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West View Research, LLC v. Bmw of North America, LLC

United States District Court, D. Delaware

March 5, 2019


          Brian E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington, DE Adam Garson, Frederic G. Ludwig, III, GAZDZINSKI & ASSOCIATES, PC, San Diego, CA Attorneys for Plaintiffs

          Brian A. Biggs, Denise Seastone Kraft, DLA PIPER, Wilmington, DE David R. Knudson, DLA PIPER, San Diego, C A. Joseph Lavelle, Andrew N. Stein, Joshua Kresh, DLA PIPER, Washington, D.C. Attorneys for Defendants


          STARK, U.S. District Judge

         Plaintiff West View Research, LLC ("Plaintiff) filed suit against Defendants BMW of North America, LLC and BMW Manufacturing Co., LLC (collectively, "Defendants") on October 17, 2016, alleging infringement of U.S. Patent No. 9, 299, 053 (the '"053 Patent"). (D.I. 1) The patent-in-suit relates to the provision of certain services, including the delivery of chattels, generally directed to some mobile device.

         Presently before the Court is the issue of claim construction. The parties completed briefing on November 9, 2018. (D.I. 96, 99, 103, 106) The Court held a claim construction hearing on December 3, 2018. (See D.I. Ill) ("Tr.")



         The ultimate question of the proper construction of a patent is a question of law. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-91 (1996)). "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. AWHCorp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citation and internal quotation marks omitted). "[T]here is no magic formula or catechism for conducting claim construction." Id. at 1324. Instead, the court is free to attach the appropriate weight to appropriate sources "in light of the statutes and policies that inform patent law." Id.

         "[T]he 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." Id. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent." Id. At 1321 (internal quotation marks omitted). The patent "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." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).

         While "the claims themselves provide substantial guidance as to the meaning of particular claim terms," the context of the surrounding words of the claim also must be considered. Phillips, 415 F.3d at 1314. Furthermore, "[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment.... [b]ecause claim terms are normally used consistently throughout the patent." Id. (internal citation omitted).

         It is likewise true that "[differences among claims can also be a useful guide .... For example, 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 (internal citation omitted). This "presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).

         It is also possible that "the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)) (alteration in original) (internal quotation marks omitted).

         In addition to the specification, a court "should also consider the patent's prosecution history, if it is in evidence." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). The prosecution history, which is "intrinsic evidence," "consists of the complete record of the proceedings before the [Patent and Trademark Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d at 1317. "[T]he 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.

         "In some cases, ... the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period." Teva, 135 S.Ct. at 841. "Extrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the meaning of a term to those of skill in the relevant art because such dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "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." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be useful to the court," it is "less reliable" than intrinsic evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously describes the scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d at 1583).

         Finally, "[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." 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) (quoting Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).


         A patent claim is indefinite if, "viewed in light of the specification and prosecution history, [it fails to] inform those skilled in the art about the scope of the invention with reasonable certainty." Nautilus, Inc. v. BiosigInstruments, Inc., 134 S.Ct. 2120, 2129 (2014). A claim may be indefinite if the patent does not convey with reasonable certainty how to measure a claimed feature. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341 (Fed. Cir. 2015). But "[i]f such an understanding of how to measure the claimed [feature] was within the scope of knowledge possessed by one of ordinary skill in the art, there is no requirement for the specification to identify a particular measurement technique." Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1319 (Fed. Cir. 2015).


         A. "obtain the one or more chattels in substantially automated fashion and without having to specifically enter address data"[2]

         Plaintiff obtain delivery or possession of one or more chattels without having to manually type or enter address data into a user interface of a computerized device

         Defendants Indefinite

         Court obtain the one or more chattels by requiring the user to do no more than: (i) authenticate him/herself as a user, (ii) perform such incidental acts necessary to have information entered automatically into a computerized device, and/or (iii) confirm any relevant information necessary for the delivery of the chattel

         The parties dispute whether the term "substantially automated" renders the claim indefinite. Plaintiff notes that the term is found only in the claim's preamble, and that subsequent claim limitations set forth a series of (mostly) automated steps that together define "substantially automated." (D.I. 96 at 2-3) Defendants counter that the claim sets forth no bounds as to how much a user may be required to do before the process is no longer "substantially automated." (D.I. 99 at 7-8) ("Can competitors require entry of all this information 'by hand' to avoid the 'substantially automated' limitation and hence not infringe? Is manually entering half the data, or manually validating the data entered automatically outside the claim?").

         At oral argument, Plaintiff agreed that "substantially automated" does not equate to "without having to specifically enter address data," as that limitation is provided for explicitly (and distinctly from "substantially automated"). (Tr. at 8)

         Turning to the specification, it becomes clear that "substantially automated" means a user may obtain the one or more chattels by authenticating him/herself as a user, and may optionally perform a few relatively simple tasks (including confirming information) necessary to initiate the delivery, as long as all other steps are performed automatically by a computer system or by a third party.

         The specification states that "[t]he transfer of information to the client device may be fully automated, conditional upon assent from the user, or fully manual as desired." '053 Patent, col. 14 11. 62-64. Conditioning an automated delivery on "assent from the user" brings the process out of the realm of "fully automated" to "substantially automated." The specification also discusses how a user may retrieve a chattel by approaching a kiosk and authenticating him/herself as a user and confirming relevant information. This may be done, for example, by username/password, id. at col. 15 11. 4-8 ("The window or applet includes a user name/password feature, wherein the distant user may instruct their client software to initiate certain algorithms or actions, such as transmission of personal information."), an RFTD device (that "automatically provide[s] the kiosk/module 110 with the user's information"), or a USB key (that may be plugged into the kiosk, whereupon the user can "confirm or cancel" the shipping/retrieval of the chattel), id. at col. 16 11. 10-22. However, the substance of the information that may be provided by the user (e.g, names, addresses, credit card information) is not entered manually. Id. at col. 14 11. 30-36 ("In use, the user manually or automatically establishes a connection . . . thereby allowing for transfer of data relevant to the impending transaction, such as the user's home address, credit card payment information, etc.... [obviating] the user having to [] stand at the kiosk and manually enter the information."); col. 1911. 55-64 (discussing that user may swipe credit card to initiate payment).

         This is the understanding a person of ordinary skill in the art would have as to the scope of the claims, with reasonable certainty. (See D.I. 98 at ¶¶ 21-23, 26) Defendants have failed to prove the contrary by clear and convincing evidence.

         B. "location-based service"[3]

         Plaintiff a service whose performance is at least in part specific to or predicated on a location of, or specified by, a recipient of the service

         Defendants Indefinite

         Court a service whose performance is at least in part specific to or predicated on a location of, or specified by, a recipient of the service

         Plaintiff argues that even if this term is not defined in the specification, it is a well-known term of art and the inventors did not seek to redefine it. (D.I. 96 at 7-8) Defendants contend that it is indefinite. (D.I. 99 at 9-10) The Court concludes that the specification and claims meaningfully distinguish between location-based and non-location-based services, especially in relation to mobile devices, and Defendants have failed to prove that the term is indefinite.

         Although the specification never uses the term "location-based service," the specification does provide one example of a user selecting a location to which a chattel would be delivered. '053 Patent, col. 15 11. 48-56. Turning to the claims, independent claim 141 recites that "a first service" may be provided to the user of a "mobile computerized electronic apparatus." Id. at col. 49 11. 31-33. Dependent claim 142, which depends from claim 141, introduces the disputed term ...

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