Citations
- 691 F. Supp. 2d 538
Full opinion text
MEMORANDUM ORDER
JOSEPH J. FARNAN, JR., District Judge.
Pending before the Court are Defendants’ Objections to Magistrate Judge Stark’s Report And Recommendation Regarding Claim Construction (D.I. 599 in Civ. Act. No. 04-1436-JJF-LPS; D.I. 319 in Civ. Act. No. 06-403-JJF-LPS; D.I. 369 in Civ. Act. No. 06-404-JJF-LPS; D.I. 257 in 08-371-JJF-LPS; D.I. 177 in Civ. Act. No. 08-373-JJF-LPS). For the reasons discussed, the Court will overrule the Objections and adopt Magistrate Judge Stark’s Report and Recommendation (D.I. 531 in Civ. Act. No. 04-1436-JJF-LPS; D.I. 299 in Civ. Act. No. 06-403-JJF-LPS; D.I. 334 in Civ. Act. No. 06-404-JJF-LPS; D.I. 229 in 08-371-JJF-LPS; D.I. 163 in Civ. Act. No. 08-373-JJF-LPS).
I. PARTIES’CONTENTIONS
Defendants contend that Magistrate Judge Stark failed to properly consider new extrinsic evidence from the reexamination proceedings in considering the claim terms in dispute. In this regard, Defendants contend that Magistrate Judge Stark should have given deference to the PTO’s broadest reasonable claim construction, because the PTO allowed the claims to emerge from the reexamination proceedings without amendment. In particular, Defendants object to the following terms defined by Magistrate Judge Stark in the Report and Recommendation: “plurality of different data formats;” various terms using the word “image;” “electronic camera” and “digital camera”; “storage device,” “digital memory” and “memory element;” and several terms which Defendants contend should be construed as means plus function terms. Defendants also contend that the steps of certain method claims must be performed in a particular order. In addition, Defendants contend that Magistrate Judge Stark failed to consider and rule upon several claim construction terms presented in Defendants’ briefs, specifically “digital electronic information signals,” “digital electronic signal,” “digital image signal,” and “digital data information signals.”
In response, Plaintiff contends that Defendants’ objections reiterate arguments that have already been rejected by this Court on more than one occasion. Plaintiff contends that Magistrate Judge Stark properly considered the PTO’s claim construction opinions but, in accordance with Federal Circuit precedent, properly concluded that the PTO’s opinions do not limit or trump the Court’s claim construction. Plaintiff also contends that Defendants’ proposed claim constructions are inconsistent with the preferred embodiment and specifications of the patents in suit.
II. STANDARD OF REVIEW
Pursuant to 28 U.S.C. § 636(b)(1)(B) and Fed.R.Civ.P. 72(b) (3), the Court may accept, reject, or modify the recommendations of the magistrate judge. The court may also receive further evidence or return the matter to the magistrate judge with instructions for proceeding. Objections to the magistrate judge’s conclusions with regard to the legal issue of claim construction are reviewed de novo. 28 U.S.C. § 636(b)(1)(C).
III. DISCUSSION
The.Court has reviewed the objections raised by Defendants and concludes that Magistrate Judge Stark did not err in his claim construction decisions. In reaching this conclusion, the Court notes that it has considered and rejected many of Defendants’ arguments in the context of previous litigation concerning the patents-in-suit. St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc., 2004 WL 1941340 (D.Del. Aug. 31, 2004); St. Clair Intellectual Property Consultants, Inc. v. Sony Corporation, 2002 WL 31051605 (D.Del. Sept. 3, 2002). However, as Magistrate Judge Stark properly noted, these constructions are not dispositive here because several Defendants were clearly not parties to the prior actions.
Nevertheless, the Court is not persuaded that its previous constructions are erroneous, and in the Court’s view, Magistrate Judge Stark’s proposed constructions for all the terms, regardless of whether they were considered previously by the Court, are consistent with the plain language of the claims and the specifications of the patents-in-suit. Further, the Court cannot conclude that Magistrate Judge Stark erred in his consideration of the PTO’s statements during claim construction. Magistrate Judge Stark gave the PTO’s statements due consideration, but correctly noted that they are not dispositive with regard to the Court’s claim construction which must be rendered de novo.
As for the claim terms which Defendants contend that Magistrate Judge Stark failed to consider, the Court notes that these terms are related to the term “image,” and Defendants’ construction concerns for these terms implicate the issue of whether an image can comprise full motion video. Plaintiff did not propose constructions for these terms, and the Court notes that Magistrate Judge Stark adopted Plaintiffs contention that the term “image” does not require construction. Specifically, the Magistrate Judge stated, “I agree with St. Clair that no construction is necessary, and certainly not a construction that would limit the claims to ‘still pic-, tures.’ ” (Report & Recommendation at 20). Given Magistrate Judge Stark’s conclusion regarding the construction of the term “image,” which the Court adopts, the Court is not persuaded that these additional terms require construction.
In sum, the Court agrees with Magistrate Judge Stark’s conclusions and fully adopts the rationale set forth in his Report and Recommendation. Accordingly, the Court will overrule Defendants’ Objections and adopt Magistrate Judge Stark’s Report and Recommendation on claim construction.
NOW THEREFORE, IT IS HEREBY ORDERED that:
1. Defendants’ Objections to Magistrate Judge Stark’s Report And Recommendation Regarding Claim Construction (D.I. 599 in Civ. Act. No. 04-1436-JJF-LPS; D.I. 319 in Civ. Act. No. 06-403-JJF-LPS; D.I. 369 in Civ. Act. No. 06-404-JJF-LPS; D.I: 257 in 08-371-JJF-LPS; D.I. 177 in Civ. Act. No. 08-373-JJF-LPS) are OVERRULED.
2. Magistrate Judge Stark’s Report and Recommendation Regarding Claim Construction (D.I. 531 in Civ. Act. No. 04-1436-JJF-LPS; D.I. 299 in Civ. Act. No. 06-403-JJF-LPS; D.I. 334 in Civ. Act. No. 06-404-JJF-LPS; D.I. 229 in 08-371-JJF-LPS; D.I. 163 in Civ. Act. No. 08-373-JJF-LPS) is ADOPTED.
REPORT AND RECOMMENDATION REGARDING CLAIM CONSTRUCTION
LEONARD P. STARK, United States Magistrate Judge.
In these patent infringement actions I have been asked to provide recommended constructions of numerous claim terms from multiple patents. Many of the claim terms now in dispute have been previously construed by this Court in earlier litigation. Below I provide the constructions I recommend that the Court adopt in the instant cases.
I. Background
A. The Patents-In-Suit
In these actions, St Clair asserts six patents: (i) U.S. Patent No. 5,576,757 (“the '757 patent”), issued on November 19, 1996; (ii) U.S. Patent No. 6,094,219 (“the '219 patent”), issued on July 25, 2000; (iii) U.S. Patent No. 6,238,010 (“the '010 patent”), issued on May 15, 2001; (iv) U.S. Patent No. 6,323,899 (“the '899 patent”), issued on November 27, 2001; (v) U.S. Patent No. 5,138,459 (“the '459 patent”), issued on August 11, 1992; and (vi) U.S. Patent No. 6,496,222 (“the '222 patent”), issued on December 17, 2002.
Four of the patents — -the '757, '219, '010, and '459 — share the same title: “Electronic Still Video Camera With Direct Personal Computer (PC) Compatible Digital Format Output.” The '899 patent is entitled “Process for Use In Electronic Camera.” The '222 patent is entitled “Digital Camera with Memory Format Initialization.”
The inventors on each of the patents are Marc K. Roberts, Matthew A. Chikosky, and Jerry A. Speasl. Collectively, the patents-in-suit are referred to as the “Roberts Patents.” The Roberts Patents share a common specification. (D.I. 258 at 2)
B. The Technology At Issue
Each of the six patents-in-suit relate to digital camera technology. Judge Farnan has generally described the technology at issue as follows:
... Using the patented cameras, analog image signals are converted into their digital equivalents. The digital equivalents are then compressed into a user-determined format and saved for later decompression and use with a personal computer.
Under the conventional prior art, electronic still cameras produced analog equivalents for a captured image. Using this prior art, the conversion of the analog equivalent into a digital format for use with personal computers was expensive and burdensome. The object of the patents-in-suit was to create the more facile conversion of analog images into digital formats for utilization with personal computers.
St Clair Intellectual Property Consultants, Inc. v. Canon Inc., 2004 WL 1941340, at *1 (D.Del. Aug. 31, 2004) (hereinafter “Canon Construction”). Judge Farnan has further observed that several of the Roberts Patents cover electronic cameras that can save digital photographs in multiple memory formats for use on personal computers. See St. Clair Intel lectual Property Consultants, Inc. v. Sony Corporation, 2002 WL 31051605, at *1 (D.Del. Sept. 3, 2002) (hereinafter “Sony Construction” ).
C. Disputed Claim Terms
The parties present seven groupings of disputed claim terms for the Court’s construction:
(1) “plurality of different data formats for different types of computer apparatus” ('459 patent, claim 16; '219 patent, claim 10) and variations thereof ('010 patent, claim 1; '899 patent, claims 1 and 3; '219 patent, claims 1 and 16);
(2) “electronic camera” ('219 patent, claims 1, 10, and 16; '899 patent, claims 1 and 3) and “diyital camera” ('010 patent, claim 1);
(3) “image” ('459 patent, claim 16; '219 patent, claims 1, 10, and 16; '010 patent, claim 1) and related terms ('899 patent, claims 1 and 3);
(4) “storage device” ('899 patent, claims 1 and 3), “digital memory” ('459 patent, claim 16), and “memory element” ('219 patent, claim 1);
(5) “generating” “converting” “selecting” and “storing” ('459 patent, claim 16);
(6) claims one party contends are means-plus-function claims: “image pickup unit” ('010 patent, claim 1; '899 patent, claims 1 and 3), “memory means” ('219 patent, claims 10 and 16), “analog to digital converter means” ('219 patent, claim 16), and “logic means” ('219 patent, claims 10 and 16); and
(7) claims the parties agree are means-plus-function claims: “output data [format] control means” ('219 patent, claims 1, 10, and 16), “means for digitizing captured image data” ('219 patent, claims 1 and 10), “[picture] image resolution determining means” ('219 patent, claims 12 and 17), and “means for capturing image data corresponding to a selected image” ('219 patent, claim 10).
In the Sony Constmction and the Canon Construction, Judge Farnan construed many of the terms the parties dispute in the instant actions. Where applicable, these prior constructions are discussed throughout this Report & Recommendation.
D. Procedural History
The parties filed a Joint Claim Construction Chart on April 9, 2009 (D.I. 166) (hereinafter “JCCC”) and, thereafter, briefed their respective positions. The parties presented tutorials to the Court as well as their arguments on claim construction on June 11, 2009. (D.I. 311) (hereinafter “Tr.”)
II. Legal Standards
“It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (internal quotation marks omitted). Construing the claims of a patent is a question of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed.Cir.1995), aff’d, 517 U.S. 370, 388-90, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). “[T]here is no magic formula or catechism for conducting claim construction.” Phillips, 415 F.3d at 1324. Instead, the court is free to attach the appropriate weight to appropriate sources “in light of the statutes and policies that inform patent law.” Id.
“[T]he words of a claim are generally given their ordinary and customary meaning ... [which 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 1312-13 (internal citations and quotation marks omitted). “[T]he ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent.” Id. at 1321 (internal quotation marks omitted). The patent specification “is always highly relevant to the claim construction analysis. Usually, it is dis-positive; it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996).
While “the claims themselves provide substantial guidance as to the meaning of particular claim terms,” the context of the surrounding words of the claim also must be considered. Phillips, 415 F.3d at 1314. Furthermore, “[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment ... [b]ecause claim terms are normally used consistently throughout the patent ....” Id. (internal citation omitted).
It is likewise true that “[deferences among claims can also be a useful guide .... For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Id. at 1314-15 (internal citation omitted). This “presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim.” Sun-Race Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed.Cir.2003).
It is also possible that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316. It bears emphasis that “[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed.Cir.2004) (internal quotation marks omitted), aff'd, 481 F.3d 1371 (Fed.Cir.2007).
In addition to the specification, a court “should also consider the patent’s prosecution history, if it is in evidence.” Markman, 52 F.3d at 980. The prosecution history, which is “intrinsic evidence,” “consists of the complete record of the proceedings before the PTO [Patent and Trademark Office] and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317. “[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” Id.
A court also may rely on “extrinsic evidence,” which “consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the meaning of a term to those of skill in the relevant art because such dictionaries “endeavor to collect the accepted meanings of terms used in various fields of science and technology.” Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful “to ensure that the court’s understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field.” Id. Nonetheless, courts must not lose sight of the fact that “expert reports and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence.” Id. Overall, while extrinsic evidence “may be useful” to the court, it is “less reliable” than intrinsic evidence, and its consideration “is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence.” Id. at 1318-19.
Finally, “[t]he 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.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed.Cir.1998). It follows that “a claim interpretation that would exclude the inventor’s device is rarely the correct interpretation.” Osram GmbH v. Int’l Trade Comm’n, 505 F.3d 1351, 1358 (Fed.Cir.2007) (internal quotation marks omitted). Thus, if possible, claims should be construed to uphold validity. See In re Yamamoto, 740 F.2d 1569, 1571 (Fed.Cir.1984).
III. Construction Of Disputed Claim Terms
A. Whether the patents require one-to-one correspondence of file format with computer hardware architecture?
(Construction of category (1) claim terms: “plurality of different data formats for different types of computer apparatus” and variations thereof)
The parties’ first dispute centers on whether the patents-in-suit require what has been referred to as a “one-to-one correspondence” between file formats and computer hardware architecture. St. Clair contends that the claim terms are not limited to such a one-to-one correspondence. Therefore, St. Clair proposes that the disputed claim term “plurality of different data formats for different types of computer apparatus” be construed as:
a plurality of different data formats for different types of computer apparatus where: (1) a ‘data format’ is the arrangement of digital data in a file including image, audio, text or other data and includes, at least, MPEG, JPEG, GIF, TIFF, PICT, BMP, JFIF, DCF, TXT, DOC, WPD and WAV, and (2) a ‘computer apparatus’ is a computer and any operating system or application software loaded on the computer.
Judge Farnan has adopted St. Clair’s proposed construction twice before. See Canon Construction, 2004 WL 1941340, at *2-4; Sony Construction, 2002 WL 31051605, at *2.
Defendants, on the other hand, insist that the patents require the one-to-one correspondence. Accordingly, they propose that “plurality of different data formats for different types of computer apparatus” be construed as “two or more different arrangements of digital data in a file, wherein each different arrangement is in one-to-one correspondence with a particular type of computer architecture (