Citations
- 774 F. Supp. 2d 732
Full opinion text
MEMORANDUM OPINION
ALEXANDER WILLIAMS, JR., District Judge.
Pending before the Court is the parties’ Joint Claim Construction Statement (Doc. No. 1278). Plaintiff Technology Patents LLC (“Technology Patents”) filed this action against 131 domestic and international telecommunications companies, alleging infringement of the claim of Plaintiffs U.S. Patent No. RE39,870 (“the '870 Patent”) and U.S. Patent No. 6,646,542 (“the '542 Patent”). Defendants AT & T Mobility LLC, Microsoft Corporation, Yahoo! Inc., Sprint Nextel Corporation, Motorola, Inc., Palm, Inc., Samsung Electronics Co., LTD., Samsung Telecommunications America LLP, LG Electronics Mobile-comm U.S.A., Inc., Helio, LLC, Clickatell (PTY) LTD., Célico Partnership, and T-Mobile USA, Inc. remain. Plaintiff claims that Defendants infringed thirty-four claims of the '870 Patent — Claims 4 through 37, and Claim 39. The parties request that the Court construe seventy-three terms from these claims, and have fully briefed the related issues. (Doc. No. 1278.) Also pending before the Court are Plaintiffs Motion to Seal Certain Exhibits to Plaintiffs Opening Brief on Claim Construction (Doc. No. 1293), Plaintiffs Motion to Strike Defendants’ Post-Hearing Filings on Claim Construction, or in the Alternative Request for Leave to File a Response (Doc. No. 1387), as well as five motions for summary judgment with related motions to seal, and a Motion for Reconsideration (Doc. No. 1401). The Court will address all motions related to claim construction (Doc. Nos. 1278, 1293 & 1387) in this Memorandum Opinion, and will address the other motions in a future opinion. On December 15, 2009, the Court conducted a hearing on claim construction. The Court has reviewed the entire record, as well as the Pleadings and Exhibits, with respect to claim construction.
BACKGROUND
On October 9, 2007, the United States Patent and Trademark Office (USPTO) reissued a patent for a “global paging system using packet-switched digital data network and remote country designation” to Technology Patents as the '870 Patent. The invention was for a “global paging system utilizing land-based packet-switched digital data network (e.g. the Internet) and a feature for permitting subscribers to remotely designate countries in which they are, or expect to be, located.” ('870 Patent, Ex. A to Pl.’s Open Br. Claim Constr. [hereinafter PL’s Open. Br.] at 1:19-24.) The '870 Patent provides that it was designed to satisfy a need for a “more efficient global paging system.” (Id. at 2: 33-35.) At the time the system in the '870 Patent was designed, three other types of global paging systems existed — 1) geographic-area selective satellite-based paging system and corresponding method, 2) systems for providing communications based on geographic location, and 3) wide area paging systems. (See id. at 1:32-34, 56-57, 63-66.) The '870 Patent asserts that these inventions did not fulfill the need for a cheap and efficient global paging system that allowed receiving users to “remotely input country designations in which they [were] to be paged.” (Id. at 2:33-35.)
The '870 Patent solved this problem by claiming a system which allows for paging of the receiving user (“RU”) in countries where the RU “may be located,” as per a list input by the RU. (See, e.g., id. at 10:14-20.) A general description of the system follows. The RU must set up a list of countries that “he or she wishes to be reachable in by way of the paging system,” and these are the only countries where the RU can be paged. (Id. at 6:22-24.) When traveling, the RU may designate the country where he or she is located. (Id. at 6:29-50.) To contact the RU, the originating user (“OU”) contacts the “paging gateway” through the public-switched telephone network (“PSTN”) or email and inputs the RU’s “pager ID” along with a “paging message.” (Id. at 3:54-57.) The system then checks for the RU’s country designation, and pages the RU in that country, if access is possible. (Id. at 5:23-30.) If the RU’s pager cannot be accessed in the designated area, or if the RU has not designated a country, the originating server retrieves the previously input country list, attempts to page the RU at the first country on the list, and if unsuccessful, proceeds to attempt to page the RU at the second country on the list, and if unsuccessful, continues through the list, a certain number of times. (Id. at 5:53-60, Col. 8:13-20) Once the system reaches the RU, a website or server transmits the message through a land-based digital data network (e.g. the Internet) to the RU’s device. (Id. at 5:53-64.)
On November 8, 2007, Plaintiff brought suit against 131 domestic and foreign companies in the cellular phone industry claiming infringement of the '870 Patent and the '542 Patent. The Court dismissed the 118 foreign Defendants for lack of personal jurisdiction and Plaintiff dropped its allegations regarding the '542 Patent. Remaining are Plaintiffs accusations of infringement of Claims 4 through 37 and Claim 39 of the '870 Patent. The parties have submitted seventy-three terms in the '870 Patent for claim construction and have agreed to divide the terms into fourteen groupings (Doc. No. 1385), which the Court will use to facilitate claim construction. Where the parties were unable to agree on the title for a term grouping, the Court selected a title. When possible, the Court has defined a single example term as a proxy for the definitions of all of the individual terms in the grouping. Each individual term is defined in the Table of Construed Terms following this Memorandum Opinion.
STANDARD OF REVIEW
Claim construction is decided by the Court as a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed.Cir.1995) (en banc), aff'd 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). “The duty of the trial judge is to determine the meaning of the claims at issue, and to instruct the jury accordingly.” Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed.Cir.1995) (citations omitted), cert. denied, 518 U.S. 1020, 116 S.Ct. 2554, 135 L.Ed.2d 1073 (1996). In order to determine the meaning of a claim term, the Court should first look to the plain language of the claim and presume it carries its “ordinary and customary meaning.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed.Cir.2002); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). The ordinary and customary meaning is defined as the meaning of the claim term to a person having ordinary skill in the art at the date the patent application in question was filed. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005) (en banc).
In order to ascertain the ordinary and customary meaning of a disputed claim term, the claims themselves must be thoroughly examined. If a claim term is used more than once throughout the patent, the “usage of a term in one claim can often illuminate the meaning of the same term in other claims.” Markman, 52 F.3d at 978. “Differences among the claims can also be a useful guide in understanding the meaning of particular claim terms.” Id. Further, the language that introduces the body of a claim can offer insight into the claims’ meaning. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed.Cir.2005). For example, “the word ‘comprising’ transitioning from the preamble to the body signals that the entire claim is presumptively open-ended.” See id. (citing Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1347 (Fed.Cir.2001)). Also, “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.” Phillips, 415 F.3d at 1315.
If a term’s ordinary and customary meaning cannot be determined from the plain language of the claim alone, it is proper for the Court to look to the Patent’s specification to determine the “true intent and meaning of the language in the claims.” Bates v. Coe, 98 U.S. 31, 38, 25 L.Ed. 68 (1878); see also Phillips, 415 F.3d at 1316. The specification, in conjunction with the prosecution history and the prior art cited during the patent prosecution serve as intrinsic evidence and can be used to ascertain the meaning of the disputed claim terms. Phillips, 415 F.3d at 1319-24. “The claims, of course, do not stand alone. Rather, they are part of ‘a fully integrated written instrument,’ consisting principally of a specification that concludes with the claims. For that reason, claims ‘must be read in view of the specification, of which they are a part.’ ” Phillips, 415 F.3d at 1315 (quoting Mark-man, 52 F.3d at 978). Preferred embodiments in the specification reflect the inventor’s desired use for his or her patent and thus can assist in the Court’s determination of the claim’s scope. Additionally, it is improper to read limitations from the specification into the claims unless the specification makes consistent and repeated statements leading to the “inescapable conclusion” that a limitation stated only in the. specification should apply to the claimed invention. See Phillips, 415 F.3d at 1323.
Dictionaries, expert testimony, and documents or prior art not part of the prosecution history are considered extrinsic evidence and the Court may use them to determine the true meaning of a claim term, however, the Court will give less weight to this extrinsic evidence than to intrinsic evidence. Id. It is not necessarily important in which order the Court consults these references; what matters is that the Court gives the consulted sources the appropriate weight. Id. at 1324 (citing Vitronics, 90 F.3d at 1582).
ASSERTED CLAIMS
The terms to be construed include both non-means-plus-function terms, addressed in Section I, and means-plus-function terms, which are subject to construction under 35 U.S.C. § 112, addressed in Section II. The Court first addresses the non-means-plus-function terms: 1) “paging” terms, 2) “designating” terms and “country data” terms, 3) “initiating paging operations in another country in a predetermined order,” 4) “another country,” 5) “originating country” and “receiving country,” 6) “computer” terms, 7) “the Internet,” 8) “website”; and second the means-plus-function terms: 9) means-plus-function terms allegedly invalid re alleged lack of structure/algorithm, 10) means-plus-function terms allegedly invalid re conditional/ambiguity, 11) other means-plus-function terms, 12) alleged invalidity re mixing, 13) additional alleged invalidity, and 14) terms whose meanings are no longer disputed. Regarding 1) “paging” terms, the Court adopts Plaintiffs proposed construction; for 2) “designating” terms the Court adopts Defendants’ proposed construction and for “country data” terms adopts Plaintiffs proposed construction; regarding 3) “initiating paging operations in another country in a predetermined order,” the Court adopts a combination of the parties’ proposed constructions; 4) the Court adopts Plaintiffs proposed construction of “another country” in Claim 19, 21, and 36, and Defendants’ proposed construction in Claims 4, 6, 9, 13, 16, 18, 30, and 34; 5) the Court adopts a combination of the parties’ proposed constructions of “originating country” and “receiving country”; 6) The Court adopts Plaintiffs proposed construction for “computer” terms in Claim 27 and Defendants’ proposed construction in Claim 34; 7) the Court adopts Plaintiffs proposed construction of “the Internet”; and 8) the Court adopts a combination of Plaintiffs and Defendants’ proposed constructions of “website.” Regarding the means-plus-function terms, 9) the Court finds the means-plus-function terms allegedly invalid re alleged lack of structure/algorithm valid where either a server or packet-switched digital data network is a corresponding structure. Nor does the Court finds the claims where 10) means-plus-function terms allegedly invalid re conditional/ambiguity, as Defendants have not met their burden of showing indefiniteness by clear and convincing evidence; 11) the Court does not find any other means-plus-function terms to be invalid; 12) the Court does not find any invalidity re mixing; 13) the Court does not find additional alleged invalidity, and 14) the Court merely notes that some terms’ meanings are no longer disputed.
I. Non-Means-Plus-Function Terms
1. “Paging” Terms
Found in Claims: 1, 4, 6, 9, 11, 13, 16, 18,19, 21, 23, 26, 27, 30, 31, 34, 35, 36, 39 E.g., “paging system” and “system for paging”
Plaintiffs Proposed Construction: a system for routing messages to be sent to handheld portable electronic devices for receiving messages
Defendant’s Proposed Construction: a system for sending messages to pagers, which are handheld portable devices, other than cellular telephones, for receiving messages
Court’s Construction: a system for routing messages to be sent to handheld portable electronic devices for receiving messages
The parties dispute whether the “paging” terms exclude cellular phones. In light of the intrinsic evidence of the claim’s specification and prosecution history, the Court finds that Plaintiffs construction of the “paging terms,” which includes cellular phones, is correct.
To determine the meaning of the paging terms in the '870 Patent, the Court first turns to the plain language of the claims. The aforementioned terms appear in myriad claims, but despite the frequency of their use, the terms’ ordinary and customary meanings are hard to determine from a simple reading. {See generally '870 Patent, Ex. A to Defs.’ Br.; Ex. 2 to PL’s Open. Br.) Plaintiff argues that since the '870 Patent contains no language excluding cellular phones, the plain language does not support the exclusion of cellular phones. {See PL’s Open. Br. at 5.) Further, Plaintiff argues that since the preambles to the claims in question end with “comprising,” {See, e.g., '870 Patent, Ex. 2 to PL’s Open. Br. at 10:2) the claims are open-ended and are not limited to pagers. (See PL’s Open. Br. at 5.) Defendants argue that the Patent contains no language including cellular phones and that a person having ordinary skill in the art would understand that the “paging” terms include only simple pagers. (Defs.’ Br. Supp. Claim Constr. [hereinafter Defs.’ Br.] at 38-39.) Given the Court’s posture of reluctance to place limitations on claims without a clear showing of the intended limitation, however, Plaintiffs arguments are slightly more persuasive. See, e.g., Phillips, 415 F.3d at 1323 (holding that people of ordinary skill in the art rarely would confine their definitions of terms to the exact representations depicted in the embodiments). The Court believes that neither plain language argument is persuasive enough to control the determination of the ordinary and customary meaning of the “paging terms,” however.
Since the Court cannot construe the claims solely by examining their plain language, the Court must look to the intrinsic and extrinsic evidence for clarification, giving more weight to the intrinsic evidence. Plaintiff argues that the '870 Patent includes the use of a cellular phone within the specification, as the Patent provides, “[a]ccording to alternative embodiments of this invention, cellular phones may be used instead of pagers.” ('870 Patent, Ex. 2 to PL’s Open. Br. at 4:40-45.) Defendants argue that the specification distinguishes pagers from cellular phones through language such as, “cell phone information is transmitted as opposed to paging information.” ('870 Patent, Ex. A to Defs.’ Br. at 9:8-10.)
Although the Defendants have pointed to language where the '870 Patent distinguishes pagers from cellular phones, the Court does not believe that this distinction indicates that “paging terms” should be construed to exclude cellular phones. The underlying logic of the Defendants’ argument is that if pagers and cellular phones are distinguishable they must operate on separate systems. But, the prior art and extrinsic evidence reveal pager/cellular phone combinations, and cellular phones with pager functions which enable a cellular phone to function on a “paging system,” thus negating Defendants’ assertion. (See '452 Patent, Ex. 3 to PL’s Open. Br. at 3:45-50; Verizon Dep. Ex. 12 to PL’s Open. Br. at 111-113; Nextel i500plus User Guide Ex. 9 to PL’s Open. Br. at TP00014314.) Additionally, the '870 Patent discloses the use of a cellular phone, and per Phillips, a claim should not be construed to exclude a preferred embodiment. 415 F.3d at 1316. (Ex 1. to PL’s Open. Br. at 1:27-31.)
Next, both parties argue that the '452 Patent, which is listed in the specification and thus considered prior art, supports their construction of the “paging” terms. The '452 patent states, in relevant part, that “the second communication path could, alternatively, be a cellular telephone system ... [where the] pager would be combined with a cellular handset.” ('452 Patent, Ex. H to Defs.’ Br. at 3:44-49.) Defendant argues that this language indicates a distinction between pagers and cellular phones. The Court agrees. The Court observes, however, that the '452 Patent also reveals that cellular phones can contain a pager component or the capability of paging. The '452 Patent clearly reveals a method of sending paging messages to a cellular phone and does not exclude cellular phones from receiving pages as Defendants suggest. Thus, the Court "finds that the '452 Patent in fact lends further support to Plaintiffs construction, which includes cellular phones in the “paging” terms.
The Court also finds support, albeit minimal, for the inclusion of cellular phones in the claims’ scope on the basis that a pager ID has been shown to be a phone number. Plaintiff argues that the prosecution history’s stipulation that a pager ID can be a phone number shows that cellular phones may be used in conjunction with a paging system. (See Pl.’s Open. Br. at 7; Prosecution History, Ex. 4 to PL’s Open. Br. at TP00000185-86.) The Court believes this argument is attenuated, though somewhat persuasive.
The Court is ultimately unpersuaded by Defendants’ argument that since the prosecution history shows Plaintiff chose to classify the '870 Patent as a “paging system” when forced to choose between a “paging system” and a “cellular phone system,” the “paging” terms should exclude cellular phones. (See Defs.’ Br. at 40; Prosecution History, Ex. B to Defs.’ Br. at TP00000267.) Although Defendants make a very compelling argument, a careful examination of the prosecution history reveals that the choice Plaintiff made did not actually exclude cellular phones from the '870 Patent. Plaintiff chose to classify its invention as a “method of receiving paging messages in a paging system” instead of “a cellular phone system where the originating user and receiving user carry on a telephone conversation.” (Prosecution History, Ex. B to Defs.’ Br. at TP00000267.) The prosecution history also states that Plaintiff chose an invention concerning one-way message transmission, instead of “two way interactive conversation.” (Id.) This distinction merely eliminates two-way phone conversation, not one-way messaging to cellular phones.
The Court finds the intrinsic evidence strongly favors inclusion of the cellular phones in “paging” terms in the '870 Patent, and the extrinsic evidence both parties present in the form of expert testimony, dictionary excerpts, phone manuals, and other documents not involved in the prosecution history does not convince the Court otherwise. Although Defendants’ extrinsic evidence is ultimately more persuasive than Plaintiffs extrinsic evidence, this evidence is not strong enough to overcome the intrinsic evidence favoring Plaintiffs proposed construction. See Phillips, 415 F.3d at 1324 (citing Vitronics, 90 F.3d at 1582). Both Plaintiff and Defendants have shown dictionary definitions supporting their positions, and in any case, the Federal Circuit’s decision in Phillips requires the Court to give dictionaries less weight than intrinsic evidence. See id. Next, although expert testimony can be helpful in enabling the Court to determine the view of a person having ordinary skill in the art, the experts have conflicting opinions on this matter. Dr. Wicker’s testimony fails to provide enough support to overcome the intrinsic evidence favoring Plaintiffs claim construction. Defendants’ argument that the Court should disregard current phone manuals and deposition testimony regarding present-day cellular phone technology is compelling, as the Court must determine the meaning of the claim to a person having ordinary skill in the art at the time of the invention, rather than today. But, as this evidence is not essential to Plaintiffs argument, which is thoroughly supported by intrinsic evidence, the Court adopts Plaintiffs proposed construction of the “paging” terms.
2. “Designating” Terms, Country Data Terms, and the “When” Term
Found in Claims: 4, 9, 11, 16, 17, 19, 21, 26, 27, 30, 36, 31, 34
E.g., Claim 19: “designating a page receiving country, from a plurality of potential countries, in which a receiving user is to be paged.”
Plaintiff’s Proposed Construction: specifying a page receiving country from a plurality of countries, as the country in which the receiving user is to be paged
Defendants’ Proposed Construction: the originating user inputting a selection of a page receiving country, other than a country code, to be used by the system as the country in which to page the receiving user.
Court’s Construction: inputting a selection of a page-receiving country, from a plurality of potential countries, to be used by the system as the country in which to page the receiving user.
The parties dispute whether “designating” means “specifying” a country from the RU’s stored list of countries, as Plaintiff proposes, or if “designating” means “inputting” the selection of a country, as proposed by Defendants. (Pl.’s Open. Br. at 16; Defs.’ Br. at 11-12.) This dispute essentially turns on whether the claims require either the OU or RU to perform the designation, as Defendants argue, or whether the system can separately effect the designation, as Plaintiff argues. The parties also dispute whether country codes should be excluded from this term’s construction. (PL’s Open. Br. at 16; Defs.’ Br. at 11-12.) Additionally, the parties disagree on which countries may be designated, and what “when” means.' The Court finds that intrinsic evidence favors Defendants’ proposed construction of “designating” as “inputting,” but that the claim does not exclude use of a country code for selecting a country
A. “Designating”
The Court construes the “designating” terms to have the more narrow definition that Defendants suggest, of “inputting,” because the specification clearly requires the more narrow definition. The meaning of the terms is not completely clear from the plain language of the claims, but Defendants’ arguments regarding the plain language are more persuasive. Defendants construe “designate” to mean “input a selection ... other than a country code.” They argue that this construction comports with ordinary usage of “designate” because it is used in terms such as “designated driver” or “designated hitter” to mean “selecting for a purpose.” (Defs.’ Br. at 12.) Defendants observe that the claims require the user to input the country designation, not that the system specify the designation. Many of the claims use “designating” and “inputting” interchangeably, and thus, “designating” should be construed as “inputting,” according to Defendants. (See, e.g., '870 Patent, Ex. A to Defs.’ Br. at 12:20-41.) Additionally, Defendants argue that the plain language requires a selection from a plurality of countries, which they contend supports a construction of “designating” as “inputting,” since it more accurately reflects selection than Plaintiffs proposed construction. Next, Defendants note that the preambles of Claims 4 and 36 recite “a system for [or method of] paging a receiving user in a country-selective paging system” which additionally supports defining “designating” as “inputting.” (Defs.’ Br. at 12.)
Plaintiffs argument that “inputting” is an incorrect construction because “inputting” does not appear in Claim 4 (PL’s Open. Br. at 16), is misleading because it does not take into account the entirety of the claims, and thus is contrary to the established approach for construing claims. See, e.g., Markman, 52 F.3d at 978 (“Usage of a term in one claim can often illuminate the meaning of the same term in other claims.”). Although “input” is not present in Claim 4, it is present in other claims of the '870 Patent, as Defendants argue. (See '870 Patent, Ex. 2 to Pl.’s Open Br. at 12,1.40.) Nonetheless, there is a conflict in the claims since Claim 4 provides no support for limiting “designating” to inputting, while Claim 19 supports this limitation. ('870 Patent, Ex. 2 to Pl.’s Open. Br. at Claims 4 & 19.) With such ambiguity in the claims, it is appropriate for the Court to look to other evidence to decipher the ordinary and customary meaning of the “designating” terms.
The specification clearly supports construing “designating” as “inputting.” Defendants point to three places in the specification where they believe “designate” and “input” have been used interchangeably. (See, e.g., Ex. A to Defs.’ Br. at 6:62-66 (“input or designate Australia as a ‘designated country’ ”) (emphasis added).) The Court is unpersuaded by Plaintiffs position that where the specification states “input or designate,” it refers to “designate” and “input” as alternatives, rather than interchangeable terms and that inputting is merely a method of designating. Indeed, according to Plaintiffs own argument, “inputting” is one form of “designating,” or an alternative to renewing and to automatically designating. If Plaintiffs position were correct, then the specification should state “input or renew” or “input or automatically designate,” not “input or designate.”
Nor is the Court convinced by Plaintiffs argument that the specification provides that designation can also occur by renewal of a designation (Id. at 7:10-14) or by automatic designation (Id. at 8:31-34, 7:39-40), and that these designations do not require “inputting” a country, and thus, limiting “designating” to “inputting” would exclude these preferred embodiments. Plaintiff contends that limiting “designating” to inputting a selection excludes the embodiments that allow for renewing a designation or designating a country automatically. Plaintiff argues that automatic selection does not require an input step because the country has already been input. But Plaintiffs reliance on the '870 Patent’s description of automatic or renewal designations ignores the crucial fact that automatic or renewal designations occur only after a RU or OU designates a country. (See Ex. A to Defs.’ Br. at 7:39-40, 8:31-34.) Accordingly, the specification weighs in favor of the Defendants’ proposed construction.
Moreover, though Plaintiff cites five dictionary definitions of “designate” in support of defining “designating” as “specifying,” (PL’s Open. Br. at 17-18) “specifying” does not appear in the specification. (Defs.’ Br. at 14.) Plaintiff argues that these dictionary definitions of “designate” as “to mark, to point out, to indicate, to specify, and to stipulate” (See, e.g., Webster’s Illustrated Dictionary, Ex. 17 to PL’s Open. Br. at 5) show that the ordinary meaning of “designate” is to specify, point out, or indicate. (PL’s Open. Br. at 17.) Defendants point to The American Heritage Dictionary, which defines “to designate” as “to select and set aside for a duty, an office, or a purpose.” (Defs.’ Br. at 14.) “Dictionaries ... are often useful to assist in understanding the commonly understood meaning of words and have been used by [the Federal Circuit] and the Supreme Court in claim interpretation.” Phillips, 415 F.3d at 1322. It is clear that both “select” and “specify” are common definitions of “designate.” However, the Federal Circuit has warned against relying too much on dictionary definitions because it “focus[es] the inquiry on the abstract meaning of the words rather than on the meaning of the claim terms within the context of the patent.” Id. at 1821. Although the dictionaries seem to weigh heavily in favor of Plaintiffs proposed construction, they do not provide the correct definition for the terms as used in the claim. Accordingly the Court will not weigh this extrinsic evidence heavily.
Finally, Defendants argue that the “designating” terms require that a user designate a country “in which the receiving user is to be paged.” (Defs.’ Br. at 18.) There is no apparent conflict between Defendants’ construction, “[a country] to be used by the system as the country in which to page the receiving user,” and Plaintiffs construction, “the country in which the receiving user is to be paged”. {See Defs.’ Br. at Appx. A at 1.) Defendants are correct that designating a second country serves no purpose other than to allow the system to use the designated country as the country in which to page the receiving user. {See Defs.’ Br. at 18.) As such, Defendants’ construction of “input,” which insinuates that the user is performing the “designation,” is correct.
B. Country Data
There is no language in the claims suggesting that country codes must be excluded from data that may be input to designate a country, and thus the Court construes the country data terms to include country codes. Although “other than a country code” does not appear within the claims, Defendants argue that this limitation is implied by the claims, the written description, and the prosecution history. Defendants also argue that the patentee adopted the “other than a country code” limitation in the written description because the patentee emphasized that “designating” does not include inputting a telephone number. Plaintiff argues that this limitation is neither apparent nor implied. The Court agrees with Plaintiff.
Defendants first argue that the claims exclude the mere act of inputting a telephone number to designate a page receiving country because the “designating” limitation is claimed separately from limitations relating to inputting the pager ID, and that thus country codes are also excluded. (Defs.’ Br. at 15.) Defendants also argue that the express requirement in certain claims that the designation be “from a plurality of potential countries” also supports the “other than a country code” limitation because entering a country code of a phone number requires a user to enter a single country, and not a choice from a plurality of potential countries. (Defs.’ Br. at 18.) Plaintiff argues that since the claims do not contain any language that would exclude country codes, they should not be excluded. (Pl.’s Open. Br. at 16.) The Court agrees with Plaintiff that absent any indication in the plain language of the claim that country codes are to be excluded, the Court does not find the distinction between pager ID and the “designating” limitation sufficient to imply that the patentee intended to exclude country codes as country designators.
The Court finds the construction clear from the plain language of the claim, and will thus only briefly address the parties’ arguments with reference to the specification and prosecution history. Regarding the specification, Defendants argue that the Patent distinguishes between entering the pager ID and designating a second country. {See, e.g., '870 Patent, Ex. A to Defs.’ Br. at 2:61-67.) In response, Plaintiff contends that “the pager ID identified in the specification at col. 4:60 does not have a country code, indicating that the country code and device ID can be referred to differently.” (PL’s Reply Br. at 12.) Plaintiff also argues that nothing in the specification excludes country codes, but instead the specification describes “country data” as being indicative of a country, and expressly mentions a country code at Column 2:12-14 and a country code is shown at Column 4:52-53. (PL’s Open Br. at 17; PL’s Reply Br. at 11.) The Court finds Plaintiffs arguments more persuasive.
Defendants also argue that the specification’s distinction between the step of entering the pager ID and the step of designating the page receiving country was restated during prosecution of the Patent to overcome rejection. (Appeal Br., 1/28/99, Ex. B to Defs.’ Br. at TP000301.) Plaintiff responds that during prosecution of the parent of the Reissued '870 Patent, three Administrative Patent Judges (APJs) found that ‘“designating means is met by the country code.’” (PL’s Open. Br. at 18 (citing '870 Prosecution History Ex. 4 to PL’s Open. Br. at TP 344).) Furthermore, during prosecution of the '870 Patent, the Examiner stated that country codes were used for designating countries in prior art. (See PL’s Open. Br. at 18 (citing '870 Prosecution History Ex. 4 TP149, 152-53).) Finally, when resolving an obviousness dispute, the Board of Patent Appeals and Interferences (“Board”) explained that the '870 Patent was not obvious because it suggests entering the location for a call even if the pager ID number included a country code, and this had never been taught or suggested before. ('870 Prosecution History, Ex. B to Defs.’ Br. at TP 339-340.) The Court believes the prosecution history merely distinguishes the '870 Patent from the prior art on the basis of its being a global paging system, not a local one; there is no suggestion country codes cannot be used to designate a country.
Nor does examination of the prior art favor Defendants’ construction, though Defendants argue that the patentee specifically excluded country codes from the “designating” step when the patentee distinguished its invention from the '779 patent (“Gaskill”). The '870 Patent, distinguishes the present invention from Gaskill on the basis that the Gaskill approach fails to allow a user to “input into the system designated country locations where he or she expects to be in the future.” ('870 Patent, Ex. A to Defs.’ Br. at 2.:21-25.) Defendants interpret this statement to indicate that the patentee admits that “designation” in the '870 Patent “[does] not refer to the prior art use of telephone numbers.” (Defs.’ Br. at 16.) Plaintiff responds that in fact, the specification states that Gaskill “is lacking for at least the following reasons: (i) other than the roaming feature, the receiving user cannot input into the system designated country locations where he or she expects to be in the future.” ('870 Patent Ex. 2 to PL’s Br. at 2:21-25.) Plaintiff contends that the “other than the roaming feature” language indicates that a country code can be used by a receiving user to designate a country when roaming. The Court believes that the key difference between the '870 Patent and the Gaskill Patent is the ability to designate, not the method by which the country is designated. The '870 Patent allows users to designate where they plan to be in the future, instead of merely depending on roaming features to deliver their calls. As such, it appears Defendants’ argument is flawed and the prior art does not provide a basis for excluding designation by country codes.
C. The “When” Term
E.g., Claim 4: “when the paging system determines that the second country has not been designated by the receiving the receiving user”
Plaintiffs Proposed Construction: in the event that ...
Defendants’ Proposed Construction: at the time that ...
Court’s Construction: in the event that
The Court construes “when” to mean “in the event that.” “When” is repeatedly used in the claims to signify an event happening after an initial event. A simple reading of the claims shows that many of the steps for the '870 Patent can only happen after a certain step has been completed, or at a minimum attempted, and thus the Court will adopt Plaintiffs construction. The Court agrees. The Court is unpersuaded by Defendants’ argument that the '870 Patent uses “if1 when it intends “in the event that” and it uses “when” to connect two actions that occur during the paging process. (Defs.’ Br. at 31-32.) Plaintiff convincingly demonstrates that a plain reading of Claim 4 shows that the functions following “ ‘when’ in [Plaintiffs] Terms 5B and 12A occur after the system determines if the second country is currently designated.” (Pl.’s Open. Br. at 19.) Thus the Court adopts Plaintiffs construction of “when.”
3. “Initiating Paging Operations in Another Country in a Predetermined Order”
Found in Claims: 4, 9, 13, 16, 30, 34, 36
E.g., Claim 4: “initiates paging operations in another country in a predetermined order in an attempt to page the receiving user”
Plaintiffs Proposed Construction: begins paging operations in another country in an order determined before the operations begin in an attempt to page the receiving user
Defendants’ Proposed Construction: attempts to page the receiving user in another country that is first in an ordered list of two or more countries created by the receiving user before the paging system determines whether any country has been designated
Court’s Construction: begins to page the receiving user in another country that is first in an ordered list of two or more countries created by the receiving user before the paging system determines whether any country has been designated
The Court construes “order” to require a list of two or more countries, “initiate” to mean “begin,” and believes that the designation must occur before the determination of the designation. The Court addresses each of these words or phrases below.
A. Ordered List
Defendants argue that the term “initiates paging operations in another country in a predetermined order” refers to a “country” that is in a “predetermined order” of countries, and as such, the ordered list must be a list of two or more countries. (Id.) First, Defendants argue that common rules of grammar favor this interpretation because, “in a predetermined order” modifies “country,” not “paging operations” since it follows immediately after “country,” without any commas. (Defs.’ Br. at 25-26.) Defendants contend that Plaintiff was aware that it was modifying “country” because other claims unambiguously modify the claimed “paging operations.” (See, e.g., '870 Patent Ex. A to Defs.’ Br. at Claim 6 (modifying “paging operations” with “a predetermined number of times”).) Plaintiff argues that since “another” means “one more” and “country” is by definition singular, “another country” only refers to one other country, not a list of two or more countries. (PL’s Open. Br. at 20.) Plaintiff supplements this argument by pointing out that none of the claims in question say anything about a “list of two or more countries.” (Id. at 20-21.) Further, Plaintiff argues that since dependent Claim 31 recites a “list,” it can be presumed that Claim 30 (Plaintiffs Term 6A) does not require a list. (Id. at 21.)
Defendants’ grammar-based argument is very persuasive. The Court is not persuaded by Plaintiffs argument that because “another country” is singular, the predetermined order must be a single country; instead it requires that one country be selected from the list. The Court agrees with Plaintiff that the fact that Claim 31, which is dependent on Claim 30, requires a list, indicates that Claim 30 does not require a list. “[T]he 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,” Phillips, 415 F.3d at 1315, and this provides support for the Court assuming that Claim 30 does not require a list. Plaintiffs claim differentiation argument does not prevent a limitation requiring a predetermined order to have more than one country, however. Since the claim language fails to yield an unambiguous result, it is proper to consult further evidence.
Defendants observe that the specification provides that the system will attempt to page the RU in accordance with the RU’s predetermined order of countries, CSee '870 Patent Ex. A to Defs.’ Br. at 5:66-6:11), while Plaintiff argues that the specification refers to a list of countries or coverage areas within the same country. (See id. at 4:16-21.) Although the specification reveals an embodiment that includes coverage areas within a single country, the specification repeatedly states that the '870 Patent is for a system for global messaging. The claims do not mention coverage areas, but instead speak to the selection of countries, and as such, the claims’ construction need not encompass the coverage area embodiment from the specification, especially in light of the support the specification lends to Defendants’ position.
Defendants further argue that the prosecution history negates Plaintiffs argument regarding the specification’s mention of coverage areas. After the Patent Office rejected the claim language, “list of different countries in a predetermined order,” Plaintiff stated that “this limitation clearly requires that the receiving user is attempted to be paged in one country, then in another country, then in still another country, in a predetermined order.” (’542 Prosecution History Ex. 16 to PL’s Open. Br. at TP0000283.) Defendants argue that this statement shows Plaintiff has surrendered the claim that the “predetermined order” can refer to coverage areas, but Plaintiff argues that this limitation does not apply because the disputed claims were not present at the time of this limitation. (PL’s Reply Br. at 20.)
When analyzing the prosecution history, the court may not consult “claims that are broader than the original patent claims in a manner directly pertinent to the subject matter surrendered during prosecution.” Revolution Eyewear, Inc. v. Aspex Eyew-ear, Inc., 563 F.3d 1358, 1368 (Fed.Cir. 2009). Also, claim limitations from a parent patent cannot be used to limit a claim not present in the parent patent. Linear Tech. Corp. v. Int’l Trade Comm’n, 566 F.3d 1049, 1058 (Fed.Cir.2009). In the rejection found in the prosecution history at hand, the examiner did not rely on the word “list,” and Plaintiff did not clarify what the word “list” meant in response, so this limitation should not be excluded based on this evidence. Despite the inclusion of the word “list” in the parent patent, Plaintiffs statement made in response to the claim rejection shows that the predetermined order was intended to be an order of multiple countries.
Overall, Defendants’ construction requiring two or more countries is preferred. The Patent specification explicitly and repeatedly calls for a global paging system and distinguishes itself from prior art on the basis that it provides a more efficient global paging system. Although the claims do not explicitly state this limitation, it can be inferred from the specification. Neither the claims nor the prosecution history strongly favor Plaintiffs construction, and as such, the Court construes “predetermined order” terms to refer to multiple countries.
B. “Initiate”
Plaintiff argues that Defendants have failed to provide a construction that takes into account the word “initiate.” (Pl.’s Open. Br. at 20.) Plaintiff argues that “initiating” means “beginning” and as such this word cannot be ignored in favor of “attempting.” (See Ex. 5, 17, 18, 19, 20 to Pl.’s Open. Br. (offering dictionary definitions).) Defendants, on the other hand, fails to substantiate their choice of “attempt” instead of “initiate.” The Court thus declines to change this word from the claim language.
C. Creating the Ordered List
The '870 Patent specification repeatedly and clearly states that the ordered list is to be created by the RU, and as such the Court adopts Defendants’ construction regarding “creating the ordered list.” Defendants argue that “Plaintiffs construction omits the essential requirement that the receiving user create the ordered list.” (Defs.’ Br. at 29.) Defendants point out that the specification states that the asserted invention fulfills the need for the RU to determine where the pages are sent. (Defs.’ Br. at 29-30; '870 Patent, Ex. A. to Defs.’ Br. at 2:32-37, 51-54.) The Court is not convinced by Plaintiffs unsubstantiated argument that this limitation conflicts with the claim language itself since the limitation is not stated in the claims. (Pl.’s Open. Br. at 21.)
Next, Defendants argue that “pre” in “predetermined order” must be construed to mean the order is determined before the paging system determines whether the receiving country is designated. Defendants explain that, according to the Patent, the predetermined order ensures that “pages may be sent even if a receiving user has not input a particular designation into the system.” (Defs.’ Br. at 30.) Defendants suggest that the purpose of this feature would be defeated if “predetermined” was construed to mean the order must be determined before paging operations are initiated. (Id.) Meanwhile, Plaintiff does not offer an explanation for its construction of when the ordered list is created. The Court does not believe there is a significant distinction between the parties’ constructions with regard to when the order is determined. The Court agrees with Defendants that the designation must occur before the determination of a designation, and thus adopts Defendants’ construction, in the absence of any compelling explanation by Plaintiff in support of its proposed construction.
4. “Another Country”
“Another country” in Claims 19, 21, 36
Plaintiffs Proposed Construction: a country different than the page receiving country, but which may or may not be the originating country
Defendants’ Proposed Construction: country other than the originating and page receiving country
Court’s Construction: a country different than the page receiving country, but which may or may not be the originating country.
“Another country” in Claims 4, 6, 9, 13,16, 18, 30, 34
Plaintiffs Proposed Construction: a country different than the second country, but which may or may not be the first country
Defendants’ Proposed Construction: country other than the first and second country
Court’s Construction: country other than the first and second country
The Court believes that the “originating country” is included in “another country” in Claims 19, 21, and 36, but excluded in Claims 4, 6, 9, 13, 16, 18, 30, and 34, as documented above. Claims 19, 21, and 36 preface “another country” with “a paging message which came from,” and in those claims, the “another country” can refer to the originating country. For example, Claim 21 states, “a paging message which came from another country,” so there is no question that “another country” may refer to the originating country. ('870 Patent, Ex. A to Defs.’ Br. at 12:60-61.) Claims 4, 6, 9, 13, 16, 18, 30, and 34 preface “another country” with “initiating paging operations in,” and in those claims the “another country” refers to a page-receiving country different than the “originating country” and the initial “page receiving country.” Claim 9, for example, uses “another country” in reference to “initiating paging operations in another country.” (Id. at 11:12-13.) The Court has determined that the '870 Patent covers a global paging system, and as such, references to “another country” like those in Claim 9 require the paging system to “initiate operations” in a country other than the first page receiving country, which should be different from the originating country. This construction reflects the plain meaning of the term because the claims use different terms for “originating country,” “page receiving country,” and “another country.” (Defs.’ Br. at 35.) Specifically, Defendants point out that the claims at issue introduce the term “another country” after both “originating country” and “page receiving country.” This order, Defendants posit, suggests that “another country” is different from both terms. (Id.) The Court agrees. In light of the plain language of the claims, the Court is unconvinced by Plaintiffs argument that Defendants’ construction excludes preferred embodiments, such as Claim 21, where Plaintiff contends that “another country” refers to the “originating country.” (PL’s Open. Br. at 11.)
Nor do Plaintiffs’ arguments regarding the prosecution history persuade the Court that Plaintiffs proposed construction is correct. In the prosecution history, Plaintiff stated that the “applicant agrees with the examiner’s indication on page 6 of the Office Action that the ‘another country’ is different than the second country, but may or may not be different than the first country.” ('870 Prosecution History, Ex. 4 to PL’s Open. Br. at TP000209.) Defendants discredit this argument, first by explaining that the applicant made the statement “after the patent had already been allowed and the Patent Office’s primary review of the application was completed.” (Defs.’ Br. at 36.) Thus, the Patent Office did not respond to or accept the Plaintiffs statement. Cf. Phillips, 415 F.3d at 1318 (holding self-serving statements made after a patent issues to be less reliable than the intrinsic record). Second, Defendants claim that “Plaintiffs statement mischarac-terized the record,” as an examination of the Examiner’s full statement reveals that the Examiner did not indicate that the receiving user’s home country “may or may not be different than the first country,” as suggested by the Plaintiffs statement. ('870 Prosecution History, Ex. 4 to Pl.’s Open. Br. at TP000150.) Defendants further support this argument by citing the repeated and unambiguous references to a “global system” in the prior art and urge that the construction of “another country” be made with deference to the Patent’s intended purpose. (Defs.’ Br. at 36.) The Court agrees with Defendants.
5. “Originating Country” and “Receiving Country”
“Originating country” in Claim 19, 21, and 36
Plaintiffs Proposed Construction: country in which a page is originated
Defendants’ Proposed Construction: country other than the page receiving country
Court’s Construction: country, other than the page-receiving country, in which a page is originated
“Page receiving country” in Claims 19, 20, 21, 22, 23, 36, 38, and 39
Plaintiffs Proposed Construction: country in which a page is received
Defendants’ Proposed Construction: country other than the originating country
Court’s Construction: country, other than the originating country, in which a page is received
The claim language clearly shows that the originating country is different from the receiving country. For example Claims 19 and 21 refer to the originating country as “another country.” Nonetheless, Plaintiffs first argument is valid insofar as Defendants’ proposed construction neglects the “originating” and “receiving” portions of the terms. Although, it does not appear that Defendants argue, for example, that “originating country” could mean a country, other than “page receiving country”, where a page had not originated, Defendants offer no valid justification for excluding these terms. As such, a combination of the proposed constructions best encapsulates the ordinary and customary meaning of the terms.
Plaintiff first points out that Defendants’ construction of both “originating country” and “page receiving country” fails to address the “originating” or “page receiving” portion of the terms. Plaintiff also contends that some claims do not expressly limit the method to different countries and, thus, without express limitation, the claims should encompass “both the scenario where they are different countries and the scenario where they are the same country.” (PL’s Reply Br. at 10.) On the other hand, Defendants posit that using the term “originating country” followed by the term “page receiving country,” without indication that they could be the same, favors an interpretation that they are different. (Defs.’ Br. at 33.) As an example, they point out that Claim 36 states that “the receiving user ... may be located in a page receiving country different from the originating country.” (Id.; '870 Patent, Ex. A to Defs.’ Br. at Claim 36.) Further, Defendants argue that since the method of Claims 19 and 21 comprises “in a page receiving country ... a paging message which came from another country,” the two countries must be different. ('870 Patent, Ex. A to Defs.’ Br. at Claim 19, 21.)
The specification and prosecution history do not support excluding Defendants’ constructions. Although Plaintiff maintained throughout prosecution that its invention is “a method ... of paging a receiving user in a country-selective global paging system, in which an originating user pages the receiving user in a different country,” (Ex. B to Defs.’ Br. at TP296), Plaintiff now suggests that if the countries can be selected from the same list, it is possible for the countries to be the same country. This argument seems self-serving and contradictory to the purpose of the invention since the specification and prosecution history both show that this invention was intended to be a global system. However, just because a system can send a paging message to a user in a different country does not preclude it from sending a paging message to a user in the same country. Despite this concern, the claim language supports Defendants’ contention that the originating and receiving countries must be different, and neither the specification nor prosecution history strongly supports an opposite construction. Next, Plaintiff argues that the prosecution history confirms its construction. (Pl.’s Open. Br. at 14.) During prosecution, Plaintiff explained to the patent office that “each of the originating country and the page receiving country may be selected, for example, from the countries listed in the '983 Patent at Col. 6, lines 35-43.” ('870 Prosecution History, Ex. 4 to PL’s Open. Br. at TP000187.) Defendants, on the other hand, point out that the abstract of the '870 Patent describes the invention as a global system “in which an originating user pages a receiving user in a different country.” ('870 Patent, Ex. A to Defs.’ Br. at Abstract.) Defendants further support their argument by pointing out that the specification shows the invention is intended as a “global system.” (See, '870 Patent, Ex. A to Defs.’ Br. at 2:56, 61-63, 3:1-4 (“[A] global paging system [that] trans-mitís] paging data around the world so that subscribers ... may be paged in different countries around the world.”).)
6. “Computer” Terms
Found in Claim 27: “A computer for receiving the paging message via at least a digital data network”
Plaintiffs Proposed Construction: a computer for receiving the paging message from the website via at least a digital data network.
Defendants’ Proposed Construction: a computer located in a second country for receiving the paging website located in the first country via at least a digital data network.
Court’s Construction: a computer for receiving the paging message from the website via at least a digital data network
Found in Claim 34: “To cause the paging message to be sent over at least a packetswitched digital data network to a second computer”
Plaintiffs Proposed Construction: to cause the paging message to be sent over at least a packet switched digital data network to a second computer.
Defendants’ Proposed Construction: to cause the paging message to be sent over at least a packet-switched digital data network to a second computer located in a country.
Court’s Construction: to cause the paging message to be sent over at least a packet switched digital data network to a second computer
The claim language does not state where the receiving computer is located. (See '870 Patent, Ex. 1 to PL’s Open. Br. at Claims 27, 34.) Plaintiff contends that this lack of specificity allows the computers to be located anywhere (PL’s Open. Br. at 25, 26-27) while Defendants argue that the computer must be in a second country. (Defs.’ Br. at 37.) The Court adopts Plaintiffs proposed construction because there is no language in the claims, or even in the specification, to suggest that the computers must be in different countries, and as such the Court cannot impose such a limitation. Claim 34 requires that “the second computer communicates with a wireless transmitter that is located in the designated second country in which the receiving user is to receive the paging message.” ('870 Patent, Ex. A to Defs.’ Br. at 14:66-15:3.) Although this requires the transmitter to be in the second country, it does not require the computer to be in a second country unless a person having ordinary skill in the art would have understood a computer to have to be in a second country to communicate with a transmitter. Since there is no evidence that a person having ordinary skill in the art would have understood this to be true, there is no limitation requiring the computer to be in the second country, and the Court adopts Plaintiffs construction.
7. “The Internet”
Found in Claims: 5, 14, 24, 28, 32, 35, 37
E.g., Claim 5: “the system of claim 4, wherein the digital data network comprises the Internet.”
Plaintiffs Proposed Construction: the collection of networks and gateways, spanning multiple countries, that is packet-switched and uses TCP/IP protocol
Defendant’s Proposed Construction: a public, packet-switched digital data network that connects private and government computers in multiple countries according to Internet Protocol (IP) Court’s Construction: the collection of networks and gateways, spanning multiple countries, that is packet-switched and uses TCP/IP protocol
The Court construes “the Internet” to include more than solely public networks, connecting more than just “government” computers, and also construes “the Internet” to require TCP/IP protocol, as Plaintiff suggests, rather than the broader Internet Protocol (IP) Defendants recommend. The parties agree that the intrinsic evidence is not very helpful in determining the ordinary and customary meaning since the term appears without significant context. (See PL’s Open. Br. at 23; Defs.’ Br. at 43.) (See, e.g., '870 Patent, Ex. 2 to PL’s Open. Br. at 4:11.)
The Federal Circuit generally opposes inserting limitations in a patent claim where none is apparent in the entirety , of the patent. See, e.g., Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1322-23 (Fed.Cir.2003). Thus, the plain language of this Patent favors Plaintiffs construction; as the Patent does not contain any language referring to the Internet being public or involving government computers there is no reason to impose these limitations in the patent. (PL’s Open. Br. at 23; '870 Patent, Ex 2 to PL’s Open. Br. 1:17-18.). This same logic favors Defendants’ proposed construction which requires IP protocol rather than TCP/IP protocol. Despite the importance of plain language and intrinsic evidence, the foregoing arguments are tenuous since neither the '870 Patent nor the intrinsic evidence even attempt to define “the Internet.” Consequently, it is prudent to consult the extrinsic evidence to develop a more concrete definition of “the Internet.”
Both parties offer various dictionary definitions of “the Internet,” deposition testimony, and Plaintiff also offers a persuasive claim construction from the federal district court for the Northern District of Illinois. Defendants argue that since their dictionary definition of “the Internet” includes both “public” and “government” in the definition, the Court should construe it as such. (Defs.’ Br. at 43.) However, it is well established that disputed terms must be construed to take the ordinary and customary meaning attributed to them by those of ordinary skill in the art at the time of the invention. See, e.g., Teleflex, 299 F.3d at 1325. The only piece of extrinsic evidence weighing in favor of Defendants’ construction is Defendants’ expert