Info-Hold, Inc. v. Applied Media Technologies Corporation

Filing 56

ORDER ON CLAIM CONSTRUCTION. Signed by Judge Timothy S. Black on 4/25/2013. (mr1)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION

INFO-HOLD, INC.,

Case No. 1:08-cv-802

Plaintiff,

Judge Timothy S. Black

vs.
APPLIED MEDIA TECHNOLOGIES
CORPORATION,
Defendant.

ORDER ON CLAIM CONSTRUCTION
The parties have each submitted briefs in support of their proposed claim
constructions. (Docs. 47, 48, and 50). Additionally, the Court held a Markman hearing
on April 17, 2013.
I.

THE PATENT AT ISSUE
The ‘374 patent, titled “Programmable Messaging System for Controlling

Playback of Messages on Remote Music-On-Hold-Compatible Telephone Systems and
Other Message Output Devices,” is generally directed to a system and methods for the
remote control of on hold, overhead, and other message playback devices located at one
or more remote locations. As described by this Court in its Order on Claim Construction
in the related case, Info-Hold, Inc. v. Muzak Holdings, et al., Case No. 1:11-cv-283:

“The claimed invention can be generally summarized as achieving the
desired control over messaging by using a computer that is programmed to
push control signals to linked remote playback devices. These remote
playback devices have a memory on which the various message options
have been previously stored, and the ability to manage message playback
according to the incoming control signal, and an output through which the
chosen message is played. The control signals originating from the
computer and pushed out to the remote playback devices contain
instructions that include the intended device and the desired message. The
designated playback device then plays the desired message.”
Doc. 60 at PAGEID #1122 (emphasis supplied).
II.

STANDARD OF REVIEW
Claim construction is a matter of law to be decided exclusively by the court.

Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc),
aff’d, 517 U.S. 370.
“The appropriate starting point [...] is always with the language of the asserted
claim itself.” Comark Comm, Inv. v. Harris Corp., 156 F.3d 1186 (Fed. Cir. 1998).
“[T]he claims of a patent define the invention to which the patentee is entitled the right to
exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
1115 (Fed. Cir. 2004).
Claim terms are “generally given their ordinary and customary meaning.” Phillips
v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). “The ordinary and customary
meaning of a claim term 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 ….” Id. at 1313.

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In the event of ambiguity regarding claim terms, courts must first look to the
intrinsic evidence (i.e., the claim itself, the specifications, the prosecution history, and
the prior art cited in the patent) to resolve the ambiguities. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
“The 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.”
Id. “When the specification explains and defines a term used in the claims, without
ambiguity or incompleteness, there is no need to search further for the meaning of the
term.” Multiform Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998).
In most circumstances, analysis of the intrinsic evidence alone will resolve claim
construction disputes. See Vitronics, 90 F.3d at 1583. However, if the intrinsic evidence
does not resolve ambiguities, extrinsic evidence may be considered. Extrinsic evidence
“can shed light on the relevant art, but is less significant than the intrinsic record in
determining the ‘legally operative meaning of disputed claim language.’” C.R. Bard, Inc.
v. United States Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004).

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III.

CONSTRUCTION OF THE CLAIMS
A.

Overview

Here, the nub of the dispute is whether the patented invention discloses a system
where a signal is sent from a computer to a remote playback device to provide playback
material or whether the invention disclosed is sufficiently broad to include a system
where the playback device initiates contact with the server and requests playback material
which is then provided to the playback device.
The first sentence of the Abstract of the Patent discloses “[a] remotely
programmable message delivery system comprises a number of client computers which
communicate with a server to send control signals to one or more remote message
playback devices.” (emphasis supplied). Doc. 74-1, the ‘374 Patent, at PAGE ID # 396.
Consistent with such disclosure, the claims language identifies “a computer …
operable to generate and transmit control signals … for controlling … message
playback devices … [and the] message playback devices being adapted to receive
said control signals via said communication link ….” (emphasis supplied) Id. at Col.
20, lines 23-27 and 28-30, PAGE ID # 436.
Thus, according to the very first statement in the specifications of the patent, “the
invention relates to a system for generating and transmitting message playlists to
remotely located optical disc players for playing selected messages via a music on-holdcompatible telephone system or public address system.” (emphasis supplied). Id. at Col.

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1, lines 9-13, PAGE ID # 424.
Under Summary of the Invention, the specifications state that “the computer is
programmable to generate control signals and provide them … for transmission
to the remote sites ….” (emphasis supplied). Id. at Col. 2, lines 41-43, PAGE ID # 424.
The concluding paragraph of the Summary of the Invention explains that the
message payback devices are adapted to receive the signals which the server sends:
“… the message playback devices each comprise a compact
disc player and a receiver circuit for receiving radiopaging signals
transmitted by via a radiopaging company. The receiver circuit
recognizes radiopaging signals directed to it and commands the
compact player to play the message tracks specified in the radiopaging
signals at the time and in the sequence requested by the client computer
from which the message playlist data for the radio paging signals
originated.” (emphasis supplied). Id. at Col. 2, lines 55-63, PAGE ID
# 424.
Furthermore, every single embodiment of the inventions stated in the
specifications describes a system where the server transmits to the remote players, and
not a system where the remote player initiates communication by transmitting a signal to
the server. Indeed, the specifications expressly state that “[t]he message playback
generating devices … are the end points of the system ….” (emphasis supplied).
Id. at Col. 17, lines 66-67, PAGE ID # 432.
Moreover, the descriptions of the preferred embodiments clearly reflect that the
server sends the signals to the message playback devices and not vice versa:

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The computers … transmit the message playlists and other
information pertaining to selected remote sites … or …
to the server. … The server … , in turn, generates control signals
for the message playback devices at the selected remote sites
to play the selected messages. … (emphasis supplied). Id. at Col. 5,
lines 18-20 and 26-28, PAGE ID # 426
The server … preferably transmits control signals comprising
playlists to a subcarrier radiopaging company … for radiopaging
the remote message payback devices via a communications link. …
(emphasis supplied). Id. at Col. 5, lines 41-44, PAGE ID # 426.
The server [] then organizes the datebase … changes into
control signals which are sent to the radiopaging companies …
for broadcast to the message payback devices …. (emphasis supplied).
Id. at Col. 8, lines 1-4, PAGE ID # 427
The message playback generating devices are the end points
of the system …. The message playback device is … programmed
to select command packets from the server …. (emphasis supplied).
Id. at Col. 17, lines 66-67, and Col. 18, lines 6, 7-8, PAGE ID # 432.
Each of these selected passages from the specifications clearly describes only a
system where the server sends signals to the message playback devices, and not vice
versa.
Moreover, the definition of message playback devices in the claims language
contained in the Reexamination Certificate discloses a system comprising of “a computer
remotely located from … message playback devices and operable to generate and
transmit control signals … [to] “message playback devices being adapted to receive
said control signals.” (emphasis supplied). Doc. 47-1, Col. 2, lines 11-13 and 16-17,
PAGE ID # 440.

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Finally, of additional interest to the Court in construing the claims here is the
extrinsic evidence relating to another patent, Patent No. 6,741,683 (“the Shelton patent”)
The Shelton patent covers “a local protractive message on hold device, which
contacts and interacts with a server, in order to receive from the server, the audio
programming and to install and alter the audio programming on the message on hold
device.” (emphasis supplied). Doc. 47-6 at PAGE ID # 502. This patent was issued in
2004, some three and a half years after the patent in suit here was issued, and in stating
the reasons for allowing such patent, the examiner states that prior patents “show music
on-hold systems but fail to teach or fairly suggest updating the audio programs by a
local device initiating contact with a server to determine if audio program changes are
available for the local device.” (emphasis supplied). Doc. 47-7 at PAGE ID # 511. This
statement assists the Court in determining what a person ordinarily skilled in the art
would understand the claims to present at the time of the invention reflected in the patent
at suit here.

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B.

Construction of the Disputed Terms
1.

“message playback devices”

Info-Hold’s proposed construction

AMTC’s proposed construction

A device configured to select and access from
its storage device one or more stored messages
and to play those messages through an output

A device configured to select and access from
its storage device one or more stored messages
and to play those messages through an output,
and adapted to receive control signals after
initiation of a contact from another source.”

The Abstract of the Patent discloses “[a] remotely programmable message delivery
system comprises a number of client computers which communicate with a server to send
control signals to one or more remote message playback devices.” Doc. 74-1, the ‘374
Patent, at PAGE ID # 396.
Moreover, the claims language contained in the Reexamination Certificate defines
a system comprising of “a computer remotely located from … message playback devices
and operable to generate and transmit control signals … [to] message playback devices
being adapted to receive said control signals.” (emphasis supplied). Doc. 47-1, Col. 2,
lines 11-13 and 16-17, PAGE ID # 440. See also pp. 4-7, supra.
Info-Hold’s proposed construction improperly omits acknowledgment that the
server sends control signals and the message playback devices are adapted to receive the
control signals from the server. The language “being adapted to receive control signals”
comes directly from the claims language. Doc. 47-1, Col. 20, lines 32-34 and 37-39,
PAGE ID # ; Doc. 47-1, Col. 2, lines 11-13 and 16-17, PAGE ID # 440.

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Not to construe “message playback devices” as including the acknowledgment that
the message playback devices are adapted to receive control signals would misstate the
nature of the invention. See Markman, 517 U.S. at 389 (“[A claim] term can be defined
only in a way that comports with the instrument as a whole.”).
Nowhere in the specification is it mentioned, and the specification does not enable,
an embodiment where the device could initiate a contact with the server/computer and
request a control signal. The message playback devices simply receive control signals
when they are sent to the message playback devices by the server/computer.
AMTC’s proposed construction of “message playback devises” is accurate,
and the Court adopts it.
2.

“operable to generate and transmit control signals”

Info-Hold’s proposed construction

AMTC’s proposed construction

Capable to generate and transmit control
signals

Capable to initiate a contact with the message
playback device, and generate and send control
signals to it.

The claims, read in view of the specifications, establish that the “generate and
transmit” step necessarily includes initiating a contact with the message playback device
through generating and sending control signals. The construction of this term must
necessarily acknowledge that the initiating of contact comes from the server/computer,
not the message playback device. AMTC’s proposed construction acknowledges this
truth; Info-Hold’s does not.
Accordingly, the Court adopts AMTC’s proposed construction of this term.

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3.

“transmit”

Info-Hold’s proposed construction
AMTC’s proposed construction
To communicate an electronic signal to another To initiate a contact with and send an
device
electronic signal to another device

Based on the evidence and reasoning reflected above, “transmit” must be
construed to mean “initiate a contact with and send an electronic signal to another
device.”
Accordingly, the Court adopts AMTC’s proposed construction of “transmit.”
V. CONCLUSION
“The 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.” Phillips, 415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa
per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). Therefore, the parties shall construe
the contested terminology of the patent in suit as set forth in this Order.
IT IS SO ORDERED.

Date: April 25, 2013

s/ Timothy S. Black
Timothy S. Black
United States District Judge

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