United States District Court, D. Delaware
Martin R. Lueck, Esq., Matthew L. Woods, Esq., Thomas C. Mahlum, Esq., Lars P. Taavola, Esq., Larina A. Alton, Esq., Robins, Kaplan, Miller & Ciresi L.L.P., Minneapolis, MN, Frederick L. Cottrell, III, Esq., Jason Rawnsley, Esq., Richards, Layton & Finger, P.A., Wilmington, DE, attorneys for the Plaintiff.
David S. Benyacar, Esq., Daniel L. Reisner, Esq., David Soofian, Esq., Kaye Scholer LLP, New York, NY, Steven J. Balick, Esq., Lauren E. Maguire, Esq., Andrew C. Mayo, Esq., Ashby & Geddes, Wilmington, DE, attorneys for Defendants.
RICHARD G. ANDREWS, District Judge.
Before the Court are Defendants' Objections to the Magistrate Judge's June 24, 2014 Report and Recommendation Regarding Claim Construction (D.I. 232) and Plaintiff's Objections to the Report and Recommendation Regarding Claim Construction (D.I. 230), as well as the parties' respective responses. (D.I. 235, 233).
Pursuant to 28 U.S.C. § 636(b)(1)(B) and Fed.R.Civ.P. 72(b)(3), the Court may accept, reject, or modify the recommendations of the Magistrate Judge. The court may also receive further evidence or return the matter to the Magistrate Judge with instructions for further proceedings. Objections to the Magistrate Judge's conclusions with regard to the legal issue of claim construction are reviewed de novo. 28 U.S.C. § 636(b)(1)(C).
U.S. Patent No. 6, 015, 088 ("the '088 patent") relates to an image capturing apparatus and method of "capturing and decoding bar code information in real time from a continuously displayed video signal of a particular target." ("088, col. 1, ll. 9-11).
I. PLAINTIFF'S OBJECTIONS
1. selectively capturing... an instantaneous image (claim 1); selectively capturing at least one image displayed by said display means (claim 22)
The Magistrate Judge construed the "selectively capturing" terms to mean "at an instant in time selected by the user based on the displayed image, converting the live analog video signal into a single digital image that is output for storage into computer memory." (D.I. 222 at 56). Plaintiff objects to the limitation requiring the image to be selected "by the user." (D.I. 230 at p. 1).
Plaintiff argues that requiring the user to select the image improperly excludes embodiments disclosed in the specification, namely, the processor or another external device automatically performing the capturing function. ( Id. ). Plaintiff notes, for example, that the Abstract contemplates capturing an image "automatically after a time interval" and the specification states that "a number of alternate modes are available by which the user or the processor 22 may capture a snapshot." ( Id. at p. 4 (emphasis omitted)). Read in context, however, the Court agrees with the Magistrate Judge that these references require user involvement. The processor captures an image only after the user aims the camera and makes a determination about image quality, thereby selecting the image. (D.I. 222 at 26). If a timer is used, the camera goes off "automatically" only after the user sets the timer. Therefore, any steps which occur automatically do so according to the user's command.
Plaintiff also objects to the Report's reliance on prior art. (D.I. 230 at pp. 9-10). The Report explains that one purpose of the invention is to overcome the shortcomings in prior art, which required a user to take a picture, upload it on a computer, load a bar code decoding program to the computer, and then decode the image. (D.I. 222 at 25). Reading the claims in light of this prior art clarifies several uses of the word "automatic" in the specification, on which Plaintiff relies to argue that a user is not needed to select an image. The specification notes, "It is another primary object of the present invention to provide a system which can automatically and without human intervention capture and decode a video input while allowing the real time image to remain displayed." ('088, col 2, ll. 54-57). Contrary to Plaintiff's suggestion, the Court reads "without human intervention" to mean that, after the user selects the image, no further action is required to decode the bar code. Similarly, Plaintiff relies on language stating that the invention "automatically captures the image, scans the image, and decodes and displays an encoded message..." to argue that image selection is automatic. The Court reads this language to mean that the decoding automatically follows the image selection, not that selection itself is automatic.
Plaintiff next argues that requiring the user to select an image renders dependent claims 2 and 6 broader than the independent claim on which they depend. (D.I. 230 at pp. 6-7). This criticism is misplaced. Claim 2 requires the image to be captured after a predetermined time interval. C088, col. 10, ll. 38-40). The specification cites several alternate ways of triggering the image capture, such as using a keyboard key or pressing the button of a mouse. C088, col. 4, ll. 46-51). Claim 2 does not encompass any of these alternate means, and is therefore narrower than claim 1. Plaintiff similarly objects that Claim 6, which requires an external device to capture the image, is broader than Claim 1 if constructed to require a user. (D.I. 230 at p. 7). As with claim 2, this method excludes other means of triggering the capture and is therefore narrower than claim 1. Moreover, the specification makes clear that use of the external hosting device requires "the user... sending messages to a host processor." C088, col. 4, ll. 59-61).
Finally, Plaintiff offers a new construction that does not require a user to select the image. This proposal was not before the Magistrate Judge and is therefore not timely raised. Even if it were, however, the Court agrees with the Magistrate Judge's construction requiring a user to selectively capture the image.
Upon de novo review of the Magistrate Judge's construction of the "selectively capturing" terms, in addition to the reasoning here, this Court adopts the ...