United States District Court, D. Delaware
SUE F. ROBINSON, District Judge.
At Wilmington this 30th day of June, 2014, having heard argument on, and having reviewed the papers submitted in connection with, the parties' proposed claim construction;
IT IS ORDERED that the disputed claim language of United States Patent No. 7, 096, 003 ("the '003 patent") shall be construed as follows:
1. Background. On September 14, 2012, Joao Bock Transaction Systems, LLC ("plaintiff") filed a complaint against defendant Jack Henry & Associates, Inc. ("defendant"), alleging that certain of defendant's products, "such as but not limited to its goDough' and NetTeller Online Banking'" products, infringe the '003 patent. (D.I. 1) On December 3, 2012, defendant answered and counterclaimed. (D. I. 6) The court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338(a).
2. Standard. Claim construction is a matter of law. Phillips v. AWH Corp., 415 F.3d 1303, 1330 (Fed. Cir. 2005) (en banc). Claim construction focuses on intrinsic evidence - the claims, specification and prosecution history - because intrinsic evidence is "the most significant source of the legally operative meaning of disputed claim language." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996).
3. The claim construction exercise starts with the "words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention." Vitronics, 90 F.3d at 1582. Words in a claim are generally given the ordinary and customary 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." Phillips, 415 F.3d at 1313.
As explained by the Federal Circuit in Phillips, the claims
do not stand alone. Rather, they are part of "a fully integrated written instrument, "... consisting principally of a specification that concludes with the claims. For that reason, claims "must be read in view of the specification, of which they are a part.".... As we stated in Vitronics, the 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 claim.
Phillips, 415 F.3d at 1315 (citations omitted).
Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent.... Furthermore, like the specification, the prosecution history was created by the patentee in attempting to explain and obtain the patent. Yet because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.... Nonetheless, the 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. at 1317 (citations omitted).
4. The Federal Circuit recognizes that either the specification or the prosecution history "may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess." Id. at 1316. "In such cases, the inventor's lexicography governs, " id., "as long as the special definition of the term is clearly stated in the patent specification or file history." Vitronics, 90 F.3d at 1582. See also Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) ("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.") (citation omitted). Particularly when a special definition of a term is added through amendment, such a definition must be consistent with the use of that term in the application as filed; otherwise, the added definition would constitute "new matter' within the meaning of 35 U.S.C. § 132 and must be disregarded in construing the scope and meaning of the claims." Dresser Industries, Inc. v. United States, 432 F.2d 787, 793 (Ct. Cl. 1970) (citations omitted).
5. There is no dispute that a patent's claims are "of primary importance, in the effort to ascertain precisely what it is that is patented." Merrill v. Yeomans, 94 U.S. 568, 570 (1876). The Supreme Court has explained over the years that, "[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 (citing White v. Dunbar, 119 U.S. 47, 52 (1886)). In one of its recent decisions relating to the requirements for patentability, the Supreme Court reiterated the public notice function of patents, explaining that "a patent must be precise enough to afford clear notice of what is claimed, thereby appris[ing] the public of what is still open to them.'" Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014) (citations omitted). In balancing the need for clarity with the inherent limitations of the English language, the Supreme Court declared that 35 U.S.C. § 112, ¶ 2 requires "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." Id.
6. The patentees at bar have managed to turn the above principles on their head. In this regard, they assert that the '003 patent should be recognized as having a priority date of August 8, 1996, the earliest filing date of its related patents, thus also establishing the temporal perspective for those of skill in the art. Without addressing in this order the question of whether the definitions constitute new matter and, therefore, support a later priority date, the court will address the extent to which, if at all, the court is bound by the multiple definitions the patentees choose to give certain claim language during the claim amendment process that took place in the PTO from October 2004 to September 2005. The definitions were not included in the specification, were not the subject of any commentary by the examiner, were made years after the earliest priority date, and were added for litigation purposes, that is, to differentiate the '003 patent from a related patent. Most significantly, the definitions added through the auspices of 37 C.F.R. 1.115 are worded in the disjunctive and, rather than narrowing the scope of the claim language or adding clarity to such, instead obscure the scope of the claims, thus confounding the public notice requirement of § 112, ¶ 2. Given that the definitions are not "clearly stated, " see Vitronics, 90 F.3d at 1582, the court rejects plaintiff's argument that the court is obligated to embrace them for purposes of the claim construction exercise.
7. The court, therefore, construes the disputed claim language consistent with the above-mentioned tenets of claim construction:
a. "At least one of... and:" "One or more of the items in the list." This construction is consistent with the claim language, which describes lists having two or more components. ( See, e.g., '003 patent,  cols. 47:30-32; 47:66-48:4; 56:65-57:10; 83:21-84:5) This is further supported by the specification in which the patentees used either disjunctive, or both conjunctive and disjunctive language to describe the present invention. ( See, e.g., id. at abstract, cols. 4:21-22; 10:3-14 (referring to the Internet and/or the World Wide Web); 7:58-67 (referring to each authorized vendor, seller, and/or services provider, as well as the amount of the transaction, the ...