Charles E. Hill & Associates, Inc. v. Abt Electronics, Inc. et al

Filing 219

MEMORANDUM OPINION and ORDER - The Court adopts the constructions set forth in this opinion for the disputed terms of the patents-in-suit. The parties are ordered that they may not refer, directly or indirectly, to each others 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 by Judge Rodney Gilstrap on 1/10/12. (ehs, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
CHARLES E. HILL & ASSOCIATES,
INC.,
vs.
ABT ELECTRONICS, INC. ET AL.

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CASE NO. 2:09-CV-313-JRG

MEMORANDUM OPINION AND ORDER
Before the Court is the parties’ claim construction briefing. This Order addresses the
parties’ various claim construction disputes. The Order will first briefly address the patents-insuit and then turn to the merits of the claim construction issues.
I.

BACKGROUND AND THE PATENTS-IN-SUIT
On October 9, 2009, plaintiff Charles E. Hill & Associates, Inc. (“Plaintiff”) brought this

action against defendants Abt. Electronics, Inc., PetMed Express, Inc., and Polo Ralph Lauren
Corporation (collectively, “Defendants”), alleging infringement of U.S. Pat. No. 5,528,490 (the
“’490 Patent”); U.S. Pat. No. 5,761,649 (the “’649 Patent”); and U.S. Pat. No. 6,029,142 (the
“’142 Patent”) (collectively, the “Hill Patents” or “patents-in-suit”). The Hill Patents are related
to each other as continuations. As such, except for their claims, the Hill Patents are identical. A
citation to the ’490 Patent specification will, therefore, be considered a citation to any of the Hill
Patent specifications.
The technology at issue in the Hill Patents has been described by various courts that have
construed the patents. See, Charles E. Hill & Assocs., Inc. v. CompuServe, Inc., 33 Fed. Appx.
527 (Fed. Cir. 2002) [hereinafter CompuServe II]; Charles E. Hill & Assocs., Inc. v.
CompuServe, Inc., 65 F. Supp. 2d 924 (S.D. Ind. 1999) (McKinney, J.) [hereinafter CompuServe
I); Charles E. Hill & Assocs., Inc. v. CompuServe, Inc., No. IP 97-0424-C-M/S, 2003 WL
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23101797 (S.D. Ind. August 29, 2003) [hereinafter CompuServe III]; Charles E. Hill & Assocs.,
Inc. v. CompuServe, Inc., No. IP 97-0434-C-M/S, 2003 WL 22327827 (S.D. Ind. Sept. 26, 2003)
[hereinafter CompuServe IV]; Charles E. Hill & Assocs., Inc. v. Amazon.com, Inc., No. 2:02-cv00186-TJW, 2005 WL 2483510 (E.D. Tex. Oct. 7, 2005) (Ward, J.) [hereinafter Amazon];
Charles E. Hill & Assocs., Inc. v. Abercrombie & Fitch Co., No. 2:07-cv-00234-DF, Dkt. No.
228 (E.D. Tex. Nov. 21, 2008) (Folsom, J.) [hereinafter Abercrombie]. In general, the Hill
Patents disclose:
an electronic catalog shopping system that uses software on both the customer’s
computer and the vendor’s computer to provide the customer with updated
catalog information each time the system is used. The invention contemplates the
use of two kinds of catalog data: “variable data” and “constant data.” The patent
defines variable data as data that is stored on the vendor’s computer and that can
change at any time. Constant data is stored on both the vendor’s computer and the
customer’s computer. Whenever the constant data is updated, the updated version
is assigned a revision number.
When a customer using the invention of the ’490 patent seeks information about a
particular product in the catalog, the customer selects that product from a list on
his computer. The software on the customer’s computer causes the system to
compare the revision status of the constant data on the customer’s computer with
the revision status of the constant data on the vendor’s computer. If the constant
data on the customer’s computer is out of date, the vendor’s computer
automatically updates it.
Once the constant data has been updated, the vendor’s computer transmits to the
customer’s computer the variable data that relates to the selected product along
with instructions that allow the customer’s computer to integrate the variable data
with the constant data stored on the customer’s computer. The customer’s updated
constant data and the incoming variable data are then integrated to create a data
sheet containing the most current information available about the desired product.
CompuServe II, 33 Fed. Appx. at 529.
II.

LEGAL PRINCIPLES
A.

Claim Construction Principles

“A claim in a patent provides the metes and bounds of the right which the patent confers

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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).
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,

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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.
Despite the importance of claim terms, 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.

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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
Patent and Trademark Office (“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 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

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“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
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.
B.

Construing Claim Terms that Have Previously Been Construed by This or
Other Courts

As indicated above, it is worth noting that this is not the first opportunity for this Court to
construe the patents-in-suit. This Court and other courts have construed the claims in the
patents-in-suit several times. See CompuServe II; CompuServe I; CompuServe III; CompuServe
IV; Amazon; Abercrombie. Although the disputes in this case present many of the same issues
that have already been resolved in the cases mentioned above, the Court still carefully considered
all of the parties’ arguments (both the new and repetitive arguments) in construing the claims in
this case. See Burns, Morriss & Stewart Ltd. P’ship v. Masonite Int’l Corp., 401 F. Supp. 2d
692, 697 (E.D. Tex. 2005) (describing that although a previous construction may be instructive
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and provide the basis of the analysis, particularly when there are new parties and those parties
have presented new arguments, the previous construction is not binding on the court). As
indicated by Burns, however, the previous constructions in those cases, and particularly from
those in this District, are instructive and will at times provide part of the basis for the analysis.
See id.
III.

CONSTRUCTION OF AGREED TERMS
The parties have agreed to the construction of the following terms:
Claim Term/Phrase/Clause
Patent No.: Claim No(s).

Agreed Definition

“product information classified as likely
to change less often than variable data”

“constant data”
’490: 1, 15
’649: 16
’142: 1, 6, 11, 14, 17
textual data;
’649: 1
text data
’142: 2–5
variable data
’490: 1, 4, 9, 15, 17, 23, 24
’649: 16
’142: 1–5, 14, 20
revision level
’490: 1

“data representing computer-generated
words, letters, numbers, or other
characters produced on a screen”
“product information classified
capable of changing at any time”

“a designation which indicates the
version of the data or program which has
been changed”
“an indication of the revision level of the
relevant data”

revision status
’490: 1, 2,
’142: 17
generating;
’490: 1
generate;
’490: 1
’142: 1
generated
’490: 5, 18
’142: 1
maintaining;
’490: 1, 15

“producing by
operations”

performing

specific

“keeping the most current information
available”
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as

’142: 17
maintained
’490: 1
’142: 1
updating
’490: 1, 15

“an automatic process of adding,
modifying, or deleting data records or
program files to bring the remote
computer up-to-date”
“instructions to integrate or combine
data on the remote computer which
establish the relative positions of, or the
spatial relations or distributions of, data
to be displayed on the remote computer”

map
’490: 9, 24
’649: 3, 18

“a computing device used by and/or on
main computer;
’490: 1–4, 9, 15–17, 23, 24
behalf of the vendor”
’649: 1, 3, 16, 18
’142: 1, 13, 14, 17, 20
vendor’s main computer
’649: 1, 16
The following “product information/data” clauses: “information about a tangible good”
information related to a product;
’490: 1
data related to at least one product/the at least one
product;
’490: 1
’142: 1
information data related to the at least one
product;
’490: 1
’142: 1
product information;
’490: 2, 15
’649: 1, 2, 16, 17
’142: 1
data related to a/the selected product;
’490: 4, 15, 17, 23
’649: 1, 16, 18
information related to the product;
’490: 5, 18
information related to a selected product;
’490: 15
data related to a plurality of products;
’490: 15
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’649: 1, 16
product information data related to the plurality
of products;
’490: 15
data . . . associated with the selected product;
’490: 15
product information data related to a/the selected
product;
’490: 15
’649: 1, 16
product data . . . related to a/at least one of the
plurality of products;
’490: 15
’649: 1, 16
product data;
’649: 1, 3, 16, 18
product information data;
’490: 15,
’649: 1, 2, 16
’142: 1
product data . . . related to the selected product;
’649: 1, 16, 18
product information related to the selected
product;
’649: 16
product information data related to at least one
product/the at least one product
’142: 1
order of the steps in claim 1 of the ’490 Patent
’490: 1
order of the steps in claim 1 of the ’142 Patent
’142: 1

“tangible good”

product
’490: 1, 2, 4, 5, 15, 17, 18, 23
’649: 1–3, 16–18
’142: 1
storing
‘490: 1, 5
‘649: 1, 16
‘142: 1, 17
stored
‘490: 1, 5

“recorded in a storage device so that
data can be obtained as necessary to
perform the steps of the claimed
method”

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“step 1 occurs before steps 2 or 3; step 2
occurs before step 5; step 3 occurs
before step 4; step 4 occurs before step
5; and step 5 occurs before step 6,
although step 6 may begin before step 5
is complete as long as step 5 completes
before step 6 completes”

‘649: 1, 16
‘142: 1, 17
The following “selecting” limitations:

“product selection must be from
products stored in memory on the
selecting a product from the memory of the remote computer”
remote computer
’490: 2
selecting a product from the remote computer
memory
’490: 15
selecting at least one product at the remote
computer
’649: 1, 16
“the step of claim 2 cannot be completed
order of the steps in claim 2 of the ‘649 Patent
‘649: 2
until the ‘combining’ step of claim 1 is
completed”
(See Dkt. No. 214, Ex. 1.) In view of the parties’ agreements on the proper construction of each
of the identified terms, the Court adopts the parties’ agreed constructions.

The agreed

constructions govern this case.
IV.

CONSTRUCTION OF DISPUTED TERMS
A.

Graphics Data

Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“Data representing computer-generated pictures “Data representing computer-generated
produced on a screen”
pictures produced on a screen. Graphics
range from simple lines, bars or graphs to
colorful and detailed images. Graphics data
are product information classified as likely
to change less often than variable data.”
i.

The Parties’ Positions

Plaintiff proposes that “graphics data” means “data representing computer-generated
pictures produced on a screen.” Defendants, on the other hand, argue that the Court should
construe “graphics data” to mean: “data representing computer-generated pictures produced on a
screen. Graphics range from simple lines, bars or graphs to colorful and detailed images.
Graphics data are product information classified as likely to change less often than variable
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data.” As is evident from their proposed constructions, the parties agree that “graphics data”
should be defined to mean at least “data representing computer-generated pictures produced on a
screen.”

The parties, however, dispute whether: (1) the second sentence of Defendants’

proposed construction is necessary to understand the meaning of the term “graphics data;” and
(2) all “graphics data” must necessarily be “constant data.”
ii.

Discussion

The claim term “graphics data” appears, in representative form, in Claim 1 of the ’649
Patent:
A method for accessing product information data related to a selected product
stored in a vendor’s main computer from a customer’s remote computer, the
method comprising:
storing product data including graphics data and textual data related to a
plurality of products in a memory of the main computer;
storing a first subset of product data including graphics data related to at least
one of the plurality of products in a memory of the remote computer;
selecting at least one product at the remote computer;
transmitting a data request query related to the at least one selected product
from the remote computer to the main computer;
identifying a second subset of product data including graphics data and
textual data related to the selected product from the product data stored in the
memory of the main computer based on the data request query;
transmitting the textual data from second subset of product data from the main
computer to the remote computer;
transmitting only updated graphics data from the second subset of product
data that is different from the graphics data in the first subset of product data
from the main computer to the remote computer;
storing the updated graphics data in the memory of the remote computer; and
combining the textual data from the second subset of product data received
from the main computer with graphics data related to the selected product
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stored in the memory of the remote computer to provide complete product
information data related to the selected product including both graphics and
textual data.
’649 Patent at 21:54-22:19 (emphasis added). The term was construed by both Judge Ward in
the Amazon Case and Judge Folsom in the Abercrombie Case. Judge Ward construed “graphics
data” as “data related to computer-generated pictures produced on a screen. Graphics range from
simple line or bar graphs to colorful and detailed images.” Amazon, 2005 WL 2483510, at *7
(emphasis added).

Judge Folsom construed “graphics data” slightly differently, as “data

representing computer-generated pictures produced on a screen. Graphics range from simple
lines, bars or graphs to colorful and detailed images.” Abercrombie, Dkt. No. 228 at 18-21
(emphasis added). Judge Folsom found that:
use of the word “related” in Judge Ward’s definition may allow a
misunderstanding regarding whether text or items are considered “graphics data.”
The Court finds that such a misunderstanding would be an improper use of the
term “graphics data.” The patent indicates that “graphics data” and “textual data”
are different. ‘490 Patent at 2:57-58 (“Constant data includes both graphics data
and textual data.”). Furthermore, both the plain meaning of “graphics” and every
relevant example in the specification indicates that “graphics data” is a picture,
illustration or some type of image as compared to text: “graphics data illustrating
various catalog items,” “graphics data by phone lines 22 is very slow, especially if
high resolution is desired,” technical data sheets with high resolution graphics,”
“graphics data for outlines and boxes,” “graphics data illustrating the
configuration of various products,” and, “Dimensional Data downloaded as text
data, but must be processed to create a graphics file in order to display the
borders around the text.” Thus, both the plain meaning of the term “graphics data”
and its usage throughout the subject patents confine “graphics data” to a picture,
illustration or some type of image.
Id. at 20-21 (emphasis in original) (internal citations omitted). As such, to clarify that “graphics
data” cannot be text, Judge Folsom replaced Judge Ward’s “related to” language with
“representing.” Id. The parties agree that the first sentence of Judge Folsom’s construction is
correct, and as illustrated above, the construction is fully supported by the specification. See also
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’490 Patent at 1:59-61 (“For instance, the customer’s computer may include high resolution
graphics data illustrating the various catalog items in detail.”); 16:7-10 (“[C]ustomer’s computer
18 provides graphical information to the customer as illustrated at block 266. Illustratively,
customer’s computer displays drawings of an electric motor . . . .”). As such, the Court adopts
the first sentence of the parties’ proposed construction.
In the second sentence of their proposed construction, Defendants argue that the Court
should include the statement: “Graphics range from simple lines, bars or graphs to colorful and
detailed images.” Judge Folsom adopted this exact language in the Abercrombie case, and Judge
Ward adopted almost identical language in the Amazon case. See Abercrombie, Dkt. No. 228 at
21; Amazon, 2005 WL 2483510, at *7 (“Graphics range from simple line or bar graphs to
colorful and detailed images.”). Defendants contend that the language is appropriately clarifying
because it identifies examples of “graphics data” so as to avoid confusion with the contrasting
term “textual data.” Defendants’ proposed examples are supported by the specification. See,
e.g., ’490 Patent at 1:59-61; 16:7-10; 9:40-44. Furthermore, Defendants are correct that the
examples will assist the jury in distinguishing between “graphics data” and “textual data.”
Therefore, the Court adopts the second sentence of Defendants’ proposed construction.
The third sentence of Defendants’ proposed construction of “graphics data” seeks to
import a limitation, requiring that all “graphics data” must necessarily be “constant data.” The
parties have agreed that “constant data” is “product information classified as likely to change less
often than variable data.” Defendants urge the Court to adopt the following limitation with
regard to “graphics data:” “Graphics data are product information classified as likely to change
less often than variable data.” As such, Defendants argue that “graphics data” are necessarily
“constant data” and can never be “variable data.” Defendants, however, fail to identify anything

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in the intrinsic record that would require as such.

Although, as Defendants note, the

specification explains that “[c]onstant data includes both graphics data and textual data” (see
’649 Patent at 1:59-60), Claim 20 of the ’649 Patent provides:
The method of claim 16, wherein the constant data includes high resolution
graphics data and the variable data includes textual data.
’649 Patent at 24:45-47 (emphasis added). Given that the Claim 20 expressly states that variable
data can include textual data, it appears that the patentee did not intend the statement “[c]onstant
data includes both graphics data and textual data” to be limiting.
Furthermore, a comparison of Claim 1 of the ’649 Patent with Claim 16 of the ’649
Patent illustrates that the patentee replaced the terms “graphics data” and “textual data” in Claim
1 with the terms “constant data” and “variable data” in Claim 16.

As such, Defendants’

proposed construction of “graphics data” would violate the doctrine of claim differentiation by
rendering Claim 1 superfluous. See Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182,
1187 (Fed. Cir. 1998). Although the doctrine of claim differentiation is not a hard and fast rule
of construction, it does create a presumption that each claim in a patent has a different scope. Id.
As the Federal Circuit has explained:
‘There is presumed to be a difference in meaning and scope when different words
or phrases are used in separate claims. To the extent that the absence of such
difference in meaning and scope would make a claim superfluous, the doctrine of
claim differentiation states the presumption that the difference between claims is
significant.’
Id. (quoting Tandon Corp. v. U.S. Int’l Trade Comm’n, 831 F.2d 1017, 1023 (Fed. Cir. 1987).
“Such a presumption can be overcome, but the evidence must be clear and persuasive.” Modine
Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545 (Fed. Cir. 1996). Here, as discussed above,
there is nothing in the intrinsic record requiring that all “graphics data” be “constant data” or that
“graphics data” cannot be “variable data.” Although the specification provides that “constant
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data” can include “graphics data” (see, e.g., ’649 Patent at 1:59-60; 3:45-49; 9:37-42), such
statements do not rise to the level of a clear disclaimer of claim scope. As such, the Court
concludes that the claim differentiation presumption has not been overcome by “clear and
persuasive” evidence.
In conclusion, the Court adopts the following construction of “graphics data:”
“Data representing computer-generated pictures produced on a screen. Graphics range
from simple lines, bars or graphs to colorful and detailed images.”
B.

The Data Request Limitations

Plaintiff’s Proposed Construction
“a request for information from a database”

i.

Defendants’ Proposed Construction
“sending a request for information from a
database without providing customer access
to browse through data on the main
computer”

The Parties’ Positions

Plaintiff argues that the Court should construe the term “data request query” to mean “a
request for information from a database.” Defendants, on the other hand, argue that the Court
should construe the phrase “transmitting a data request query” (emphasized to show that
Defendants seek to construe slightly different language) to mean “sending a request for
information from a database without providing customer access to browse through data on the
main computer.” The parties’ primary dispute is whether the limitation “without providing
customer access to browse through data on the main computer” should be imported into the term
“transmitting.”
ii.

Discussion

The term “transmitting a data request query” appears in Claims 1, 8, and 16 of the ’649
Patent. Claim 1 of the ’649 Patent is representative:

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A method for accessing product information data related to a selected product
stored in a vendor’s main computer from a customer’s remote computer, the
method comprising:
storing product data including graphics data and textual data related to a
plurality of products in a memory of the main computer;
storing a first subset of product data including graphics data related to at least
one of the plurality of products in a memory of the remote computer;
selecting at least one product at the remote computer;
transmitting a data request query related to the at least one selected product
from the remote computer to the main computer;
identifying a second subset of product data including graphics data and textual
data related to the selected product from the product data stored in the
memory of the main computer based on the data request query;
transmitting the textual data from second subset of product data from the main
computer to the remote computer;
transmitting only updated graphics data from the second subset of product
data that is different from the graphics data in the first subset of product data
from the main computer to the remote computer;
storing the updated graphics data in the memory of the remote computer; and
combining the textual data from the second subset of product data received
from the main computer with graphics data related to the selected product
stored in the memory of the remote computer to provide complete product
information data related to the selected product including both graphics and
textual data.
’649 Patent at 21:53-22:19 (emphasis added). In the Amazon case, Judge Ward construed “data
request query” to mean “a request for information from a database.”

Amazon, 2005 WL

2483510, at *7. In so doing, Judge Ward rejected the limitation proposed by the Defendants
here, explaining:
The defendants argue that “data request query” is a term of art. The defendants
contend that it means, in the context of the patent, a “statement for extracting data
from a database without providing customer access to browse through data on the
main computer.” The first part of the definition “statement for extracting data
16 

from a database” is the defendants’ proposed definition for query. The second half
of the definition, “without providing customer access to browse through data on
the main computer,” is derived from the prosecution history. During prosecution,
the patentee stated:
In the method of the present invention, only a data request query is transmitted
from the remote computer to the main computer. The customer at the remote
location does not have access to the vendor’s computer system to browse
through data on the main computer.
‘649 patent, Amendment and Reply, Paper 10, July 2, 1996. The court is not
persuaded that the defendants’ requested limitation is called for by the cited
portion of the prosecution history. Read in context of the patent, it appears that the
applicant was addressing the automatically establishing/automatically
disconnecting features of the patented invention, not the characteristics of the data
request query. These features are claimed in dependent claims of the ‘649 patent.
Id. at *6-7 (emphasis added). Furthermore, in the Abercrombie case, the parties stipulated that
“data request query” should be construed in accordance with Judge Ward’s construction, and
Judge Folsom adopted the parties’ stipulated construction. Abercrombie, Dkt. No. 228 at 18-21
(construing “data request query” to mean “a request for information from a database”).
Here, as in the Amazon case, Defendants primarily rely on the prosecution history of the
’649 Patent to support their proposed limitation that reads: “without providing customer access
to browse through data on the main computer.” Defendants contend that at least the following
portions of the prosecution history demonstrate that the claimed invention never allows the
customer to browse the main computer data:
Therefore, in the method of the present invention, only a data request query is
transmitted from the remote computer to the main computer. The customer at the
remote location does not have access to the vendor’s computer system to browse
through data on the main computer.
(Dkt. No. 203, Ex. A at 4) (emphasis added).
Therefore, in the method of the present claimed invention, only a data request
query is transmitted from the remote computer to the main computer. The
customer at the remote location does not have access to the vendor’s computer
system to browse through data on the main computer. The software of the present
17 

invention controls when the data link between the remote computer and the main
computer is connected and disconnected. These claimed steps of the present
invention increase system security and efficiency of computer resource utilization.
(Dkt. No. 203, Ex. B) (emphasis added).
In the present invention, after a product is selected, the remote computer
automatically establishes the data link between the remote computer and the main
computer. The customer does not have the opportunity to dial up the main
computer and browse the memory of the main computer. This improves the
security of the main computer.
Id. at 17 (emphasis added).

As Judge Ward concluded in Amazon, however, when the

prosecution history is read in light of the claims and specification of the ’649 Patent, the
prosecution statements that the Defendants rely upon appear to be referring to the automatic
connection and disconnection aspects of the claimed invention.
To illustrate, the specification explains that the first object of the invention is “to provide
the customer with an instantaneous distribution of the latest catalog data available.” ’649 Patent
at 2:3-5. The specification then explains how this goal is attained. Id. at 2:5-34. This object,
however, is not the only object of the invention. Rather, the specification explains that:
Another object of the present invention is to minimize computer on-line time. A
common disadvantage of conventional dial-up catalog systems is that a customer
can log on to a vendor’s computer and never log off. In other words, the customer
has control over when to log on and when to log off vendor’s computer. This can
tie up vendor’s computer for long periods of time. …
In the electronic catalog system of the present invention, the customer does not
have the privilege of determining when to log on or when to log off the vendor’s
computer. The catalog system of the present invention automatically determines
when it is necessary to log on to vendor’s computer to retrieve additional data.
Because all of the general catalog data is resident on the customer’s computer, the
normal browsing the user might do is accomplished locally at the customer’s
computer. The customer's computer automatically connects itself to vendor’s
computer and automatically requests the needed information only after the desired
product has been selected from data on the customer’s computer. The customer's
computer automatically logs off vendor’s computer after the requested data is
received. Therefore, the electronic catalog system of the present invention
typically reduces the on-line time by about 70-80%.
18 

Id. at 2:35-59 (emphasis added). The specification also explains that this automatic connection/
disconnection aspect of the invention “reduces customer access to [the] vendor’s computer
system” thereby “increase[ing] system security,” which is yet another “object of the present
invention.” Id. at 2:60-3:8. These “objects” however are addressed in different claims of the
’649 Patent.

Claims 4, 5, 10, 12, and 19 specifically address the automatic

connecting/disconnecting features of the invention. For Example, Claims 4 and 5 provide:
4. The method of claim 1, further comprising automatically establishing a data
link between the remote computer and the main computer after the selecting step.
5. The method of claim 4, further comprising automatically disconnecting the data
link between the remote computer and the main computer after the second subset
of product data is transmitted from the main computer to the remote computer.
Id. at 22:27-34 (emphasis added). Considering that Claims 4, 5, 10, 12, and 19 depend from
claims reciting the term “transmitting a data request query,” importing Defendants’ proposed
limitation would violate the doctrine of claim differentiation.
One of the prosecution history statements upon which Defendants’ rely, however, is
particularly persuasive. The patentee stated that:
Geoffrey does not disclose or suggest anything whatsoever to do with improving
efficiency and security of the electronic catalog system by generating a data
request query related to a selected product at a remote computer, and then
transmitting the query to the main computer as recited in claim 75. As discussed
above, the present claimed invention does not permit or require the customer to
log on to a computer and access a memory of the main computer. Claim 75 is
separately patentable at least on this basis.
(Dkt. No. 203, Ex. B at 11) (emphasis added). However, Claim 75, which is somewhat similar to
Claim 8 of the ’649 Patent, does not include the automatically connecting/disconnecting feature
of the claimed invention. Id. at 23. Rather, as in the ’649 Patent, those features are explicitly
provided for in Claims 79 and 80. Id. at 24. Although the patentee’s description of Claim 75

19 

indicates that the automatically connecting/disconnecting features of the invention were intended
to fall within the scope of Claims 1, 8, and 16 of the ’649 Patent, this statement does not rise to
the level of a “clear disavowal” of claim scope. See Home Diagnostics, Inc. v. LifeScan, Inc.,
381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a clear disavowal or contrary definition in the
specification or the prosecution history, the patentee is entitled to the full scope of its claim
language.”); see also Phillips, 415 F.3d at 1317 (explaining that because the file history
“represents an ongoing negotiation between the PTO and the applicant,” it may lack the clarity of
the specification and thus be less useful in claim construction proceedings). This is especially
true in light of the fact that Claim 75 contains a “generating” limitation, which is tied to and
relied upon in the prosecution history statement at issue. Neither Claims 1 nor 16 of the ’649
Patent contain such a limitation. And although Claim 8 of the ’649 Patent does contain a
“generating” limitation, it also contains other limitations that differ from those contained in
Claim 75 of the prosecution history.

As such, each of the claims in ’649 Patent are

distinguishable from Claim 75, and although it is admittedly a close call, the Court concludes
that the prosecution statement at issue here does not clearly disavow the broad scope of the
claims containing the “transmitting a data request query limitation.”
Finally, during Defendants’ oral argument at the Markman hearing, while discussing
construction of the terms “automatically connecting” and “automatically disconnecting,”
Defendants’ counsel stated that the limitation of the customer’s inability to browse the main
computer is certainly included in the concept of automatically connecting and disconnecting and
would appropriately be added to that term. Markman Hearing Transcript at 53:12-15. The court
agrees with Defendants that the limitation does indeed go hand-in-hand with the concept of
automatically connecting and disconnecting rather than the term “data request query.”

20 

The parties’ final dispute is whether it is necessary to construe the term “transmitting” to
mean “sending.” Plaintiff argues that no construction of this term is necessary – rather, the term
should be accorded its ordinary meaning. Plaintiff, however, also argues that if the Court deems
it necessary to construe the term, the Court should construe it to mean “sending.” Defendants
argue that the term should be construed to mean “sending.” Construing the term “transmitting”
to mean “sending,” however, will not assist the jury in making their infringement determinations.
The term transmitting is not a term of art, and the patents-in-suit do not use the term in a manner
contrary to its ordinary meaning.

As such, the Court agrees with Plaintiff that the term

“transmitting” needs no further construction.
In conclusion, the Court adopts Plaintiff’s proposed construction of “data request
query” – that is, “a request for information from a database.” Although it is a close issue,
the Court rejects Defendants’ argument that the prosecution history statements upon which
Defendants rely rise to the level of a clear disavowal of claim scope. Finally, the Court rejects
Defendants argument that the term “transmitting” should be construed to mean “sending.”
C.

The Integrating Limitations and the Combining Limitations

Plaintiff’s Proposed Construction
“merging or uniting in a meaningful way”

Defendants’ Proposed Construction
“merging or uniting in the remote computer
the constant data and variable data in a
meaningful way”

The parties agree to combine their positions regarding the terms “integrating” and
“combining” because those terms are used consistently in the patents-in-suit. Thus, this Court
will analyze the terms together.

Neither Plaintiff nor Defendants takes issue with the

construction of the terms “integrating” or “combining” as “merging or uniting in a meaningful
way.” Judges McKinney and Folsom have defined the term “integrating” as “merging or uniting
in a meaningful way,” and both parties agree to such a construction for both terms. CompuServe
21 

I, 65 F. Supp. 2d at 942-43; Abercrombie, 2008 WL 5771130, at *29-32. However, Defendants
request additional language be added to the construction for clarification. Defendants urge that
the terms “integrating” and “combining” may only be used in reference to an action taking place
in the remote computer, and that it involves the merger of constant and variable data. Plaintiff,
however, argues the terms “integrating” and “combining” are readily understandable and require
no construction, and in the alternative, that the terms’ plain meaning of “merging or uniting in a
meaningful way” be adopted, without further clarification that such occur in the remote
computer.
i.

The Parties’ Positions

Plaintiff first argues that the term “integrating” is plainly understandable and requires no
construction. Further, Plaintiff argues that, if the Court determines it is necessary to construe the
terms, it should be construed as Judges McKinney and Folsom previously construed the term
“integrating” as “merging or uniting in a meaningful way.”

Plaintiff urges the additional

language in Defendants’ construction is redundant and unnecessary, given that the claim
language itself specifies where the integrating must take place (“in the remote computer”) and
what must be integrated (“the constant data” and “the variable data”). See claims 1, 15 of the
‘490 Patent and claim 1 of the ‘142 Patent.
Defendants take no issue with Plaintiff’s construction but instead, urge to clarify when
the term is used and to what it is referring – in other words, that the integrating must take place
in the remote computer and involves the merger of constant and variable data. The Patent
specification at issue, including the “integrating” language, reads as follows:
“[the] vendor’s computer transmits a map to the customer’s computer which
permits the customer’s computer to integrate the variable data received from the
vendor’s computer with the constant data related to the selected product stored in
the customer’s computer. … [the] [c]ustomer’s computer 18 reads the received
22 

variable data at block 364 and integrates the variable data received with the
constant data on customer’s computer. …”
‘490 Patent at 2:17-23 and 21:38-40. Defendants claim that, based on the clear language of the
specification, the integration of data must take place in the remote computer and only involves
the merger of constant and variable data. Defendants further point out that Plaintiff does not
claim its construction is incorrect but merely unnecessary.
ii.

Discussion

The Court holds that it is necessary to construe the terms “integrating” and “combining.”
Further, the Court holds that “integrating” and “combining” be construed as “merging or uniting
in the remote computer the constant data and variable data in a meaningful way.” Plaintiff does
not contend that Defendants’ construction is incorrect but merely argues that additional language
to clarify the term is unnecessary.

In fact, Plaintiff explicitly states that it agrees with

Defendants that the plain language of the claims is clear that (1) the integrating step must take
place in the remote computer when the term “in the remote computer” or “in the customer’s
remote computer” is used in conjunction with the term “integrating,” and (2) the combining step
must take place in the remote computer when the term “in the remote computer” or “in the
customer’s remote computer” is used in conjunction with the term “combining.” (Dkt. No. 206
at 13.) Therefore, because the parties essentially do not dispute the construction of the
terms “integrating” and “combining” as requiring integration in the remote computer of
constant and variable data, this Court construes the term consistent with the construction
in which both parties agree as “merging or uniting in the remote computer the constant
data and variable data in a meaningful way.”

23 

D.

Remote Computer / Customer’s Remote Computer

Plaintiff’s Proposed Construction
No construction is necessary. Or, alternatively,
if the Court construes the terms, they should be
construed as:

Defendants’ Proposed Construction
Defendants believe that remote computer
and customer’s remote computer should be
construed together and have the same
meaning: “a computer that is located at a
remote computer: “a computer that is located at different physical location than the main
a different physical location than the main computer for use by a customer or
computer”
prospective customer”
customer’s remote computer: “a remote
computer for use by a customer or prospective
customer”

The two terms at issue here are “remote computer” and “customer’s remote computer.”
The dispute for the Court to resolve is whether the terms “remote computer” and “customer’s
remote computer” have the same meaning or whether the terms should have separate
constructions. Plaintiff argues the terms should have a different meaning, and in accordance, if
the Court chooses to construe the terms, Plaintiff has provided a different construction for each
term. On the other hand, Defendants have proposed a different construction for each term. The
actual language of the parties’ proposed constructions, however, is not in dispute.1

The Court

(1) agrees with Defendants that a construction is necessary, (2) agrees with Plaintiff that “remote
computer” and “customer’s remote computer” have different meanings and should have different
constructions, and (3) adopts the alternative constructions of the terms that are proposed by the
Plaintiff.

1

That is, as one can tell from reading the parties’ constructions, Defendants’ construction merely
combines the separate constructions of the Plaintiff into a single construction for both terms.
Therefore, once the Court resolves the dispute as to whether “remote computer” and “customer’s
remote computer” have the same meaning, the construction will be apparent.
24 

i.

The Parties’ Positions

Plaintiff first argues that these two terms do not need construction because construing
these terms will not assist the jury’s understanding of the terms. Perhaps because Judge Folsom
decided these terms needed construction in Abercrombie, 2 however, Plaintiff has proposed
alternative constructions for the Court to consider if the Court decides that a construction is
necessary.
In this regard, Plaintiff argues that the terms “remote computer” and “customer’s remote
computer” have different meanings. In support, Plaintiff points out that some claims use the
term “remote computer” and some claims use the term “customer’s remote computer.” For
example, claims 1-5, 9, 15-18, 23, and 24 of the ‘490 Patent and claims 1, 13, 14, 17, and 20 of
the ‘142 Patent only claim a “remote computer” and do not add the additional “customer’s”
qualifier. On the other hand, claims 1 and 16 of the ‘649 Patent use the language “customer’s
remote computer.”

Furthermore, Plaintiff points out that Judge Folsom was correct in

Abercrombie when he concluded that the terms must have a different meaning. Judge Folsom in
Abercrombie stated that it disagreed that the terms had the same meaning because “neither
‘consistency’ nor the quoted portions from the intrinsic record provide an appropriate basis to
import a limitation into the claims of the ‘490 and ‘142 Patents.” Abercrombie, Dkt. No. 228 at
27.
Finally, if the Court decides construction is necessary but agrees with Plaintiff that the
terms must have a different meaning, then Plaintiff proposes “remote computer” be construed as
“a computer that is located at a different physical location than the main computer” and

2

See Dkt. No. 228, at 26-32. 
25 

“customer’s remote computer” be construed as “a remote computer for use by a customer or
prospective customer.”
Defendants, on the other hand, argue that a construction of the terms “remote computer”
and “customer’s remote computer” is necessary. Defendants point out that Judge Folsom agreed
that a construction was necessary in Abercrombie. Id. at 26-32. Additionally, Defendants argue
that under 02 Micro Int’l Ltd. v. Beyond Innovation Tech., Ltd., 521 F.3d 1351 (Fed. Cir. 2008),
because the parties dispute the scope of the terms “remote computer” and “customer’s remote
computer,” the Court should construe those terms.
Defendants also argue that the terms “remote computer” and “customer’s remote
computer” have the same meaning and should be given the same construction. Defendants’
basic argument is that the terms are used interchangeably in the Patent. See, e.g., ‘649 Patent
21:54-55 & 60; 23: 47-48 & 24:1. Defendants also point the Court to Judge Ward’s claim
construction order in the Amazon case. Amazon, 2005 WL 2483510. Judge Ward gave the terms
“main computer” and “vendor’s main computer” the same construction.

Id. at *9.

And

Defendants argue that the terms “main computer” and “vendor’s main computer” are akin,
relationally speaking, to the terms “remote computer” and “customer’s remote computer.”
Finally, Defendants suggest the Court should limit the “remote computer” to a “customer’s
remote computer” because the specification of the patents clearly describes the present invention
in terms of a remote computer at the customer’s location. See, e.g., ‘490 Patent, 1:7-11 (“More
particularly, the present invention relates to an improved electronic catalog system capable of
providing a customer at a remote location with accurate updated product information from a
vendor each time the customer uses the electronic catalog system.”) (emphasis added).

26 

Finally, if the Court agrees with Defendants that “remote computer” and “customer’s
remote computer” should have the same meaning, Defendants propose the terms be construed as
“a computer that is located at a different physical location than the main computer for use by a
customer or prospective customer.”
ii.

Discussion

The Court holds that it is necessary to construe the terms “remote computer” and
“customer’s remote computer.” In 02 Micro, the Federal Circuit stated that “[w]hen the parties
present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to
resolve it.” 521 F.3d at 1362. Therefore, in that case, the Federal Circuit found it was reversible
error because the district court failed to construe the terms “only if” because the district court
decided that the term needed no construction and it could be given its ordinary meaning. Id. at
1361-63. But see Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1206-07 (Fed. Cir.
2010) (rejecting Defendants’ contention that 02 Micro stands for the proposition that every term
in dispute must be given a specific construction—i.e., something more than an ordinary meaning
construction and then confirming that a court can resolve a claim construction dispute by
rejecting a narrow claim construction and concluding that no additional construction is required).
In this case, by arguing whether “remote computer” is the same as “customer’s remote
computer,” the parties dispute the scope of the term “remote computer” because the implicit
issue is whether that term should be limited to a customer’s remote computer. Therefore, there is
an issue of disputed claim scope for the Court to decide. Further, even if this Court were to
reject a narrowing construction as in Finjan, an ordinary meaning construction for “remote
computer” or “customer’s remote computer” would not be helpful for the jury. Rather, both

27 

parties agree that the terms can be defined by explaining their relationship with the main
computer.
The bigger issue, however, is whether the “remote computer” and “customer’s remote
computer” should be given the same meaning. The Court holds that the terms do not have the
same meaning.

First, the Court agrees with Judge Folsom in Abercrombie that “neither

‘consistency’ nor the quoted portions from the intrinsic record provide an appropriate basis to
import a limitation into the claims of the ‘490 and ‘142 Patents.” Abercrombie, Dkt. No. 228 at
27. The Federal Circuit has cautioned that “limitations appearing in the specification will not be
read into claims, and . . . interpreting what is meant by a word in a claim is not to be confused
with adding an extraneous limitation appearing in the specification, which is improper.” In re
Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (citing Intervet Am., Inc. v.
Kee-Vet Labs., Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989)) (internal quotes omitted). In that
regard, nowhere in the patent specification (or prosecution history) is there any clear disclaimer
of claim scope that would require the Court to effectively read in a limitation to “remote
computer” that it be a “customer’s remote computer.”
Second, the terms should have different meanings because there is a presumption that
different words have different meanings. Tandon Corp. v. U.S. Int’l Trade Comm’n, 831 F.2d
1017, 1023 (Fed. Cir. 1987) (“There is presumed to be a difference in meaning and scope when
different words or phrases are used in separate claims.”); CAE Screenplates Inc. v. Heinrich
Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“we must presume that the use
of these different terms in the claims connotes different meanings”). In the present case, as noted
above, some claims in the related patents-in-suit used the term “remote computer” and some
claims used the term “customer’s remote computer.” It is presumed that these words, therefore,

28 

have different meanings. Defendants may argue that claim 1 of the ‘649 Patent—where the
claim uses both “customer’s remote computer” and “remote computer” to refer to the same
object—supports Defendants’ argument that the patents-in-suit meant for “remote computer” and
“customer’s remote computer” to have the same meaning. However, this fact does not clearly
support either party because claim 1 of the ‘649 Patent was merely using the term “remote
computer” to refer back to the “customer’s remote computer” on an antecedent basis.
Finally, this Court is not convinced that Judge Ward giving “main computer” and
“vendor’s main computer” the same construction in the Amazon case supports this Court now
giving “remote computer” and “customer’s remote computer” the same construction. While
“main computer” and “vendor’s main computer” have the same type of relationship as “remote
computer” and “customer’s remote computer,” Judge Ward never actually decided, in the context
of a dispute, that “main computer” and “vendor’s main computer” should have the same
construction. Rather, in the Amazon case, the parties agreed that the terms should have the same
construction but disputed what that construction should be. See Amazon, Def’s Resp. Br., Case
No. 2:02-cv-186-TJW, Dkt. No. 324 at 2 (“Plaintiff agrees that ‘main computer’ and ‘vendor’s
main computer’ can be construed identically.”) Therefore, because the issue was never disputed
before Judge Ward, Judge Ward’s decision to construe “main computer” and “vendor’s main
computer” the same is much less persuasive than Judge Folsom’s disputed decision that “remote
computer” and “customer’s remote computer” should not be construed the same.
After deciding that the terms “remote computer” and “customer’s remote computer”
should have different constructions, the actual language of the construction is not disputed. The
Court construes “remote computer” as “a computer that is located at a different physical

29 

location than the main computer” and “customer’s remote computer” as “a remote
computer for use by a customer or prospective customer.”
E.

Coupled to the Remote Computer

Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
There is no need to construe this term. “directly connected to the remote computer”
However, to the extent the Court finds that
construing this term would be helpful to a jury
or is otherwise necessary, the term should be
construed as follows: “connected to the remote
computer”
This is not a term that has been construed in any prior case. If the Court decides to
construe this term, the only disputed issue is whether the Court should add the extra qualifier
“directly,” as Defendants request. The Court holds that the qualifier, “directly,” should not be
included in its construction.
i.

The Parties’ Positions

Plaintiff first argues that this term does not need construction because the jury would not
need assistance to determine what “coupled to the remote computer” means. Plaintiff further
argues that should the term be construed, the Court should adopt its construction of “connected
to the remote computer” instead of “directly connected to the remote computer,” as Defendants
request. Plaintiff’s main argument is that there is nothing in the intrinsic record that shows that
“coupled” should be limited to being “directly connected.”
Defendants argue in their briefing that the word “coupled” should mean “directly
connected.” For example, Defendants suggest that Figure 1A of the ‘142 Patent shows the
monitor directly connected to the remote computer. Additionally, Defendants suggest that the
ordinary meaning of “coupled” supports Defendants’ construction of “directly connected.” In
support, Defendants cited a case, Mosaid Techs., Inc. v. Samsung Elec. Col, Ltd. et al., 2004 US

30 

Dist. LEXIS 27636 (D.N.J. Mar. 23, 2004), where that court found the term “coupled” meant
“directly united, joined, or linked together.”
ii.

Discussion

The first dispute that needs to be resolved is whether “coupled” should mean “directly
connected” or merely “connected.” The Court holds that “coupled” means “connected” and not
“directly connected.”
In this case, Defendants are seeking to add in the limitation of “directly connected”
through the term “coupled.” Defendants have a weak case for adding in this limitation. First, the
intrinsic record has little support for this “directly connected” construction, as the ‘142 Patent
specification never even uses the words “direct” or “directly.”

Second, although certain

embodiments appear to show a monitor directly connected to a remote computer, this is no way
amounts to a clear disclaimer of claim scope. See Anderson Corp. v. Fiber Composites, LLC,
474 F.3d 1361, 1373 (Fed. Cir. 2007) (“we have warned against importing limitations from the
specification into the claims absent a clear disclaimer of claim scope”) (citing Gillette Co. v.
Energizer Holdings, Inc., 405 F.3d 1367, 1375 (Fed. Cir. 2005). Further, Defendants’ citation to
Mosaid Techs for their ordinary meaning argument has little relevance, if any.

When

determining the meaning in of “coupled” in Mosaid Techs, the court was considering a different
technology related to a different patent in a different context. See Mosaid Techs, 2004 US Dist.
LEXIS 27636 at *50-57. Furthermore, Mosaid Techs was decided based on pre-Phillips law and
the court in Mosaid Techs relied heavily on dictionary definitions. Finally, during oral argument
on the briefing, Defendants essentially agreed with Plaintiff’s construction of the term and
admitted that “directly” maybe unnecessary in the construction.

31 

Thus, for all the

abovementioned reasons, the Court will not include the “directly” limitation into the construction
for “coupled to the remote computer.”
Finally, after deciding that it is not proper to include “directly” in the construction of
“coupled to a remote computer,” the Court must decide whether construction is even necessary.
As noted above for the construction of “remote computer,” the Federal Circuit in Finjan found
no error (i.e., due to 02 Micro) when the district court in that case rejected a party’s narrowing
construction and then gave the term its plain and ordinary meaning. 626 F.3d at 1206-07. The
present case presents almost an identical situation. Here, the Court has rejected a narrowing
construction that would include the “directly” limitation. Furthermore, the language “coupled to
a remote computer” is not language that necessarily needs a construction for the jury to
understand it. That is, it would not be improper here, as in Finjan, to give the language “coupled
to a remote computer” its ordinary meaning. Nevertheless, the word “connected” is likely easier
for a jury to understand than “coupled.” Furthermore, aside from Defendants’ request to use the
language “directly,” the parties otherwise agree that, if construed, the language “connected to a
remote computer” would be appropriate. Therefore, this Court construes “coupled to the
remote computer” as “connected to the remote computer.”
F.

Automatically Connecting and Automatically Disconnecting

Plaintiff’s Proposed Construction
There is no need to construe this term.
However, to the extent the Court finds that
construing this term would be helpful to a jury
or is otherwise necessary, the term should be
construed as follows: “connecting, without
human intervention”

Defendants’ Proposed Construction
“the remote computer creating a link
between the remote computer and the main
computer without human intervention”

The parties treat the construction of “automatically connecting” and “automatically
disconnecting” to be the same issue, so the two terms are discussed together here.

32 

i.

The Parties’ Positions

Plaintiff argues neither term needs construction because it would not be helpful to the
jury.

Alternatively, Plaintiff argues the terms should be construed as “connecting (or

disconnecting), without human intervention.” This is the construction adopted by Judge Ward in
the Amazon case. See Amazon, 2005 WL 2483510, at *8.
The major dispute between the parties’ constructions is whether it is a required limitation
that the “remote computer” actually be the agent that performs the connecting or disconnecting.
In this regard, Plaintiff argues that the intrinsic record does not limit the “automatic connecting”
or “automatic disconnecting” to be performed by the remote computer. Defendants argue that
the specification does teach and limit that the “automatic connecting” and “automatic
disconnecting” be performed by the remote computer. For example, Defendants point to the
specification where it states: “In the electronic catalog system of the present invention, the
customer does not have the privilege of determining when to log on or when to log off the
vendor’s computer . . . . The customer’s computer automatically connects itself to the vendor’s
computer . . . .” ‘490 Patent, 2:44-54 (emphasis added). Furthermore, Defendants state that
Plaintiff admitted in the CompuServe III case, in arguing for the construction of a means-plusfunction claim, that the remote computer is the structure for automatically connecting the remote
computer to the main computer. CompuServe III, 2003 WL 23101797, at *34-35.
ii.

Discussion

The “remote computer” is not necessarily the agent that performs the automatic
connecting and/or disconnecting. Although in most of the examples in the specification the
remote computer is the agent that appears to perform the function of automatically connecting or
disconnecting, there is no clear disclaimer in the intrinsic record that the remote computer is the

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only agent that can perform this function. See Anderson, 474 F.3d at 1373. Furthermore, in one
of the examples or preferred embodiments in the ‘490 Patent, the specification states that the
“vendor’s computer 12 automatically logs off and disconnects the data link at block 358.” ‘490
Patent, 21:32-34. Defendants’ proposed construction would foreclose this embodiment, and the
Federal Circuit has cautioned away from interpreting claims in way that would read out disclosed
or preferred embodiments in the specification. Verizon Servs. Corp. v. Vonage Holdings Corp.,
503 F.3d 1295, 1305 (Fed. Cir. 2007) (“We normally do not interpret claim terms in a way that
excludes disclosed examples in the specification.”); see also MBO Labs., Inc. v. Becton,
Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007) (“[A] claim interpretation that excludes a
preferred embodiment from the scope of the claim is rarely, if ever, correct.”).
The Court is also unconvinced of Defendants’ argument that Plaintiff conceded in the
CompuServe III action that the remote computer is the structure that performs the function of
automatically connecting the remote computer to the main computer. Defendants admit that this
argument was made only with respect to a means-plus-function claim term. And as Plaintiff
correctly points out, the law is much different with respect to claim construction of a means-plusfunction term as opposed to a non-means-plus-function term, as the Court considers here. In a
means-plus-function term, the “structure disclosed in the specification is a ‘corresponding’
structure only if the specification or prosecution history clearly links or associates that structure
to the function recited in the claim.” Medical Instrumentation and Diagnostics Corp. v. Elekta
AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003), citing B. Braun v. Abbott Labs, 124 F.3d 1419, 1424
(Fed. Cir. 1997). Thus, perhaps, if the “remote computer” was the only structure clearly linked
to the function of automatically connecting in a means-plus-function claim, then the structure
would be limited to that (plus structural equivalents). On the other hand, in the present case, as

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discussed above, the court should not “import[] limitations from the specification into the claims
absent a clear disclaimer of claim scope.” See Anderson, 474 F.3d at 1373. And as discussed
above, Defendants have not shown a clear disclaimer in the specification or prosecution history.
Finally, although this Court rejects Defendants’ proposed limitation that the customer
cannot browse the main computer for the term “data request query,” 3 this Court addresses
whether the limitation is appropriate for the automatically connecting/disconnecting terms. See
supra, Section IV.B.
In their briefing of the term “data request query,” Defendants rely upon portions of the
prosecution history to argue that the claimed invention never allows the customer to browse the
main computer. As explained in Section IV.B., these portions of the prosecution history relate
most directly to the automatically connecting and automatically disconnecting feature of the
invention. See supra Section IV.B. Further, Judge Ward stated in Amazon that when the
prosecution history is read in light of the claims and specification of the ’649 Patent, the
prosecution statements that the Defendants rely on appear to be refer to the automatic connection
and disconnection aspects of the claimed invention. Amazon, 2005 WL 2483510, at *6-7.
Finally, during oral argument in the Markman hearing, Defendants agreed that the limitation is
certainly included in the concept of automatically connecting and disconnecting and that the
limitation would appropriately be added to the term. Markman Hearing Transcript at 53:12-15.
Further, Plaintiff admitted during oral argument in the Markman that if the limitation applies
anywhere, it applies to the automatically connecting and automatically disconnecting concept.
Id. at 54:12-15.

However, Plaintiff explained that the limiting language provided in the

prosecution history does not rise to the level of a prosecution disclaimer. Id. at 54:15 – 55:20.

3

 See supra Section IV.B. 

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Therefore, the Court construes “automatically connecting” as “connecting, without
human intervention and without access to browse the data on the memory of the main
computer” and “automatically disconnecting” as “disconnecting, without human
intervention and without access to browse the data on the memory of the main computer.”
V.

CONCLUSION

. The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit. 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.
IT IS SO ORDERED.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 10th day of January, 2012.

____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

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