United States District Court, D. Delaware
REPORT AND RECOMMENDATION
MARY PAT THYNGE, Magistrate Judge.
This is a patent case. On June 18, 2012, Hand Held Products, Inc. ("HHP") filed suit alleging Amazon.com, Inc., AMZN Mobile LLC, AmazonFresh LLC, A9.com Inc., A9 Innovations LLC, and Quidsi, Inc. (collectively, "Amazon") of infringing U.S. Patent No. 6, 015, 088 ("the 088 patent"). On March 24, 2014, the parties submitted a Joint Claim Construction Chart. The parties' Joint Claim Construction Brief and Joint Claim Construction Appendices were filed on May 1, 2014 and a Markman hearing was held on May 7, 2014.
II. BACKGROUND OF THE INVENTION
The 088 patent is titled "Decoding of Real Time Video Imaging." "This invention relates to image capturing apparatus, and more particularly to a method of capturing and decoding bar code information in real time from a continuously displayed video signal of a particular target." The abstract recites:
A process allows an image capturing apparatus to be integrated with a personal computer to continuously display a video image of the imaging apparatus. Upon proper input by a user, or automatically after a timed interval, a snapshot of the video image is captured. An autodiscimination process of the captured video image automatically decodes any bar-coded information present in the captured image and outputs the information.
III. CLAIMS AT ISSUE
HHP asserts Amazon infringes claims 1, 8, 10, 12, 22, and 23 of the 088 patent. Of those, only claims 1 and 22 are independent claims.
Claim 1 recites:
1. A process for capturing and decoding bar-code information in real time from a continuously displayed image video signal, comprising the steps of:
aiming an imaging apparatus at a target of interest, said target having at least one of optically readable and bar coded information contained thereupon;
continually displaying a real time image of said target from said imaging apparatus;
selectively capturing and storing an instantaneous image of said target into the memory of a computer;
determining if bar-coded information is present in said stored image;
decoding bar-code information if bar-code readable information is contained on said instantaneous stored image while maintaining the display of said real-time image; and outputting the decoded bar-coded information.
Claim 22 recites:
22. Apparatus for capturing and decoding bar-coded information from a target of interest comprising:
imaging means for imaging a target of interest, said target having at least one of optically readable and bar-coded information contained therein;
processing means for processing an imaged target;
display means for continually displaying a real-time image of said target from said imaging and processing means;
image capture means for selectively capturing at least one image displayed by said display means;
scanning means for scanning said at least one captured image and for determining the presence of bar-coded information in the field of view of said at least one captured image;
decoding means for decoding any bar-coded information detected by said scanning means; and
output means for outputting the decoded bar-coded information to said display means.
IV. LEGAL STANDARD
"The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history." The Federal Circuit has stated "[t]here are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution."
"To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term' other than its plain and ordinary meaning." "It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must clearly express an intent' to redefine the term."
The standard for disavowal of claim scope is similarly exacting. "Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question." SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). "The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).
As with its explanation of a patentee acting as its own lexicographer, the Federal Circuit stated "[i]t is likewise not enough that the only embodiments, or all of the embodiments contain a particular limitation." The court concluded: "[w]e do not read limitations from the specification into claims; we do not redefine words. Only the patentee can do that. To constitute disclaimer, there must be a clear and unmistakable disclaimer."
When construing claim terms, a court considers the intrinsic record, i.e., the claim language, the patent specification, and the prosecution history. In particular, the patent specification "is highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" In addition to considering the intrinsic record, the Federal Circuit has "also authorized district courts to 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.'" For instance:
extrinsic evidence in the form of expert testimony can be useful to a court... to provide background on the technology at issue, to explain how an invention works, 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.
Extrinsic evidence, however, is viewed "as less reliable than the patent and its prosecution history in determining how to read claim terms...."
When construing mean-plus-function terms, additional principles are implicated. "A claim element that contains the word means' and recites a function is presumed to be drafted in means-plus-function format under 35 U.S.C. § 112 ¶ 6[, now § 112(f)]." "The presumption is rebutted, however, if the claim itself recites sufficient structure to perform the claimed function.'"
To construe a means-plus-function term, courts employ a two-part test. First, the court determines the claimed function. Next, the court "identif[ies] the corresponding structure in the written description of the patent that performs that function." The identified structure "must permit one of ordinary skill in the art to know and understand what structure corresponds to the means limitation.'"
When the corresponding structure is a computer, the specification must disclose an algorithm to perform the claimed function.
Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to "the corresponding structure, material, or acts" that perform the function as required by section 112 paragraph 6.
"[A] general purpose computer programmed to carry out a particular algorithm creates a new machine' because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.'" "The instructions of the software program in effect create a special purpose machine for carrying out the particular algorithm.'"
"Thus, in a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.'"
There is an exception to the rule that the specification must disclose an algorithm. Where the claimed "functions can be achieved by any general purpose computer without special programming... it [is] not necessary to disclose more structure than the general purpose processor that performs those functions." The Federal Circuit explained the exception identified in In re Katz is a "narrow" one:
If special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies. It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed.
The court in In re Katz listed "processing, " "receiving, " and "storing" as examples of functions that a general-purpose computer may be able to achieve without special programing. This court has determined the function of displaying an icon could likewise be accomplished by a general-purpose computer without special programming.
When disclosure of an algorithm is required, it may be expressed "in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure."
Amazon contends several of the disputed terms are invalid as indefinite pursuant to 35 U.S.C. § 112, ¶ 2 which requires the specification to "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention." The Federal Circuit had long held "[o]nly claims not amenable to construction' or insolubly ambiguous' are indefinite." The Federal Circuit determined:
the definiteness of claim terms depends on whether those terms can be given any reasonable meaning.... "If the meaning of the claim term is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds."
The Supreme Court recently changed the definiteness standard concluding:
[T]he Federal Circuit's formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute's definiteness requirement. In place of the insolubly ambiguous' standard, we hold a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.
The Court stated the Federal Circuit's "amenable to construction" or "insolubly ambiguous" formulations:
can breed lower court confusion, for they lack the precision § 112, ¶ 2 demands. It cannot be sufficient that a court can ascribe some meaning to a patent's claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc. To tolerate imprecision just short of that rendering a claim insolubly ambiguous' would diminish the definiteness requirement's public-notice function and foster the innovation-discouraging "zone of uncertainty", against which this Court has warned.
The Court explained it "read[s] § 122, ¶ 2 to require that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable."
Despite the Court's newly enunciated standard for determining indefiniteness, it remains the case that "[t]he party alleging that the specification fails to disclose sufficient corresponding structure must make that showing by clear and convincing evidence." The Federal Circuit has "noted that typically expert testimony will be necessary in cases involving complex technology.'" Although the Elcommerce.com court stated "[w]e do not of course hold that expert testimony will always be needed for every situation, " it observed "[w]ithout evidence, ordinarily neither the district court nor this court can decided whether, for a specific function, the description in the specification is adequate from the viewpoint of a person of ordinary skill in the field of the invention."
V. CLAIM CONSTRUCTION
A. Order of Steps
The parties first dispute whether the steps of the method claims must be occur in the recited order. Amazon argues those steps must occur in the recited order; HHP disagrees.
"Unless the steps of a method actually recite an order, the steps are not ordinarily construed to require one." To determine "if the steps of a method claim that do not recite an order, must nonetheless be performed in the order in which they are written" the court first looks "to the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written" and, if not, it looks "to the rest of the specification to determine whether it directly or implicitly requires such a narrow construction.'" Examples of when, as a matter of logic or grammar, the claims must be performed in the order written are where something referenced in a step does not exist until a previous step has been completed.
Claim 1 includes the requirements of "aiming an imaging apparatus at a target of interest, " "continually displaying a real time image of said target from said imaging apparatus, " "selectively capturing and storing an instantaneous image of said target into the memory of a computer, " "determining if bar-coded information is present in said stored image, " and "decoding bar-code information if bar-code readable information is contained on said instantaneous stored image." According to Amazon, logic dictates that: aiming the camera at the target must occur before the image of the target is displayed; selective capture and storage is based on the displayed image; and any decoding of the barcodes within the stored image can only occur after the image has already been captured and stored."
HHP disagrees, arguing the system could turn on the camera with the barcode in the field of view prior to the camera being "aimed" at the barcode. It also maintains the determining limitation and the decoding limitation occur concurrently.
The court agrees with Amazon that the "aiming" step must occur before the "displaying" step. HHP argues the system could turn on the camera with the barcode in the field of view prior to the camera being "aimed" at the barcode. That argument is not persuasive. For the barcode to be in the field of view, the camera would have to have already been aimed at the barcode, whether the camera was previously turned on or not. Moreover, the claim requires "displaying a real time image of said target, " referring to the target that was aimed at and demonstrating aiming must occur first. Logic also dictates that "selectively capturing and storing an instantaneous image of said target into the memory of a computer" must occur before "determining if bar-coded information is present in said stored image. " Determination of whether certain information is present on a stored image cannot occur until that image has been selectively captured and stored.
The parties' primary dispute on the order of steps issue is whether the "determining" and "decoding" steps can occur concurrently or must happen sequentially. Here, the claim does not explicitly preclude the "determining" and "decoding" steps from occurring concurrently. Likewise, the specification does not clearly preclude such concurrence. The specification states "[w]hether or not there are any barcode symbols is determined on the basis of whether they are decodable." That statement suggests "determining" and "decoding" could be intertwined, or occur concurrently. The invention is determining whether barcode symbols are present by determining whether any symbols present are able to be decoded. Discussing Figure 4, the specification recites:
On exiting block 350, the processor 22 will be in possession of a potentially decodable two-state 1D representation of the CSR [candidate symbol region]. It then attempts to decode this representation, as called for by block 355. This attempted decoding will comprise the trial application to the representation of one 1D decoding program after another until the latter is either decoded or determined to be undecodable.
Again, the barcode information is determined to be present or absent based on whether that information is decodable. The "determining" and "decoding, " therefore, appear to be occurring concurrently. The above quotation is followed by the statement: "[b]ecause decoding procedures of the latter type are known to those skilled in the art, they will not be discussed in any further detail." Because Amazon has not submitted evidence from one of skill in the art explaining why the "determining" and "decoding" steps can not take place concurrently, the court declines to deviate from the "general rule the claim is not limited to performance of the steps in the order recited" with regard to those two steps.
B. Disputed Claim Terms
1. target (claims 1, 22)
HHP contends no construction is necessary and this term be given its plain and ordinary meaning. It maintains the plain and ordinary meaning is "a target is anything that is aimed at, in other words, what is in the field of view."
Amazon's proposed construction is: "an object."
HHP argues the terms "target" and "target... therein, " discussed below, can be readily understood and do not need to be construed. HHP contends a "target" is anything that is aimed at, i.e., what is in the field of view, and Amazon's proposed construction, an object, is too narrow as there could be multiple items or objects in the field of view each having a barcode symbol.
Amazon maintains the specification is clear that a "target" is an object on which barcodes may be present. It argues its construction is also correct because the specification purportedly uses the terms "target" and "object" interchangeably. Amazon acknowledges the specification discloses taking a picture of one object containing multiple symbols, but maintains there is no disclosure of taking one picture of two objects and decoding the barcodes contained on both objects. It points to the specification's description of "a target having multiple symbols" and "a target of interest [that] includes widely scattered symbols" as supporting its construction of target as being a single object.
The claims recite "aiming an imaging apparatus at a target of interest" and "imaging means for imaging a target of interest." The Federal Circuit "has repeatedly emphasized that an indefinite article a' or an' in patent parlance carries the meaning of one or more' in open-ended claims containing the transitional phase comprising.'" "That a' or an' can mean one or more' is best described as a rule, rather than merely as a presumption or even a convention. The exceptions to this rule are extremely limited: a patentee must evince[ ] a clear intent' to limit a' or an' to one.'" "An exception to the general rule that a' or an' means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule."
Here, each of the claims-at-issue contain the open-ended transitional phrase "comprising"; therefore implicating the general rule that "a target" is not limited to being "one." There is no evidence that the patentee clearly intended to so limit the term. Nothing in the claims, specification, or prosecution history necessitate a departure from the rule. The claims recites "a target of interest." Nothing in the remainder of the claims' language requires construction of "a target" in the singular.
Also, neither the specification nor prosecution history requires the singular construction Amazon advances. The specification discloses reading multiple barcode symbols. The specification does not disclose a requirement those multiple barcode symbols be on a single object. Moreover, that conclusion is not rebutted by, for example, Figure 1 illustrating target "T" as a single box. "[T]he fact that [the disputed term] is represented by a single box in some of the figures does not necessitate' a departure from the general rule that a'... may mean one or more'...."
During prosecution, the applicant noted the decoding of multiple barcodes, explaining:
Applicants have developed a method for displaying a real-time video signal of a target of interest and for selectively decoding any bar-coded information which may be present within the field of view thereof.... The determining and decoding process allows the entire field of view of the image to be scanned for ALL bar-coded information ... which may be indiscriminately located in the image to be output.
The court notes applicants described barcode information located in the image, i.e., information present within the field of view.
Even if there were some ambiguity in the intrinsic record with regard to "a target, " that also would not change the analysis. The Federal Circuit has stated, "[e]ven if we were to conclude that the specification is ambiguous on this point, such ambiguity hardly is evidence of the clear intent necessary to overcome the effect of the general rule of claim construction [that a' and an' mean one or more']."
Because the claims, specification, and prosecution history do not necessitate deviation from the general rule, the court rejects Amazon's proposed construction as requiring the target be a single object and construes "target" to mean: "object or objects."
2. "having at least one of optically readable and bar coded information contained thereupon" (claim 1); "having at least one of optically readable and bar coded information contained therein" (claim 22)
HHP's states "bar-coded information" is separately defined and the remainder of the phrase be given its plain and ordinary meaning. Alternatively, HHP suggests construing the terms as: "the target must have at least one set of information that is barcoded and optically readable."
Amazon contends these terms are indefinite.
Amazon's indefiniteness argument is based on its assertion that because the claims require the "target of interest" to have "at least one of optically readable and barcoded information contained thereupon [/therein]" the phrase must reference at least two different ...