James H. Shalek, Nolan M. Goldberg, Robert S. Mayer, Joon R. Yoon, Fabio E. Tarud, Jonathan M. Sharret, PROSKAUER ROSE LLP, New York, NY.
Justin J. Daniels, Sean D. Whaley, PROSKAUER ROSE LLP, Boston, MA.
Melanie K. Sharp, Monte T. Squire, Robert M. Vrana, YOUNG CONAWAY STARGATT & TAYLOR, LLP, Wilmington, DE. Attorneys for Plaintiff.
Dimitrios T. Drivas, Kevin X. McGann, Jeffrey J. Oelke, John P. Scheibeler, Robert E. Counihan, WHITE & CASE LLP, New York, NY.
Jack B. Blumenfeld, Paul Saindon, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE. Attorneys for Defendant.
LEONARD P. STARK, District Judge.
Presently before the Court is the issue of claim construction of various disputed terms found in U.S. Patent Nos. 6, 151, 309 (the '"309 patent"), 6, 578, 079 (the '"079 patent"), 6, 397, 040 (the '"040 patent"), 6, 826, 598 (the '"598 patent"), 6, 169, 515 (the '"515 patent"), and 6, 650, 284 (the '"284 patent") (collectively, the "patents-in-suit").
On December 15, 2011, British Telecommunications PLC ("BT" or "Plaintiff') filed this patent infringement action against Google Inc. ("Google" or "Defendant"). (D.I. 1) The parties completed briefing on claim construction on April 15, 2013. (D.I. 112, 116, 123, 125) The Court held a Markman hearing on April 29, 2013 (D.I. 202) (hereinafter "Tr."). Following the hearing, the Court ordered supplemental briefing. (D.I. 139) The parties completed supplemental briefing on May 15, 2013. (D.I. 143, 146, 152)
II. LEGAL STANDARDS
"It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted). Construing the claims of a patent presents a question of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995), aff'd, 517 U.S. 370 , 388-90 (1996). "[T]here is no magic formula or catechism for conducting claim construction." Phillips, 415 F.3d at 1324. Instead, the court is free to attach the appropriate weight to appropriate sources "in light of the statutes and policies that inform patent law." Id.
"[T]he words of a claim are generally given their ordinary and customary meaning... [which is] the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321 (internal quotation marks omitted). The patent specification "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
While "the claims themselves provide substantial guidance as to the meaning of particular claim terms, " the context of the surrounding words of the claim also must be considered. Phillips, 415 F.3d at 1314. Furthermore, "[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment... [b]ecause claim terms are normally used consistently throughout the patent...." Id. (internal citation omitted).
It is likewise true that "[d]ifferences among claims can also be a useful guide.... For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Id. at 1314-15 (internal citation omitted). This "presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
It is also possible that "the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481 F.3d 1371 (Fed. Cir. 2007).
In addition to the specification, a court "should also consider the patent's prosecution history, if it is in evidence." Markman, 52 F.3d at 980. The prosecution history, which is "intrinsic evidence, " "consists of the complete record of the proceedings before the PTO [Patent and Trademark Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d at 1317. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id.
A court also may rely on "extrinsic evidence, " which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the meaning of a term to those of skill in the relevant art because such dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be useful" to the court, it is "less reliable" than intrinsic evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1318-19.
Finally, "[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007).
A. The '309 Patent
The '309 patent relates generally to the availability of services to users as they move between networks comprised of different types of data connections.
1. "software agents"
a. Plaintiffs Proposed Construction: "Specialized intelligent software systems."
Alternatively, "Specialized intelligent software systems that cooperate to provide a range of services."
b. Defendant's Proposed Construction: "Specialized intelligent software systems that cooperate to provide a range of services across a network platform, each of which has the following generic internal components: a parser, a world view (database), a negotiator (responsible for buying/selling resources), and a resource controller (responsible for controlling the functional actions of the agent)."
c. Court's Construction: "Specialized intelligent software systems that cooperate to provide a range of services across a network platform."
The parties agree that "software agents" means, at a minimum, "specialized intelligent software systems." The dispute between the parties is over Google's proposed additional limitations.
The specification supports the Court's construction. The specification describes agents as "specialised intelligent software system... which cooperate to provide a range of services... across a network platform." ('309 patent col. 1 ll. 47-50) This portion of the specification essentially defines the disputed term. (See D.I. 112 at 5-6; D.I. 116 at 3)
The Court concludes that Google's additional language is not appropriate. While the specification states that "the agents all have the following generic internal components: a parser, a world view (database), a negotiator (responsible for buying/selling resources), and a resource controller (responsible for controlling the functional actions of the agent)" ('309 patent col. 4 ll. 40-44), this description has limited applicability and "[r]efer[s] to FIG. 4" (id. at 1. 40). Figure 4 is a preferred embodiment, "described, by way of example only" (id. at col. 2 ll. 41-42), and it is found in the Exemplary Embodiments section; and the Court is not persuaded that the term should be limited to this embodiment. Cf. Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (stating that "patentee is entitled to the full scope of his claims, and we will not limit him to his preferred embodiment or import a limitation from the specification into the claims"). See generally SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344 (Fed. Cir. 2011) (limiting claim scope when specification expressly limits all embodiments).
Nor is the Court persuaded by Google's interpretation of the prosecution history. To distinguish claim 1 from the prior art reference Jonsson, the patentee stated that Jonsson does not teach or suggest that software agents include "an object-oriented system architecture." (D.I. 115 Ex. Cat Goog_BT_675-76) The patentee did not require "object-oriented" to include a parser, world view, negotiator, and a resource controller, nor did the patentee clearly and unambiguously distinguish the prior art on this basis. The Court will decline to adopt Google's additional limitations.
2. "data relevant to service provision [via] the network"
a. Plaintiff's Proposed Construction: Plain meaning.
Alternatively, "Information respecting price, path, bandwidth, availability or other information relevant to the provision of service through the network."
b. Defendant's Proposed Construction: The scope of this term is indefinite, but it must include at least location-dependent data concerning at least the available paths, bandwidth and pricing.
c. Court's Construction: "Information respecting price, path, bandwidth, availability or other information relevant to the provision of service through the network."
"Only claims not amenable to construction or insolubly ambiguous are indefinite." Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1250 (Fed. Cir. 2008) (internal quotation marks omitted). To prove indefiniteness, "an accused infringer [must] show by clear and convincing evidence that a skilled artisan could not discern the boundaries of the claim based on the claim language, the specification, and the prosecution history, as well as her knowledge of the relevant art area." Id. at 1249-50. Here, Defendant falls short of this "exacting standard." Id. at 1249.
The remaining issue before the Court is whether the disputed term requires a conjunctive definition including path, bandwith, and price, or if the three elements are disjunctive. The Court does not find support for Defendant's conjunctive alternative construction. The Examiner listed types of data included in "data relevant to service provision via the network." In particular, the Examiner stated that "price signal, quality of service parameter, etc." would fall within the meaning of the term. (D.I. 115 Ex. Cat Goog_BT_1029 (emphasis added)) As Defendant points out, an Examiner's statement "may be evidence of how one of skill in the art understood the term at the time the application was filed." (D.I. 116 at 5 (quoting Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005))) The Examiner's use of "etc." indicates that the list is non-exhaustive and that not every item on the list is required to be present.
3. "updating data... on a point-by-point continuous basis as the user changes location within the network"
a. Plaintiffs Proposed Construction: Plain meaning.
Alternatively, "Updating information respecting price, path, bandwidth, availability or other information relevant to the provision of service through the network continuously on a point-by-point basis as the user changes location within the network."
b. Defendant's Proposed Construction: "Updating data concerning at least the available paths, bandwidth and pricing continuously each time a user enters a new cell (i.e., crosses a cell boundary)."
c. Court's Construction: "Updating information respecting price, path, bandwidth, availability or other information relevant to the provision of service through the network continuously on a point-by-point basis as the user changes location within the network."
BT objects to Google's proposed limitations (1) "data concerning available paths, bandwidth, and pricing, " and (2) that data is ...