Illinois Computer Research LLC v. HarperCollins Publishers, Inc. et al
Filing
111
MEMORANDUM OPINION & ORDER:#101306 Having construed the claims of the '252 patent, this matter will now proceed to resolution on the merits regarding infringement, non-infringement and invalidity. As this Court stated at the conference held on N ovember 23, 2011: expert discovery is to be completed no later than April 4, 2012; the parties shall submit any dispositive pretrial motions no later than April 16, 2012; responses shall be filed no later than May 7, 2012; reply briefs, if any, shall be submitted no later than May 21, 2012. ( Expert Discovery due by 4/4/2012., Motions due by 4/16/2012., Responses due by 5/7/2012, Replies due by 5/21/2012.) (Signed by Judge Katherine B. Forrest on 1/18/2012) (mro) Modified on 1/19/2012 (jab).
USDCSDNV
DOCUMENT
ELECTRONICALLV FILED
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
DOC#:--__~~~~rr~a
------------------------------------x
DATE FILED-
ILLINOIS COMPUTER RESEARCH LLC,
Plaintiff,
10 Civ. 9124 (KBF)
MEMORANDUM OPINION &
ORDER
-v-
HARPERCOLLINS PUBLISHERS, INC., et
al. ,
Defendants. :
------------------------------------X
KATHERINE B. FORREST, District Judge:
On August 10, 2010, Plaintiff Illinois Computer Research,
LLC, the owner of United States Patent No. 7,111,252 (the
~'252
patent"), brought an infringement action against three
publishers: HarperCollins Publishers, Inc., HarperCollins
Publishers, L.L.C.
(together
~HarperCollins"),
Inc., and Simon & Schuster, Inc.
Random House,
Defendants counterclaimed for
declarations of invalidity and non-infringement.
The inventor of the '252 patent, Scott Harris, an attorney
who previously worked at a law firm that specialized in patent
work, first applied for the patent in 1999.
During the
prosecution of the patent, Mr. Harris communicated on numerous
occasions with the Patent and Trademark Office (the
~PTO")
regarding the particular claims of his invention and
differentiated those claims from claims made in prior art.
~,
(See
Davis Decl. Exs. N, 0 and P, Sept. 22, 2011, Dkt No. 94.)
Certain of the claims originally included in the initial patent
application were not included in the patent as issued.
As a
result, and as is often the case, the claims in the prosecution
history have different numerical designations from how those
claims are set forth in the patent as ultimately issued.
For
instance, what is now claim 1 in the '252 patent was "claim 85"
during the period of patent prosecution.
This will be referred
to during the discussion below when this Court references the
prosecution history of how particular claims are correctly
construed.
After a seven year prosecution, the '252 patent was finally
issued on September 19, 2006.
The '252 patent is entitled
"Enhancing Touch and Feel on the Internet."
The complaint
describes the '252 patent as "an apparatus and method for
obtaining and reviewing excerpts from a digital book for preview
prior to purchase, but prevents the reader from obtaining and
reviewing the entire book prior to purchase./t
( Comp 1.
~
10.)
Plaintiff claims that defendants' websites infringe the '252
patent.
(Compl.
~~
11, 14 and 17.)
Defendants have
counterclaimed for invalidity on the basis of prior art that was
not before the patent office during prosecution and for noninfringement.
(Dkt Nos. 86-88.)
The meaning and scope of the
claims at issue will have a significant impact on the invalidity
and non-infringement claims.
BACKGROUND OF THIS MOTION
It has become a matter of course for patent cases to
proceed in the following manner: a plaintiff sets forth the
specific claims of the patent(s) it asserts defendant(s)
infringe and the manner of such infringement in its complaint
and in the form of "infringement contentions", and defendant(s}
counterclaim for a finding of non-infringement and, very
frequently,
invalidity in the form of counterclaims and
"invalidity contentions."
Infringement and invalidity are
factual questions, Nystrom v. TREX Co., Inc., 339 F.3d 1347,
1350 (Fed. Cir. 2003), but depend on the meaning and scope of
the claimed invention.
As a result, a necessary and preliminary step to reaching
the merits of the parties' respective contentions is to
determine the scope and meaning of the patent claims at issue.
The proceeding at which the parties put forth their respective
claim constructions is called a "Markman" hearing, after the
case that once and for all put to rest the question of whether
claim construction is a question for the court or the jury.
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976-79 (Fed.
Cir. 1995), aff'd, 517 U.S. 370 (1996).
In Markman, the court
ruled, and the Supreme Court then affirmed, that claim
construction is a question for the court to decide.
Id. at 979.
Frequently, a factual determination as to whether or not
infringement has occurred or whether or not prior art may be
applicable depends directly on how a claim is construed.
Cybor
Corp. v. FAS Techs., Inc, 138 F.3d 1448, 1454 (Fed. Cir. 1998).
Questions of infringement and invalidity, if not resolved on
summary judgment following claim construction, are left for
trial (and often a jury) to decide.
In the matter before this Court, the parties have moved to
construe certain claims of the '252 patent.
Plaintiff and
defendants have set forth their views on the meaning of the
claims at issue.
(Dkt Nos. 89, 93-95, 97-99.)
Prior to the
hearing, the parties stated that they would not be calling
witnesses live at the hearing.
The Markman hearing in this case
occurred on January 3, 2012, and consisted of oral argument from
counsel for the parties.
THE CLAIMS TO BE CONSTRUED
Plaintiff's infringement allegations relate to eleven
claims (1, 7, 8, 11 and 15-21) of the '252 patent.
11, 14 and 17.)
(Compl.
~~
Claims 8 and 19-21 are "dependent" claims.
As
a matter of law, infringement of dependent claims requires a
finding that the related "independent" claims have been
infringed.
Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870
F.2d 1546, 1552 n.9 (Fed. Cir. 1989)
4
("One who does not infringe
an independent claim can not infringe a claim dependent on (and
thus containing all the limitations of) that claim. H )
The parties have disagreements as to the meaning and scope
of some of the language in claims 1, 7, 8, 11 and 18.
They
submitted a "Revised Joint Claim Construction Chart H (Davis
Decl. Ex. A) and made submissions at oral argument that were
marked as Court Exhibits 1 and 2 for identification, regarding
their views as to the correct meaning of the disputed language.
(Dkt Nos. 109-110.)
Unsurprisingly, the parties' disputes
regarding the meaning and scope of the claims relates directly
to their positions as to whether infringement has or has not
occurred in the manner claimed.
THIS COURT'S CONSTRUCTION TOOLS
The claims of a patent define the invention to which a
patentee has been given a right to exclude.
Phillips v. AWH
__~~, 415 F.3d 1303, 1312 (Fed. Cir. 2005)
en banc
i
Innova!Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1115 (Fed. Cir. 2004).
Claim construction begins
and sometimes ends with the language of the claim itself.
The
first and most important tool in the Court's toolbox is the
language of the claims themselves.
568, 570 (1876)
i
~~~~~,
Merrill v. Yeomans, 94 U.S.
415 F.3d at 1312; NTP, Inc. v.
Research in Motion, Ltd., 418 F.3d 1282, 1299 (Fed. Cir. 2005)
i
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
5
Cir. 1996).
The claims measure the invention.
Cont'l Paper Bag
Co. v. E. Paper Bag Co., 210 U.S. 405, 419 (1908).
This Court's
job is to elaborate what can sometimes be quite terse language
in a claim - but in so doing, it must not change the scope of
the claim and thereby alter the scope of the invention with
respect to which the patentee has exclusion rights.
Terlep v.
Brinkmann Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005).
To the
extent that the language of a claim is not clear on its face, a
court has two types of evidence it can pick out of its toolbox
to guide its construction: intrinsic and extrinsic evidence.
Phillips, 415 F.3d at 1317.
Intrinsic evidence is often
dispositive and should always be the starting place.
Intrinsic
evidence includes the patent's specification as well as the
patent's prosecution history before the PTO.
Id.
A patentee's
statements before the PTO as to the meaning and scope of a claim
follow only the language of the claim and the specification in
importance to construction.
Id.
In the matter before this Court, and with respect to
several of the claims at issue, both the specification and the
prosecution history provide important evidence regarding what
the inventor was claiming and how far he intended the scope of
his invention to reach.
If this Court did not find that intrinsic evidence provided
enough information to construe the language of the claims at
6
issue, it could turn to extrinsic evidence.
at 1317.
Phillips, 415 F.3d
Extrinsic evidence can include expert and inventor
testimony, dictionaries and learned treatises.
Id.; Vitronics,
90 F.3d at 1584.
There is no single key to unlocking the meaning of a
particular claim.
A court must use the tools in its toolbox,
trying to determine what the inventor meant to cover at the
time, what he or she was in fact allowed to cover and what the
customary and ordinary meaning of terms were to one skilled in
the art at the time the inventor applied for the patent.
See
Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed.
Cir.2010).
CONSTRUCTION OF CLAIM 1
Claim 1 is:
A method comprising:
[a] in a server of a network, storing a plurality of
images representing pages of a book,
[b] said images stored with a resolution effective to
enable said book to be read;
[c] responsive to a request over the network,
one of said images to a remote node; and
sending
[d] determining if the request for pages exceeds a
certain threshold, and sending said information only
if said threshold is not exceeded.
7
The Meaning of "Image"
The Revised Joint Claim Construction Chart indicates
plaintiff's agreement with defendants' proposed construction of
[a],
[b] and [c].
However, at the Markman hearing and in the
submissions of the parties, it is clear that the parties in fact
dispute the meaning of the words to which they agreed in the
Revised Joint Claim Construction Chart.
The parties "agree" that the first clause of claim 1 should
be interpreted as "A method comprising: in a server of a
network, storing a plurality of representations of the content
of the actual pages of a book."
This seeming agreement masks
what is the fundamental point of disagreement - which is the
manner in which the invention anticipates that either the
"image" or "content" of the book would be presented.
The parties dispute whether "typed in text", for instance
in the form of HyperText Markup Language (\\HTML"), or a static
scanned image such as a Portable Document Format ("PDF") file,
are among two of the ways in which such \\images" may be
presented.
Defendants argue "yes" and plaintiff argues "no."
(Compare Defs.' Opening Claim Construction Br. at 23-25 with
Pl.'s Responsive Claim Construction Br. at 21-22.)
At oral
argument the parties made it clear that whether or not images
can include typed in text using HTML may implicate prior art
and therefore may have relevance to invalidity arguments, the
8
merits of which are left for another day.
See
~,
Markman
Hr'g Tr. at 13-14, Jan. 4, 2012i see also Markman Hr'g Ct. Exs.
1 at 7-24, 2 at Section II.)
At the Markman hearing, plaintiff argued that the word
"image" should be read narrowly and to mean an image akin to a
true replica of the text as seen in its original book form such
as a photographic version of an image; for instance, a Joint
Photographic Experts Group ("JPEG") file.
(Hr'g Tr. at 20-21.)
The language of the claim is not elucidating on this point.
Plaintiff points to three sections from the specification to
support their reading: column 5 at lines 34-39 and 61-67 and
column 6 at lines 1-6.
(Ct. Ex. 2 at Section IV.)
None of
these references exclude content presented in HTML or PDF
format.
image
Rather, they use language such as "obtaining a digital
. . " and "digital images" of the book covers, liner
notes and biographic/informational notes, and the table of
content.
The last reference is to a figure that describes "the
front cover of the book showing an accurate depiction of the
look of the book."
There is nothing in the record of the prosecution history
provided by the parties that is helpful one way or the other
regarding whether to construe claim 1 as limited to what are
essentially photographic type images or to expand the meaning to
include typed in text via, for instance, HTML.
9
However, this
Court is not the first court to be asked to construe this
language of this claim.
In a recent, prior litigation between
plaintiff and Harpo Productions, Inc., Judge Kennelly in the
Northern District of Illinois was asked to, and did, construe
this very same language.
Illinois Computer Research, LLC v.
Harpo Prods., Inc., 704 F.Supp.2d 758 (N.D. Ill. 2010).
In that
case, plaintiff Illinois Computer requested that the court
specifically find that the language at issue could include text
presented in HTML format.
In that litigation, plaintiff argued
that Harpo infringed because the ntyped-text is a representation
of the contents of the pages of the actual book" and that "all
of the data that is used to create the words and punctuation on
the page of the book is displayed on the user's screen."
(PI. ' s
Mem. in Opp. to Harpo's Mot. for Summ. J. of Non-Infringement at
20 Illinois Computer Research, LLC v. Harpo Prods., Inc., 704
F.Supp.2d 758 (N.D. Ill. 2010)
(Davis Decl. Ex. S).)
In opposing summary judgment, plaintiff directly confronted
Harpo's argument that images had to be essentially exact
photographs of the content.
In arguing against that position as
far too narrow, plaintiff stated,
The
plain
language
of
the
claims
says
nimages
representing
pages
of
a
book"
not
"exact
representation" or "actual physical pages" (emphasis
added).
Those words do not appear in the claims.
If
Mr. Harris wanted the claim to say "exact pages,
"actual pages" or even just "pages," he would not have
II
10
used the words
"pages."
"images representing"
before the word
Harpo's proposed construction also takes the word
"representing" completely out of the claim - something
cannot represent a thing and at the same time become
that thing.
Actual text is converted to l's and 0' s
(binary code), then reconstituted to create an image
of the actual text, not the original text itself.
(Id.at8.)
Plaintiff also argued:
Harpo's argument regarding the traditional method is
that the characters are typed-in and thus are not
images representing pages of a book.
This argument
has no merit, as all of the data that is used to
create the words and punctuation on the page of the
book is displayed on the user's screen.
Thus, the
typed-text is a representation of the contents of the
pages of the actual book.
Id. at 20 (internal citations omitted).)
In the Harpo case, the inventor submitted a declaration
wherein he stated that "a screen that displays text is
displaying an image of that text."
(Declaration of Scott C.
Harris at 4 Illinois Computer Research, LLC v. Harpo Prods.,
Inc., 704 F.Supp.2d 758 (N.D. Ill. 2010)
(Davis Decl. Ex. R).)
In the claim chart in that case, the language of claim 1 was
described by plaintiff in the following way: "the server returns
images of a pages over the network connection - those images of
pages including html code with text and formatting information./I
Id. at 11.
11
In the matter before this Court, plaintiff does agree that
"a markup language such as HTML, which is both powerful and
flexible, could be used to create an image that represented
pages of a book."
{Illinois Computer Research, LLC's Objections
and Resps. to Defs.' Request for Admiss. at 22-23 (Davis Decl.
Ex. V, Nov. 4, 2011, Dkt No. 98).)
But plaintiff "denies that
text in a markup language generally constitute images
representing pages of a book and further denies that any person
or entity used text in a markup language to create images
representing pages of a book before September 22, 1999."
Id.
at 23.)
Plaintiff urges that this Court not find that its prior
position before Judge Kennelly is dispositive and that it not
result in "judicial estoppel."
At oral argument, the Court
asked plaintiff why, putting aside the legal doctrine of
judicial estoppel, its prior position before the Northern
District of Illinois was not at the very least an admission.
Plaintiff argued only that different positions are taken because
of the circumstances that may arise in the context of a
particular litigation.
Claim construction is a question of law.
FAS Techs.
Cybor Corp. v.
, 138 F.3d 1448, 1454 (Fed. Cir. 1998).
It is
the process the Court employs to construe a patent's claims,
which define the invention to which the patentee has a right to
12
exclude others from practicing in the absence of permission.
Innova!Pure Water, Inc., 381 F.3d at 1115-16.
It is an exercise
in uncovering once and for all the meaning of the words of the
patent so that the public can be properly placed on notice as to
what inventions are and are not covered.
v. Hewlett-
See Pitney Bowes, Inc.
Co., 182 F.3d 1298, 1311 (Fed. Cir. 1999)
----------~--~----~--~
(discussing the importance of public notice function in claim
construction).
Put most bluntly, there is no room in claim
construction for a changing of positions.
See~,
Southwall
Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1578 (Fed. Cir.
1995)
("A patentee may not proffer an interpretation for the
purposes of litigation that would alter the indisputable public
record consisting of the claims, the specification and the
prosecution history, and treat the claims as a 'nose of wax.''')
This Court finds that positions plaintiff took in 2010 regarding
the meaning of the term "image" in Claim 1 are admissions and
are therefore a piece of extrinsic evidence for this Court to
consider as it construes that same language in this proceeding. 1
IAlthough this Court construes plaintiff's prior positions as a series of
admissions, the doctrine of "judicial estoppel" would also apply to
plaintiff's current construction of the term "image" for the following
reasons: plaintiff's construction here is clearly inconsistent with the one
it put forth in the Harpo casei plaintiff was successful in opposing
defendant Harpo's proposed limitation to the definition of "image" in the
Harpo casei and plaintiff would surely derive an unfair advantage if it were
allowed to take inconsistent positions because it would permit plaintiff to
potentially avoid prior art and dodge summary judgment. See Sandisk Corp v.
Memorex Prods., Inc. 415 F.3d 1278, 1290 91 (Fed. Cir. 2005).
13
This Court finds that there is nothing in the language of
claim 1 or the specification to exclude any particular format
available in September of 1999 from being included within
formats that could constitute "images representing pages of a
book."
Accordingly, this Court adopts the parties' agreed
construction of the first portion of claim 1 that "images
representing pages of a book" means "a plurality of
representations of the content of the actual pages of a book."
The Court also finds that this "content" can include any format
available in 1999, including formats that were "typed-in" as
well as those that might be photographic representations.
The Determining Step
Prior to the Markman hearing, there appeared to be a
significant dispute between the parties regarding the
"determining step" of claim 1.
(Defs.' Opening Claim
Construction Br. at 12-17i PI.'s Responsive Claim Construction
Br. at 10-13.)
That step states, "determining if the request
for pages exceeds a certain threshold, and sending said
information only if the threshold is not exceeded."
The debate
appeared to focus on whether the phrase "exceeds a certain
threshold" meant "exceeds a limit on the number of pages of the
book the user may read" as defendants suggest, or should instead
be read as "exceeds a limit on the amount of reading that can be
done" as the plaintiff urges.
(Revised Joint Claim Construction
14
Chart at 2.)
The importance of the dispute had to do with an
infringement claim that plaintiff conceded at oral argument it
has dropped (Hr'g Tr. at 27-28), relating to sending an entire
book over the internet after payment.
Construction Br. at 13.)
(Pl.'s Responsive Claim
Plaintiff stated that it is no longer
arguing that it is seeking to find these defendants liable for
infringement by virtue of their sending entire books over the
internet.
(Hr'g Tr. at 27-28.)
Plaintiff did state, however,
that there might be other litigations in which this claim still
had relevance.
Id. at 56.)
In construing the determining step, this Court is concerned
here, as it was above, with what the invention is that claim 1
should be construed to cover - thereby placing the public on
adequate notice of the bounds of plaintiff's exclusive patent
rights.
There will only be one correct construction, not a
changing landscape.
It is clear from the language of the claim itself, from the
text of the specification, and from various statements made
during the prosecution history of the '252 patent, that the
invention claimed related to a way to enhance the touch and feel
of portions - but not all - of a book using the internet.
There
is no support in the claim or in the specification for a reading
of the determining step of claim 1 as expansive enough to
capture the sale or transfer of an entire book over the
15
internet.
The prosecution history relating to claim 1 directly
contradicts such a reading.
For instance, the determining step of claim 1 is written
both with a specific references to just npages"
(and not books)
1
and with a negative limitation on threshold (nand sending said
information only if said threshold is not exceeded"), not an
expansive reading that would allow threshold to include a
concept of "raising" or nlifting" a threshold as plaintiff
suggested in their brief in support of their proposed
construction.
See Pl.'s Responsive Claim Construction Br. at
12. )
In addition, on its face, the specification repeatedly
refers to the invention as allowing for previewing a product, or
reading of excerpts (which is less than an entire book).
For
instance, the specification states: "An embodiment limits the
amount of reading that the user can do, to prevent the entire
book from simply being read on line", and
This allows the user to read parts of the book.
A
problem would exist, however, if the entire book was
freely available.
In that case, any user could
download the whole book and read it on their computer
at their leisure.
Accordingly, the present system
teaches limits on the amount of reading that can be
done.
A limit is defined that limits the amount of
reading that can be done.
U.S. Patent No. 7,111,252 col.2 1.23-25, col.5 1.40-46 (Davis
Declo Ex. B).
16
During the prosecution history relating to claim 1 (which
was referred to then as "Claim 85"), inventor Harris repeatedly
discussed his invention as limiting the number of pages that
could be accessed.
For instance, he stated that prior art by
Danneels "teaches only conditions that are related to time of
day, load on the server, or presence of hardware.
There is no
teaching or suggestion that the condition could be a threshold
of the number of pages."
(Davis Decl. Ex. N at 3.)
He
differentiates Robertson as "Nowhere is there any teaching or
suggestion of limiting the pages based on the number of pages
that have been requested."
(Id. at 4.)
In the same
communication with the PTO, inventor Harris states, "The claimed
system enables previewing book pages without giving all the
possible book pages.
It prevents a user from reading the entire
book over the Internet, such as would be desirable in a
bookstore type environment.
This is not taught or suggested by
the cited prior art and hence should be allowable thereover."
(Id. at 4.)
In a subsequent communication with the PTO, inventor Harris
sought to differentiate his invention from that of Iggulden.
so doing, he stated,
In
"Iggulden teaches remotely storing a book,
and allowing a user to read the contents of the book after they
prove to the web site that they have already purchased the book.
Of course, once it is proved that the user owns the book,
17
there is no need or incentive to determine 'if the request for
the pages exceeds a certain threshold and sending said
information on only if said threshold is not exceeded."
Decl. Ex. 0 at 9-10 (emphasis in original).)
(Davis
He continues,
"Rather, since the requester already owns the book, they should
be allowed FULL AND UNLIMITED ACCESS."
(Id.
(emphasis in
original) . )
In yet a later communication, inventor Harris attempted to
differentiate his invention from that of Schneck and stated,
Nowhere is
"Schneck teaches nothing about page counts .
there any teaching or suggestion of counting a number of pages
of books which have been electronically viewed, and allowing an
additional page to be displayed only if the page count does not
exceed a threshold, as required by claim 85.
85 should be allowable for these reasons
Therefore, claim
II
(Davis Decl.
Ex. 0 at 10-11.)
The Harpo litigation provides another source of evidence
regarding the meaning of the determining step for claim 1.
In
that case, in plaintiff's Memorandum in Opposition to Harpo's
Motion for Summary Judgment, plaintiff describes the '252
invention as allowing a "potential purchaser" to "read a
portion, but not all of the book."
Harpo's Mot. For Summ. J. of the Non-Infringement at 2 Illinois
18
computer Research, LLC v. Harpo Productions Inc., No. 08 Civ.
7322 (N.D. Ill. Dec. 16, 2009).)
Accordingly, the determining step of claim 1 should be
construed as setting forth an invention which limits the number
of pages that can be viewed to something that is less than the
entire book.
Nothing within the language of claim I, the
specification, the prosecution history or admissions made during
the Harpo litigation support an argument that the determining
step of claim 1 could relate to the opposite of a limitation
namely, the "lifting" or elimination of a limitation such that
entire books could be read or purchased for a fee or over time.
CLAIMS 7 AND 11:
ARE THEY INDEFINITE?
The parties dispute whether any portion of claims 7 or 11
need to be construed.
Claim 7 is:
A method comprising:
[a] receiving, at a client of a network, information
about which of a specified plurality of images to be
displayed,
[b]
each of specified plurality of images showing
textual information and at least a plurality of said
images showing non-textual information,
[c]
said
textual
contents of a booki
[d]
displaying
requestsi
said
information
images
representative
responsive
[e]
displaying a screen tip,
indicating
reaction will be to a specified operation.
19
to
what
of
said
the
Claim 11 is:
A method comprising:
[a] receiving, at a client of a network, information
about which of a specified plurality of images to be
displayed,
[b] each of specified plurality of images showing
textual information and at least a plurality of said
images showing non-textual information,
[d]
displaying
requests; and
said
responsive
images
of
representative
[c]
said
textual
information
contents of an information media;
to
said
[e] displaying keys which enable moving a position of
viewing of said information media.
Defendants assert that there are two fundamental problems
with claims 7 and 11 that independently render the claims
invalid due to the indefiniteness.
Construction Br. at 18-21.)
(See Defs.' Opening Claim
They argue that claims 7[a] and
11[a] are not grammatically correct and therefore nonsensical;
they separately argue that they fail due to the lack of an
antecedent basis for the phrase "said requests" as used in each
claim.
Id.
Claims of an issued patent are cloaked with a statutory
presumption of validity.
See 35 U.S.C.
§
282; Datamize, LLC.
Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005).
The '252 patent was subject to extensive communication between
the PTO and inventor Harris - including with respect to what is
20
now claim 7.
(Davis Decl., Ex. 0 at 3 (referring to claims 7
and 11 as "93" and "94").)
The Federal Circuit requires clear
and convincing evidence that one skilled in the art simply
cannot discern the boundaries of a patent claim in order to
invalidate it for indefiniteness.
Datamize, 417 F.3d at 1348.
This Court cannot invalidate a patent for indefiniteness simply
because construing it is difficult.
Halliburton Energy Servs.,
Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008)
(" [C] laims
are not indefinite merely because they present a difficult task
of claims construction.
Instead,
\ [i]f the meaning of the claim
is discernible, even though the task may be formidable and the
conclusion may be one over which reasonable persons will
disagree, we have held the claim sufficiently clear to avoid
invalidity on indefiniteness grounds. '"
(citations omitted)).
In order to invalidate a patent for indefiniteness, this Court
would have to find that the language of claim 7[a] is "insolubly
ambiguous" or "not amenable to construction."
(Id. at 1250.)
Claims 7[a] and 11[a] Make Sense
During oral argument defendants repeatedly stated that in
order to construe claims 7[a] and 11[a]
I
this Court would have
to add and subtract words and perhaps have to describe the claim
in language not even in the claim itself.
at 82.)
This alone, however
claim as indefinite.
I
(See
~,
Hr'g Tr.
is not a reason to invalidate a
As this Court said then and repeats now ,
2l
the very act of using intrinsic evidence (other than the
language of the claim itself) and extrinsic evidence is to find
ways to describe what words of a claim, which is not clear on
its face, actually mean.
See~,
Financeware, Inc. v. UBS
Fin. Servs., No. 11 Civ. 5503 (JFK) , 2011 WL 6092311, at *3
(Dec. 7, 2011 S.D.N.Y.)
("In a claim construction hearing, or
Markman Hearing, the court interprets the meaning of the patent
at issue through examining evidence on the appropriate meaning
of relevant key words used in the patent claim.")
Every time
parties and the court use words other than what are in a claim
itself to construe the meaning and scope of a claim, they are
adding words - perhaps adding description, delineating metes and
bounds with words not present in the claim itself but that were
intended to be part of the claimed invention.
See~,
Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477
(Fed. Cir. 1998)
(affirming district court's construction of
"degradable" to mean "dissolution/degradation of [an]
envelope").
It is not the case that during claim construction,
simply using additional words, or taking out words, is
overstepping judicial bounds.
See Multiform Desiccants, 133
F.3d at 1477; Laitram Corp. v. Morehouse Indus., Inc., 143 F.3d
1456 (Fed. Cir. 1998)
(affirming district court's construction
of "driving surface" to mean "flat driving surface").
22
Defendants rightly cite Novo Industries, L.P. v. Micro
Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003), as standing for the
proposition that a court may not "correct" the language of a
patent in order to give a claim meaning -
if the parties needed
the language of a patent to be corrected, they must seek a
certificate of correction from the PTO.
Construction Br. at 11, 18-20.)
stretched too far.
(Defs.' Opening Claim
However, Novo should not be
It does not stand for a general proposition
that a court may not use additional words to describe the scope
and meaning of a claim.
construction.
See~,
That is a routine exercise in claim
Multiform Desiccants, 133 F.3d at 1477.
Novo, then, stands for the important proposition that if a
grammatical construction is all that is required to render a
claim clear on its face, the court may not delete or reorder
words to achieve such clarity.
But that is certainly not to say
that a court cannot describe the meaning of a claim using words
additional to those contained in the claim itself.
This is what
claim construction is all about and is neither earth shattering
nor novel.
Plaintiff argues that claims 7[a] and 11[a] are clear on
their face and do not need to be construed.
Plaintiff is not
asking, as the parties did in Novo, that words be added or
subtracted.
See Novo, 350 F.3d at 1354.
Instead, plaintiff
urged at oral argument that if the reader pauses in certain
23
places as the claims are read, then the meaning of the claims
are elucidated.
In this regard, plaintiff states that claims 7
and 11[a] are clear on their face when read as follows:
"information about/ which off a specified plurality of images/
to be displayed."
(Hr'g Tr. at 80.)
It is the defendants who offer the additions and
subtractions of words.
(See
~
Ct. Ex. 1 at 56.)
This Court is mindful that even if construing a claim is
hard, if it is not insoluble, the Court must perform its
assigned task.
See 02 Micro Intern. Ltd. V. Beyond Innovation
Tech. Co., Ltd., 521 F.3d 1351, 1362 (Fed. Cir. 2008)
("When the
parties present a fundamental dispute regarding the scope of a
claim term, it is the court's duty to resolve it.")
This Court
concludes that when the language of claims 7 and 11[a] are read
with the appropriate pauses, it is clear that no construction is
needed.
In both instances, the language means what it says:
that in both claims, it is anticipated that there will be
received at a client of a network, information, about which of,
a specified plurality of images, to be displayed.
The '252
invention is concerned with providing some but not all images of
a book; which images are to be displayed is subject to
limitation.
Thus, it is an important method of the invention
that the client of a network does in fact receive the
information about which images to display.
24
Conceivably the
addition of the word "are" prior to the phrase "to be displayed
would tighten the language further.
"are
ll
But the absence of the word
does not render the entire claim sufficiently indefinite
ll
that it loses the heavy presumption of validity that attaches by
virtue of the statute.
Lack of Antecedent Basis
Defendants separately argue that claims 7 and 11 are
invalid for indefiniteness because they both lack an antecedent
basis with respect to the phrase "said requests."
Opening Claim Construction Br. at 19-21.)
(Defs.
1
There is no debate
between the parties as to the literal meaning of the words
"said
ll
or "requests.
II
The parties implicitly assume that "said
refers to something previously specified and that a "request
precisely that
I
a request.
ll
ll
is
The debate centers on the question
of whether the claims provide a sufficient basis for determining
what the requests are and who made them
referred to "said requests.
1I
(See
l
that constitute the
ct. Exs. 1 at 59 and 2
at 60.)
Defendants are correct that the law presumes that the use
of the word "said
ll
in a claim is referring to an earlier use of
that term within the patent.
Stock Exch'
l
Papyrus Tech. Corp. v. New York
581 F. Supp. 2d 502
the word "said
ll
1
534 (S.D.N.Y. 2008)
(use of
to introduce an element makes that element
'unequivocally referable to its earlier recitation. III) •
25
Defendants argue that there are no preliminary requests to which
the later usage of "said requests
refer.
ll
in claims 7 and 11 could
In fact, no one, including defendants, has any confusion
at all regarding the requests to which claims 7 and 11 are
referring.
The entire invention is concerned with sending
images for purposes of previewing a product prior to purchase.
It is crystal clear that the "requests" relate to the requests
for portions of a book or information media.
only part of the inquiry.
However, that is
It is critical in the context of
understanding the metes and bounds of an invention to understand
who the actors are within the claims.
If a claim covers one set
of actors, then that puts the public on notice of one set of
bounds regarding certain activities that could result in an
infringement of the invention.
On the other hand, if a set of
actors is excluded from the claim, then it might not be possible
for them to infringe a particular claim.
Here, the question of
who is making the requests is an unanswered and important
question.
Because there is no way from the face of the claims
themselves to determine who is making the requests, the claims
do in fact fail for indefiniteness.
If, for instance, the "said requests" are being made by the
end user, then the operator of the server which sends out the
information could only be liable for indirect infringement.
This has specific implications for what proof would be needed to
26
demonstrate infringement (for instance, if plaintiff has to
prove secondary infringement, they will have to present proof of
an underlying act of direct infringement upon which the
secondary act of infringement relies, see Alloc, Inc. v. Int'l
Trade Comm'n, 342 F.3d 1361, 1374 (Fed. Cir. 2003)
infringement .
("direct
. . is a prerequisite to indirect
infringement.")).
Similarly, if the "said requests" are being
made by the operator of the server, then direct conduct could
result in direct infringement.
This, again, has substantive and
proof implications.
Accordingly, this Court finds that, while the disputed
language in claims 7 and 11 regarding "said requests" are
certainly referring to portions of a good to be previewed prior
to purchase, not knowing who is making the requests leaves the
public in the untenable position of not knowing how its conduct
might or might not run afoul of the claimed invention.
It is
possible that one could interpret the phrase "said requests" to
capture all requests of whatsoever nature - those made by the
end user and those made by the operator of the system.
But the
implications for such a broad reading lead down two different
infringement paths.
Such an outcome violates the fundamental
principle that the claims of the patent are intended to put the
world on notice of the exclusionary rights of the patent holder.
27
See Pitney Bowes, 182 F.3d at 1311.
The public is entitled to a
level of certainty that neither claim 7 nor 11 has.
Defendants also assert that if claim 11 does not fail for
indefiniteness, 11[e] requires additional construction.
The
dispute between the parties with regard to this portion of claim
11 concerns whether, as defendants contend, the language umoving
a position of said information media
ll
incorporates the ability
to view the information from different angles.
See Revised
Joint Claim Construction Chart at 4; Defs.' Opening Claim
Construction Br. at 21.)
is necessary.
Plaintiff asserts that no construction
In its brief, plaintiff argues that defendants'
reading imports unnecessary limitations.
Claim Construction Br. at 17-18.)
(PI.'s Responsive
Plaintiff agrees that viewing
the product from different angles is one way to enable viewing.
(Id. at 17.)
But plaintiff points to parts of the specification
that suggest that movement to show different angles is not the
only way to view a product as set forth in Claim 11 - that
viewing the product from the top or bottom is captured as well.
(Id. at 17.)
This Court agrees that the specification supports
a construction of claim 11 that would not limit viewing to
merely "angles./I
28
CLAIM 8
Claim 8 is a dependent claim.
7 survives.
It can only survive if claim
For the reasons set forth above, claim 8 fails for
indefiniteness.
Nevertheless, the parties dispute the scope and meaning of
claim 8.
The core of the dispute is whether the outside cover
of a book needs to be displayed prior to a user taking an action
that displays content from the inside of the book.
91-97.)
(Hr'g Tr. at
Plaintiff argues that the phrase ucommanding an opening
of the book" incorporates the concept of a user seeing the
outside cover of a book and then taking an action to open the
book to display internal content.
(Id.)
The defendants argue
that the claim is in fact only concerned with a user taking some
action to display interior contents of a book.
Id. at 94.)
This Court finds that the language of claim 8 itself is clear on
its face:
the phrase uopening of the book" clearly contemplates
a book in a closed position.
Books in closed position rest on
either their front or back covers.
When one picks up a book to
"open" it, one opens the cover to display internal contents.
This meaning and scope of claim 8 is consistent with the
invention as described repeatedly in the specification as
allowing a user to have the virtual experience of picking up and
handling a book.
See U.S. Patent No. 7,111,252 col.2 1.7 8, 17
24.
29
CLAIM 18
The final claim requiring construction is claim 18.
Claim
18 states:
An apparatus comprising:
[a] a computer,
[b]
[the computer] providing limited pages of books
that can be viewed over a
publically available
network, and
[c]
[the computer]
network, and
including
a
connection
to
the
[d] [the computer] receives information indicative of
at least one desired page of a book over the
connection to the network; and
[e] [the computer] returns information indicative of
only limited images of pages of the book based on said
informationi and
[f] wherein said computer
that can be displayed.
limits
a
number
of
pages
The Revised Joint Claim Construction Chart indicates that the
disputes concern [b],
[e] and [f].
The issues here are similar
in nature to those raised with regard to Claim l[d].
In both
instances, there was a disagreement between the parties
regarding whether the '252 invention encompassed only portions
or pages of a book, or could be read to more broadly capture an
entire book.
(Compare Defs.' Opening Claim Construction Br. at
17 with PI.'s Responsive Claim Construction Br. at II, 19.)
30
Following the Markman hearing, the parties submitted
additional materials regarding claims 1 and 18, with plaintiff
arguing that these claims are distinct and independent from each
other and defendants arguing that the patentability of these two
claims are linked.
Those materials make it clear that during
the prosecution history what is now claim 1 and claim 18 were
tied together
and considered to have similar scope.
Defs.' Ltr at 2-3, Jan. 11, 2012 (Dkt No. 107).)
(See
For instance,
to obtain the issuance of claim 18 over the prior art, inventor
Harris told the PTO that that language added to claim 18
rendered the claim "as amended" allowable for the same reasons
as claim 1.
(See id.
(citing Davis Decl. Ex. 0 at 15.))
This Court recognizes the distinctions between claim 1 and
claim 18 pointed to by plaintiff -
i.e., the absence of the term
"threshold" in claim 18 and the fact that "threshold" in claim 1
refers to the phrase "amount of reading" instead of "number of
pages"
(Pl.'s Ltr at 4, Jan. 11, 2012 (Dkt No. 108) - but they
do not change the analysis.
The prosecution history and
specifications make clear that "amount of reading" and "number
of pages" both refer to book excerpts.
Furthermore, courts
routinely construe similar language in distinct claims
consistently.
See~,
Lucent Techs., Inc. v. Newbridge
Networks Corp., 168 F. Supp. 2d 181, 200 (D. Del. 2001) i
Computer Stores Nw., Inc. v. Dunwell Tech, Inc., No. 10 Civ. 284
31
(HZ), 2011 WL 2160931, at *17 (D. Or. May 31, 2011); Mirror
Imaging, L.L.C. v. Affiliated Computer Servs., Inc., No. 02 Civ.
73629 (DT), 2004 WL 5644804, at *2 (Feb. 26, 2004, E.D. Mich).
Thus, for the same reasons as this Court set forth with
regard to claim l[d]
it finds that the '252 invention was
intended to cover portions or pages of a book that constituted
less than an entire book.
CONCLUSION
Having construed the claims of the '252 patent, this matter
will now proceed to resolution on the merits regarding
infringement, non-infringement and invalidity.
As this Court
stated at the conference held on November 23, 2011: expert
discovery is to be completed no later than April 4, 2012; the
parties shall submit any dispositive pretrial motions no later
than April 16, 2012; responses shall be filed no later than May
7, 2012; reply briefs, if any, shall be submitted no later than
May 21, 2012.
Dated:
New York, New York
January 18, 2012
f.-
g.~
KATHERINE B. FORREST
United States District Judge
32
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