United States District Court, D. Delaware
For Plaintiff: Richard D. Kirk, Esquire, Stephen B. Brauerman, Esquire, and Vanessa R. Tiradentes, Esquire, of BAYARD, P. A., Wilmington, DE; Of Karen H. Bromberg, Esquire, Francisco A. Villegas, Esquire, Damir Cefo, Esquire, and Joyce E. Kung, Esquire, of COHEN & GRESSER LLP, New York, NY.
For Defendants: Collins J. Seitz, Jr., Esquire, and Benjamin J. Schladweiler, Esquire, of SEITZ ROSS ARONSTAM & MORITZ LLP, Wilmington, DE; Of Darcy L. Jones, Esquire, of KASOWITZ, BENSON, TORRES & FRIEDMAN LLP, Atlanta, GA, and Norman E.B. Minnear, Esquire, Basking Ridge, NJ.
CHRISTOPHER J. BURKE, United States Magistrate.
In this action filed by Plaintiff Suomen Colorize Oy (" Plaintiff") against Defendants Verizon Services Corporation, Verizon Online LLC and Verizon Delaware LLC (collectively, " Defendants"), Plaintiff alleges that Defendants infringe United States Patent No. 7, 277, 398 (" the '398 patent"). (D.I. 1 at ¶ ¶ 12, 20) Presently before the Court is the matter of claim construction. The Court adopts constructions for the disputed terms as set forth below.
A. The Parties
Plaintiff is a Finnish business entity with its principal place of business in Louhikkotie 12 A A, Vantaa, Finland. (Id. at ¶ 1) It is a technology innovation company and the assignee of the '398 patent. (Id. at ¶ ¶ 11, 13)
Defendants are wholly owned subsidiaries of Verizon Communications Inc. (Id. at ¶ ¶ 3-5) Verizon Services Corporation is a Delaware corporation with its principal place of business in Arlington, Virginia. (Id. at ¶ 3) Verizon Online LLC is a Delaware limited liability company with its principal place of business in Ashbum, Virginia. (Id. at ¶ 4) Verizon Delaware LLC is a Delaware limited liability company with its principal place of business in Wilmington, Delaware. (Id. at ¶ 5) In the course of their business, Defendants " make, use, offer for sale and/or sell a communications . . . service called FiOS." (Id. at ¶ 6) The television component of FiOS services is called FiOS TV; this television component contains an electronic program guide. (Id. at ¶ 15)
B. The Asserted Patent
Plaintiff asserts only the '398 patent, a patent entitled " Method and Terminal for Providing Services in Telecommunication Network[.]" (D.I. 1, ex. 1) The patent is based on U.S. Appl. No. 09/462, 761 and was issued on October 2, 2007. (Id.) The '398 patent contains 23 claims. (Id., cols. 6:42-10:24) The asserted claims are independent claim 1 and dependent claims 2, 11, and 12, all of which are dependent on claim 1. (D.I. 99 at 1 n.1; '398 patent, cols. 6:42-7:43)
The '398 patent relates to a process for creating and displaying an electronic program guide, or " EPG." (D.I. 99 at 1-2; D.I. 102 at 1; see also '398 patent) EPGs are often provided with cable and satellite television services, and may also be found on some television sets and digital video recorders. (D.I. 100, exs. 3 & 6) They provide viewers with an onscreen listing of available channels and program data; these listings can sometimes be interactive (an " interactive program guide" or " IPG"), such that the user can select a program to watch from the scrolling listings. (D.I. 100, exs. 3, 4 & 6 (cited in D.I. 99 at 1-2))
The subject matter of the '398 patent is about using certain data (what the patent refers to as " identification and control data") to create an onscreen EPG. ('398 patent, Abstract & col. 2:14-18; D.I. 99 at 2; D.I. 102 at 1) The identification and control data comes from the " service multiplex[.]" ('398 patent, col. 6:51-53) The precise meaning of " service multiplex" is disputed, but the parties generally agree that it can contain both the actual programs to be displayed on the screen as well as electronic information regarding those programs, such as information identifying the program title, or information about the location at which the program can be found. (D.I. 99 at 2; D.I. 102 at 3; '398 patent, col. 6:41-62) In the '398 patent, the identification and control data is used to form " selection data, " which is transmitted to the customer separately from the service multiplex. ('398 patent, col. 2:27-35; D.I. 99 at 2; D.I. 102 at 1)
C. Procedural Posture
Plaintiff commenced this action on June 5, 2012. (D.I. 1) This matter was assigned to the Court on June 13, 2012, and on July 27, 2012, the parties consented to have the Court conduct all proceedings in this case including trial, the entry of final judgment, and all post-trial proceedings. (D.I. 10)
The parties submitted their Amended Joint Claim Construction Chart on June 3, 2013. (D.I. 98) This Chart identified three agreed-upon constructions and six disputed terms or phrases. (Id., ex. A) Thereafter, the parties filed simultaneous opening and responsive claim construction briefs. (D.I. 99, 102, 109, 110) The parties then submitted a letter to the Court stating that they had agreed upon the construction of one previously-disputed term. (D.I. 119) The Court held a Markman hearing to hear argument on the five disputed terms or phrases on July 30, 2013. (D.I. 120, hereinafter " Tr")
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." Coming 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, 116 S.Ct. 1384, 134 L.Ed.2d 577 (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." Id. 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 and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." 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.'" Shire Dev., LLC v. Watson Pharms., Inc., 746 F.3d 1326, 1330 (Fed. Cir. 2014) (quoting Phillips, 415 F.3d at 1316).
A. Agreed-upon Constructions
As noted above, the parties have reached agreement with respect to construction of four terms or phrases in the '398 patent. ( See D.I. 98, ex. A at 1; D.I. 119) The Court adopts these agreed-upon constructions, and includes them as its own (listed as constructions 1-4) in the Order accompanying this Memorandum Opinion. Research Found, of State Univ. of N.Y.v. Mylan Pharms., L.P., C.A. No. 09-184-JJF-LPS, 2010 WL 1911589, at *2 (D. Del. May 12, 2010).
B. Disputed Terms or Phrases
The parties set out five disputed terms or phrases for the Court's review. The Court takes up the disputes in the order in which they were argued.
1. " service information"
" Service information" is not a term used in the patent's specification; it appears only in the preamble to claim 1. Defendants propose that this term be construed as " [d]igital data describing the delivery system, content and scheduling/timing of broadcast data streams." (D.I. 98, ex. A at 1) Plaintiffs asserts that this term need not be construed, but that if the Court disagrees, the term should be afforded its plain and ordinary meaning, " based on [Plaintiff s] proposed construction of [the term] 'service[.]" ' (Id.) During oral argument, Plaintiff suggested that this plain meaning amounted to " information about the service[.]" (Tr. at 9)
The parties' threshold dispute is whether the preamble is limiting. Plaintiff argues that it is not. (Tr. at 10) Defendants admit that " where the preamble doesn't add a step to the claim, it's not limiting[, ]" but argue that the preamble here may be limiting, depending on the Court's decision as to other claim construction issues. (Tr. at 28); see also Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (noting that, as a general matter, the preamble does not limit the claims, but may do so if it recites essential structure or steps, or if it is necessary to give life, meaning and vitality to the claim). In Defendants' view, if the Court does not adopt their proposed construction of " selection data" (a term discussed further below), then the preamble of claim 1 would be limiting, because Defendants' proposed construction of " service information" would " add the step of providing information to a customer." (Tr. at 33) If, on the other hand, the Court adopts Defendants' construction of the term " selection data, " a term found in the body of the claim, then Defendants acknowledge that the preamble would " not add a step to the claim" --because, in Defendants' view, the step of providing information to a customer would already be a part of the claim. (Tr. at 28; D.I. 109 at 18)
As discussed below, the Court will adopt a construction of " selection data" that is in line with Defendants' proposal. In light of the Court's conclusion in that regard, there is no real dispute here between the parties for the Court to resolve, since neither side believes the term at issue is limiting as to claim 1, nor that it requires construction. ( See, e.g., Tr. at 32 (Defendants' counsel noting that " I don't think there would be a need to construe service information if you adopt our construction of selection data.")) In such a circumstance, the Court declines to construe the term. See, e.g., Select Retrieval LLC v. Amerimark Direct LLC, Civil Action No. 1:11-cv-00812-RGA, 2014 WL 1092387, at *3 (D. Del. Mar. 14, 2014) (" [A]s the preamble does not limit the claim, its construction is not necessary, and the Court need not, and elects not to, construe it here."); L'Oreal S.A. v. Johnson & Johnson Consumer Cos., Inc., Civil Action No. 12-98-GMS, Civil Action No. 12-99-GMS, 2013 WL 3788803, at *1 n.2 (D. Del. July 19, 2013) (declining to construe a term from a preamble that was not limiting).
2. " multiplexing"
Plaintiff next propose that the term " multiplexing" means " [i]nterleaving two or more data signals together[.]" (D.I. 98, ex. A at 3) Defendants counter that " multiplexing" means " [t]o create a multiplex; see proposed definition of 'service multiplex[.]" ' (Id.)
In the briefing and at oral argument, the parties focused on disputes relating to " service multiplex, " and mostly ignored the meaning of " multiplexing." ( See, e.g., D.I. 99 at 19-20; D.I. 102 at 11-12) Plaintiff proposed that the term be construed, but even in its own opening brief, it did not offer robust support for its proposed construction. (D.I. 102 at 11-12) Plaintiff relies primarily on one portion of the '398 patent's specification to support its definition. (D.I. 102 at 12) That portion states that " multiplexing makes it possible to receive several services simultaneously, for example file transfer and program monitoring, etc." ('398 patent, col. 3:24-26) Defendants, for their part, do not address the term " multiplexing" in their opening or responsive claim construction briefs at all. (D.I. 99, 109) They also did not offer any arguments in support of their construction or against Plaintiff's proposed construction at oral argument. (Tr. at 41-60)
The Court concludes that, overall, Defendants' proposed construction is weaker than Plaintiff's. Defendants' construction of " multiplexing" would read the element out of the claim entirely. Claim 1 already requires " form[ing] a service multiplex[, ]" which does not differ in any apparent way from Defendants' proposal: " to create a multiplex[.]" ('398 patent, col. 6:46; D.I. 98, ex. A at 3) Thus, Defendants' construction would render " multiplexing" meaningless. Plaintiff's construction, on the other hand, is generally consistent with the patent specification, including the portion cited above. ('398 patent, col. 3:24-26)
Plaintiff does not provide an explanation for its use of the word " interleaving[, ]" but it appears to be sourced in part from Plaintiff's expert, Adam Goldberg, who stated in Plaintiff's technology tutorial that " multiplexed ... mean[s] that numerous audio video streams are interleaved together..." (D.I. 108) Although the Scheduling Order states that a technology tutorial may not be used to argue claim constructions, (D.I. 18 at ¶ 10), it nonetheless appears that Plaintiff's use of the word " interleaving" is not meaningfully contested, and its use here generally comports with how other courts have construed the terms " multiplexed" or " multiplexing" (albeit in different patents). See, e.g., OPTi Inc. v. nVidia Corp., No. Civ.A.2:04-CV-377TJW, 2006 WL 1133331, at *10 (E.D. Tex. Apr. 24, 2006) (construing " multiplexed" to involve " carry[ing] more than one type of specific information in a time interleaved manner"); Oki Am., Inc. v. Advanced Micro Devices, Inc., No. C 04-03171 CRB, 2006 WL 335369, at *15-18 (N.D. Cal. Feb. 14, 2006) (noting that " multiplexing" can have several meanings, at least one of which involves " interleaving"); Orbsak, LLC v. Gen. Instrument Corp., No. 99 C 6684, 2002 WL 172446, at *3 (N.D.Ill. Feb. 4, 2001) (noting that the court had previously construed " 'multiplexing' to 'involve interleaving multiple signals onto a single carrier.'").
Thus, the Court will adopt Plaintiff's proposed construction of " multiplexing": " interleaving two or more data signals together."
3. " service multiplex"
Defendants offer a construction of " service multiplex" as follows: " [a] stream of all the digital data carrying one or more services within a single physical channel[.]" (D.I. 98, ex. A at 4) Plaintiff asserts that " service multiplex" is properly construed as " [a] stream or streams of all the digital data carrying one or more services." (Id.) The constructions are largely similar, with two differences: Defendants assert that the " service multiplex" must (1) take the form of a single stream ...