United States District Court, D. Delaware
REPORT AND RECOMMENDATION
CHRISTOPHER J. BURKE, Magistrate Judge.
In this action filed by Plaintiff Pragmatus AV, LLC ("Pragmatus" or "Plaintiff") against Defendant Yahoo! Inc. ("Yahoo!" or "Defendant"), Plaintiff alleges that Yahoo! directly and indirectly infringes five of Plaintiff's patents (the "Asserted Patents" or the "patents-in-suit"). Presently before the Court is the matter of claim construction. The Court recommends that the District Court adopt the constructions as set forth below.
A. The Parties
Plaintiff is a Virginia limited liability company with its principal place of business in Alexandria, Virginia. (D.I. 160 at ¶ 1) It is the owner of the patents-in-suit. ( Id. at ¶ 6-11)
Defendant is a Delaware corporation with its principal place of business in Sunnyvale, California. ( Id. at ¶ 2) In the course of its business, Defendant provides the Yahoo! Messenger product. ( See, e.g., id. at ¶ 13)
B. The Asserted Patents
Each of the Asserted Patents is based on U.S. Appl. No. 08/131, 523, which is now U.S. Patent No. 5, 689, 641, and all of the Asserted Patents share a common specification. The Asserted Patents are: United States Patent No. 6, 237, 025 ("the '025 patent"), entitled "Multimedia Collaboration System"; United States Patent No. 6, 351, 762 ("the '762 patent"), entitled "Method and System For Log-in-Based Video and Multimedia Calls"; United States Patent No. 5, 854, 893 ("the '893 patent"), entitled "System For Teleconferencing In Which Collaboration Types and Participants By Names Or Icons Are Selected By A Participant Of The Teleconference"; United States Patent No. 7, 185, 054 ("the '054 patent"), entitled "Participant Display and Selection In Video Conference Calls"; and United States Patent No. 5, 896, 500 ("the '500 patent"), entitled "System For Call Request Which Results In First and Second Call Handle Defining Call State Consisting Of Active Or Hold For Its Respective AV Device." (D.I. 63, exs. 1-5)
The Asserted Patents relate to the field of distributed multimedia collaboration. Specifically, the Asserted Patents disclose systems and methods for utilizing hardware, software and communications technologies "to produce a multimedia collaboration system that greatly facilitates distributed collaboration, in part by replicating the benefits of face-to-face collaboration." ( See, e.g., '025 patent, col. 4:49-54)
C. Procedural Posture
On October 4, 2011, Pragmatus commenced this action. (D.I. 1) On April 6, 2012, this matter was referred to the Court by Judge Leonard P. Stark to hear and resolve all pretrial matters, up to and including the resolution of case-dispositive motions. (D.I. 32)
On November 13, 2012, the parties filed a Joint Claim Construction Chart in which they identified sixteen disputed terms or term sets. (D.I. 63) The parties filed simultaneous opening and responsive claim construction briefs on November 29, 2012 and December 21, 2012, respectively. (D.I. 71, 72, 82, 84) The Court held a Markman hearing on January 10, 2013. (D.I. 188, hereinafter "Tr.") On January 24, 2013, the parties submitted a supplemental joint letter regarding the term "call handle." (D.I. 94)
II. STANDARD OF REVIEW
It is well-understood that "[a] claim in a patent provides the metes and bounds of the right which the patent confers on the patentee to exclude others from making, using, or selling the protected invention." Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). The proper construction of claim terms is a question of law for the Court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). The Court should generally give claim terms their "ordinary and customary meaning[, ]'" which is "the meaning that the term[s] 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." Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (citations omitted). However, when determining the ordinary meaning of claim terms, the Court should not extract and isolate those terms from the context of the patent, but rather should endeavor to reflect their "meaning to the ordinary artisan after reading the entire patent." Id. at 1321.
To that end, the Court should look first and foremost to the language of the claims, because "[i]t 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, 415 F.3d at 1312 (internal quotation marks and citations omitted). For example, the context in which a term is used in a claim may be "highly instructive." Id. at 1314. In addition, "[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable" in discerning the meaning of a particular claim term. Id. This is "[b]ecause claim terms are normally used consistently throughout the patent, [and so] the usage of a term in one claim can often illuminate the meaning of the same term in other claims." Id. Moreover, "[d]ifferences among claims can also be a useful guide, " as when "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.
In addition to the words of the claims, the Court should look to other intrinsic evidence. For example, the Court should analyze the patent specification, which "may reveal a special definition given to a claim term... that differs from the meaning [that term] would otherwise possess." Id. at 1316. In that case, "the inventor's lexicography governs." Id. Even if the specification does not contain a special definition of the term at issue, it "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. at 1315 (internal quotation marks and citation omitted). That said, however, the specification "is not a substitute for, nor can it be used to rewrite, the chosen claim language." SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). In addition to the specification, a court should also consider the patent's prosecution history, if it is in evidence, because it "can often inform the meaning of the claim language by demonstrating how the inventor understood the invention[.]" Phillips, 415 F.3d at 1317 (citations omitted).
Extrinsic evidence, "including expert and inventor testimony, dictionaries, and learned treatises[, ]" can also "shed useful light on the relevant art." Id. (internal quotation marks and citations omitted). Dictionaries (especially technical dictionaries) may be useful in this process because they typically provide "the accepted meanings of terms used in various fields of science and technology[.]" Id. at 1318. However, the United States Court of Appeals for the Federal Circuit has cautioned that "heavy reliance on [a] dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the term in the abstract, out of its particular context, which is the specification." Id. at 1321. Overall, while extrinsic evidence may be useful, it is "less significant than the intrinsic record in determining the legally operative meaning of claim language." Id. at 1317 (internal quotation marks and citations omitted); accord Markman, 52 F.3d at 981.
In utilizing these resources during claim construction, courts should keep in mind that "[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).
A. Disputed Terms
The parties set out 16 disputed terms or sets of terms for the Court's review. The Court takes up the disputes in the order in which they were argued.
1. "a first and second set of potential participants"
Defendant proposes that this term be construed to mean "[a] first and a second list of potential participants, where the second list is a subset of the first." (D.I. 72 at 14) Plaintiff, however, argues that this term needs no construction as it "is entitled to its plain and ordinary meaning[.]" (D.I. 71 at 6) The parties' dispute boils down to whether a definition of this term should (as Defendant proposes) contain the additional limitation that "the second list is a subset of the first." (Tr. at 11; D.I. 71 at 6)
The Court first looks to the claim language itself. This term appears only in Claim 13 of the '893 patent, which reads:
A method for conducting a teleconference among a plurality of participants, each having an associated video capture and display and audio capture and reproduction capabilities, the method comprising the steps of:
(i) a first and a second set of potential participants in which
(1) the first set includes names of potential participants and
(2) the second set includes icons representing potential participants, and
(ii) a set of collaboration types;
(i) one or more participants
(ii) from among a plurality of the displayed sets of potential participants....
('893 patent, col. 43:40-55 (emphasis added)) Although the claim language sets forth other requirements for the sets of potential participants, none of that language requires that the "the second list [must be] a subset of the first."
On the other hand, the language of Claim 14 of the '893 patent (which is dependent on Claim 13) indicates that the term is not as limited as Defendant suggests. Specifically, while a subset limitation does not appear in Claim 13, it does appear in Claim 14, which recites "[t]he method of claim 13, wherein the second set is a subset of the first set...." ( Id., col. 43:65-66 (emphasis added)) Thus, as the Federal Circuit has "frequently stated, the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim." Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004); see also Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006).
In attempting to overcome this presumption, Defendant points to a passage in the specification that it claims "removes any doubt" as to the correctness of its position: one that, it says "describes the same subset relationship between... [the patent's] sole description of two displayed sets of participant information from which a user can select[-] a graphical rolodex and a quick dial list, where the quick dial list is a subset of the graphical rolodex." (D.I. 72 at 15-16) This passage notes that " [i]n the preferred embodiment ... [u]sers can dynamically add new quick-dial buttons by dragging the corresponding entries from the graphical rolodex onto the quick-dial panel." ('893 patent, col. 19:5-10 (emphasis added)) However, a description of a preferred embodiment does not, in and of itself, indicate that an invention can be used only as described in that embodiment. See Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1355 (Fed. Cir. 2003) ("The statements from the description of the preferred embodiment, moreover, are just that - descriptions of a preferred embodiment that operates in a command/response system. Those statements do not indicate that the invention can be used only with a command/response' protocol.").
Defendant's most significant argument is that, during the prosecution of the '054 patent (an ancestor of the '893 patent), the applicant limited the invention to directories wherein the second directory is a subset of the first directory. (D.I. 72 at 15) In support, Defendant points to three of the applicant's statements to the PTO during the prosecution of the '054 patent. (Yahoo!'s Claim Construction Presentation ("YCCP") at 71, 72 & 74 (citing D.I. 63, ex. 7 at 4, 8 & id., ex. 32 at 13); Tr. at 30-32; D.I. 72 at 15)
The Federal Circuit has held that a claim term in a particular patent may be limited by statements made during the prosecution history of a related patent application in at least a few circumstances. First, "[a]s long as the same claim limitation is at issue, prosecution disclaimer made on the same limitation in an ancestor application will attach." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1333 (Fed. Cir. 2003) (emphasis added); see also Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 1182 (Fed. Cir. 2006) ("[T]he doctrine of prosecution disclaimer generally does not apply when the claim term in the descendant patent uses different language."). Second, even in the absence of claim limitations that are exactly the same, prosecution disclaimer related to a prior patent application may attach when the claim terms at issue have not been materially altered or are otherwise explicitly linked together in the prosecution history. See Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979-80 (Fed. Cir. 1999) (finding prosecution history disclaimer related to term "feed tube" in parent patent would attach to term "feed probe" in child patent when the applicant explicitly linked the meaning of the terms during the prosecution of the child patent). The need for this type of clear linkage between the disclaimer in the related application and the patent term at issue is important, because the Federal Circuit has held that "it is permissible for a patentee to take a different approach to claiming an invention in subsequent patents, either by adding limitations or by altering the claims' format[, ]" and that "[w]hen the patentee does so... we cannot rely on the dubious argument that... the applicant's disclaimer with respect to one claim would be equally applicable to another claim." Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 944-45 (Fed. Cir. 2013).
Here, the three statements that Defendant points to in the '054 patent's prosecution history were not referencing the same claim limitation as that at issue here, nor were the respective two sets of claim terms immaterially different or otherwise explicitly linked together in the prosecution history. Instead, each of these three statements were directed at permitting allowance of claim language that (at the time) required an explicit "subset" limitation or its equivalent. For instance, the first two statements were made when the claims at issue in the '054 patent application required a "system [that] is configured to (a) display (i) a first and a second directory... in which... the second directory is a subset of the first directory." (D.I. 63, ex. 7 at 11 (emphasis added); see also id. at 13-14 ("method comprising the steps of... displaying (i) a first and a second directory... in which... the second directory is a subset of the first directory") (emphasis added)) Similarly, the third allegedly disclaiming statement was made when the claims required "(c) a graphical rolodex... (d) a quick dial list, listing icons representing video-enabled potential participants copied from the graphical rolodex ...." ( Id., ex. 32 at 2 (emphasis added and omitted) (alterations excluded); see also id. at 5)
In contrast, the claim language at issue in the '893 patent does not include a subset limitation, either explicitly or implicitly. Instead, the claim at issue requires only a method comprising the steps of "(a) displaying (i) a first and a second set of potential participants in which (1) the first set includes names of potential participants and (2) the second set includes icons representing potential participants...." ('893 patent, col. 43:40-50) Indeed, this claim language, at least on its face, appears focused on capturing a concept other than the "subset" concept - that the first and second set of potential participants are displayed utilizing different means. See Regents of Univ. of Minn., 717 F.3d at 944-45 ("[I]t is permissible for a patentee to take a different approach to claiming an invention in subsequent patents, either by adding limitations or by altering the claims' format.").
Therefore, the Court finds that the statements made during the prosecution of the '054 patent are not applicable to the claim term at issue because these purported disclaimers were directed to specific claim terms using different claim language than that at issue in Claim 13 of the '893 patent. See Ventana, 473 F.3d at 1182 ("Because claims 1 and 5 of the [child] patent use different claim language [than that used in the parent application] - that is, they do not require that reagent be dispensable directly to a sample' - the alleged disclaimer of sip and spit' dispensing during the prosecution of the [parent] application does not apply to the asserted claims of the [child] patent.").
For the foregoing reasons, the Court declines to adopt Defendant's proposed construction that would add an unwarranted limitation to the term at issue. Because the meaning of the term is otherwise clear and unambiguous, the Court finds that the term should be afforded its plain and ordinary meaning. See Warner Chilcott Co., LLC v. Zydus Pharms. (USA) Inc., C.A. No. 11-1105-RGA, 2013 WL 1729383, at *3 (D. Del. Apr. 22, 2013) (finding no reason to read a "boundary' limitation" into the disputed claim terms and adopting the plain and ordinary meaning of those terms).
2. "active states"/"active teleconference"
At the outset, the Court notes that the parties' dispute with respect to these terms was less than clear in the briefing, but crystallized at the Markman hearing.
Defendant proposed that these terms be construed to mean "[a] status representing a physical connection between the caller and the callee." (D.I. 63 at 2) Plaintiff argued that these terms need no construction, as their plain and ordinary meaning (which, Plaintiff says, connotes an "operative state or teleconference") should control. ( Id. ; D.I. 71 at 8) Plaintiff objected to Defendant's proposed addition of the requirement of a "physical connection, " claiming that this would be inconsistent with embodiments in the specification describing "active' teleconferences where no physical connection exists between the parties to a teleconference." (D.I. 71 at 8 (emphasis in original); Tr. at 40)
In response, Defendant argues that its proposal is not inconsistent with these embodiments, because it focuses on the physical connections that occur at each individual workstation between audiovisual ("AV") devices and communications ports - and not on the connections between workstations (which may be wireless or "logical" connections as described in the patent). (Tr. at 39-40) Specifically, Defendant argues that the "specification discloses that each AV device has physical ports that are physically connected, regardless of the type of AV path" between the workstations, and that its "construction accounts for the required call handling and state changes that must occur when a teleconference is active, " which "are reflected in the physical connections of the ports at both caller and callee workstations[.]" (D.I. 84 at 12-13) In other words, Defendant argues that an "active state" or an "active teleconference" refers to a status wherein the AV system has physically switched, connected, or otherwise turned on particular communications ports.
Plaintiff disagrees with Defendant's assertions, although at the Markman hearing, it did not provide any additional argument as to why Defendant's interpretation was inappropriate. But with respect to a related disputed claim term - "controlling communications connections" - Plaintiff argues that communications connections (such as active and hold states) can be controlled by software, as opposed to by a "specific physical switch." (Tr. at 105-06) Thus, the parties' dispute appears focused on whether an "active state" or an "active teleconference" is a status wherein a communications connection has been physically connected (via the "turning  on and off [of] a specific physical switch") at an individual workstation, ( see D.I. 84 at 12-13), or a status that can be "performed [for example] by functional software[, ]" (Tr. at 105-06).
These terms appear in Claims 11 and 18 of the '500 patent and Claim 17 of the '893 patent. (D.I. 63 at 2) For instance, Claim 11 of the '500 patent recites:
A method for conducting a teleconference using a system including:
a plurality of AV devices, each capable of originating and reproducing audio and video signals,
a plurality of communications ports each supporting at least one of the group of switch connections consisting of video in, video out, audio in and audio out; and
at least one communication path arranged for transport of audio and video signals,
the method comprising the steps of
(a) controlling communication connections...
(b) by creating,
(i) as a result of a call request,
(ii) at least a first call handle...
(iii) at least a second call handle...
(iv) each call handle defining,
(1) for its respective AV device,
(2) a call state being at least one of the group consisting of active and hold states, and
(3) the port switch connections involved in the communications connection.
('500 patent, col. 43:39-67 (emphasis added); see also '893 patent, col. 44:29 (referencing an "active teleconference call")) Neither of the parties cite to the claims as providing evidence that would resolve this dispute, which is understandable. The language of Claim 11 indicates that the claimed method for conducting a teleconference requires a system that includes a plurality of AV devices (e.g., cameras, monitors, microphones, and speakers), and a plurality of communication ports. In addition, the method requires that communications connections are controlled by creating call handles that "define... the port switch connections involved in the communications connection." But the claim language does not suggest, one way or the other, whether the port switch connections must be physically connected or switched in order to create an "active state" or whether the creation of an active state may be effectuated simply by the use of software.
The specification, however, provides some further context. First, as Defendant notes, "[t]he specification describes physical connections at ports and switches." (D.I. 84 at 6 n.4) For instance, the specification describes an "Audio Video Network Manager" ("AVNM"), which "manages A/V Switching Circuitry 30 in FIG. 3 for selectively routing audio/video signals to and from [individual workstations]." ('500 patent, col. 20:41-44; see also D.I. 84 at 6 & n.4) The specification goes on to explain that "[i]n response to client program requests, the AVNM provides connectivity between audio/video devices by connecting their ports. Connecting ports is achieved by switching one port's physical input connections to the other port's physical output connections (for both audio and video) and vice-versa." ( Id., col. 20:60-65 (emphasis added))
However, the specification also explains that this connectivity may be accomplished without the need for the switching of physical connections. In this regard, the specification notes that "[g]iven the current state of networking technologies... analog methods of carrying real-time audio/video are preferred. In the future, digital methods may be used. Eventually digital audio and video signal paths may be multiplexed with the data signal path as a common digital stream [, ]" which would eliminate the need for physical switches. ( Id., col. 7:5-24 (emphasis added)) Thus, the Court finds it inappropriate to limit the construction of "active states" and "active teleconference" as Defendant proposes. Accord Collaboration Prop., Inc. v. Tandberg ASA, No. C 05-01940 MHP, slip op. at 3, 16, 23 (D.I. 182) (N.D. Cal. July 23, 2006) (cited in D.I. 71, ex. B) (in discussing the proposed construction of "central control manager" in a related patent sharing the same specification as the '500 patent, citing to the specification and finding that "in the context of AV path, ' the claimed invention is not limited to analog AV networks with physical AV switches. Digital AV signals may be transmitted jointly with the data over a packet-switched network, in which case there is no need for dedicated audio and video switching circuitry.").
In light of the Court's resolution of this issue, and because it otherwise does not appear to be disputed that the plain and ordinary meaning of an "active" state or teleconference described in the patents is as Plaintiff suggests (i.e., an "operative" one), ( see, e.g., '500 patent, col. 23:31-39; Tr. at 45), the Court finds that these terms should be afforded their plain and ordinary meaning.
3. "addresses of video display devices"
Plaintiff proposes that this term be construed to mean "[n]etwork locations of video display devices." (D.I. 63 at 3) Defendant proposes "[u]nique identifiers of video display devices." ( Id. )
The parties generally agree that an "address" must be used to establish communication with a selected participant. They disagree on whether such an "address" must uniquely identify the user's video display device or whether an address may simply refer to a network location at which a user's video display device resides (one that may be utilized by multiple video display devices).
The Court turns first to the claim language itself. The term at issue appears in Claim 33 of the '025 patent, which recites:
A method for conducting a teleconference among a plurality of participants, each having
an associated video capture and display and audio capture and reproduction capabilities,
the method comprising the steps of:
(i) at least one directory, ...