CSB-SYSTEM INTERNATIONAL INC. v. SAP AMERICA, INC.

Filing 65

ORDER THAT THE DISPUTED CLAIM TERMS IN U.S. PATENT NO. 5,631,953 ("953 PATENT") ARE CONSTRUED. DEFENDANT'S ARGUMENT THAT CERTAIN TERMS OF THE '953 PATENT ARE INDEFINITE IS DENIED WITHOUT PREJUDICE TO DEFENDANT'S RIGHT TO RE-R AISE IT DURING SUMMARY JUDDGMENT PROCEEDINGS. DEFENDANT'S POST-MARKMAN HEARING REQUEST TO CONSTRUE PHRASES NOT PREVIOUSLY ADDRESSED BY THE PARTIES' OPENING CLAIM CONSTRUCTION BRIEFS IS DENIED WITHOUT PREJUDICE. SIGNED BY HONORABLE RONALD L. BUCKWALTER ON 7/27/11. 7/29/11 ENTERED AND COPIES E-MAILED.(mbh, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA

CSB-SYSTEM INTERNATIONAL INC.
Plaintiff/Counterclaim Defendant,
v.
SAP AMERICA, INC.,
Defendant/Counterclaim Plaintiff.

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CIVIL ACTION

NO. 10-2156

ORDER

AND NOW, this 27th day of July, 2011, upon consideration of Plaintiff CSB-System
International Inc.’s Opening Claim Construction Brief (Docket No. 31), Defendant SAP America,
Inc.’s Opening Claim Construction Brief (Docket No. 32), Defendant’s Opposition Claim
Construction Brief (Docket No. 41), Plaintiff’s Opposition Claim Construction Brief (Docket No.
42), Plaintiff’s Post-Hearing Memorandum (Docket No. 60), and Defendant’s Post-Hearing
Memorandum (Docket No. 61), together with all testimony, evidence, and arguments presented at
the June 7, 2011 hearing held pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967, 976
(Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996), it is hereby ORDERED as follows:
1.

The disputed claim terms in U.S. Patent Number 5,631,953 (“‘953 Patent”) are
CONSTRUED as follows:
a.

“EDP System” means “Electronic Data Processing system consists of
computers and software for the processing of data, including a shared
database.”

b.

“Telephone Extensions which are directly connectable to a telephone
network selected from the group consisting of a public ISDN telephone
network and Euro ISDN telephone network” means “telephones and/or

other devices such as fax devices of the type that can be directly connected
to either the public ISDN or Euro ISDN telephone network.” This phrase
denotes a closed Markush group.
c.

d.

“Integration element” means “a component that converts signals from the
intelligent telephone system into data records, which it sends to the personal
computer, and receives data records from the personal computer, which it can
then convert into signals sent to the intelligent telephone system.”

e.

“Server” means “a computer on the Local Area Network (LAN) that
responds to requests from telephone software and provides shared services
to the personal computers/workstations in response to queries from clients.”

f.

“Data record” means “a set of data by which information is electronically
sent from the integration element to the personal computer and back, and by
which information is queried from a database by a client using a personal
computer.”

g.

“ISDN” means “integrated services digital network.”

h.

“Intelligent telephone system” means “a telephone system capable of
accepting signals to control its functions and sending signals containing
information.”

i.

“SDLC” means “an acronym for synchronous link data.”

j.

“Connection element” means “intermediate hardware that connects other
pieces of hardware.”

k.

2.

“Personal computer” means “a desktop, floor-standing, or portable
microcomputer that usually consists of a system unit, a display monitor, a
keyboard, one or more diskette drives, internal fixed storage, and an option
printer. A PC is designed to give independent computer power to a single
user.”

“Selected from the group consisting of an SDLC connection element and
an ISDN connection element” is a closed Markush group.

Defendant’s argument that certain terms of the ‘953 Patent are indefinite is DENIED
WITHOUT PREJUDICE to Defendant’s right to re-raise it during summary
judgment proceedings, and the disputed terms are CONSTRUED AS FOLLOWS:
a.

“An appropriate information” means “the information useful for caller
identification and other application purposes.”

b.

c.

“Is formed so that it is possible” means “the integration element software is
configured so as to make it possible to use the connections and data sharing
of Claim 2 so as to hold a conference among the connected telephone
extensions.”

d.

“Where required” means “where a competent party needs to clarify questions
and data of the caller.”

e.

“An applied speech and data communication” means “the telephone and
data communication originally established in Claim 2 between the caller and
the agent/client as now including one or more additional agents/clients.”

f.

3.

“A necessary signal” means “the signal that is sent from the integration
element to the intelligent telephone system to obtain the function desired by
the client making the request.”

Claim 6 states that “data may be exchanged between the caller and the
competent party as described in claim 1, and even if a conference call is
established, this data and additional data can be shared among all of the
competent parties while possibly excluding the caller from sharing the
additional data.”

Defendant’s post-Markman hearing request to construe phrases not previously
addressed by the parties’ opening claim construction briefs is DENIED WITHOUT
PREJUDICE.

It is so ORDERED.
BY THE COURT:

s/ Ronald L. Buckwalter
RONALD L. BUCKWALTER, S.J.