TQP Development, LLC v. Ticketmaster Entertainment, Inc. et al
Filing
232
MEMORANDUM OPINION and ORDER - The Court adopts the constructions set forth in this opinion for the disputed terms of the 730 patents. The parties are ordered that they may not refer, directly or indirectly, to each others claim construction position s in the presence of the jury. Likewise, the parties are ordered to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the Court, in the presence of the jury. Any reference to claim construction proceedings is limited to informing the jury of the definitions adopted by the Court. Signed by Judge T. John Ward on 9/23/11. (ehs, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
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§ CIVIL ACTION NO. 2:09-cv-00279
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TQP DEVELOPMENT, LLC,
v.
TICKETMASTER
ENTERTAINMENT, INC., et al.,
MEMORANDUM OPINION AND ORDER
I.
INTRODUCTION
This is the third of four patent infringement actions pending before the Court where
Plaintiff TQP Development, LLC (―TQP‖) alleges that a number of defendants have infringed
U.S. Patent No. 5,412,730 (―the ‗730 Patent‖).
The complaint in this case was filed on
September 16, 2009, since then a number of defendants have been dismissed from the case. The
remaining defendants in this case are Live Nation, Inc., United Parcel Service, Inc. and DHL
Express (USA), Inc. (collectively ―Defendants‖)
On October 18, 2010, the Court held a claim construction hearing in the related case of
TQP Development, LLC. v. Merrill Lynch & Co., Inc. et al., 2:08-CV-471 (―Merrill Lynch‖). On
January 5, 2011, the Court held a claim construction hearing construction hearing in the related
case of TQP Development, LLC v. Barclays PLC et al., 2:09-CV-088 (―Barclays‖). The Court
issued claim constructions orders construing a number of disputed terms in both of these cases.
(Merrill Lynch, Dkt.No. 383 (March 28, 2011); Barclays, Dkt. No. 165 (March 28, 2011.).)
There are disputed terms for construction. Three of these terms have been previously construed
by the Court in their entirety; three terms of the term have been previously construed as part of a
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larger term; and two new terms that were not previously disputed. On August 18, 2011, the
Court held a claim construction hearing where the parties presented oral arguments regarding the
disputed terms. This order will first briefly address the technology at issue in the case and then
turn to the merits of the claim construction issues.
II.
BACKGROUND OF THE TECHNOLOGY
The ‘730 Patent relates to a method of transmitting data in encrypted form. ‗730 patent,
1:12-14. The ‗730 patent teaches a method for encoding data at a first station, transmitting the
encoded or encrypted data to a second station, and decoding the data at the second station. The
data is encoded and decoded using encryption keys.
The encryption keys are simply the
mechanism used to encrypt or encode the data to an unintelligible form for transmission and then
to decrypt or decode the data to an intelligible form at the receiving end.
The ‗730 patent generally discloses a transmitter and a receiver connected via a data link
for sending and receiving the data. A principle feature of the invention is to use pseudo-random
number generators at both the transmitting and receiving stations to supply a like sequence of
encryption keys to both the encryptor and decryptor, without these keys being transmitted in any
form over the transmission facility. ‗730 patent, 1:38-42. This avoids the problems that arise
when the encryption keys are transmitted between the transmitting and receiving stations. For
example, this eliminates the possibility of a computer hacker intercepting the encryption keys
during transmission between the stations. ‗730 patent, 1:25-36.
To avoid transmitting the encryption keys, the claimed method generates a first sequence
of key values based on a seed value at the transmitter, and a second sequence of key values based
on the same seed value at the receiver. The key values at both the receiver and transmitter are
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produced ―at a time dependent upon a predetermined characteristic of the data being
transmitted,‖ so that the keys at both the transmitting and receiving stations stay synchronized.
In other words, the method monitors the flow of transmitted data and then advances the random
number generator each time the transmitted data satisfies a predetermined condition. ‗730
patent, 1:48-53. By generating the keys at both transmitting and receiving ends, the keys
themselves do not have to be transmitted, which increases the security of the encrypted
transmission.
The abstract of the „730 patent states:
A modem suitable for transmitting encrypted data over voice-grade
telephone line. The modem is implemented by the combination of
integrated circuit components including a microprocessor, a serial
communications controller which communicates with connected
data terminal equipment, and a modulator/demodulator for
translating between voice band tone signals and digital data.
Pseudo random number generators are employed at both the
transmitting and receiving stations to supply identical sequences of
encryption keys to a transmitting encoder and a receiving decoder.
An initial random number seed value is made available to both
stations. The random number generators are advanced at times
determined by predetermined characteristics of the data being
transmitted so that, after transmission has taken place, the common
encryption key can be known only to the transmitting and
receiving stations.
The ‗730 patent is a continuation-in-part of application 07/418,178 and includes only one
independent claim and one dependent claim. Claim 1 is the sole claim asserted in this case.
Claim 1 of the „730 patent is reproduced below:
1.
A method for transmitting data comprising a sequence of
blocks in encrypted form over a communication link from a
transmitter to a receiver comprising, in combination, the steps of:
providing a seed value to both said transmitter and receiver,
generating a first sequence of pseudo-random key values
based on said seed value at said transmitter, each new key value in
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said sequence being produced at a time dependent upon a
predetermined characteristic of the data being transmitted over said
link,
encrypting the data sent over said link at said transmitter in
accordance with said first sequence,
generating a second sequence of pseudo-random key values
based on said seed value at said receiver, each new key value in
said sequence being produced at a time dependent upon said
predetermined characteristic of said data transmitted over said link
such that said first and second sequences are identical to one
another, a new one of said key values in said first and said second
sequences being produced each time a predetermined number of
said blocks are transmitted over said link, and
decrypting the data sent over said link at said receiver in
accordance with said second sequence.
III.
GENERAL PRINCIPLES GOVERNING CLAIM CONSTRUCTION
―A claim in a patent provides the metes and bounds of the right which the patent confers
on the patentee to exclude others from making, using or selling the protected invention.‖ Burke,
Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999). Claim construction
is an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967,
970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
To ascertain the meaning of claims, the Court looks to three primary sources: the claims,
the specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent‘s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. ―One
purpose for examining the specification is to determine if the patentee has limited the scope of
the claims.‖ Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
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Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee‘s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims when the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court‘s claim construction decision must be informed by the Federal Circuit‘s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the court set forth several guideposts that courts should follow when construing claims. In
particular, the court reiterated that ―the claims of a patent define the invention to which the
patentee is entitled the right to exclude.‖
415 F.3d at 1312 (emphasis added) (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir.
2004)). To that end, the words used in a claim are generally given their ordinary and customary
meaning. Id. 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, i.e., as
of the effective filing date of the patent application.‖ Id. at 1313. This principle of patent law
flows naturally from the recognition that inventors are usually persons who are skilled in the
field of the invention and that patents are addressed to and intended to be read by others skilled
in the particular art. Id.
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The primacy of claim terms notwithstanding, Phillips made clear that ―the person of
ordinary skill in the art is deemed to read the claim term not only in the context of the particular
claim in which the disputed term appears, but in the context of the entire patent, including the
specification.‖ Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of ―a fully integrated written instrument.‖ Id. at 1315,
quoting Markman, 52 F.3d at 978. Thus, the Phillips court emphasized the specification as being
the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated long
ago, ―in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the doubt or in ascertaining the true intent and
meaning of the language employed in the claims.‖ Bates v. Coe, 98 U.S. 31, 38 (1878). In
addressing the role of the specification, the Phillips court quoted with approval its earlier
observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998):
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim. 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. Consequently, Phillips emphasized the important role the
specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
PTO understood the patent. Id. at 1317. Because the file history, however, ―represents an
ongoing negotiation between the PTO and the applicant,‖ it may lack the clarity of the
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specification and thus be less useful in claim construction proceedings. Id. Nevertheless, the
prosecution history is intrinsic evidence that is relevant to the determination of how the inventor
understood the invention and whether the inventor limited the invention during prosecution by
narrowing the scope of the claims. Id.
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
dictionaries or otherwise) before resorting to the specification for certain limited purposes.
Phillips, 415 F.3d at 1319-24. The approach suggested by Texas Digital—the assignment of a
limited role to the specification—was rejected as inconsistent with decisions holding the
specification to be the best guide to the meaning of a disputed term. Id. at 1320-21. According
to Phillips, reliance on dictionary definitions at the expense of the specification had the effect of
―focus[ing] the inquiry on the abstract meaning of words rather than on the meaning of claim
terms within the context of the patent.‖ Id. at 1321. Phillips emphasized that the patent system
is based on the proposition that the claims cover only the invented subject matter. Id. What is
described in the claims flows from the statutory requirement imposed on the patentee to describe
and particularly claim what he or she has invented. Id. The definitions found in dictionaries,
however, often flow from the editors‘ objective of assembling all of the possible definitions for a
word. Id. at 1321-22.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
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court emphasized that claim construction issues are not resolved by any magic formula. The
court did not impose any particular sequence of steps for a court to follow when it considers
disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the
appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
bearing in mind the general rule that the claims measure the scope of the patent grant. Having
read the parties‘ papers and carefully considered their arguments and the relevant legal authority,
the Court hereby rules as follows.
IV.
DISPUTED TERMS OF THE „730 PATENT PREVIOUISLY CONSTRUED BY
THE COURT
Defendants presented arguments for all of the disputed terms that were previously
construed by the Court. These arguments are discussed in more detail below.
V.
AGREED CONSTRUCTIONS
Based upon the joint submission of claim construction charts and subsequent arguments
in briefing and at the hearing, the parties have not agreed on any proposed constructions.
VI.
TERMS IN DISPUTE OF THE „730 PATENT
At a high level, the parties dispute whether the constructions should include two
limitations proposed by Defendants in a number of the terms. The first limitation Defendants
include in their proposed constructions is the ―in advance of any transmission‖ limitation. The
second limitation Defendants include in their proposed constructions is the ―exclusively‖
limitation. Defendants contend that support for including both of these limitations can be found
in the Background of the Invention section of the specification. Specifically, the specification
states:
In accordance with a principle feature of the present invention,
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pseudo-random number generators are employed at both the
transmitting and receiving stations to supply a like sequence of
encryption keys to both the encryptor and decryptor, without these
keys being transmitted in any form over the transmission facility.
In accordance with the invention, to permit the two stations to
communicate, each supplied in advance with a random number
seed value which exclusively determines the numerical content of
the sequence of numeric values generated by each of the two
pseudo-random generators.
‗730 patent, 1:37-48. Regarding the ―in advance of any transmission,‖ the Court finds that the
specification is ambiguous and does not require that the seed value or the interval value be
provided ―in advance of any transmission,‖ but instead requires that these values are provided in
advance of ―any communications,‖ not transmissions. Plaintiff correctly argues that the claims
do require that the ―seed value‖ be provided to the transmitter and receiver before encrypted data
is sent. Although, the transmitter would be required to have the seed value to generate the
encryption keys prior to transmission, there is no explicit requirement in the patent or file history
that suggests that the receiver must also be provided the seed value prior to transmission. The
invention of the ‘730 patent would likewise function if the seed value was provided to the
receiver any time prior to decrypting the encrypted data sent over the link.
Regarding the ―exclusivity‖ limitation, Defendants argue that the specification expressly
states that the seed value ―exclusively determines the numerical content of the sequence of
numeric values generated by the pseudorandom number generators.‖ ‗730 patent,1:45-48. This
―sequence of numeric values generated by the pseudo-random number generators‖ is the ―like
sequence of encryption keys‖ that is provided to both the encryptor and decryptor. ‗730 patent,
1:37-48. That is, Defendants contend that the patentee‘s written description of the invention
identifies the seed value as the exclusive determinant of the numerical content generated by the
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pseudo-random number generators.
Plaintiff responds that the specification is only describing one exemplary method of
arriving at the key sequence ―by the combination of (1) the internal makeup of the generator 23
and by (2) a supplied random number seed value which initializes the generator 23.‖ ‘730 patent,
3:30-33. Plaintiff argues that there is no requirement that the key values are ―based exclusively
on [the] seed value.‖ In other words, Plaintiff argues that this exemplary embodiment does not
limit the claim language nor does it even suggest that the ―key values‖ are based exclusively on
the seed value.
The Court finds that Defendants have the better argument and that the claim language
indicates that encryption and decryption is possible because the seed value is provided to both
the transmitter and receiver, which is then used to generate the pseudo-random key values.
Moreover, the specification describes the ―exclusively‖ limitation in terms of ―the invention‖ and
not just an exemplary embodiment of the invention. Given this, the Court will now turn to the
disputed terms and phrases.
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1. “Providing a Seed Value to Both Said Transmitter and Receiver”
Claim Phrase
―providing a seed value
to both said transmitter
and receiver‖
Court‟s Previous
Construction
In Merrill Lynch,
the Court
construed:
―providing a seed
value to both said
transmitter and
receiver‖ as
―providing the
same seed value to
both the transmitter
and receiver‖
Plaintiff‟s
Proposed
Construction
―providing the
same seed value to
both the transmitter
and receiver‖
Defendants‟ Proposed
Construction
―providing the same seed
value to both the
transmitter and receiver in
advance of any
transmission over said
communication link which
exclusively determines the
numerical content of the
sequence of numeric values
generated by each of the
two pseudo-random
generators (i.e. the seed
value is not generated by
either the transmitter or the
receiver and the seed value
is not provided by either
the transmitter or the
receiver to the other)‖
The Court construes ―providing a seed value to both said transmitter and receiver‖ as
―providing the same seed value to both the transmitter and receiver.‖
A.
Parties‟ Construction Arguments
The parties dispute: (1) whether the seed value has to be provided in advance of any
transmission; (2) whether the seed value exclusively determines the numerical content of the
sequence of numeric values generated by each of the two pseudo-random generators; and (3)
whether the seed value has to be provided from outside the transmitter and receiver. TQP notes
that this phrase was construed by the Court in Merrill Lynch, and recommends the construction
previously adopted by the Court. Additionally, TQP contends that Defendants‘ inclusion of the
language that ―the seed value is not generated by either the transmitter or the receiver and the
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seed value is not provided by either the transmitter or the receiver to the other‖ improperly reads
in limitations from the exemplary embodiment illustrated in Figure 1.
Defendants first contend that the specification explicitly states that the seed value must be
provided to transmitter and receiver in advance of any transmission. As discussed above, the
Court disagrees and finds that the specification does not require that the seed value or the interval
value be provided ―in advance of any transmission,‖ but instead requires that these values are
provided in advance of ―any communications,‖ not transmissions. Plaintiff correctly argues that
the claims do no requirement that the ―seed value‖ be provided to the transmitter and receiver
before encrypted data is sent. Although, the transmitter would be required to have the seed value
to generate the encryption keys prior to transmission, there is no explicit requirement in the
patent or file history that suggests that the receiver must also be provided the seed value prior to
transmission.
Defendants next contend that the specification also explicitly states that the seed value
―exclusively determines the numerical content of the sequence of numeric values generated by
the pseudorandom number generators.‖ Id. at col. 1, ll. 45-48. As discussed above the Court
agrees that the specification does state the exclusively limitation, but the Court disagrees that this
limitation should be added to the construction of this disputed term. Instead the Court finds that
this limitation should be included in the disputed term ―based on said seed value‖ as discussed in
more detail below. Finally, Defendants contend that because the claims require the same seed
value to be ―provided‖ to both the transmitter and receiver, the seed value must not generated by
either the transmitter or the receiver and the seed value is not provided by either the transmitter
or the receiver to the other. Thus, Defendants argue that the seed value is not generated by either
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the transmitter or the receiver.
B.
Findings
To begin its analysis, the Court first turns to the claims language. The phrase ―providing
a seed value to both said transmitter and receiver‖ appears only once in the claim language. The
Court notes that there is nothing particularly confusing about the phrase as it is used in the
claims. Additionally, a further review of the specification and prosecution history leads to the
conclusion that Defendants‘ proposed construction is an attempt to read limitations of an
exemplary embodiment into the claims.
First, Defendants are correct that Figure 1 illustrates that that the ―random number seed‖
is outside of the transmitting station 11 and receiving station 12. In describing Figure 1, the
specification teaches that the seed number is supplied to the generator 23 in this embodiment.
‗730 patent, 3:29-33. From this, Defendants conclude that the seed value has to be provided
from outside the transmitter and receiver. The problem with Defendants‘ analysis is that it fails
to consider Figure 4, which is more applicable because it illustrates the ―encrypting the data‖
element of claim 1. In describing Figure 4, the specification states that ―[t]he random number
generators 23 and 38 at the transmitting station obtain their seed values from a key memory 50.‖
‗730 patent, 9:51-53. As illustrated in Figure 4, key memory 50 is included within transmitting
station 11 and is not external to it. ―Similarly, at the receiving station, the seed values for the
remote terminals from which the receiving station is authorized to receive information are stored
in a key memory 60 connected to supply seed values to the generators 27 and 40.‖ ‗730 patent,
9:55-60. Again, Figure 4 illustrates that key memory 60 is included within receiving station 12
and is not external to it. Thus, Figure 4 provides an embodiment that would be excluded by
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Defendants‘ proposed construction.
The prosecution history also does not support Defendants‘ proposed construction.
Defendants cite to the Examiner‘s statement in the prosecution history that ―‗providing‘ does not
indicate that the ‗seed value‘ is generated‖ in support of their argument. (Dkt. No. 221-3 at 12021 (Office Action dated July 8, 1993, pp. 2-3.).) However, the Examiner‘s statement relied on
by Defendants is ambiguous because the Examiner failed to provide any analysis. (Dkt. No.
221-3 at 120.) (Examiner stated that ―‗providing‘ does not indicate that the ‗seed value‘ is
generated.‖). The Examiner did however provide some analysis for the rejection of claim 12, but
this analysis fails for the same reason mentioned above. The applicant included claim 12, which
was dependent from claim 8 and included the further limitation that the same seed value was
transmitted to the transmitter and receiver from a control center remote from the transmitter and
receiver. Thus, claim 8 and claim 12 were intended to have different scope, with claim 12
further requiring that the seed value be transmitted to the transmitter and receiver from a remote
control center. In rejecting claim 12, the Examiner stated that ―the provision of the ‗seed value‘
via mail (as written in Figure 1) is inherently the provision of the seed value from a center
separate from the transmitter and the receiver in the transmitter is not a mailing facility.‖ (Dkt.
No. 221-3 at 121.) In making this statement, the Examiner is specifically referring to Figure 1
and does not appear to have considered Figure 4. Thus, given the dependent nature of claim 12
and the explicit reference to Figure 1, this portion of the prosecution history fails to provide any
Instead, it only establishes the Examiner‘s
helpful insight as it relates to this phrase.
interpretation of the embodiment illustrated in Figure 1 and does not appear to consider the
embodiment illustrated in Figure 4. Thus, the Court declines to adopt Defendants‘ proposed
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construction and construes the phrase ―providing a seed value to both said transmitter and
receiver‖ as ―providing the same seed value to both the transmitter and receiver.‖
2. “encrypting the data” and “decrypting the data”
Claim Phrase
―encrypting the data‖ /
―decrypting the data‖
Court‟s Previous
Construction
In Barclays, the
Court construed
―encrypting the
data‖ as
―converting clear
text data into cipher
text‖, and
―decrypting the
data‖ as
―converting cipher
text data into clear
text‖
Plaintiff‟s
Proposed
Construction
―converting clear
text data into cipher
text‖/ ―converting
cipher text data into
clear text‖
Defendants‟ Proposed
Construction
―encrypting a sequence of
blocks‖/ ―decrypting a
sequence of blocks‖
The Court construes ―encrypting the data‖ as ―converting clear text data into cipher text.‖
The Court construes ―decrypting the data‖ as ―converting cipher text into clear text.‖ The terms
―encrypting the data‖ and ―decrypting the data‖ have already been construed by this Court in
Barclays. The Court has already provided sound reasoning for its construction, and there is no
need to re-construe these terms. Defendants‘ proposed constructions provide nothing to clarify
the terms. In fact, Defendants‘ construction merely repeats the claim language ―encrypting‖ and
―decrypting‖ without providing any definition for the terms. This provides no help to the trier of
fact. In actuality, Defendants‘ constructions are attempts to construe the term ―data‖ as ―a
sequence of blocks.‖ However, the plain language of claim 1 already states ―[a] method for
transmitting data comprising a sequence of blocks…‖
Accordingly, the Court construes
―encrypting the data‖ as ―converting clear text data into cipher text,‖ and ―decrypting the data‖
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as ―converting cipher text into clear text.‖
“A time dependent upon a predetermined characteristic of the data
being transmitted over said link”
4. “A predetermined characteristic of the data being transmitted over said
link / said predetermined characteristic of said data transmitted over said
link”
3.
Claim Phrase
―A time dependent upon
a predetermined
characteristic of the data
being transmitted over
said link‖
―A predetermined
characteristic of the data
being transmitted over
said link / said
predetermined
characteristic of said
data transmitted over
said link‖
Court‟s Previous Construction
In Merrill Lynch, the Court
construed:
―each new key value in said [first]
sequence being produced at a time
dependent upon a predetermined
characteristic of the data being
transmitted over said link‖ as ―a
new key value in the first sequence
is produced each time a condition
based on a predetermined
characteristic of the transmitted
data is met at the transmitter.‖
and
Plaintiff‟s
Proposed
Construction
No construction
necessary
Defendants‟
Proposed
Construction
―when the
block count
reaches the
interval
number‖
―an interval
number
supplied (Fig.
1) or generated
(Fig. 4) in
advance of any
transmission
over said
communication
link‖
―each new key value in said
[second] sequence being produced
at a time dependent upon a
predetermined characteristic of the
said being transmitted over said
link‖ as ― a new key value in the
second sequence is produced each
time a condition based on a
predetermined characteristic of the
transmitted data is met at the
receiver.‖
The Court construes ―each new key value in said [first] sequence being produced at a
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time dependent upon a predetermined characteristic of the data being transmitted over said link‖
as ―a new key value in the first sequence is produced each time a condition based on a
predetermined characteristic of the transmitted data is met at the transmitter.‖
The Court
construes ―each new key value in said [second] sequence being produced at a time dependent
upon said predetermined characteristic of said data transmitted over said link‖ as ―a new key
value in the second sequence is produced each time a condition based on a predetermined
characteristic of the transmitted data is met at the receiver.‖
A.
Parties‟ Construction Arguments
The parties dispute whether the phrase ―predetermined characteristic‖ should be limited
to ―when the block count reaches the interval number.‖ Plaintiff argues that there is nothing in
the prosecution history or specification that limits the above claim terms to the construction of
―when the block count reaches the interval number‖ as proposed by Defendants. Plaintiff also
argues that Defendants‘ reliance on the reexamination is also incorrect. Specifically, Plaintiff
argues that during the reexamination, the patentee stated that ―[o]ne example of such a satisfied
condition [of a predetermined condition] is provided at 3:19-25, which is satisfied when the
block counter counts a certain number of blocks…‖ (Dkt. No. 221-10 at 7.) (emphasis added).
B.
Findings
To begin its analysis, the Court turns to the claims themselves. Each of the disputed
phrase appears only once in the claim language. The Court is of the opinion that there is nothing
particularly confusing about how either phrase is used in the claims except for potential
antecedent issues related to ―said sequence.‖ In that vein, the Court concludes that the phrase
―each new key value in said [first] sequence being produced at a time dependent upon a
17
predetermined characteristic of the data being transmitted over said link‖ relates to the first
sequence and the transmitter; and that the phrase ―each new key value in said [second] sequence
being produced at a time dependent upon said predetermined characteristic of said data
transmitted over said link‖ relates the second sequence and the receiver. Moreover, the claim
language itself states at what points in time the sequences are generated. Thus, the Court
concludes that adding the additional language of ―when the block count reaches the interval
number‖ would be reading a limitation of an embodiment into the claims.
Under the
reexamination section titled ―Claim 1 – ‗Time Dependent Upon a Predetermined
Characteristic,‘‖ the patentee simply stated that one example of satisfying a condition is when
the block counter reaches the interval number. (Dkt. No. 221-10 at 7.) Given this, the Court
construes the phrase ―each new key value in said sequence being produced at a time dependent
upon a predetermined characteristic of the data being transmitted over said link‖ as ―a new key
value in the first sequence is produced each time a condition based on a predetermined
characteristic of the transmitted data is met at the transmitter.‖ And the phrase ―each new key
value in said sequence being produced at a time dependent upon said predetermined
characteristic of said data transmitted over said link‖ as ―a new key value in the second sequence
is produced each time a condition based on a predetermined characteristic of the transmitted data
is met at the receiver.‖
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5. “predetermined number of said blocks”
Claim Phrase
“predetermined number
of said blocks‖
Court‟s Previous Construction
No construction necessary. In
addition, in Barclays the Court
construed ―a predetermined number
of blocks‖ as part of the phrase ―a
new one of said key values in said
first and said second sequences
being produced each time a
predetermined number of said
blocks are transmitted over said
link‖
Plaintiff‟s
Proposed
Construction
No construction
necessary
Defendants‟
Proposed
Construction
―the interval
number
determined in
advance of any
transmission
over said
communication
link‖
After reviewing the disputed phrase in the context of the entire claim, the Court is of the
opinion that there is nothing confusing about this phrase. The Court therefore finds that no
construction is necessary.
A.
Parties‟ Construction Arguments
The parties dispute whether the construction must specify that (1) the interval number is
the number of blocks and (2) that the interval number must be determined in advance of any
transmission. As discussed above, there is no requirement that an interval number must be
determined in advance of any transmission on the communication link. Defendants‘ attempt to
impose a temporal limitation is improper.
Additionally, Defendants‘ construction further
attempts to define the entire term ―predetermined number of said blocks‖ as ―the interval number
determined in advance of any transmission over said communication link‖ without any regard to
the word ―blocks‖ in the claim term.
B.
Findings
To begin its analysis, the Court turns to the claims themselves. The disputed phrase ―a
19
predetermined number of said blocks‖ appears only once in the claim language. After reviewing
the disputed phrase in the context of the entre claim, the Court is of the opinion that there is
nothing confusing about this phrase. The claim language states that a new key value is produced
in the first and second sequence each time a predetermined number of the blocks are transmitted
over the link. This is straight forward and Defendants‘ construction is an attempt to read a
temporal limitation into the claim. In addition, the claims do not recite ―interval number.‖
Instead, the specification states that the ―the block counter 21 may simply count the number of
bytes (characters), words or blocks of data being transmitted, compare the current count with a
predetermined 37 interval number‖
‗730 patent, 3:19-25.
Thus, to replace the recited
―predetermined number of said blocks‖ with Defendants‘ proposed ―interval number‖ would be
to define the entire phrase without any regard to the word ―blocks‖ in the claim term. This
would be improper because claim 1 recites that ―a new one of said key values in said first and
said second sequences being produced each time a predetermined number of said blocks are
transmitted over said link.‖ That is, the key values are not produced at an interval number based
on bytes, characters, or words, but instead on a number of blocks. Accordingly, the Court
declines to adopt Defendants‘ proposed construction and finds that that there is nothing
confusing about this phrase that requires construction.
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VII.
NEW DISPUTED CLAIM TERMS OF THE „730 PATENT
1. “Based on said seed value”
Claim Term/Claim Language
―Based on said seed value‖
Plaintiff‟s Proposed
Construction
No construction necessary.
Defendants‟ Proposed
Construction
―based exclusively on said
seed value‖
The Court construes ―based on said seed value‖ as ―based exclusively on said seed
value.‖
A.
Parties‟ Construction Arguments
Defendants argue that the specification expressly states that the seed value ―exclusively
determines the numerical content of the sequence of numeric values generated by the
pseudorandom number generators.‖ ‗730 patent, 1:45-48. This ―sequence of numeric values
generated by the pseudo-random number generators‖ is the ―like sequence of encryption keys‖
that is provided to both the encryptor and decryptor. ‗730 patent, 1:37-48. That is, Defendants
contend that the patentee‘s written description of the invention identifies the seed value as the
exclusive determinant of the numerical content generated by the pseudo-random number
generators.
Plaintiff responds that the specification is only describing one exemplary method of
arriving at the key sequence ―by the combination of (1) the internal makeup of the generator
23and by (2) a supplied random number seed value which initializes the generator 23.‖ ‘730
patent, 3:30-33. Plaintiff argues that there is no requirement that the key values are ―based
exclusively on [the] seed value.‖
In other words, Plaintiff argues that this exemplary
embodiment does not limit the claim language nor does it even suggest that the ―key values‖ are
21
based exclusively on the seed value.
Defendants have the better argument and the claim language indicates that encryption and
decryption is possible because the seed value is provided to both the transmitter and receiver,
which is then used to generate the pseudo-random key values. Moreover, the specification
describes the ―exclusively‖ limitation in terms of ―the invention‖ and not just an exemplary
embodiment of the invention.
B.
Findings
To begin its analysis, the Court first turns to the claims language. The phrase ―based on
said seed value‖ appears in claim 1. The Court notes that there is nothing particularly confusing
about the phrase as it is used in the claims. Additionally, a further review of the specification
and prosecution history leads to the conclusion that Defendants‘ proposed construction is the
correct one. That is, Defendants are correct that the specification of the ‗730 patent explicitly
states that ―[i]n accordance with the invention … a random number seed value … exclusively
determines the numerical content of the sequence of numeric values generated by each of the two
pseudo-random generators.‖ ‗730 patent, 1:43-47. The Court notes that this is a description of
the present invention and not just an embodiment of the invention. There is no disclosure in the
specification that would allow for the use of a part of a seed value to be used to generate a seed
value that would then in turn be used in a pseudo-random number generator. For these reasons,
the Court adopts Defendants‘ proposed construction and construes the phrase ―based on said
seed value‖ as ―based exclusively on said seed value.‖
22
2. “Predetermined”
Claim Term/Claim Language
―Predetermined‖
Plaintiff‟s Proposed
Construction
No construction necessary.
Defendants‟ Proposed
Construction
―determined before any
transmission over
said communication link‖
After reviewing the disputed term in the context of the entre claim, the Court is of the
opinion that there is nothing confusing about this term. The Court therefore finds that no
construction is necessary.
A.
Parties‟ Construction Arguments
Defendants‘ proposed construction attempts to import a temporal limitation into the claim
language. As discussed above, there is no requirement that the ―predetermined‖ characteristic or
―predetermined‖ number of blocks must be determined before any transmission of any kind can
occur over said link. The Court therefore rejects Defendants‘ proposed construction.
B.
Findings
To begin its analysis, the Court turns to the claims themselves. The disputed term
―predetermined‖ appears four times in the claim language. The Court notes that the term is used
consistently in the claims and is meant to have a similar meaning. After reviewing the disputed
term in the context of the entre claim, the Court is of the opinion that there is nothing confusing
about this phrase. As discussed above, neither the claim language nor specification requires that
the claimed ―predetermined‖ characteristic or claimed ―predetermined‖ number of blocks be
―determined before any transmission,‖ instead it only requires that these be determined in
advance of ―any communications,‖ not transmissions. This is straight forward and Defendants‘
construction is an attempt to read a temporal limitation into the claim. Accordingly, the Court
23
finds that no construction is necessary.
VIII. CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
‗730 patents. The parties are ordered that they may not refer, directly or indirectly, to each
other‘s claim construction positions in the presence of the jury. Likewise, the parties are ordered
to refrain from mentioning any portion of this opinion, other than the actual definitions adopted
by the Court, in the presence of the jury. Any reference to claim construction proceedings is
limited to informing the jury of the definitions adopted by the Court.
SIGNED this 23rd day of September, 2011.
__________________________________________
T. JOHN WARD
UNITED STATES DISTRICT JUDGE
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