Intermec Technologies Corp. v. Palm Inc. (738 F. Supp. 2d 522, 2010)

United States District Court for the District of Delaware 2010-09-14

Patents

Citations

Full opinion text

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

On May 18, 2007, Intermec Technologies Corporation (“Intermec” or “plaintiff’) filed this action against Palm, Inc. (“Palm” or “defendant”) for infringement of U.S. Patent Nos. 5,349,678 (“the '678 patent”), 5,568,645 (“the '645 patent”), and 5,987,499 (“the '499 patent,” collectively, “the System patents”), and 5,468,947 (“the '947 patent”), and 5,892,971 (“the '971 patent”, collectively “the Terminal patents,” all collectively, “the Intermec patents”). (D.I. 1)

Palm filed its answer on July 2, 2007, and thereafter amended it twice. (D.I. 7; D.I. 11; D.I. 17) On September 11, 2007, Intermec filed a motion to strike Palm’s inequitable conduct defense from its second amended answer. (D.I. 23) The parties stipulated, on May 23, 2008, that Intermec would withdraw its motion to strike, and that Palm would submit its third amended answer, attached thereto as exhibit 1. (D.I. 48) Palm’s third amended answer includes various defenses and counterclaims, two of the latter asserting infringement of Palm’s U.S. Patent Nos. 6,665,803 (“the '803 patent”) and 7,096,049 (“the '049 patent”, collectively “the Palm patents”).

Currently pending before the court are: (1) Intermec’s motion for partial summary judgment of infringement of the '678 patent (D.I. 152); (2) Intermec’s motion for partial summary judgment of validity of the System patents (D.I. 155); (3) Intermec’s motion for summary judgment of infringement and validity of the Terminal patents (D.I. 159); (4) Palm’s motion for summary judgment of indefiniteness of certain claims of Intermec’s '678 and '499 patents (D.I. 151); (5) Palm’s motion for non-infringement of the Intermec patents (D.I. 158); and (6) Intermec’s motion for summary judgment of non-infringement and invalidity of the Palm patents (D.I. 162). Fact and expert discovery is now closed. The court’s opinion here is limited to the pending motions for summary judgment relating to the Intermec patents. Trial has not yet been scheduled. This court has jurisdiction under 28 U.S.C. § 1338(a) and 35 U.S.C. § 101 et seq.

II. BACKGROUND

A. The Parties and Patents in Suit

Intermec is incorporated under the laws of the State of Delaware, and has its principal place of business in Everett, Washington. Intermec is a wholly owned subsidiary of Intermec, Inc. Norand Corporation (“Norand”) of Cedar Rapids, Iowa, is the assignee of the Intermec Patents. In 1997, Norand was acquired by Intermec, who owns all right and title to the Intermec patents. Intermec makes and sells data capture equipment such as portable data collection terminals and wireless communication systems to support them. Intermec also develops, makes and sells bar code readers which may be incorporated into a terminal or provided as an attachment. The Intermec patents relate to data capture systems, data capture terminals, and bar code readers. The data capture systems are comprised of computer systems communicating over radio transceivers to matching transceivers in the data capture terminals.

Palm is incorporated under the laws of the State of Delaware, and has its principal place of business in Sunnyvale, California. Palm provides smartphones, cellular telephones that include the ability to run certain programs such as a calendar application. Smartphones are also capable of connecting with the internet, thereby enabling other applications such as email and web browsing. Internet applications require a cellular data service subscription with a cell phone carrier. Palm does not offer cellular data subscription services.

The '678 patent was filed on August 21, 1991. The '645 and '499 patents are successive continuations claiming priority to the original '678 application. The System patents share nearly identical specifications directed to data capture systems. The Terminal patents both have a long, complex lineage. The '947 patent is directed to a pocket size data capture unit and shell, or peripheral, modules. Filed on March 29, 1993, the '947 patent is a continuation-in-part of two different applications. One of these parent applications descends from a series of continuations-in-part, which includes Ser. No. 897,547, filed August 15, 1986 (“the 1986 application”). On March 29, 1993, the '971 patent application was filed as a continuation-in-part of the '947 patent. The '971 patent is directed to portable data collection terminals including an indicia reader and a multitasking operating system.

B. Technological Background

Data capture systems are used to receive and collect information in a variety of settings such as warehouses, retail stores, and health care facilities. For example, in a warehouse setting, the system might be used to update, in real time, the inventory level of a particular product. It might also be used to identify locations where the product is stored, track the movements of a particular unit of inventory, or indicate which employee currently has charge of the product. Such systems are typified by multiple data collection terminals being placed close to the source of the data being collected, a server or other computer system used to store and further process the data, and a communications network linking the two. For a single data collection site, such as a warehouse, a single server may be adequate to meet storage and processing requirements. To service multiple data collection sites, a server may be located at each site, and each server may be further networked to a central host computer system. Such a host computer may act as a system-wide data repository.

Portable data collection terminals are typically hand held units that communicate via a radio link back to the server. They allow for collection and entry of data directly from the source location. To improve the speed, efficiency, and reliability of data collection, automatic data entry means, such as bar code readers, are often included with the terminal. Early bar code readers required physical contact with the bar coded label. Typically, a pen-shaped wand was scanned across the bars of the label to read it. Later, non-contact readers allowed bar codes to be read from labels a few inches away. This capability was further enhanced to provide for reading labels from a considerable distance. Thus, a label on a box at the top of a high stack might be read from the ground without having to climb a ladder.

Prior to enhancing portable data collection terminals through distributed processing, application programs were run on the host computer. The host computer controlled the terminals in real time. This significantly increased the hardware and software complexity, forcing the host computer to run multiple processes. Application programs residing on the host computer had to be fast enough to service all remote terminals in real time, had to validate data entry by the user, and had to respond to all user input. This required significant amounts of data to be sent back and forth over a radio link between each of the terminals and its host computer.

Portable data collection terminals contain a fully functional computer hardware system: processor, memory, and input/output devices, plus the terminal application program. The terminal application program is relatively small and simple, and can reside in the limited memory built into the terminal. Other, more sophisticated applications, such as inventory management, are too large to fit in the terminal’s limited memory. However, by partitioning the application programs into discrete parts known as modules, and distributing them throughout the system, the terminals are capable of executing much more sophisticated application programs. When a module of an application completes execution, the next module can be requested, loaded into memory, and execution of the application can continue. Thus, input validation as well as considerable processing can be performed directly on the terminal, minimizing the communication and computer resources required.

C. Asserted Claims

1. The '678 patent

Intermec asserts infringement of claims 1, 5, 8-9, and 13-18 of the '678 patent, of which claims 1 and 8 are in independent form. (D.I. 156 at 3) The asserted independent claims of the '678 patent read as follows:

1. A data capture system comprising:

a) a plurality of portable client data collection terminals, each terminal comprising means for collecting data, dynamic addressable storage means and first control means operating on data formatted in a first style;

b) a server station comprising mass memory means which is larger than said dynamic addressable storage means of a terminal for storing data to be used by said data collection terminals, means responsive to a memory altering request for addressing said mass memory means and second control means operating on data formatted in a second style different from said first style, said data stored in said mass memory means being formatted in said second style; and

c) communication means for interconnecting said server station and each of said plurality of client data collection terminals;

d) said first control means of each client data collection terminal comprising means responsive to a need for further data for generating said memory altering request and for actuating said communication means to transmit said generated request to said server station, said generated request identifying its terminal and the particular needed data;

e) said responsive means of said server station responsive to said generated and transmitted request for addressing and retrieving said needed data from said mass memory means before actuating said communication means to transmit said needed data back to said requesting terminal as identified by said request;

f) said communication means comprises RF radio means for transmitting said memory altering request from each of said plurality of client data collection terminals to said server station and for transmitting said needed data from said server station back to said requesting terminal.

8. A data capture system comprising:

a) a plurality of client data collection terminals, each terminal comprising means for collecting data, first control means including processor means for executing a selected one of a plurality application programs, and dynamic addressable storage means;

b) a server station comprising mass memory means which is larger than said dynamic storage means of a terminal for storing application programs to be executed by said processor means of each of said data collection terminals, each application program being partitioned into a root module and at least one overlay module, and second control means responsive to a memory altering request for addressing said mass memory means; and

c) communication means for transmitting data between said server station and each of said plurality of client data collection terminals;

d) said first control means of each client data collection terminal further comprises means responsive to the execution of an application program by said terminal’s processor means for generating a memory altering request and for actuating said communication means to transmit said generated request to said server station, said generated request identifying its terminal and a particular overlay module needed to continue the execution of its application program;

e) said second control means of said server station responsive to said generated and transmitted request for addressing and retrieving from said mass memory means said particular overlay module, before actuating said communication means to transmit said particular overlay module back to said requesting terminal as identified by said request, whereby said processor means of said requesting terminal is able to continue executing said presently executed application program.

2. The '645 patent

Intermee asserts infringement of claims 1-4 of the '645 patent, of which claim 1 is in independent form. (D.1.156 at 3) Claim 1 of the '645 patent reads as follows:

1. A system for collecting data from at least one remote site and transmitting the collected data to a main information center and having information distributed throughout said data collecting system, the information being partitioned into a first information portion and a second information portion, said data collection system comprising:

a) at least one terminal for collecting data at the remote site, said terminal comprising means for collecting data, a first memory for storing the first information portion, information requesting means responsive to the need for information by said terminal to generate an information call identifying the needed information, and first memory searching means responsive to the information call for searching said first memory for the presence or absence of that needed information, said first memory searching means responsive to the presence of that needed information for accessing said first memory and supplying that accessed, needed information for use by said terminal;

b) a server for said terminal; and

c) communication means for interconnecting said terminal and said server, said first memory searching means responsive to the absence of that needed information within said second memory for transmitting the information call via said communication means from said terminal to said server;

d) said server disposed at the main information center and comprising a second memory for storing the second information portion, and second memory searching means responsive to the information call transmitted via said communication means from said terminal for accessing the requested information from said second memory means and transmitting the accessed information via said communication means from said server to said terminal.

3. The '499 patent

Intermee asserts infringement of claims 1-4 and 15-16 of the '499 patent, of which claims 1 and 15 are in independent form. (D.I. 156 at 3) The asserted independent claims of the '499 patent read as follows:

1. A data collecting system for collecting data from at least one remote site and transmitting the collected data to a main information center, and having information distributed throughout said data collecting system, the information being partitioned into a first information portion and a second information portion, said data collection system comprising:

at least one terminal for collecting data at the remote site, said terminal comprising a data collection mechanism, a first memory for storing the first information portion, a first controller responsive to the need for information by said terminal to generate an information call identifying the needed information, said first controller further responsive to the information call by searching said first memory for the presence or absence of that needed information, said first controller responsive to the presence of that needed information by accessing said first memory and supplying that accessed, needed information for use by said terminal;

a server for said terminal;

a communication system communicatively interconnecting said terminal and said server, said first controller responsive to the absence of that needed information within said first memory by transmitting the information call via said communication system from said terminal to said server; and

said server disposed at the main information center and comprising a second memory for storing the second information portion, and a second controller responsive to the information call transmitted via said communications system from said terminal by accessing the requested information from said second controller and transmitting the accessed information via said communication system from said server to said terminal. 15. A data collection system comprising:

a main information center with a plurality of servers, each server storing a plurality of application programs and associated application-specific data;

a plurality of remote data collection centers, each data collection center comprising one or more terminals;

each of the one or more terminal selectively requests the application programs from the main information center; and the main information center delivers requested ones of the application programs in executable portions.

4. The '947 patent

Intermec asserts infringement of claims 1-3 of the '947 patent, of which claim 1 is in independent form. Claim 1 reads as follows:

1. A hand-held data processing system, comprising:

a self-contained computerized processing module for computerized processing of data;

said processing module having a graphical display with a display screen occupying substantially an entire broad side of the processing module;

means for displaying information over substantially the entire surface of the display screen;

said self-contained computerized processing module having a size so as to be readily contained in a shirt pocket; and

said processing module further including optical reader means for effecting the input of optical information.

5. The '971 patent

Intermec asserts infringement of claims 1-5, 8-12 and 19 of the '971 patent, of which claim 1 is in independent form. Claim 1 reads as follows:

1. A portable battery-powered hand-held data processing device, comprising:

(a) a user interface system, located on the portable battery-powered hand-held data processing device;

(b) an indicia reader input system, located on the portable battery-powered hand-held data processing device; and

(c) a processing system, comprising

(i) a computerized processor, located within a housing of the portable battery-powered hand-held data processing device, for controlling said user interface system and said indicia reader input system, and

(ii) a multitasking operating system designed to run on said computerized processor and capable of executing essentially concurrently a wide range of computer processes.

D. The Accused Products

Intermec accuses two groups of Palm products of infringing the Intermec patents: Palm’s Treo 750, Treo 700w, and 700wx products, based on Microsoft’s Windows MobileTM operating system (‘Windows Products”); and Palm’s Treo Centra, Treo 680, Treo 700p and Treo 755p products, based on the Palm Operating SystemTM (“POS Products,” collectively, “accused Palm products”). (D.I. 1 at ¶ 10; D.I. 160 at 1) Each of the accused Palm products comprise: a keyboard, touch screen stylus and digital camera; memory; and a processor that runs application programs. (D.I. 153 at 4-5) The accused Palm products are depicted in a photograph. (D.I. 160 at 3)

1. Windows products

In addition to the components shared by all accused Palm products, the Windows products include Microsoft’s Internet Explorer MobileTM as a web browser application and Microsoft Outlook MobileTM as an email client application. (D.I. 153 at 5)

2. POS products

In addition to the components shared by all accused Palm products, the POS products include a web browser application called “Blazer,” and some POS products run unnamed email client applications. (D.I. 153 at 6; D.I. 206 at 14) The Treo Centra product includes the Google Maps application. (D.I. 153 at 5; D.I. 206 at 13)

III. STANDARD OF REVIEW

A court shall grant summary judgment only if “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). The moving party bears the burden of proving that no genuine issue of material fact exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). “Facts that could alter the outcome are ‘material,’ and disputes are ‘genuine’ if evidence exists from which a rational person could conclude that the position of the person with the burden of proof on the disputed issue is correct.” Horowitz v. Fed. Kemper Life Assurance Co., 57 F.3d 300, 302 n. 1 (3d Cir.1995) (internal citations omitted). If the moving party has demonstrated an absence of material fact, the nonmoving party then “must come forward with ‘specific facts showing that there is a genuine issue for trial.’ ” Matsushita, 475 U.S. at 587, 106 S.Ct. 1348 (quoting Fed. R. Civ. P. 56(e)). The court will “view the underlying facts and all reasonable inferences therefrom in the light most favorable to the party opposing the motion.” Pa. Coal Ass’n v. Babbitt, 63 F.3d 231, 236 (3d Cir.1995). The mere existence of some evidence in support of the nonmoving party, however, will not be sufficient for denial of a motion for summary judgment; there must be enough evidence to enable a jury reasonably to find for the nonmoving party on that issue. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265(1986).

IV. DISCUSSION

A. Infringement

The court has before it cross motions for summary judgment of infringement. Intermec seeks partial summary judgment that Palm has induced infringement of claims 1 and 8 of the '678 patent. (D.I. 152; D.I. 153 at 20) Intermec also seeks summary judgment of infringement of claims 1 through 3 of the '947 patent and claims 1-5, 8-12 and 19 of the '971 patent, asserting that all such infringement issues relate to claim construction. (D.I. 159 at 1) Palm seeks summary judgment of non-infringement of the asserted claims of the

Intermec patents. (D.I. 161 at 1) At least with respect to the '678 patent, both parties agree that, given proper claim construction, there is no genuine issue of material fact and, thus, summary judgment may be appropriate. (D.I. 153 at 1; D.I. 161 at 18)

All of the asserted claims of the '678 and '645 patents, and claim 1 of the '499 patent, include a communications limitation. Claim 8 of the '678 patent, claim 1 of the '645 patent and claims 1 and 15 of the '499 patent include limitations directed to partitioning of application programs into distinct parts. The asserted claims of the Terminal patents include limitations directed to an indicia/optieal reader. Claim 1 of the '947 patent also includes a limitation relating to the relative size of the display screen to the terminal body. Claim 1 of the '971 patent also includes a limitation that the terminal’s operating system be multitasking. The parties’ arguments are largely premised on differing claim constructions of these key limitations. The court finds these limitations to be dispositive of the infringement motions at bar.

1. Standards

To prove direct infringement, the plaintiff must establish by a preponderance of the evidence that one or more claims of the patent read on the accused device literally or under the doctrine of equivalents. See Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed.Cir.2001). To establish literal infringement, “every limitation set forth in a claim must be found in an accused product, exactly.” Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed.Cir.1995). “If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir.2000). Significant to the case at bar, if an accused product does not infringe an independent claim, it also does not infringe any claim depending thereon. Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed.Cir.1989).

To prove infringement by the doctrine of equivalents, a patentee must provide “particularized testimony and linking argument” as to the “insubstantiality of the differences” between the claimed invention and the accused product, or with respect to the function/way/result test. See Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed.Cir.1996).

Establishing the literal infringement of a means-plus-function limitation “requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification.” Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed.Cir.1999). A patentee may show structural equivalence “if the assertedly equivalent structure performs the claimed function in substantially the same way to achieve substantially the same result as the corresponding structure described in the specification.” Id. The Odetics court differentiated between the “similar analysis” of equivalents under the doctrine of equivalents and 35 U.S.C. § 112, ¶ 6, noting that a component by component analysis is not required to establish structural equivalence in the latter. Id. Indeed, such an analysis would be improper to the extent that

[t]he individual components, if any, of an overall structure that corresponds to the claimed function are not claim limitations. Rather, the claim limitation is the overall structure corresponding to the claimed function.... The appropriate degree of specificity is provided by the statute itself; the relevant structure is that which “corresponds” to the claimed function. Further deconstruction or parsing is incorrect.

Id. at 1268 (internal citations omitted). Conversely, the relevant structure does not include “structure ‘unrelated to the recited function’ disclosed in the patent .... ” Id. (citing Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., 145 F.3d 1303,1308 (Fed.Cir.1998)).

To establish indirect infringement, a patent owner has available two theories: active inducement of infringement and contributory infringement. See 35 U.S.C. § 271(b) & (c). To establish active inducement of infringement, a patent owner must show that an accused infringer “knew or should have known [their] actions would induce actual infringements.” DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1306 (Fed.Cir. 2006). To establish contributory infringement, a patent owner must show that an accused infringer sells “a component of a patented machine ... knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use.” Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1061 (Fed.Cir.2004) (quoting 35 U.S.C. § 271(c)). Liability under either theory, however, depends on the patent owner having first shown direct infringement. Joy Technologies, Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed.Cir.1993).

2. Direct infringement

a. The System patents

The System patents share nearly identical specifications. Therefore, except where noted, the court makes reference to the specification of the '678 patent. Intermec alleges that the asserted claims of the '678 patent are infringed by a combination of: (1) the accused Palm products constituting a “portable data collection terminal;” (2) a wireless cellular telephone network connected to the internet constituting the “communication means” (“network scenario”); and (3) web and email servers connected to the internet constituting the server (collectively “accused structure”). (D.I. 153 at 1-2)

(1) Communications limitations

In addition to a terminal, the asserted claims of the System patents all require a server and either a “communications means” for interconnecting, or transmitting data between, the terminal and the server (the '678 and '645 patents) or a “communication system” (the '499 patent). The essence of the dispute over these claims is whether the radio module 114 is locally attached to the server 130, as Palm asserts, or whether it may be connected to the server under the network scenario, as Intermec asserts. (D.I. 153 at 33; D.I. 206 at 27-28)

The parties agree that the asserted independent claims of the '678 and '645 patents are subject to 35 U.S.C. § 112 ¶ 6, and are to be construed identically, although each party has proposed a different construction. (D.I. 180, ex. A at 6, 12, 23) By its memorandum order of the same date, the court construed the communication means of claim 8 of the '678 patent as “an RF transmission system with radio module 114 attached to the server station via an RS-232 serial communications interface, and a radio module 152 attached to each of the plurality of portable client data collection terminals via an RS-232 serial communications interface.” The court’s construction regarding the communication means of claim 1 of the '645 patent is materially the same. Generally, the function of the communication means is to interconnect terminals and the server, allowing data transmission between them.

Intermec argues that the presence of a protocol stack is evidence of “a second embodiment in which the Server computers are connected to the radio module by way of network connections” and, therefore, is corresponding structure required by 35 U.S.C. § 122 ¶ 6. (D.1.153 at 33) The specification teaches that the client protocol stack is disposed within the terminal 112, and that the server protocol stack is disposed within the server 130. ('678 patent at figure 4; figure 8) There is no reference in the specification to a protocol stack being disposed within the radio module 114 (or 152).

Figures 3 and 4 show the serial communications interface 148 (UART) and the client radio protocol stack 160 contained within the bounds of terminal 112. Figures 7 and 8 show the serial communications interface 138 (UART) and the server radio protocol stack 220 contained within the bounds of server 130. The inventors distinctly defined these boundaries, showing them graphically and describing them in the text of the specification as “a serial communications interface” between the radio modules and their respective terminal(s) or server. ('678 patent at col. 8:1-5, figure 3, figure 4) A person of ordinary skill in the art of computer science would understand an interface to be a boundary across which two independent systems meet and act on or communicate with each other.

The function of the claim limitations at issue here require either interconnecting the server and terminal(s), or enabling data transmission between the server and terminal(s). Thus, neither the server 130 nor the terminal 112, nor any of their constituent hardware or software components, can be a part of the communication means itself. What remains, external to the client terminal and server, is radio module 114 and radio module(s) 152. By necessity, these components must be connected to their respective terminal(s) and server. The specification teaches only one protocol for this connection: RS-232. ('678 patent at col. 8:1-2, figure 3, figure 7) As Intermec acknowledges in its brief, RS-232 is a protocol describing data signaling over a local connection. (D.1.153 at 6)

Thus, the specification does not teach a second embodiment whereby the connection between the radio module 114 and the server 130 constitutes a network connection. Radio module 114 lacks a network protocol stack. Instead, the specification teaches a local connection, using a serial RS-232 protocol, between the radio modules and their respective terminal(s) or server. Both the terminal and the server comprise the requisite hardware and software, as taught by the specification, to effect communications over the communication means. No other disclosed element is necessary.

Alternatively, Intermec argues that, even if the means is construed as a local connection, the network scenario is equivalent under 35 U.S.C. § 112 ¶ 6. “Literal infringement of a means-plus-function claim limitation requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification.” Applied Med. Res. Corp. v. United States Surgical Corp., 448 F.3d 1324, 1333 (Fed. Cir.2006) (citing Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1320 (Fed.Cir.2003)). To prevail on its motion, Intermec must adduce admissible evidence that the accused structure performs the identical function and be identical or equivalent to the corresponding structure for the communication means. Intermec asserts that

there is no meaningful difference between the presentation manager program (i.e., the web server software in an Internet example) controlling the radio module over a local are [sic] network connection or remotely over a wide area network connection, such as the Internet, from the standpoint of the [sic] what work is performed, the way it is performed and the results achieved.

(D.I. 153 at 19) Palm disputes this. (D.I. 206 at 7)

Intermec begins its analysis at the interface between the radio protocol stack 220 and the presentation manager 216, two software components internal to the server. Intermec’s argument does not address the function of the communication means as construed by the court, to wit, to interconnect the terminal and server, not the presentation manager with the radio protocol stack and beyond. Intermec has failed to demonstrate that the network scenario is structure identical or equivalent to radio module 114 attached to the server via an RS-232 serial communications interface. Similarly, no correspondence is shown for the connection between the alleged terminal and its corresponding transceiver. The court finds that Intermec has not shown, on the record, evidence sufficient to show direct infringement of claims 1 and 8 of the '678 patent.

From the above discussion, it follows that Intermec has also not adduced sufficient evidence of infringement of all asserted claims of the '645 patent, based on consideration of the communication means alone.

Claim 1 of the '499 patent recites “a communication system communicatively interconnecting said terminal and said server.” The court has construed this limitation as “a wireless network system that enables a terminal and server to transmit and receive data using transceivers.” Although this is not means-plus-function language, the arguments of the parties are subsumed in the discussion above. Here again, Intermec fails to adduce evidence that the network scenario corresponds to this limitation. To do so, Intermec would have to show that a particular server transmits data to an accused Palm product using a transceiver.

(2) Partitioning of application programs

All of the asserted claims of the System patents, except claim 1 of the '678 patent, relate to application programs that have been partitioned into parts, or modules. The memory of a data collection terminal may “have a capacity insufficient to store all of an application program and data to be executed by its microprocessor.” ('678 patent at col. 9:61-65) To address this issue, the specification teaches that “each of the plurality application programs is partitioned into a root module and at least one overlay module.” (Id. at col. 5:42-44) “The first program part is known as a root module and will be loaded first.” (Id. at col. 10:2-3) Overlay modules are required to continue the execution of the application program. (Id. at col. 5:51-52) “When the microprocessor is executing the last instruction of a root module or an overlay module, then it is necessary to request and receive the next overlay module to permit the application program to continue to be executed without interruption.” (Id. at col. 10:10-15) “Thus there has been described a data capture system 110 that distributes the application program between the memory of a terminal 112 and a database server 130.” (Id. at col. 14:47-49)

The court has construed “application programs” as “sequences of machine-level instructions capable of execution on a processor,” “first information portion” as a root module, and “executable portions” as root modules or overlay modules. Claim 8 of the '678 patent, itself, makes clear that application programs are partitioned into a root module and at least one overlay module. Thus, root modules and overlay modules must also be sequences of machine-level instructions capable of execution on a processor. Intermec argues that “[c]laim 8 is infringed whenever a Server returns a dynamic web page with embedded executable JavaScript. Because the embedded script permits the application to continue executing, the web page with the embedded script is, by definition, an overlay module.” (D.I. 153 at 34) (citations omitted) Under Intermec’s scenario, the web browser program constitutes the root module, and the dynamic web page containing JavasScript commands constitutes an overlay module. Intermec’s assertions are based entirely on its proposed claim constructions, that were not adopted by the court. There is no evidence of record that dynamic web pages, nor any embedded script language, are application programs (or parts thereof) as construed by the court. Intermec has not adduced evidence that dynamic web pages or any embedded script language are comprised of machine-level instructions.

As to equivalents, Intermec argues that [t]wo minor differences exist between the steps described in Figure 6 and the accused behavior of the web browser and e-mail client programs described above. First, the web browser and email client of the Accused Products perform the steps of Figure 6 themselves instead of accessing a special purpose transaction manager program to perform them. Second, the data requests are not formatted by the Accused Products as SQL requests, but are formatted as PHP, ASP, POP or IMAP requests. Because each of these differences is within the scope of equivalents, neither presents a basis for non-infringement.

Intermec is silent regarding the equivalence of dynamic web pages and embedded script languages to application programs comprising sequences of machine-level instructions. Intermec has failed to adduce evidence of infringement of claim 8 of the '678 patent on this basis.

With respect to the remaining asserted claims of the '645 and '499 patents, Intermec argues the same theory of infringement as for claim 8 of the '678 patent, to wit, that using the accused Palm products to access web and email servers over the internet constitutes infringement. (D.I. 203 at 16) For the reasons stated above, this argument is unavailing. Therefore, Intermec has failed to adduce evidence of infringement of the aforementioned claims and patents on this basis alone.

b. Terminal patents

(1) Optical/Indicia reader

The parties’ dispute regarding infringement of the Terminal patents is primarily focused on whether the “optical reader means” of claim 1 of the '947 patent, and the “indicia reader input system” of the '971 patent, require not only the capture of an image, but also the extraction of information encoded in the image (“decoding”).

Intermec argues that the optical reader means limitation is not subject to 35 U.S.C. § 112 ¶ 6, but asserts that the result is the same regardless of whether the term is construed as means-plus-function language or not. (D.I. 160 at 23) In this regard, Intermec contends that the term optical reader does not include a decoding function; only image capture is required. (D.I. 150 at 30; D.I. 160 at 22-23) Indeed, Intermec uses the term “camera” in its briefs, although that term is not found within the four corners of the Terminal patent specifications. (D.I. 150 at 30-31) (“The patent discloses a CCD camera capable of digitizing any form of text or graphics.... The claim term must be construed broadly enough to encompass all disclosed corresponding structures, including the CCD camera.”) Intermec’s arguments are based on extrinsic evidence in the form of ordinary and computer dictionary definitions of the word “read.” (D.I. 150 at 30) The specification of the '947 patent teaches numerous examples of readers that use optical means in reference to reading and decoding bar codes, with only one reference to other types of information read. ('947 patent, col. 3:10; col. 10:50; col. 11:18-19; col. 13:6-7; col. 17:1-39; col. 18:9-44; figures 13A, 13B, 14-18) In fact, the inventors devoted nearly 6 of 32 columns of the specification to a discussion of digital signal processing (decoding) of bar code images. ('947 patent, col. 16:60-22:39)

The court has construed “optical reader means for effecting the input of optical information” as a photoelectric sensor array, light source, and decoding logic, and “an indicia reader input system” as a system for obtaining the information encoded in a symbol. Based on its proposed claim construction, Intermec argues only that the accused Palm products infringe because they contain cameras. (D.I. 150 at 30-31) There is no evidence of record that the optical reader means limitation, as construed by the court, is found in the accused Palm products.

(2) Broad side

Claim 1 of the '947 patent recites in part; “1. A hand-held data processing system, comprising: ... a graphical display with a display screen occupying substantially an entire broad side of the processing module.” Again, the arguments are framed around the construction of this limitation. Intermec argues that this limitation should be construed as “a display screen that occupies a considerable portion of a relatively long boundary of the device,” and that the accused Palm products meet this limitation, as “there is no dispute that the displays of Palm’s Accused Devices are the most prominent feature of the operating face of the device and that they occupy a considerable portion of the side-to-side dimension of the operating face of the device.” (D.I. 160 at 21) Intermec also frames the argument as whether or not the device can contain a keyboard and still infringe. (D.I. 160 at 20-21)

The court has construed “a display screen occupying substantially an entire broad side of the processing module” as a display screen that occupies the entire surface of the largest face, except for a small border, as shown in figure 9.” The specification of the '947 patent teaches:

As previously described in detail, the computerized processing module 200 may be self-contained and may have a display screen occupying substantially an entire broad side of the unit, as is shown in FIG. 9.

('947 patent at col. 24:22-25) (emphasis added) Figure 9 shows a display screen that occupies the entire surface of the largest face, except for a small border. Intermec fails to adduce evidence that this limitation, as construed, is found in the accused Palm products.

(3) Multitasking operating system

Claim 1 of the '971 patent recites in part: “1. A portable battery-powered hand-held data processing device, comprising ... (c) a processing system, comprising ... (ii) a multitasking operating system designed to run on said computerized processor and capable of executing essentially concurrently a wide range of computer processes.” Intermec argues that “[n]o actual dispute exists regarding whether Palm’s Accused Devices include a ... ‘multitasking operating system designed to run on said computerized processor and capable of executing essentially concurrently a wide range of computer processes.’ ” (D.I. 160 at 26) Palm responds, “[u]nder Palm’s proposed construction, none of the devices using the Palm OS execute two application programs at the same time (or at ‘essentially the same time,’ to use Intermec’s formulation).” Palm does not contest that the Windows Products have multitasking operating systems. (D.I. 208 at 10) Intermec asserts that Palm failed to contest that the POS products contained a multitasking operating system until its response to Intermec’s summary judgment motion. (D.I. 245 at 5) As discussed above, the court finds that the indicia reader limitation is dispositive of non-infringement of the '971 patent by the accused Palm products and, therefore, this dispute is not material.

3. Indirect infringement

The court finds that Intermec has failed to show that the accused Palm products meet the: (1) communications limitation of the System patents; (2) partitioned application program limitation of the System patents; and (3) optical/indicia reader limitation of the Terminal patents. Further, the accused Palm products do not meet the broad side limitation of the '947 patent. Indirect infringement, whether by active inducement of infringement or contributory infringement, requires that direct infringement must first be established. As Intermec has failed to adduce evidence of direct infringement of the Intermec patents, no claim of indirect infringement can lie. Palm makes various other arguments that Intermec has failed to show evidence of induced infringement. Because the court finds no direct infringement, the court does not reach these arguments.

B. Invalidity

1. Indefiniteness

a. Standards

Indefiniteness is a question of law. Amgen Inc. v. F. Hoffman-LA Roche Ltd., 580 F.3d 1340, 1371 (Fed.Cir. 2009) (citing Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed.Cir.2008)). That is, “[a] determination that a patent claim is invalid for failure to meet the definiteness requirement of 35 U.S.C. § 112 [¶ 2] is a legal conclusion that is drawn from the court’s performance of its duty as the construer of patent claims[.]” Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 949 (Fed.Cir.2007) (citation omitted); see also Exxon Research and Engineering Co. v. U.S., 265 F.3d 1371, 1376 (Fed.Cir.2001) (rejecting argument that underlying questions of fact may preclude summary judgment on indefiniteness, as “a court may consider or reject certain extrinsic evidence in resolving disputes en route to pronouncing the meaning of claim language”).

Section 112 requires that a patent “shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. As explained by the Federal Circuit,

[t]he primary purpose of the definiteness requirement is to ensure that the claims are written in such a way that they give notice to the public of the extent of the legal protection afforded by the patent, so that interested members of the public, e.g., competitors of the patent owner, can determine whether or not they infringe.

All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 779-80 (Fed. Cir.2002) (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 28-29, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997)). In other words,

[a] patent holder should know what he owns, and the public should know what he does not. For this reason, the patent laws require inventors to describe their work in “full, clear, concise, and exact terms,” 35 U.S.C. § 112, as part of the delicate balance the law attempts to maintain between inventors, who rely on the promise of the law to bring the invention forth, and the public, which should be encouraged to pursue innovations, creations, and new ideas beyond the inventor’s exclusive rights.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002).

A determination as to whether the definiteness requirement has been met “requires construction of the claims according to the familiar canons of claim construction.” All Dental Prodx, LLC, 309 F.3d at 779-80. Claims that are not amenable to construction or are insolubly ambiguous are indefinite. Halliburton Energy ,Sens., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed.Cir.2008). As with every construction issue, the focus of the indefiniteness inquiry is on the meaning that claim terms would have to one of ordinary skill in the art “at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005) (citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed.Cir.2004)).

Although a patentee need not define his invention with mathematical precision in order to comply with the definiteness requirement, In re Marosi, 710 F.2d 799, 802-03 (Fed.Cir.1983), a claim is deemed sufficiently definite only if “one skilled in the art would understand the bounds of the claim when read in light of the specification.” Exxon Res. & Eng’g Co. v. U.S., 265 F.3d at 1375. Therefore, even if a claim term’s definition can be reduced to words, it “is still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully precise claim scope.” Halliburton, 514 F.3d at 1251. In this regard, a claim term is indefinite if the patent does not provide an “objective anchor” or “yardstick against which potential infringers may measure their activities.” Girafa.com v. I AC Search & Media, Inc., Civ. No. 07-787-SLR, 2009 WL 3074712, at *2, 2009 U.S. Dist. LEXIS 88796, at *7 (D.Del. Sept. 25, 2009).

In sum, the indefiniteness standard of 35 U.S.C. § 112, ¶ 2 is met “where an accused infringer shows by clear and convincing evidence that a skilled artisan could not discern the boundaries of the claim based on the claim language, the specification, and the prosecution history, as well as her knowledge of the relevant art area.” Id. Because both claim construction and indefiniteness are questions of law, these issues are amenable to summary judgment.

b. The '678 patent

Palm argues that claims 1 and 9 of the '678 patent are invalid as indefinite under 35 U.S.C. § 112, asserting that the terms “first style” and “second style” have no discernible meaning to a person of ordinary skill in the art, and that neither the specification nor a plain, dictionary meaning aid such person in understanding the meaning of these terms. (D.I. 154 at 1) Intermec agrees that these terms do not have any special meaning; nevertheless, the plain meaning of the terms is readily discernable based on the intrinsic record, to wit, the terms explain how “data, requests, and programs are formatted differently on the terminal units of the patent than they are formatted on the servers.” (D.I. 200 at 1) “Intermec proposes that these terms be construed as ‘data arranged in a manner appropriate for’ the client (‘first style’) or server (‘second style’).” (D.I. 200 at 8) (citing D.I. 180, ex. A at 3, 5) Relying on Datamize, Intermec further argues that “the claim term ‘different’ (‘second style different from said first style’) is not a subjective term, but is, at most, a term of degree” and, thus, the “court must determine whether the patent’s specification provides some standard for measuring that degree.” (D.I. 200 at 9) (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir.2005))

The court has found no such standard. The independent claims of the '678 patent (1, 8 and 21) describe systems comprised of terminals and a server. The terminals and the server are connected by a communication means. Each terminal further comprises a first control means and dynamic addressable storage means. The server comprises a second control means and mass memory means. Within the claims, the term “first style” is used in reference to the terminal’s first control means operating on data (claim 1), generating and transmitting a memory altering request (claims 6 and 11), and executing application programs (claim 9). The term “second style” is used in reference to the server’s second control means executing its control program (claim 10), operating on data (claim 1), storing its data on its mass memory means (claim 1), and storing the terminal’s application programs on its mass memory means (claim 10). The server is capable of translating data from the second to the first style (claim 7), translating requests for data and application programs from the first to the second style (claims 6 and 11 respectively), and translating overlay modules from the second to the first style (claim 12). It is apparent that the terms “first style” and “second style” are used consistently in the claims of the '678 patent, to wit, “first style” describes data operated on, requests generated by, and application programs executed on a terminal, whereas “second style” refers to data operated and stored on, control programs executed on, and application programs stored on the server.

It remains unclear, however, whether there is only one meaning of the term “style”, or whether “style” can have different meanings when used in different contexts such as in reference to data, programs, or requests. Reading claim 1 and claim 6 together, the term “style” has the same meaning in both the data and request context. In the same manner, reading claims 9-12 together demonstrates that “style” has the same meaning when applied in the context of application programs, control programs, overlay modules and requests. Thus, the terms “first style” and “second style” have a single meaning, which is used consistently within the claims. However, no further information can be rendered from the claims alone to assist a person of ordinary skill in the art in discerning that single consistent meaning.

Palm asserts that the terms “first style” and “second style” do not appear in the specification of the '678 patent, except for their inclusion in the “Summary of the Invention” which does nothing more than “parrot verbatim the language in the claims, without any explanation.” (D.I. 240 at 5) In fact, the abstract and specification of the '678 patent do provide an additional reference to the term “second style,” beyond that of the claims, explaining that the data stored in the terminal’s dynamic addressable storage means is formatted in the second style. None of the claims describe the format of data stored in the terminal’s dynamic addressable storage means. No other structure for storing data on the terminal is disclosed, nor is any means disclosed for the terminal’s first control means to translate data from the second style to the first style. Therefore, the specification and claim 1 are inherently inconsistent, as claim 1 requires the terminal’s first control means to operate on data formatted in the first style, whereas the specification requires data stored in the terminal’s dynamic addressable storage means to be formatted in the second style. Thus, claim 1 is necessarily invalid due to the irreconcilable contradiction within the patent. See Enzo Life Sciences, Inc. v. Digene Corp., 305 F. Supp.2d 406, 410 (D.Del.2004) (citing Allen Engineering Corp. v. Bartell Industries, 299 F.3d 1336 (Fed.Cir.2002); In re Cohn, 58 C.C.P.A. 996, 438 F.2d 989 (C.C.P.A. 1971)).

Moreover, the essence of the invention is to minimize data transmission, response time and power requirements through the use of distributed processing, while at the same time increasing the size and sophistication of applications that may be run on the terminal. ('678 patent at col. 4:59-68; col. 5:1-13) It is not an object of the invention to have a “first style” and “second style.” Although the specification describes “first style” and “second style,” it does not do so as a limitation. The patent only discloses that the first style is different from the second style. Nowhere in the specification or claims is there any suggestion as to how the styles differ, examples of styles, nor any other guidance which would allow a person of ordinary skill in the art to discern the meaning of “first style” or “second style,” nor to discern the degree of difference between the two. Intermec argues that a limitation that the two styles be different is sufficient to preclude a finding of indefiniteness. (D.I. 200 at 8) (citing Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1345, 1347-48 (Fed.Cir.2008)) In Kyocera, the court, in construing the claim phrase “a second wireless communication different from the first,” when viewed in context, suggested “that the two claimed wireless communications are not merely ‘different’ in any way, but in such a way that requires adaptations in ‘communication circuitry’ to facilitate both wireless uses.” In the case at bar, there is only a requirement that data be formatted differently.

Intermec’s expert, Ray W. Nettleton, Ph.D. (“Nettleton”), opines that any one of a multitude of differences in the organization of data would qualify as “data formatted in different ‘styles,’ ” yet fails to point to any intrinsic evidence linking these proposed meanings to the patent. Moreover, Nettleton’s explanation is still vague and ambiguous. Most computer standards evolve through various versions. Presumably, different versions of the same standard would qualify as different. However, it is possible that the differences between these versions are not relevant to the functioning of the terminal and server as described in the patent. Nettleton’s interpretation would encompass any type of data specification, organization, or format, even if it did not exist at the time of the invention, and even if it did not relate to the conceived benefits of the invention. For example, Nettleton discusses the HTML < script > tag. At the time the application for the '678 patent was filed, HTML had not yet been fully developed, and its design did not encompass the < script > tag mentioned by Nettleton.

In sum, Nettleton asserts that any difference, no matter to what degree, may be considered a “second style different from the first,” unless it would conflict with a disclosed embodiment. This does not adequately inform a person of ordinary skill in the art as to the bounds of the invention. Discussing interpretation of means-plus-function claim language, the Federal Circuit has noted that to

resolve the ambiguity in a way that gives it the broadest possible construction (i.e., that its claim covers all future improvements without regard to whether [the applicant] invented such improvements) ... would undermine the notice function of the claims because it would allow [the applicant] to benefit from the ambiguity, rather than requiring [the applicant] to give proper notice of the scope of the claims to competitors.

Halliburton, 514 F.3d at 1254. Although the “first style” and “second style” language of the disputed claims is not means-plus-function language, allowing Nettle-ton’s opinions to define the scope of the disputed claims would yield a similar result — allowing the applicant to benefit from the ambiguity, rather than requiring proper notice and scope of the claims. For the above reasons, the court finds that the terms “first style” and “second style” as used in claims 1 and 9 of the '678 patent are insolubly ambiguous and, therefore, finds that said claims are invalid as indefinite under 35 U.S.C. § 112.

c. The '499 patent

Independent claim 15 of the '499 patent recites, “each of the one or more terminal [sic] selectively requests the application programs from the main information center; and the main information center delivers requested ones of the application programs in executable portions.” ('499 patent at 16:33-37) Claim 16 depends from claim 15 and recites, “the terminal establishes a communication link with the main information center to deliver the requests, and the requests are selectively forwarded to at least one of the plurality of servers for servicing.” (Id. at 16:38 — 43)

Palm argues that “claims 15 and 16 of the '499 [p]atent ... incorporate limitations directed to the method of use of the system, and not just the apparatuses of the claimed system.” (D.I. 154 at 3) Palm asserts that these claim limitations require that an unidentified external agent perform the predicate selection of an application program and, relying on IPXL Holdings, LLC. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed.Cir.2005), argues that claims 15 and 16 of the '499 patent are invalid as indefinite. (D.I. 154 at 9-10) IPXL was a case of first impression for the