for the
access server matches the
identity data for the access
server stored on the
authentication server”

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The term “authenticate” was construed in the Delaware
Case to mean “determine that something is, in fact, what it
purports to be” (Delaware Order, at 6).

However, unlike “digital

identification” and “identity data,” for the term “authenticate,”
the Delaware Court accepted the joint stipulation of the parties
as to the construction and did not discuss the construction
beyond the fact of the stipulation (Delaware Memorandum, at 10).
As a result, Defendants state that “the Delaware
court’s adoption of a construction for the word “authenticating”
is irrelevant because the parties agreed to that construction,
and the Delaware court adopted the parties’ agreement without
discussing the merits of the construction. . . . Moreover, the
basis of and rationale behind the [Delaware] parties’ agreement
is unknown” (Filing No. 370, at 33).

Defendants do not cite any

case law to support this divergence from the general rule that
claims from related patents are interpreted consistently.
Inc., 418 F.3d at 1293.

NTP,

This Court notes that regardless of

whether the Delaware Court specifically construed the term, the
construction of the term “authenticate” is as much a part of the
prosecution history of the ‘288 Patent as are the terms that the
Delaware Court did specifically construe.
Prism urges the Court to adopt the grammatically
correct counterpart of the construction in the Delaware Case for
the term “authenticating.”

In addition, Prism urges the Court to

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decline to specifically define the remaining phrases wherein
“authenticating” appears.

Defendants prefer a separate

construction for each of the phrases where the term
“authenticating” appears, without a separate construction for the
term “authenticating” by itself.

As with “identity data,” the

Court declines to separately construe each of the phrases in
which the word “authenticating” appears.
Prism objects to Defendants’ proposed construction for
two reasons.

First of all, Prism states that Defendants “seek to

improperly import the specification’s language of identifying
‘account holders’ into the claims, when the claims on their face
clearly do not mention anything about ‘account holders’” (Filing
No. 309, at 32).

Defendants claim that their proposed

construction is supported by the specification of the ‘288
Patent.

Defendants claim that “the specification explains,

‘[t]he reader converts the biometric into a digital
identification that is stored in a local repository for
comparison during authentication’” (Filing No. 370, at 34,
quoting ‘288 Patent 22:7-9).

However, Defendants’ quote from the

specification does not include an “account holder” or a “match.”
Defendants also quote the specification as to the
inventor’s intent, where the words “account holders” appear,
namely, “‘[t]he present invention implements its platform by
restricting transaction services to only authenticated and

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authorized account holders . . .’” (Filing No. 370, at 35,
quoting ‘288 Patent 3:49-51).

Prism claims that this quotation

describes but one embodiment of the invention and that other
aspects of the specification support Prism’s contention that the
concept of an “account holder” is not a necessary part of the
construction of the term “authenticating.”

To wit, Prism cites

the “Summary of the Invention,” where the invention is described
in terms that do not include an “account holder:”
The present invention discloses a
system for securing and tracking
usage of transaction services or
computer resources by a client
computer from a first server
computer, which includes
clearinghouse means . . . the
clearinghouse means being adapted
to authenticate the identity of the
client computer responsive to a
request for selected services or
resources of the first server
computer; . . .
(Filing No. 400, at 26, quoting ‘288 Patent 1:52-55, 1:67-2:3).
In addition, Prism objects to the use of the word
“match” as “unduly restrictive” because “it requires the system
to determine whether the digital identification has perfect
correspondence to a digital identification stored in the
clearinghouse or authentication server” (Filing No. 309, at 32).
Prism states that authentication can occur in other ways, such as
with an intermediary step of the use of encrypted data (Filing

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No. 309, at 32-33, citing ‘288 Patent 18:46-66); Defendants find
the encryption step irrelevant to the argument.
Prism states that its proposed construction is
supported by extrinsic evidence in the form of the IEEE Standard
Dictionary of Electrical and Electronics Terms, which defines
“authentication” as “‘[t]he process of validating a user or
process to verify that the user or process is not a counterfeit’”
(Filing No. 309, at 31, quoting IEEE Standard Dictionary of
Electrical and Electronics Terms (6th ed. 1996)).

Prism

concludes that its proposed construction “comports with the
ordinary meaning of the term as it is used in the computer
industry” (Filing No. 309, at 31).

Defendants cite two other

technical dictionaries for definitions that are more conducive to
the acceptance of their proposed construction; Prism objects to
Defendants’ dictionaries as being overly narrow.
After review of the parties’ submissions, the Court
finds that it has not been “otherwise compelled” to veer from the
presumption that “the same claim term in the same patent or
related patents carries the same construed meaning.”
Eng’g, Inc., 334 F.3d at 1334.

Omega

The Court finds that the

intrinsic evidence justifies the adoption of Prism’s proposed
construction.

Accordingly, the Court construes “authenticating”

to mean “determining that something is, in fact, what it purports
to be.”

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D.

“clearinghouse”

Prism’s Proposed
Construction:

Defendants’ Proposed
Construction:

“a computer having software
capable of storing data and
controlling access to
protected resources”

“a computer that,
independently of the server
computer, authenticates
account holders and controls
access to protected resources
of the server computer”

The term “clearinghouse” was not construed in the
Delaware Case.

The parties agree that the clearinghouse controls

“access to protected resources.”

However, the parties’ proposed

constructions have two major differences.
First, Defendants’ construction proposes that the
clearinghouse is independent of the server computer.

In

contrast, Prism claims that the clearinghouse is only independent
in certain embodiments, such as that delineated in claim 6, which
reads as follows:

“The system of claim 1, wherein said at least

one clearinghouse operates as an independent entity and
authenticates multiple server computers capable of being at
separate physical locations.”

‘288 Patent at 35:49-52.

Prism

states, “The presence of the additional limitation in claim 6
that the clearinghouse ‘operates as an independent entity’
creates a presumption that this limitation is not a part of claim
1, from which claim 6 depends” (Filing No. 309, at 38, citing
Phillips, 415 F.3d at 1315).

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Defendants point out that Prism’s claim construction
presumption “will be overcome by a contrary construction dictated
by the written description or prosecution history.”

Retractable

Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305
(Fed. Cir. 2011).

First, Defendants cite Prism’s own depiction

of its invention, produced on page 10 of Prism’s slide deck for
its Power Point presentation during the 2012 Markman hearing,
which clearly shows that the clearinghouse resides on a separate
physical computer from the server computer.

In addition,

Defendants claim that Prism made statements to the PTO during the
prosecution of the ‘288 Patent, intending to distinguish the ‘288
Patent from prior art “Tabuki,” whereby Prism established that
the clearinghouse must act independently from the server computer
(Filing No. 370, at 40; see Ex. 14, Filing No. 371, Ex. 15,
Filing No. 371, at 41).

Defendants claim that Prism’s statements

constitute a “clear and unmistakable disavowal” of the broader
construction that Prism now seeks, such that Prism has now
“limit[ed] the meaning of a claim term.”

Purdue Pharma L.P. v.

Endo Pharm. Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006).
Prism claims that the statements to the PTO were not a
clear and unmistakable disavowal, because the statements do not
mention a “server computer.”

Defendants claim that Prism’s

“server computer” is the same as Tabuki’s “application server,”
as illustrated by Prism’s own contentions to the PTO.

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For

example, Prism stated, “Tabuki does not teach a verification
server [Tabuki’s term] or clearinghouse [Prism’s term] that
performs user authentication independently from the application
server as claimed by [Prism]” (Ex. 14, Filing No. 371, at 27).
This implies that Prism is claiming that its invention teaches a
clearinghouse that performs authentication independently from its
application server; i.e., the application server is the same
entity as the server computer.
In addition, Prism stated to the PTO that “[Prism’s]
claimed application server and clearinghouse function in a
fundamentally different way from the application server and
verification server of Tabuki.

The challenge of [Prism’s]

application server to the clearinghouse is:

Can this user or

account holder have access to my selected resources?”

Id.

Again, this statement establishes that Prism’s server computer
must be the same as Tabuki’s application server.

The Court finds

that Defendants have effectively established that Prism clearly
and unmistakably disavowed a broader construction that would have
allowed the clearinghouse to exist not necessarily independently
of the server computer.
The second difference in the parties’ proposed
constructions is that Defendants claim that the clearinghouse
construction must indicate that the clearinghouse also
“authenticates account holders.”

In response, Prism maintains

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that the language of the claims themselves describes what the
clearinghouse does.

For example, Claim 1 states that the

clearinghouse stores data of the server computer and the client
computer device, not of an account holder.

In addition, Prism

quotes other claims using the term “clearinghouse” and concludes,
“As the language of these claims makes clear, the clearinghouse
performs the function of authenticating the identity of various
physical devices, not ‘account holders’” (Filing No. 309, at 38).
Finally, Prism states that none of the asserted claims for the
term “clearinghouse” references accounts or account holders.
After a review of the parties’ briefs and accompanying
evidence, the Court construes “clearinghouse” to mean “a computer
that is independent of the server computer and has software
capable of storing data and controlling access to protected
resources of the server computer.”
E.

“access server”

Prism’s Proposed
Construction:

Defendants’ Proposed
Construction:

“server software that makes
available information or
other resources”

“a computer that makes
available information or other
resources”

“Access server” was not construed in the Delaware Case.
The sole difference in the parties’ proposed constructions is
whether the access server is “server software” or “a computer.”

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Prism maintains that the access server could refer to
software, rather than to a particular computer or device.

Prism

notes that when the inventors intended to refer to a computer in
the claims, they used the word “computer,” as in the term “server
computer” in claims 1, 31, 62, and 87 of the ‘288 Patent (Filing
No. 309, at 39).

Prism maintains the use of the new term “access

server” indicates that it is not the same thing as the server
computer.
Prism also cites the language of the specification in
support of this contention.

Prism claims that the parties are in

agreement that the term “secure transaction server 34" in the
specification refers to the “access server” as recited in the
claims that were added later in the prosecution history (Filing
No. 400, at 30).

With that understanding, Prism cites the ‘288

Patent specification:
With respect to the major
components of the system as shown
in FIG. 1, the transaction
clearinghouse 30 preferably resides
on a back office platform in a
corporate network. It has a secure
interface to communicate with the
secure transaction servers 34,
which reside on the same machine
that hosts the web server.
‘288 Patent 4:14-19.

Prism argues that the secure transaction

server 34 (or access server) cannot be a computer, because it
“resides on [a] machine.”
software program.

Therefore, the access server must be a

Prism also cites extrinsic evidence in the
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form of technical dictionaries to support its thesis that the
term “server,” generally speaking, could be a “computer or
program” (Ex. 9, Filing No. 310, at 9-10).
Defendants note that claim 118 discloses, “wherein said
at least said portion of said protected computer resources are
stored on said at least one access server.”
39.

‘288 Patent 45:37-

Defendants argue that the access server must be a computer,

or it would not be capable of storing the protected computer
resources.

Defendants state that the access server should be

construed in the same way as “server computer” (one of the
jointly stipulated terms) because Prism substituted the term
“access server” for “server computer” in the amendment to the
‘288 Patent filed on March 2, 2007, adding claims 117-187.
Defendants claim,
In this amendment, the applicants
substituted the term “access
server” for “server computer” in
its new set of claims, without
explanation for the substitution.
The second set of claims is based
on the same disclosure as the
initial set. As a result, the
corresponding limitations should be
construed the same. This is
consistent with how the parties and
the Court have agreed that the two
terms “hardware key” and “access
key” are, in fact, synonyms.
(Filing No. 370, at 46-47).

Defendants also cite a different

technical dictionary that supports their contention that a
server, in general, is a computer or a device.
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After careful review of the briefs and the submitted
evidence, the Court finds that Defendants have not established
that the “access server” of the later claims of the ‘288 Patent
must be the same entity as the “server computer” of the earlier
claims, nor have they established that an access server must be
computer hardware.

The Court construes “access server” to mean

“server software that makes available information or other
resources.”
F.

“authentication server”

Prism’s Proposed
Construction:

Defendants’ Proposed
Construction:

“software capable of storing
data and permitting access to
protected computer resources”

“a computer that,
independently of the access
server, authenticates account
holders and controls access to
protected computer resources
of the access server”

“Authentication server” was not construed in the
Delaware Case.

The parties’ proposed constructions are largely

aligned with the proposed constructions for the terms
“clearinghouse” and “access server,” in that the same issues
arise here as did for those terms.

For the same reasons given

above for “clearinghouse” and “access server,” the Court
construes “authentication server” to mean “server software that
is independent of the access server and is capable of storing

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data and controlling access to protected computer resources of
the access server.”
G.

“selectively requiring . . . [said/the] client
computer device to forward”

Prism’s Proposed
Construction:

Defendants’ Proposed
Construction:

“choosing to require that the
client computer device
transmit certain information”

“during an operating session,
periodically requiring the
client computer device to
forward”

The phrase “requiring . . . to forward” was construed
in the Delaware Case to mean “requiring that certain information
be transmitted” (Delaware Order, at 7).

As with the term

“authenticate,” the Delaware Court adopted without comment the
joint stipulation of the parties as to this construction.
Unlike the Delaware construction, this Court’s
construction must also take into account the word “selectively.”
Prism’s proposed construction adds the concept of “choosing to
require” in response to the word “selectively,” whereas
Defendants propose the word “periodically.”

Prism states that

Defendants’ use of the word “periodically” implies that the
transmission must happen more than once, which it says is not
necessarily indicated in all of the claims.
Prism also points out that dependent claim 9 adds the
limitation of “intermittently” to the act of requiring to

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forward.

Since “intermittently” is a synonym of “periodically,”

Prism argues, then dependent claim 9 would not add anything to
independent claim 1 because that concept would already be
included in independent claim 1.

Defendants state that Prism’s

phrase “choose to require” does not mean the same thing as
“selectively require.”

Prism refutes this argument with evidence

from the prosecution history suggesting that the PTO examiner
interpreted “selectively” as differentiating from prior art where
the information was required to be forwarded “automatically,” so
that introducing the concept of choice would properly account for
that distinction.
Otherwise, Prism’s proposed construction tracks the
Delaware Case construction, defining the verb to “forward” as to
“transmit certain information.”

Prism claims that this

translation of the word “forward” is evident from the language of
the claims themselves, because, for example, the digital
identification is transmitted from a client computer device to a
server computer.

Defendants claim that the meaning of the word

“forward” is commonly understood, and does not need to be
translated as “transmit.”
Finally, Prism claims that Defendants’ proposed
temporal phrase, “during an operating session,” improperly
narrows the construction and is not required by the claims.
Defendants state that the phrase “during an operating session” is

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important because this phrase would illustrate the fact that the
“selective requiring” happens after an initial authorization of
the client computer.
After review of the parties’ submissions, the Court
finds that the intrinsic evidence justifies the adoption of
Prism’s proposed construction.

Accordingly, the Court construes

“selectively requiring . . . [said/the] client computer device to
forward” to mean “choosing to require that the client computer
device transmit certain information.”
H.

“adapted to forward”

Prism’s Proposed
Construction:

Defendants’ Proposed
Construction:

“capable of transmitting”

“configured to forward”

The term “adapted to forward" was construed in the
Delaware Case to mean “capable of transmitting” (Delaware Order,
at 6).

As with the terms “authenticate” and “requiring . . . to

forward,” the Delaware Court adopted without comment the joint
stipulation of the parties as to this construction.
Prism argues that “capable of transmitting” is an
appropriate construction because there is little difference
between the use of the phrase in the ‘288 Patent and in the
parent ‘416 Patent.

Defendants, on the other hand, cite patent

construction decisions in other cases that they claim support
their construction.

First, in Boston Scientific Corp. v. Cordis
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Corp., No. C 02–01474 JW, 2006 WL 3782840 (N.D. Cal. Dec. 20,
2006), the court construed “adapted to” to mean “configured to,”
as opposed to “suitable for.”

Boston Scientific, at *3.

In that

case, after citing several common dictionaries, the court stated,
“Plaintiffs’ proposed definition of ‘configured to’ embraces the
concept of a device intentionally and specifically made to act in
a certain way.”

Id. at *2.

On the other hand, “suitable for”

was not the correct construction because it did not account for
the device in question to be “intentionally and specifically
made,” which follows from the words “adapted to.”

Id. at *2.

The court’s decision was partly informed by the fact that the
inventors had used the phrase “capable of” in some instances, and
“adapted to” in others, implying that the two phrases must have
different meanings.

In any event, the court concluded that

“‘capable of’ is a broader term than ‘adapted to.’”

Id.

Likewise, in Agilent Techs., Inc. v. Affymetrix, Inc.,
567 F.3d 1366 (Fed. Cir. 2009), the Federal Circuit rejected the
construction of a closed chamber “adapted to . . .” as meaning
“capable of . . .” because “the closed chamber is not merely
capable of being set apart from its surroundings - it is in fact
set apart.”

Agilent, 567 F.3d at 1378.

In Sta-Rite Indus., LLC v. ITT Corp., 682 F. Supp. 2d
738 (E.D. Tex. 2010), the court rejected “having the capacity to”
as too broad a construction for “adapted to.”

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Sta-Rite, 682

F.Supp.2d at 753.

The court stated that “in view of the

specification, simple capacity does not reflect the intended
meaning of ‘adapted to.’”

Id.

Also rejecting the other party’s

construction as too narrow, the court construed the term
“‘adapted to’ to mean ‘designed or configured to.’”

Id.

Defendants here argue that this supports their construction of
“configured to,” while Prism claims that the addition of
“designed” broadens the construction to be more akin to Prism’s
preferred “capable of.”
At oral argument, Prism emphasized the fact that the
claims wherein “adapted to” appears are “system claims.”

“So in

that context, it makes sense that ‘adapted to forward’ means
capable of forwarding, not that you have to -- you’re absolutely
required to be doing that action because that doesn’t make sense
in the . . . context of a system claim where you need to have
components, not particular steps” (Transcript of Proceedings January 12, 2012, Filing No. 468, at 108-109).

However,

Defendants refuted this argument, stating,
These are system claims which means
that when the defendants ship their
products, they’ve already got to be
adapted, they’ve already got to be
configured to do what the claims
say otherwise there’s no
infringement. The fact that some
user may later be able to adjust
something or make it capable of
doing something is irrelevant to a
system claim.
Id. at 109.

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After review of the parties’ submissions with respect
to the term “adapted to,” the Court finds that it has been
“otherwise compelled” to veer from the presumption that “the same
claim term in the same patent or related patents carries the same
construed meaning,” because “adapted to” does not mean the same
thing as “capable of.”

However, consistent with the construction

above, the Court will construe “forward” to mean “transmit.”
Thus, the Court construes “adapted to forward” as “configured to
transmit.”

Accordingly,
IT IS ORDERED:

As to United States Patent No.

7,290,288,
1) As jointly stipulated by the parties (Filing No.
440), the preambles of the asserted claims are limiting.
2) As jointly stipulated by the parties, the following
terms are construed as indicated:
a.

“an untrusted network” is construed to mean “a
public network with no controlling organization,
with the path to access the network being
undefined and the user being anonymous.”

b.

“server computer” is construed to mean “a computer
that makes available information or other
resources.”

c.

“Internet Protocol network” is construed to mean
“a network using any protocol of the Internet
Protocol Suite including at least one of IP,
TCP/IP, UDP/IP, and HTTP.”

d.

“protected resources” and “protected computer
resources” are construed to mean “computer
services, applications, or content that can be
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accessed (either directly or indirectly) by said
[server computer/access server].”
e.

“authorizing” is construed to mean “determining
whether to grant access to.”

3) The Court construes the remaining disputed terms as
follows:
a.

“digital identification” is construed to mean
“digital data whose value is known in advance or
calculated at the moment.”

b.

“identity data” is construed
sufficient for the system to
person, organization, and/or
and/or is entitled to access

c.

“authenticating” is construed to mean “determining
that something is, in fact, what it purports to
be.”

d.

“clearinghouse” is construed to mean “a computer
that is independent of the server computer and has
software capable of storing data and controlling
access to protected resources of the server
computer."

e.

“access server” is construed to mean “server
software that makes available information or other
resources."

f.

“authentication server” is construed to mean
“server software that is independent of the access
server and is capable of storing data and
controlling access to protected computer resources
of the access server.”

g.

“selectively requiring . . . [said/the] client
computer device to forward” is construed to mean
“choosing to require that the client computer
device transmit certain information."

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to mean “data
determine whether a
computer is authentic
protected resources.”

h.

“adapted to forward” is construed to mean
“configured to transmit.”

DATED this 14th day of February, 2012.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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