Serverside Group Ltd. v. Tactical 8 Technologies, L.L.C. (927 F. Supp. 2d 623, 2013)

Citations

927 F. Supp. 2d 623

Full opinion text

MEMORANDUM OPINION AND ORDER REGARDING CONSTRUCTION OF DISPUTED PATENT CLAIM TERMS

MARK W. BENNETT, District Judge.

TABLE OF CONTENTS

I. INTRODUCTION........................................................629

A. Procedural Background 629

1. Serverside’s Delaware action .....................................629

2. Procedural landmarks in the Iowa action..........................630

B. Factual Background 631

1. The patents-in-suit.......................................... 631

2. Undisputed and disputed claim terms..............................638

3. The claims at issue ..............................................641

II. LEGAL ANALYSIS......................................................644

A. Undisputed Claim Terms 644

B. Disputed Claim Terms 644

1. Standards For Patent Claim Construction.........................645

a. Function and types of claims..................................645

b. The two-step patent inMngement analysis.....................646

c. The claim construction process................................647

i. Consideration of the claims and the specification.........647

ii. The doctrine of “claim differentiation”..................648

Hi. The relationship between construction and the

“definiteness” requirement...........................648

iv. The role of prosecution history..........................649

v. The role of dictionaries and other sources................649

d. The ultimate standard........................................650

2. “Customer identifier corresponding to the remote customer”.........650

a. Proposed constructions.......................................650

b. Arguments of the parties......................................650

c. Rejection of the Iowa Defendants’ construction.................651

i. The “uniqueness” requirement.........................651

ii. Exclusion of a randomly generated alphanumeric

code................................................653

Hi. Exclusion of generation using information provided

by the customer.....................................653

iv. Transformation on a customer’s financial account

information.........................................654

d. Rejection of Serverside’s construction..........................655

e. The tentative construction....................................655

3. “Secure unique identifier”........................................657

a. Proposed constructions.......................................657

b. Arguments of the parties......................................658

c. Rejection of the parties’constructions .........................659

d. The tentative construction....................................660

4. “Encrypted customer information”................................662

a. Proposed constructions.......................................662

b. Arguments of the parties......................................662

c. Rejection of the parties’ constructions .........................663

d. The tentative construction....................................664

i. Encryption ...........................................664

ii. Customer information..................................665

Hi. The composite construction.............................665

C. Summary Of Tentative Constructions 666

D. The Markman Hearing 668

1. Additional evidence and the parties’positions......................668

2. Insertion of the “unique” limitation...............................670

a. Arguments at the hearing.....................................670

b. Analysis.....................................................672

3. Insertion of the “not a randomly generated alphanumeric code”

limitation.....................................................675

a. Additional background.......................................676

i. The Tuchler prior art ................................676

ii. The prosecution history................................680

b. Arguments at the hearing.....................................683

c. Analysis.....................................................685

i. Disclaimer as to “encrypted customer information”.....685

ii. Disclaimer as to “customer identifiers”generally........687

III. CONCLUSION..........................................................690

I sometimes wonder if patent attorneys — and attorneys generally — turn off their sense of humor when they get into litigation. For example, in the TV series Big Bang Theory, when the following conversation occurs among Howard Wolowitz, an engineer, Dr. Sheldon Cooper, a theoretical physicist, and Penny, a waitress and aspiring actress, while the gang is at a hospital waiting for news about what caused Howard’s mother to collapse, we all know why it’s funny:

Howard: They’re running tests. I don’t know. It may have been a heart attack or heart-attack-like event.

Penny: What’s the difference?

Sheldon: A heart-attack-like event is an event that’s like a heart attack.

Penny: Thanks for clearing that up.

On the other hand, when the plaintiffs’ patent attorneys argue in written submissions prior to a Markman hearing that I should construe “secure unique identifier” as “unique identifier which is secure,” it appears that no one — at least no one but me — is laughing. Similarly, when the defendants’ patent attorneys argue in prehearing submissions that “logic games” lead to the conclusion that the same claim term is indefinite, it appears that no one but me finds the “games” amusing. Although construing the meaning of patent claim terms is a serious business, it is difficult to take seriously some of the arguments offered — apparently with a straight face — in support of constructions of certain claim terms in this case.

I. INTRODUCTION

A. Procedural Background

1. Serverside’s Delaware action

On June 22, 2011, plaintiffs Serverside Group Limited and Serverside Graphics, Inc., collectively “Serverside,” filed the original Complaint in this patent infringement action, against fifteen defendants, in the United States District Court for the District of Delaware (the Delaware action). Serverside’s Complaint alleges infringement of certain claims of its U.S. Patent No. 7,931,199 (the ’199 patent), entitled “Computerized Card Production Equipment,” in Count I, and infringement of certain claims of its related U.S. Patent No. 7,946,490 (the ’490 patent), also entitled “Computerized Card Production Equipment,” in Count II.

On February 17, 2012, United States District Court Judge Richard Andrews entered a Memorandum Opinion in the Delaware action, in response to motions by several of the defendants, in which he concluded, inter alia, that the claims against defendants Tactical 8 Technologies, L.L.C., and Bank of Iowa Corporation, collectively “the Iowa Defendants,” should be transferred to this court, pursuant to 28 U.S.C. § 1406(a). That same day, Judge Andrews also entered a separate Order transferring the claims against the Iowa Defendants to this court pursuant to 28 U.S.C. § 1406(a).

2. Procedural landmarks in the Iowa action

After this action was transferred to this district, it was initially assigned to Chief United States District Court Judge Linda R. Reade. On March 14, 2012, the Iowa Defendants filed a joint Answer (docket no. 96), in this court, to Serverside’s Complaint, denying Serverside’s patent infringement claims against them. On April 18, 2012, United States Magistrate Judge Jon S. Scoles filed a Scheduling Order, Discovery Plan, And Order On Miscellaneous Pretrial Matters (Scheduling Order) (docket no. 112). Among other things, the Scheduling Order set requirements for various submissions concerning claim construction and set a Markman hearing on claim construction for February 22, 2013. On April 19, 2012, Chief Judge Reade entered an Order Setting Civil Jury Trial, Final Pretrial Conference, And Requirements For The Proposed Final Pretrial Order (Trial Setting Order) (docket no. 113) , scheduling the trial in this matter for the two-week period beginning on January 21, 2014. On April 19, 2012, Chief Judge Reade also entered an Order (docket no. 114) , prescribing the format for the claim chart for claim construction required in the Scheduling Order.

On August 29, 2012, Chief Judge Reade entered an Order (docket no. 117) reassigning this case to me. On November 13, 2012, I entered an Order Clarifying Trial Date, Resetting Final Pretrial Conference Time, And Stating New Requirements For Final Pretrial Order (Amended Trial Setting Order) (docket no. 120), reiterating that the trial is scheduled to begin during the two-week period beginning on January 21, 2014, but modifying other requirements for trial preparation.

My changing schedule required me to reset the Markman hearing, more than once, from the date originally set in the Scheduling Order. The Markman hearing was finally reset for February 20, 2013, by Order (docket no. 122) filed December 20, 2012. The following day, December 21, 2012, the parties filed their Joint Claim Terms Submission (docket no. 123), pursuant to the Scheduling Order, identifying the construction of nine claim terms of the patents-in-suit as “undisputed,” and only three claim terms as “disputed.” They offered profoundly different constructions of the three “disputed” terms, however.

On January 18, 2013, the Iowa Defendants filed their Claim Construction Brief (docket no. 124), to which they attached, as Exhibit 1, a copy of the '199 patent; as Exhibit 2, a copy of the '490 patent; as Exhibit 3, a portion of the prosecution history of the '199 patent (Amendments To The Claims, Attorney Docket No. 086887-0052, to Application No. 12/954,277); as Exhibit 4, another portion of the prosecution history to the T99 patent (another set of Amendments To The Claims, Attorney Docket No. 066371-0071, to Application No. 12/132,516); as Exhibit 5, another portion of the prosecution history to the '199 patent (Remarks, Attorney Docket No. 066371-0071, to Application No. 12/132,-516); as Exhibit 6, an October 2, 2012, Order in the Delaware action construing terms of the '199 patent and the '490 patent; and, as Exhibit 7, a portion of the prosecution history to both patents (Remarks, Attorney Docket No. 08667-0037, to Application No. 10/545,833). Also on January 18, 2013, Serverside filed its Opening Claim Construction Brief (docket no. 125), to which Serverside attached, as Exhibit A, another copy of the '199 patent; as Exhibit B, another copy of the '490 patent; as Exhibit C, another copy of the October 2, 2012, Order on claim construction in the Delaware action; and, as Exhibit D, an excerpt of the McGraw-Hill Dictionary of Scientific and Technical Terms (6th ed.2003). On February 8, 2013, Serverside filed its Rebuttal Claim Construction Brief (docket no. 126), to which Serverside attached, as Exhibit A, a portion of the prosecution history of both patents (Amendment, Attorney Docket No. 066371-0027, to Application No. 10/545,-833). Also on February 8, 2013, the Iowa Defendants filed their Responsive Claim Construction Brief (docket no. 127), but with no additional attachments.

As I have done in other patent infringement cases, see Ideal Instruments, Inc. v. Rivard Instruments, Inc., 498 F.Supp.2d 1131, 1136 (N.D.Iowa 2007); Maytag Corp. v. Electrolux Home Prods., Inc., 411 F.Supp.2d 1008, 1015-16 (N.D.Iowa 2006); TransAmerica Life Ins. Co. v. Lincoln Nat’l Life Ins. Co., 550 F.Supp.2d 865 (N.D.Iowa 2008), on February 18, 2013, a few days before the Markman hearing, I provided the parties with a Tentative Draft of this Memorandum Opinion And Order Regarding Construction Of Disputed Patent Claim Terms, based on the parties’ written submissions concerning claim construction. In the past, I have found that such a procedure was very effective in focusing the parties’ arguments on true disputes about construction of pertinent claim terms as well as on specific parts of my tentative claim constructions where the parties believed that I had gone wrong. The parties in the prior patent cases appeared to agree, because they recommended that I follow such a procedure for rendering Markman decisions in future patent cases. It was my hope that doing so in this case would achieve some of the same benefits, and I was not disappointed.

On February 20, 2013, I held a Markman hearing, at which Serverside was represented by Michael A. Albert of Wolf, Greenfield & Sacks, P.C., in Boston, Massachusetts, and local counsel Glenn Johnson of Nyemaster Goode, P.C., in Cedar Rapids, Iowa, and the Iowa Defendants were represented by Michael A. Dee and Brian Pringel of Brown, Winick, Graves, Gross, Baskerville & Schoenebaum, P.L.C., in Des Moines, Iowa. The Markman hearing consisted of oral argument and submission, by the Iowa Defendants, of additional documentary evidence, described in more detail in Section II.D. The parties’ arguments were clear, cogent, and presented with consummate professionalism.

The issues of claim construction are now fully submitted.

B. Factual Background

1. The patents-in-suit

As noted above, Serverside alleges that the Iowa Defendants are infringing certain claims of two of Serverside’s patents. Those two patents are U.S. Patent No. 7,931,199 (the '199 patent), issued April 26, 2011, and entitled “Computerized Card Production Equipment,” and U.S. Patent No. 7,946,490 (the '490 patent), issued May 24, 2011, and also entitled “Computerized Card Production Equipment.” Both patents arise from provisional application No. 60/447,972, filed on February 18, 2003, and are continuations of application No. 10/545,833, filed as application No. PCT/GB2004/00626 on February 17, 2004, and a continuation-in-part of application No. 10/406,519, filed on April 3, 2003. The '199 patent is a continuation of application No. 12/132,516, filed on June 3, 2008, which is a further continuation of application 10/545,833. Consequently, the Abstracts, Figures, Cross-Reference To Related Applications, Technical Fields, Backgrounds, Summaries, Brief Descriptions Of The Drawings, and Detailed Descriptions of the two patents are nearly identical. Unless otherwise indicated, citations to and quotations from the '199 patent appear in the identical location, in identical form, in the '490 patent. I will refer to titled sections of the patents in the singular and quote portions of the patents using the '199 patent as the source, unless otherwise required. Identically numbered claims of the two patents are sometimes stated in identical language and sometimes stated somewhat differently, albeit with much overlap of claim terms, so I will always differentiate between the claims of the two patents.

The Abstract initially explains, rather opaquely, that “[a]n apparatus and method for manipulating images is disclosed.” A somewhat more helpful general explanation of the invention is provided by the Technical Field, which adds,

The invention relates ... in particular to methods and apparatus for reproducing personalized images on consumer goods at locations remote from a user. The preferred embodiment includes online product-based image manipulation software.

'199 Patent, Technical Field, 1:25-30. In its Opening Brief, Serverside explains the invention, if not more succinctly, perhaps more helpfully, as follows:

Specifically, the claims recite various features relating to equipment for personalizing images using a graphical user interface and a remote image processor, applying those images to a financial transaction card and associating the card with the personalized image in secure ways.

Serverside’s Opening Brief at 1.

I find the following excerpt from the Detailed Description to be helpful to a general understanding of the claimed invention:

The preferred embodiment ... allows for on-line image manipulation by emulating the browser-based transformations (such as re-sizing or overlaying images) made by the user on a representation of the image, on the server so that the images produced can be used for personalized product creation.

On-line image manipulation is allowed by creating a two-tier architecture, in an embodiment according to the invention: there is one program that allows image manipulation on the screen in front of a user [elsewhere described as the front-end process]; and a second program on a server that emulates these manipulations [elsewhere described as the back-end process], so that the images can be output for personalized product creation. In the preferred embodiment, the back end process, or elements of it, can be performed in a secure computing environment; and customized images can be printed onto an actual product under very high security (for example, bank level security). In this way, a user with internet access can design customized images for printing on a remote product which requires secure treatment, such as bank level security. For example, anti-fraud and anti-theft measures mean that the production of credit cards, and other types of transaction cards, is performed in secure locations. Customization of the designs applied to such cards is thus possible, using preferred embodiments, without the need to give the user direct computing access to the secure environment.

'199 Patent, Detailed Description, 9:54-10:11.

Thus, to put the description of the invention in plain English — a dangerous endeav- or when faced with patents and patent attorneys — the invention allows customers to use a secure process on the internet to select personalized images, which are printed on their bank credit or debit cards, even if the customer, the images, the image manipulation software, the customer’s account information, and the card printer are all in different locations.

After the initial, rather opaque description of the invention in the Abstract, quoted above, the Abstract describes generally two of the possible embodiments according to the invention. The figure that appears with the Abstract of the '199 patent is actually Figure 2 of the patents, which “illustrates a method of operating a computer system for remote manipulation of images, in accordance with an embodiment of the present invention.” '199 Patent, Brief Description Of The Drawings, FIG. 2, 7:68-65. Although the representative figure is Figure 2,1 understand this figure to illustrate the first of the two embodiments described in the Abstract. That embodiment is described, as follows:

In one embodiment according to the invention, a method for manipulating images comprises: displaying for manipulation at a browser-based user interface a graphical representation of at least a portion of an image held at a remote image store; providing an internet communications link coupling the user interface to a remote image processor; transferring information about manipulations applied to the graphical representation between the user interface and the remote image processor; and causing the remote image processor to access the remote image store and apply, to at least a portion of the image held in the store, manipulations emulating those applied to the graphical representation.

A much more detailed description of this embodiment appears in the Detailed Description at 12:19-64. Figure 2 appears below.

The figure that appears with the Abstract of the '490 patent is actually Figure 1 of the patents, which “illustrates a computer system for remote manipulation of images, in accordance with an embodiment of the present invention.” '199 Patent, Brief Description Of The Drawings, FIG. 1, 7:59-62. Although the representative figure is Figure 1,1 understand this figure to illustrate the second of the two embodiments described in the Abstract. That embodiment is described, as follows:

In another embodiment according to the invention, there is disclosed a method for applying a personalized image to a financial account access means corresponding to a financial account of a customer. The method comprises: associating financial data, corresponding to the financial account of the customer, with a customer image identifier in a financial account association table maintained securely from a user interface; associating the customer image identifier with user image selection data based on user selections made on the user interface in relation to a graphical representation of at least a portion of an original image held in an image store; and applying the personalized image to the financial account access means, the personalized image being based on the user image selection data associated with the customer image identifier.

Again, a much more detailed description of this embodiment appears in the Detailed Description at 10:62-12:18. Figure 1 appears below.

It may also be helpful to include here two other figures that illustrate two additional embodiments of the claimed invention, Figures 11 and 12. As the Brief Description Of The Drawings explains,

FIG. 11 illustrates a method of operating a computer system for remote manipulation of images, using a unique customer identifier, in accordance with an embodiment of the present invention!.]

'199 Patent, Brief Description Of The Drawings, 8:1-4 (emphasis added). A much more detailed description of the embodiment in Figure 11 appears in the Detailed Description at 15:19-16:4. Figure 11 appears below.

As the Brief Description Of The Drawings also explains,

FIG. 12 illustrates a method of operating a computer system for remote manipulation of images, using a hash value to avoid the need for creating and maintaining a unique customer identifier through the card application and printing lifecycle, in accordance with an embodiment of the present invention[.]

'199 Patent, Brief Description Of The Drawings, 8:5-10 (emphasis added). A much more detailed description of the embodiment in Figure 12 appears in the Detailed Description at 15:12-18 and 16:5-Figure 12 appears below.

2. Undisputed and disputed claim terms

I believe that identifying the “undisputed” and “disputed” claim terms— albeit without the parties’ supporting comments or citations — will help clarify the claims of the two patents-in-suit that Serverside alleges that the Iowa Defendants are infringing, when I set out the claims at issue below. I begin with the nine undisputed claim terms.

For the first seven “undisputed” claim terms, the parties have adopted the claim term constructions determined by Judge Andrews in his October 2, 2012, Order on claim construction in the Delaware action. See Joint Claim Terms Submission (docket no. 123), Exhibit A, n. 1; Defendants’ Appendix (docket no. 124), Exhibit 6 (Judge Andrews’s Order). They have agreed upon the constructions of two more “undisputed” claim terms.

UNDISPUTED CLAIM TERMS

No.

Claim Term/Phrase

Relevant Claim(s)

Agreed Construction

“financial transaction card”

'199: 1,2,9, 14-16,18, 22, 25, 29 '490: 1, 2, 9, 14-16,18, 22. 25, 29-31

“a transaction card (e.g., credit card, debit card, ATM card, or similar card), but not a prepaid bearer card”

“financial record of the remote customer that personalized the imge

'199: 1 '490: 1

“record of financial information of the customer that personalized the image”_

“one-way code”

'199: 1

“a hash value created from customer information”

“one-way processing means for providing an image, produced based on said instructions for manipulation, for application to the financial transaction card”

'490: 30-31

Means plus function term, with the function being “providing an image, based on instructions for manipulation, for application to the financial transaction card,” and the associated structure being “an image processor (see, e.g., back end software 110 and image manipulation emulator 256)”_

“means for embedding the customer identifier in the personalized image”

'199: 25 '490: 25

Means plus function term, with the function being “embedding the customer identifier in the personalized image” and the associated structure being “a back end server (such as server 1103 or 1203) that embeds the customer identifier in the personalized image, for example by embedding the identifier in a bar code, machine readable code, or _metadata”_

“computer program means for presenting to a remote customer the remote user interface”

'199: 30 '490: 30-31

The three phrases are means plus function claim terms, with the funetion being “presenting to a remote customer or remote user a user interface” and the associated structure being “a user interface (see, e.g., front end software 105 and Figs. 3-10)”

“computer program means for presenting to a remote customer a user interface” “computer program means for presenting to a remote user an user interface”_____

“image instruction means for receiving instructions for

'199: 30 '490: 30-31

The phrase is a means plus function claim term, with the function being

“receiving instructions for manipulation of an image file” and the associated structure being “an image compilation server coupled to a communications link (see, e.g., image compilation server 108)”

(The language following this phrase differs somewhat in the 3 claims where it appears.)_

“an identifier selected from a seeure unique identifier and a one-way code”

'199: 1

“a customer identifier that is ehosen from one of two available options: a secure unique identifier or _a one-way code”_

“instructions defining said plurality of manipulations applied to the graphical representation”

'199: 29 '490: 29

“instructions for implementing all of the manipulations that a remote user applies to a graphical representation on a remote termi_nal”

The three disputed claim terms and the parties’ proposed constructions are set out below, again without the parties’ comments or supporting citations.

DISPUTED CLAIM TERMS

No.

Claim Term/ Phrase

Relevant Claim(s)

Serverside’s Proposed Construction

Iowa Defendants’ Proposed Construction

1 “customer identifier that corresponds to the remote customer that personalized said image”

'199: 1-4, 6-8,10-13, 15,17-18, 20-21, 24-28

No construction required.

“a unique code, but not a randomly generated alphanumeric code, generated by performing a transformation on a customer’s financial account information, such as the customer’s name or account number, but not generated using information provided by the customer”

“customer identifier corresponding to the remote customer”/“customer identifier that corresponds to the remote customer” “unique identifier corresponding to the remote user”

'490: 1-4, 6-8,10-13, 15,17-18, 20-21, 24-28, 30-31

If construed, then: “information used to identify the remote customer or user”

2 "secure unique identifier”

'199: 1

No construction required. If construed, then: “unique identifier which is secure”

Indefinite. In the alternative, if not indefinite: “encrypted customer information”

3 “encrypted customer information”/“encrypted remote user information”

'490: 1,29-31

No construction required,

“a unique code, but not a randomly generated alphanumeric code, generated within a secure environment by performing a transformation on a customer’s financial account information”

If construed, then: “customer or remote user information which has been encrypted or encoded”

3. The claims at issue

Serverside accuses the Iowa Defendants of directly and indirectly infringing claims 1, 2, 9, 14-16, 18, 22, 25, 29, and 30 of the '199 patent and claims 1, 2, 9, 14-16, 18, 22, 25, and 29-31 of the '490 patent. I think that the most effective way to present these patent claims, when they are so similar, is side-by-side, with “undisputed” claim terms in bold, “disputed” claim terms (or portions thereof) in italics, and claim language that differs between the two patents underlined.

_PATENT CLAIMS ALLEGEDLY INFRINGED_

'199 Patent Claims

'490 Patent Claims

What is claimed is:

1. Computerized financial transaction card production equipment operable to apply one or more personalized images to a financial transaction card, the production equipment comprising:

a module configured to receive a personalized image of a customer, the image being received from an image processor computer arranged to facilitate image personalization by remote customers;

a module configured to receive a customer identifier that corresponds to the remote customer that personalized said image; a module configured to receive a financial record of the remote customer that personalized the image;

a card printer arranged to print images on card material and equipment configured to apply financial information from the financial record to the card material; and

a controller operable, based on said customer identifier, to cause printing of said personalized customer image onto the card material and to cause application of relevant financial information from the financial record onto the card material,

wherein the customer identifier comprises an identifier selected from a secure unique identifier and a one-wau code. _

wherein the customer identifier encompasses encrypted customer information.

2. Computerized financial transaction card production equipment as in claim 1, wherein

2. [Identical]

said image processor computer is arranged to provide the personalized image in association with the relevant customer identifier, and wherein the module configured to receive the image is configured to also receive the associated customer identifier._

9. Computerized financial transaction card production equipment as in claim 1, wherein equipment configured to apply financial information from the financial record to the card material comprises an encoder

9. [Identical]

14. Computerized financial transaction card production equipment as in claim 1, wherein the image processor computer is arranged to facilitate customer upload of images for personalization

14. [Identical]

15. Computerized financial transaction card production equipment as in claim 14, wherein the image processor computer comprises code for assigning the customer identifier to a login session of a customer

15. [Identical]

16. Computerized financial transaction card production equipment as in claim 1, wherein the image processor computer is arranged to facilitate customer selection of images from an image library

16. [Identical]

18. Computerized financial transaction card production equipment as in claim 1, configured to connect to a computer system of a card issuer comprising a module to generate the customer identifier

18. [Identical]

22. Computerized financial transaction card production equipment as in claim 1, wherein the equipment performing application of financial information from the financial record to the card material comprises an encoder for encoding a magnetic strip of the card with financial information from the financial record

22. [Identical]

25. Computerized financial transaction card production equipment as in claim 1, wherein the image processor computer comprises means for embedding the customer identifier in the personalized image._

25. [Identical]

29. Computer apparatus for producing personalized financial transaction cards, the computer apparatus comprising:

a server for generating a browser-based user interface for displaying on a remote terminal a graphical representation of at least a portion of an image, said interface being capable of effecting a plurality of manipulations to the graphical representation;

an internet communications link coupling the remote user interface to an image processor, said link being operable to receive instructions defining said plurality of manipu-

29. A computer system for producing personalized financial transaction cards, the computer system comprising:

an internet communications link coupling the remote user interface to an image processor, said link being operable to receive instructions defining said plurality of malations applied to the graphical representation from the remote terminal;

nipulations applied to the graphical representation from the remote terminal;

an image processor operable to access the image to apply manipulations emulating those applied to the graphical representation according to the instructions; and

an image processor operable to access the image to apply manipulations emulating those applied to the graphical representation according to the instructions;

the computerized financial transaction card production equipment of claim 1 operable to apply the resulting image to a financial transaction card.

financial transaction card production equipment operable to apply the resulting image to a financial transaction card; and the image being associated with a user identifier comprising encrypted customer information.

30. The computer apparatus of claim 29, further comprising:

30. A system for operating a computer to facilitate production of a personalized financial transaction card, the system comprising:

computer program means for presenting to a remote customer the remote user interface; and

computer program means for presenting to a remote customer a user interface;

image instruction means for receiving instructions for manipulation of an image file, the instructions being based on manipulations performed by the remote customer with regard to a representative version, on the remote user interface, of the image that is contained in the file.

image instruction means for receiving instructions for manipulation of an image file, the instructions being based on manipulations performed by the remote customer with regard to a representative version, on the user interface, of the image that is contained in the file;

image processing means for providing an image, produced based on said instructions for manipulation, for application to the financial transaction card, the image being associated with a customer identifier corresponding to the remote customer, and wherein the customer identifier comprises encrypted customer information._

[No Claim 31]

31. A systemfor operating a computer to facilitate production of a personalized financial transaction card, the system comprising: computer program means for presenting to a remote user an user interface; image instruction means for receiving instructions for manipulation of an image file, the instructions being based on manipulations performed by the remote user with regard to a representative version, on the user interface, of the image that is contained in the file; image processing means for providing an image, produced based on said instructions for manipulation, for application to the ñnancial transaction card, the image being associated with an unique identifier corresponding to the remote user, wherein the unique identifier is used to obtain the associated image and provide it to a printer for printing the image on to the blank card material, and wherein the customer identifier comprises encrypted remote user information._

II. LEGAL ANALYSIS

A Undisputed Claim Terms

As noted above, the Delaware court has already construed several terms of the patents-in-suit, and the parties have adopted here that court’s constructions of seven claim terms. The Federal Circuit Court of Appeals has observed,

Given “the importance of uniformity in the treatment of a given patent,” Markman v. Westview Instruments, Inc., 517 U.S. 370, 390, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), this court would be remiss to overlook another district court’s construction of the same claim terms in the same patent as part of this separate appeal. In the interest of uniformity and correctness, this court consults the claim analysis of different district courts on the identical terms in the context of the same patent.

Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1329 (Fed.Cir.2008). Likewise, here, “[i]n the interest of uniformity and correctness, this court consults the claim analysis of [the Delaware court] on the identical terms in the context of the same patent” in this separate Markman proceeding. Qf. id. Here, I see no reason to depart from the constructions by the Delaware court of identical terms in the context of the same patent. Moreover, I have not found the Delaware court’s constructions to be lacking in support in the language of the claims, specifications, or prosecution history of the patents, which might have given me a reason to depart from its constructions.

As to the remaining two “undisputed” terms, the parties have agreed between themselves on the constructions of those terms. The Federal Circuit Court of Appeals has observed, “[W]here, as here, the parties agree to a claim construction that is adopted by the district court, and neither party disputes that construction on appeal, we decline to raise an issue sua sponte that the parties have not presented.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1347 n. 2 (Fed.Cir. 1999). Likewise, here, where the parties have agreed on certain constructions, and neither party now disputes those constructions, I decline to raise an issue sua sponte that the parties have not presented. Moreover, I have not found the parties’ agreed constructions to be lacking in support in the language of the claims, specifications, or prosecution history of the patents, which might have given me a reason to depart from their constructions.

Therefore, I adopt the nine “undisputed” claim constructions as my own constructions of those terms.

B. Disputed Claim Terms

The parties do dispute the constructions of three patent claim terms. The Iowa Defendants assert that, where the parties dispute the scope of a claim term, the court should construe the term to resolve that dispute, citing O2 Micro Int’l, Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361-62 (Fed.Cir.2008). Serverside argues that I can resolve any dispute by concluding that no construction of the claim term in question is required, but I do not need to restate every claim term, citing, inter alia, U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.Cir.1997).

I agree with Serverside that 02 Micro International stands only for the propositions that resolution of a dispute about construction is for the court, not the jury, and that the court is required to generate a “construction” of a claim term, and determine what claim scope is appropriate in the context of the patent-in-suit, only when the “ordinary” meaning of the term does not resolve the parties’ dispute. See 02 Micro Int’l, 521 F.3d at 1361. In that case, the court also observed, “We ... recognize that district courts are not (and should not be) required to construe every limitation present in a patent’s asserted claims.” Id. at 1362. Furthermore, the Federal Circuit Court of Appeals explained in U.S. Surgical that “[t]he Mark-man decisions do not hold that the trial judge must repeat or restate every claim term in order to comply with the ruling that claim construction is for the court. Claim construction is ... not an obligatory exercise in redundancy.” 103 F.3d at 1568. Therefore, I must consider the proper construction of the three “disputed” claim terms, although I do not necessarily have to construe the terms by substituting some other language for terms that have them ordinary meaning in the context of the patent.

Serverside suggests that whether or not the jury would understand the claim terms without construction is determinative of whether or not I should construe the claim terms. I disagree. As explained more fully below, the standard for claim construction is how claim terms would be understood by “persons skilled in the art in question at the time of the invention.” Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318, 1325 (Fed.Cir.2013). Nevertheless, “[t]he terms, as construed by the court, must ‘ensure that the jury fully understands the court’s claim construction rulings and what the patentee covered by the claims.’ ” Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1348 (Fed.Cir.2010) (quoting Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1366 (Fed.Cir.2004)).

1. Standards For Patent Claim Construction

a. Function and types of claims

“It is the claims that define the metes and bounds of the patentee’s invention.” Thomer v. Sony Computer Entertainment America, L.L.C., 669 F.3d 1362, 1367 (Fed.Cir.2012) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir. 2005) (en banc)). Patent claims may be “independent” or “dependent.” See 35 U.S.C. § 112(c). An “independent” claim does not require reference to any other claim as the starting place for the invention it claims; rather, it should contain (1) “[a] preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,” (2) “[a] phrase such as ‘wherein the improvement [invention, apparatus, method, or process] comprises,’ ” and (3) “[t]hose elements, steps and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.” 37 C.F.R. § 1.75(e); see Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1357 (Fed.Cir.2007) (citing this regulation). On the other hand, the relevant statute specifically provides that “a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed.” 35 U.S.C. § 112(d) (formerly § 112, ¶ 4). The Federal Circuit Court of Appeals has explained, “A claim’s status as dependent or independent depends on the substance of the claim in light of the language of § 112 [ (d) ], and not the form alone.” Monsanto Co., 503 F.3d at 1357.

b. The two-step patent infringement analysis

The Federal Circuit . Court of Appeals has explained that, “[i]n [patent] infringement cases, the court first interprets the claims to determine their scope and meaning.” Presidio Components, Inc. v. American Tech. Ceramics Corp., 702 F.3d 1351, 1358 (Fed.Cir.2012) (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc)). “Next, the jury compares the properly construed claims to the allegedly infringing device.” Id. In this two-step process, claim construction is for the court to determine, as a matter of law, and review of its constructions is de novo. Cybor Corp., 138 F.3d at 1456. “ ‘Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement.’ ” 02 Micro Int’l, 521 F.3d at 1362 (quoting U.S. Surgical, 103 F.3d at 1568). In its construction of claim terms, the district court must furnish “ ‘sufficient findings and reasoning to permit meaningful appellate scrutiny.’ ” OSRAM Sylvania, Inc. v. American Induction Techs., Inc., 701 F.3d 698, 707 (Fed.Cir.2012) (quoting Nazomi Communs., Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1371 (Fed.Cir.2005)).

c. The claim construction process

“Claim terms are construed in accordance with their usage in the patent specification, and as elaborated in the prosecution history.” Edwards Lifesciences AG v. CoreValve, Inc., 699 F.3d 1305, 1312 (Fed.Cir.2012) (citing Phillips, 415 F.3d at 1314). As the Federal Circuit Court of Appeals very recently explained,

Claim terms are generally given their ordinary meaning as understood by persons skilled in the art in question at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.Cir.2005) (en banc). “The claims, of course, do not stand alone.” Id. at 1315. “[T]he specification ‘is always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of a disputed term.’ ” Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)).

Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318, 1325-26 (Fed.Cir.2013).

i. Consideration of the claims and the specification

More specifically, “ ‘[t]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which [it] appears, but in the context of the entire patent, including the specification.’ ” Deere & Co. v. Bush Hog, L.L.C., 703 F.3d 1349, 1354 (Fed.Cir.2012) (quoting Phillips, 415 F.3d at 1313). “While claim terms are understood in light of the specification, a claim construction must not import limitations from the specification into the claims.” Id. (citing Phillips, 415 F.3d at 1323). To put it another way, “although the specification often describes very specific embodiments of the invention, [the Federal Circuit Court of Appeals has] repeatedly warned against confining the claims to those embodiments.” Phillips, 415 F.3d at 1323; Accent Packaging, 707 F.3d at 1326-27 (citing Phillips, 415 F.3d at 1323). On the other hand, “[b]ecause the patentee is required to define precisely what his invention is ..., it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.” Phillips, 415 F.3d at 1312; see also Soverain Software L.L.C. v. Newegg, Inc., 705 F.3d 1333, 1340-41 (Fed.Cir.2013) (quoting this statement from Phillips ).

ii. The doctrine of “claim, differentiation ”

The doctrine of “claim differentiation” also informs the construction of claim terms. This doctrine stems from “ ‘the common sense notion that different words or phrases used in separate claims are presumed to indicate that the claims have different meanings and scope.’ ” Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1368-1369 (Fed.Cir.2005) (quoting Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed.Cir.1999)). As to the relationship between independent and dependent claims, for purposes of claim term construction, “[a]n independent claim impliedly embraces more subject matter than its narrower dependent claim.” Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328, 1335 (Fed.Cir.2007). Indeed, “[i]t is axiomatic that a dependent claim cannot be broader than the claim from which it depends.” Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1367 (Fed.Cir.2012). Thus, “[t]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not in the independent claim.” Phillips, 415 F.3d at 1315. Furthermore, “[w]here ... the sole difference between the independent claim and the dependent claims is the limitation that one party is trying to read into the independent claim, ‘the doctrine of claim differentiation is at its strongest.’” SanDisk Corp. v. Kingston Tech. Co., Inc., 695 F.3d 1348, 1361 (Fed.Cir.2012) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir.2004)). The converse is also true: “Where a particular construction of an independent claim would nullify claims that depend from it, the doctrine of claim differentiation creates a presumption that such a construction is improper.” Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1368 (Fed.Cir.2012). Similarly, there is a presumption that two independent claims have different scope when different words or phrases are used in those claims. See Kraft Foods, Inc. v. International Trading Co., 203 F.3d 1362, 1365-69 (Fed.Cir.2000). Nevertheless, the presumptions arising from the doctrine of claim differentiation can be overcome by the written description and the prosecution history. Id. at 1368.

iii. The relationship between construction and the “definiteness” requirement

As noted above, “[b]ecause the patentee is required to define precisely what his invention is ..., it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.” Phillips, 415 F.3d at 1312. As this statement suggests, claim term construction and the “definiteness” requirement of 35 U.S.C. § 112(b) (formerly § 112, ¶ 2) are related. See, e.g., Noah Sys., Inc. v. Intuit, Inc., 675 F.3d 1302, 1311 (Fed.Cir.2012) (identifying § 112(b) as the source of the “definiteness” requirement). Section 112(b) requires that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” The definiteness requirement seeks to “ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee’s right to exclude.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir.2005). The definiteness requirement “is drawn from the court’s performance of its duty as the construer of patent claims.” Atmel Corp. v. Info. Storage Devices, 198 F.3d 1374, 1378 (Fed.Cir.1999). A determination of “indefiniteness,” like claim term construction, is a question of law, and it is “in effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509 (Fed.Cir.2012). However, “[t]he definiteness requirement does not compel absolute clarity” in claim language, because “[o]nly claims ‘not amenable to construction’ or ‘insolubly ambiguous’ are indefinite.” Datamize, 417 F.3d at 1347. Thus, “[t]he reviewing tribunal must determine whether a person experienced in the field of the invention would understand the scope of the claim when read in light of the specification.” Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1369 (Fed.Cir.2006); accord Halliburton Energy Sens., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed.Cir.2008) (explaining that overcoming the presumption of patent validity, based on “indefiniteness,” demands clear and convincing evidence that “a skilled artisan could not discern the boundaries of the claim”).

iv. The role of prosecution history

Prosecution history is also relevant to the meaning of patent claim terms. Edwards Lifesciences AG, 699 F.3d at 1312 (citing Phillips, 415 F.3d at 1314). Thus, “prosecution history estoppel” or “prosecution disclaimer” bars a patentee from recapturing patent scope that was lost by making a narrowing amendment to secure the patent. See Energy Transp. Group, Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1359 (Fed.Cir.2012). “When a patentee makes a ‘clear and unmistakable disavowal of scope during prosecution,’ a claim’s scope may be narrowed under the doctrine of prosecution disclaimer.” Grober v. Mako Prods., Inc., 686 F.3d 1335, 1341 (Fed.Cir.2012) (citing Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374-75 (Fed.Cir.2008)). “ ‘An ambiguous dis-

claimer, however, does not advance the patent’s notice function or justify public reliance, and the court will not use it to limit a claim term’s ordinary meaning.’ ” 01 Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed.Cir.2012) (quoting SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1287 (Fed.Cir. 2005)); see also Elbex Video, Ltd. v. Sensormatic Electronics Corp., 508 F.3d 1366, 1371 (Fed.Cir.2007) (explaining that, as a general rule, prosecution history cannot overcome the natural reading of the claim when the alleged disavowal of a particular meaning in the prosecution history is ambiguous). Furthermore, “ ‘[t]here is no “clear and unmistakable” disclaimer if a prosecution argument is subject to more than one reasonable interpretation, one of which is consistent with a proffered meaning of the disputed term.’ ” Id. (again quoting SanDisk, 415 F.3d at 1287). On the other hand, the patentee must overcome a presumption that a narrowing amendment was made to secure the patent, and the patentee can only do so by making a “strong showing” that there is some other explanation for the limitation. Energy Transp. Group, 697 F.3d at 1359.

v. The role of dictionaries and other sources

“[Djefinitions based on dictionaries, treatises, industry practice, and the like often are important aids in interpreting claims.” ArcelorMittal France, 700 F.3d at 1320. However, like prosecution history, “they may not be ‘used to contradict claim meaning that is unambiguous in light of the intrinsic evidence.’ ” Id. (quoting Phillips, 415 F.3d at 1324).

d. The ultimate standard

Ultimately, “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be [] the correct construction.” Phillips, 415 F.3d at 1316.

With these principles in mind, I turn to construction of the disputed claim terms.

2. “Customer identifier corresponding to the remote customer” a. Proposed constructions

The first disputed claim term is “customer identifier that corresponds to the remote customer that personalized said image.” The claim term, the claims in which it appears, and the parties’ contrasting constructions are set out in the following chart.

No. Claim Term/ Phrase Relevant Claim(s) Serverside’s Proposed Construction Iowa Defendants’ Proposed Construction

“customer identifier that corresponds to the remote customer that personalized said image” '199: 1-4, 6-8,10-13, 15,17-18, 20-21, 24-28 “customer identifier corresponding to the remote customer”/" customer identifier that corresponds to the remote customer” “unique identifier corresponding to the remote user” '490: 1-4, 6-8,10-13, 15,17-18, 20-21, 24-28, 30-31 No construction required. If construed, then: “information used to identify the remote customer or user” “a unique code, but not a randomly generated alphanumeric code, generated by performing a transformation on a customer’s financial account information, such as the customer’s name or account number, but not generated using information provided by the customer”

b. Arguments of the parties

In its opening brief, Serverside argued, first, that this term needs no construction, because it will be easily understood by a lay jury — a contention that I rejected above. If I decide that some construction is required, however, Serverside argued that its construction of the term as “information used to identify the remote customer or user” effectively captures the broad definition of the term as used in the specification, which discloses several representative embodiments. Serverside argued that the Iowa Defendants’ proposed construction is unduly complex and improperly imports terms found nowhere in the specification in relation to a customer identifier. Serverside also argued that the Iowa Defendants’ construction impermissibly seeks to narrow the term by including the phrase “not a randomly generated alphanumeric code,” which would fall within the embodiments described in the specification. Serverside also pointed out that nothing in the specification requires that a “customer identifier” must necessarily be based on “a customer’s financial account information.”

In contrast, in their opening brief, the Iowa Defendants postulated that, in light of the specification and the prosecution history, the “customer identifier” term must meet the following requirements: (1) it must be “unique,” (2) it must not be a randomly generated alphanumeric code, (3) it cannot be generated using information provided by the customer, and (4) it must be created by performing a transformation on a customer’s financial account information. The Iowa Defendants argued that any proper construction must incorporate Serverside’s express limitations and disclaimers and that their proposed construction does just that.

In its rebuttal brief, Serverside disputed each of the purported limitations on this term asserted by the Iowa Defendants. Serverside argued that, although the patent discloses many examples of a “customer identifier,” nothing in the claim language, the specification, or the prosecution history limits it solely to those examples. Serverside also argued that the Iowa Defendants have focused on short excerpts from prosecution history, taken out of context, instead of remaining centered on the language of the claims themselves.

In their rebuttal brief, the Iowa Defendants reiterated that this term has the four requirements that they have identified. They argued that Serverside contended in the prosecution of the '490 patent that the limitation of the customer identifier encompassing encrypted customer information in combination with the claim as a whole is not disclosed by prior art. They also argued that Serverside’s proposed construction simply rearranges the words of the term, but provides no additional clarity to the jury. In short, the Iowa Defendants reiterated that Server-side is ignoring clear and repeated disclaimers in the prosecution history of the patents.

c. Rejection of the Iowa Defendants’ construction

It is simplest to begin my construction of the claim term “customer identifier that corresponds to the remote customer that personalized said image” by rejecting as untenable all of the limitations that the Iowa Defendants seek to impose on the scope and construction of this claim term. The failings of the Iowa Defendants’ limitations are manifold.

i. The “uniqueness” requirement

The Iowa Defendants rely on the following statement in the Detailed Description as demonstrating that the “customer identifier” must be “unique”:

In the first step, the card issuer issues the customer with a unique identifying number 103 which is passed to an image compilation server 108, which may (or may not) be operated by a company other than the card issuer. The card issuer associates the unique customer identifier 103 with the customer’s financial information 104. This association may be performed in a financial account association table 124 maintained in an environment that is secure from the user interface. The associated customer identifier 103 and financial information 104 are passed to a bank (or other card issuer) printer server 109 via a firewall 102.

'199 Patent, Detailed Description, 10:65-11:8 (emphasis added by the Iowa Defendants). As Serverside points out, however, the Iowa Defendants overlook the beginning of the pertinent passage, which states that this “first step” is “[i]n the embodiment of FIG. 1,” id. at 10:62, so that it is limited to the description of a single embodiment. Thus, the Iowa Defendants have committed the classic error of importing limitations from the specification into the claims. See Deere & Co., 703 F.3d at 1353-54 (citing Phillips, 415 F.3d at 1313); Phillips, 415 F.3d at 1323 (“[A]l-though the specification often describes very specific embodiments of the invention, [the Federal Circuit Court of Appeals has] repeatedly warned against confining the claims to those embodiments.”); accord Accent Packaging, 707 F.3d at 1326-27 (citing Phillips, 415 F.3d at 1323).

What makes the Iowa Defendants’ assertion of a “uniqueness” limitation still less tenable is that the specification discloses another embodiment that expressly “allows a card issuer to avoid the need to create for each customer a unique identifier that must be passed through the card issuer’s system.” See '199 Patent, Detaile