United States District Court, D. Delaware
Mary B. Matterer, Esq., Morris James LLP, Wilmington, DE; Ryan R. Smith, Esq. (argued), Wilson Sonsini Goodrich & Rosati, Palo Alto, CA; Christopher D. Mays, Esq., Wilson Sonsini Goodrich & Rosati, Palo Alto, CA, attorneys for Plaintiff.
David E. Moore, Esq., Potter Anderson & Corroon LLP, Wilmington, DE; Mark Ungerman, Esq. (argued), Ungerman IP PLLC, Washington, D.C., attorneys for Defendants.
RICHARD G. ANDREWS, District Judge.
Pending before this Court is the issue of claim construction of disputed terms found in U.S. Patent No. 7, 778, 457, U.S. Patent No. 7, 949, 176, U.S. Patent No. 7, 953, 268, U.S. Patent No. 7, 978, 900, U.S. Patent No. 8, 000, 514, and U.S. Patent No. 8, 326, 015 (collectively the "Asserted Patents").
On September 25, 2012, Plaintiff Mitek Systems Inc. filed a patent infringement action against Defendants TIS America Inc. and Top Image Systems, Ltd. (D.I. 1). The Court has considered the parties' Joint Claim Construction Brief. (D.I. 53). The Court heard oral argument on August 5, 2014.
II. LEGAL STANDARD
"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) (en banc) (internal quotation marks omitted). "[T]here is no magic formula or catechism for conducting claim construction.' Instead, the court is free to attach the appropriate weight to appropriate sources in light of the statutes and policies that inform patent law.'" SoftView LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at 1324). When construing patent claims, a matter oflaw, a court considers the literal language of the claim, the patent specification, and the prosecution history. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Of these sources, "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 term." Phillips, 415 F.3d at 1315 (internal quotations and citations omitted).
Furthermore, "the 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." Phillips, 415 F.3d at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id. at 1321 (internal quotation marks omitted). "In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314 (internal citations omitted).
A court may consider extrinsic evidence, which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises, " in order to assist the court in understanding the underlying technology, the meaning of terms to one skilled in the art and how the invention works. Id. at 1317-19 (internal quotation marks and citations omitted). However, extrinsic evidence is less reliable and less useful in claim construction than the patent and its prosecution history. Id.
Finally, "[a] claim construction is persuasive, not because it follows a certain rule, but because it defines terms in the context of the whole patent." 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) (internal quotation marks and citation omitted).
III. CONSTRUCTION OF DISPUTED TERMS
1. "smaller color image"
a. Plaintiff's proposed construction: No construction necessary and not synonymous ...