Adam W. Poff, Esq., Monte T. Squire, Esq., Pilar G. Kraman, Robert M. Vrana, YOUNG, CONAWAY, STARGATT & TAYLOR LLP, Wilmington, DE. Cabrach J. Connor, Jeffrey R. Johnson, REED & SCARDINO LLP, Austin, TX. Attorneys for Plaintiffs.
Rodger D. Smith II, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE. Brian E. Moran, ROBINSON & COLE LLP, Stamford, CT. Attorneys for Defendants Awareness Technologies, Inc. and Remote Computer Observation & Monitoring LLC (d/b/a Remotecom).
Rex A. Donnelly, RATNER PRESTIA, Wilmington, DE. James P. Martin, SHARTSIS FRIESE LLP, San Francisco, CA. Attorneys for Defendant Spectorsoft Corporation.
LEONARD P. STARK, District Judge.
Plaintiffs Helios Software, LLC and Pearl Software, Inc. ("Plaintiffs") filed a patent infringement action against Defendants Awareness Technologies, Inc. and Remote Computer Observation & Monitoring LLC (d/b/a Remotecom) (collectively "Awareness") on December 19, 2011. (C.A. No. 11-1259-LPS D.I. 1) Relatedly, Plaintiffs filed a patent infringement action against Defendant Spectorsoft Corporation ("Spectorsoft" and, with Awareness, "Defendants") on January 26, 2012. (C.A. No. 12-081-LPS D.I. 1) In both suits, Plaintiffs accuse Defendants of infringing three U.S. Patents: Nos. 6, 978, 304 ("the '304 patent"), 7, 634, 571 ("the '571 patent"), and 7, 958, 237 ("the '237 patent") (collectively "the patents-in-suit"). The '304 and '571 patents, which relate generally to remotely monitoring an internet session, are part of the same family and share nearly identical specifications. The '237 patent is directed generally to managing computer network access.
Pending before the Court is the issue of claim construction of various disputed terms of the patents-in-suit. The parties completed briefing on claim construction on February 1, 2013. (D.I. 85, 89; C.A. No. 11-1259-LPS D.I. 76, 78) In addition to the briefing, the parties submitted technology tutorials (D.I. 72, 78) and expert reports (D.I. 260, 261, 275, 276). The Court held a Markman hearing on February 15, 2013. ( See D.I. 127) (hereinafter "Tr.").
I. 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 ordinary 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).
II. CONSTRUCTION OF DISPUTED TERMS
A. The '304 and '571 patents
The principal issue in dispute is whether the term "internet" should be construed to cover only public networks, as Defendants propose, or more broadly to cover any network that is capable of connecting to the public internet - including private networks - as proposed by Plaintiffs. The Court agrees with Plaintiffs that "internet" includes any network that is capable of connecting to the public internet.
Defendants' position with respect to this term is inconsistent. First they contend that "internet" should be given its plain and ordinary meaning. (D.I. 76 at 6) A few pages later, however, Defendants claim that the term was specifically defined in the specification, and therefore should be limited only to the public internet. ( Id. at 8) In any event, the Court disagrees with Defendants' assertion that the specification's recitation that "we have invented a method of remotely monitoring an exchange of data... during an Internet session over the Internet" (304 patent, col. 1:38-41) limits "internet" to a purely public network. Defendants have not identified any portion of the specification that provides a special definition or otherwise evinces a clear intent to narrow the scope of the term "internet." See generally Phillips, 415 F.3d at 1312-16 (stating words of claim should generally be construed in accordance with plain and ordinary meaning, unless an exception applies) (internal citations omitted).
2. "Internet protocol (IP) address, " "IP address, " and "Internet server address"
The parties dispute whether the IP address must be a "unique" identifier, such that it identifies a specific computer. Defendants propose that these "address" terms be narrowed while Plaintiffs contend that nothing in the specification so limits the claim. Plaintiffs identify examples of networks having an IP address which do not identify an individual computer on that network. For example, Plaintiffs explain how a domain name can represent a collection of computers (D.I 73 at 7-8), or how a home network connected to a router could provide an IP address that is shared by all devices connected to that router ( see Tr. at 14-15). By contrast, Defendants fail to provide any intrinsic support for the requirement that the identifier must be globally "unique."
3. "Internet session"
Defendants contend that this term presents two disputes: "(1) whether the term is limited to a communication session over the Internet between computers using TCP/IP; and (2) whether a session' has a temporal component, with a defined beginning and end." (D.I. 76 at 9) The Court has already resolved the first of these issues in connection with its construction of the term "internet." The Court agrees with Plaintiffs that "wholly self-contained, private networks" are not part of the "internet" while "private networks that are accessible" to the internet are part of the "internet." ( See Tr. at 57-61; see also Skyline Software Sys., Inc. v. Keyhole, Inc., 2006 U.S. Dist. LEXIS 83603, at *26-29 (D. Mass. Nov. 16, 2006) (construing "internet" as "[t]he publicly accessible network capable of relaying information via Internet Protocol, either alone or in conjunction with one or more other protocols, but not including a wholly self-contained private network of devices communicating only with each other"))
On the second issue, the Court agrees with Defendants that an "internet session" must have a temporal component, including a defined beginning and end. This conclusion is supported by the specification, which describes the invention as "a method for capturing the content of an ongoing Internet communication." (304 patent, col. 1:28-30) Although Plaintiffs argue that "internet session" refers to "content" here, the Court agrees with the Defendants that "internet session" actually refers to "an ongoing Internet communication." (D.I. 76 at 9) The Court, thus, adopts part of the Defendants' construction without adopting Defendants' additional limitation that private networks that can access the internet are not part of the internet.
4. "memory buffer"
By their construction, Defendants ask the Court to "clarify that data held in the memory buffer is not stored at the user computer or available for retrieval after the termination of the first Internet session unless such data is transferred to the monitor computer." (D.I. 76 at 12) Defendants' proposed construction would not accomplish this clarification. Instead, Defendants' proposal would require that the data which is held ...