Spam Arrest LLC v. Rhino Software, Inc. et al

Filing 99

ORDER that the court will construe three disputed terms. The July 15, 2011, Claims Construction Hearing is canceled. Signed by District Judge William M. Conley on 6/27/11. (rep)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

SPAM ARREST LLC,
Plaintiff,

OPINION AND ORDER

v.
10-cv-669-wmc
RHINO SOFTWARE, INC., MARK
PETERSON, BOXBE, INC. THEODORE
LODER, DIGIPORTAL SOFTWARE, INC.,
NEBOJSA DJOGO, DAVID JAMESON,
RONALD WEINDRUCH, SENDIO, INC.,
CAMERON BROWN and JONATHAN
NEIDNAGEL,
Defendants.
In this patent infringement case, plaintiff Spam Arrest LLC alleges that defendants
infringe, directly or through inducement, plaintiff‟s United States Patent No. RE40,992
E (the „992 patent), which covers a “method and system for blocking unwanted
communications.” Plaintiff and the corporate defendants have filed motions for claims
construction of various terms. (See dkts. ##83, 86, 87, 89 & 90.)
First, in the preliminary pretrial conference order, the magistrate judge explained
that “[i]f the moving party wants a claims construction hearing, then it must request one,
specify which terms require a hearing and provide grounds why a hearing actual is
necessary for each specified term.” (Dkt. #44 at 2.) None of the parties requested a
hearing or provided grounds why a hearing would be necessary for any term.
Accordingly, there will not be a claim construction hearing on July 15, 2011, and that
date will be removed from the court‟s schedule.

Second, the magistrate judge also explained that it would be each “party‟s burden
to persuade the court that construction of each specified term is necessary to resolve a
disputed issue concerning infringement or invalidity.”

(Dkt. #44 at 2.)

The court

imposes that requirement to avoid deciding abstract questions that have no bearing on
the lawsuit. Citizens for a Better Environment v. Steel Co., 230 F.3d 923, 927 (7th Cir.
2000) (federal courts have no authority to issue advisory opinions). Merely stating that
claims should be construed because they are concepts “upon which determinations of
both noninfringment and/or invalidity are likely to rest” does not persuade the court that
construction of such terms are necessary to resolve any actual issues of infringement or
invalidity.

(Def. Sendio, Inc.‟s Br. (dkt. #90) at 7.)

Instead, explanations of why

construction of a term in a certain manner will establish that an accused product does
not infringe or that a claim is invalid are the types of information the court needs to be
persuaded to construe a term at this stage of the case. (See Def. Digiportal Software,
Inc.‟s Br. (dkt. #86) at 9 (“Digiportal‟s accused products employ no such knowledge
sharing between recipients of e-mail received from a sender”).)
Nonetheless, failure to meet the above requirement does not mean that terms will
never be construed. Instead, the court will construe terms when it becomes necessary to
resolve a disputed issue of infringement or invalidity, which usually occurs when deciding
motions for summary judgment.

Here, it appears the following terms should be

construed: recipient; other recipients; and authorization information. Construction
of other terms will be made when such construction is proven necessary to decide a
disputed issue on summary judgment.

2

ORDER
IT IS ORDERED that the court will construe the following disputed claim terms
from plaintiff United States Patent No. RE40,992 E:
recipient
other recipients
authorization information

Entered this 27th day of June, 2011.
BY THE COURT:
/s/
______________________________________
WILLIAM M. CONLEY
District Judge

3