Clear With Computers LLC v. Fishing Holdings LLC dba Ranger Boats, No. 6:2013cv00161 - Document 181 (E.D. Tex. 2014)
Court Description: MEMORANDUM OPINION AND ORDER. The Court interprets the claim language in this case in the manner set forth in this Order. Signed by Judge Leonard Davis on 06/12/14. (mll, )
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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION CLEAR WITH COMPUTERS, LLC, Plaintiff, vs. AGCO CORPORATION, Defendant. CLEAR WITH COMPUTERS, LLC, Plaintiff, vs. FISHING HOLDINGS, LLC dba RANGER BOATS, Defendant. § § § § § § § § § CASE NO. 6:12-CV-622 LEAD CASE § § § § § § § § § § § CASE NO. 6:13-CV-161 LEAD CASE MEMORANDUM OPINION AND ORDER This Memorandum Opinion construes the disputed claim terms in U.S. Patent Nos. 5,625,776 ( the 776 Patent ) and 7,606,739 ( the 739 Patent ) (collectively, the asserted patents ). On March 13, 2014, the parties presented arguments on the disputed claim terms at a Markman hearing. For the reasons stated below, the Court adopts the following constructions. BACKGROUND Plaintiff Clear with Computers, LLC ( CWC ) alleges that Defendants infringe the asserted patents. The asserted patents are part of a family that traces its priority to the application that issued as U.S. Patent No. 5,493,490, filed May 5, 1992. The Court has previously construed members of this family five separate times. 1 APPLICABLE LAW Claim Construction 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) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent s intrinsic evidence to define the patented invention s scope. Id. at 1313 1314; Bell Atl. Network Servs., Inc. v. Covad Commc ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims, the rest of the specification and the prosecution history. Phillips, 415 F.3d at 1312 13; Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary meaning as understood by one of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at 1312 13; Alloc, Inc. v. Int l Trade Comm n, 342 F.3d 1361, 1368 (Fed. Cir. 2003). Claim language guides the Court s construction of claim terms. Phillips, 415 F.3d at 1314. [T]he context in which a term is used in the asserted claim can be highly instructive. Id. Other claims, asserted and unasserted, can provide additional instruction because terms are normally used consistently throughout the patent. Id. Differences among claims, such as additional limitations in dependent claims, can provide further guidance. Id. 1 See Orion IP, LLC v. Xerox Corp., Case No. 6:07-cv-138, Docket No. 805 (E.D. Tex. Aug. 21, 2008) ( Xerox Order ); Orion IP, LLC v. Staples, Inc., 406 F. Supp. 2d 717 (E.D. Tex. 2005) ( Staples Order ); Orion IP, LLC v. Mercedes-Benz, LLC, Case No. 6:05-cv-322, Docket No. 488 (E.D. Tex. Apr. 10, 2007); Clear with Computers, LLC v. Hyundai Motor America, Inc., Case No. 6:09-cv-479, Docket No. 143 (E.D. Tex. Jan. 5, 2011) ( HMA Order ); and Clear with Computers, LLC v. Bergdorf Goodman, Inc., Case No. 6:09-cv- 481, Docket No. 169 (E.D. Tex. Jan. 5, 2011). 2 [C]laims must be read in view of the specification, of which they are a part. Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). [T]he 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. Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own terms, give a claim term a different meaning that it would otherwise possess, or disclaim or disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes terms possess their ordinary meaning, this presumption can be overcome by statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). This presumption does not arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004). The specification may also resolve ambiguous claim terms where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone. Teleflex, Inc., 299 F.3d at 1325. For example, [a] claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct. Globetrotter Software, Inc. v. Elam Computer Group Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, [a]lthough the specification may aid the court in interpreting the meaning of disputed language in the claims, particular embodiments and examples appearing in the specification will not generally be read into the claims. Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); see also Phillips, 415 F.3d at 1323. 3 The prosecution history is another tool to supply the proper context for claim construction because a patentee may define a term during prosecution of the patent. Home Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) ( As in the case of the specification, a patent applicant may define a term in prosecuting a patent ). The well- established doctrine of prosecution disclaimer preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution. Omega Eng g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The prosecution history must show that the patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during prosecution to obtain claim allowance. Middleton, Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002); see also Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994 (Fed. Cir. 2003) ( The disclaimer . . . must be effected with reasonable clarity and deliberateness. ) (citations omitted)). Indeed, by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover. Spectrum Int l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 79 (Fed. Cir. 1988) (quotation omitted). As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public s reliance on definitive statements made during prosecution. Omega Eng g, Inc., 334 F.3d at 1324. Finally, the Court gives reasoned deference to prior claim construction rulings involving common terms in related patents. See Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04cv-450, 2006 WL 1751779, at *4 (E.D. Tex. June 21, 2006) (holding prior claim construction proceedings involving the same patents-in-suit are entitled to reasoned deference under the broad principals of stare decisis and the goals articulated by the Supreme Court in Markman, even though stare decisis may not be applicable per se. ); Omega Engineering, Inc. v. Raytek 4 Corp., 334 F.3d 1314, 1334 (Fed.Cir.2003)( [W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning. ). I. Agreed Terms Term Agreed Construction static database ( 739 Patent, claims 1, 11, 20) A database that is not alterable during generation of a composite visual output II. Claim Construction of Disputed Terms customized proposal ( 776 Patent, claim 61; 739 Patent, claims 2, 3, 12, 20, and 21) CWC s Proposed Construction Defendants Proposed Construction No construction needed; if the term needs to be information for selling equipment to a construed it should be given its plain and specific, identifiable customer reflecting the ordinary meaning. customer's desired features and uses of the equipment ( 776 Patent claim 61) information for selling a tangible product to a specific, identifiable customer reflecting the customer s desired features and uses of the tangible product ( 739 Patent, claims 2, 3, 12, 20, and 21) This term appears in both the preamble and body of claim 61 of the 776 Patent. Defendants argue the term in the preamble serves as an antecedent basis for the term in the body. Docket No. 111 at 6. According to Defendants, the preamble limits the claim because [t]he entire purpose of the 776 Patent and claim 61 is to generate a customized proposal for selling equipment to particular customers. Id. Defendants contend the claim language and specification directly support their proposed constructions. Id. at 7 8. CWC responds that the Court already has ruled on the scope of the limitation of this claim term in the Staples Order. Docket No. 114 at 2. While CWC does not disagree that the preamble is limiting, CWC claims that limitation should not be part of the term customized 5 proposal. Id. at 3. CWC also objects to the limitation of a specific, identifiable customer because the specification makes clear that the invention is directed to providing customized proposals for potential customers. Docket No. 114 at 3 (citing 776 Patent at col. 2:18 21) (emphasis added). Defendants have failed to adequately support their proposed constructions. Defendants proposed construction of claim 61 of the 776 Patent is redundant of the preamble, which clarifies that customized proposal is for selling equipment to particular customers. 2 There is no need to import readily understood claim language into the construction this term. Defendants limitation of reflecting the customer's desired features and uses of the equipment also repeats the claim language that clarifies the customized proposal is based on receiving . . . information identifying a customer s desired equipment features and uses. 776 Patent, claim 61. Likewise, Defendants proposed references to a tangible product and the customer s desired features and uses in their proposal for the 739 claims are addressed by surrounding claim language and should not be imported into the construction of the term customized proposal. In sum, Defendants proposals are nothing more than reading the plain meaning of these terms in the context of the claims as whole; therefore constructions are unnecessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) ( Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy. ) Accordingly, this term does not require construction. 2 The Court discusses whether customers must be specific, identifiable in analyzing the customer term. 6 customer ( 776 patent, claim 61; 739 Patent, claims 1, 11, and 20) CWC s Proposed Construction Defendants Proposed Construction No construction needed; if the term needs to be the identifiable person providing answers to construed it should be given its plain and the questions presented ordinary meaning. CWC argues that the Court should construe this term according to its plain meaning, consistent with its prior ruling in the Staples Order. Docket No. 114 at 3. Defendants respond that Staples addressed a different dispute and that [u]nlike the prior cases, the parties here dispute whether a customer is an identifiable person, and whether that identifiable person is the one providing answers to the questions presented. Docket No. 111 at 10. Defendants argue that the intrinsic evidence repeatedly and consistently refers to a specific, particular, or individual customer as the person providing answers to the questions. Id. at 10. Defendants limitation of an identifiable 3 customer is unclear and lacks sufficient support. The specifications describe specific or particular customers. See, e.g., 739 Patent at col. 2:40 42 ( each customized proposal is customized for a particular customer ); 776 Patent at col. 2:34 37 ( The customized proposal, therefore, contains . . . information that is all of interest to and relevant to a specific customer. ). However, Defendants have not shown why it is necessary to make such customers identifiable or what doing so means. Additionally, Defendants limitation of providing answers to the questions presented is addressed by the surrounding claim language and should not be imported into the construction of the generic term customer. The Court has already held that according to the claim language . . . the customer is the person who answers the plurality of questions relating to the product s features and uses. Staples Order at 6. It follows that the claimed customer is not a class of people that provide 3 In other terms, Defendants require customer to be a specific, identifiable customer for the same reasons that Defendants include identifiable in this term. See, e.g., customized proposal and customized visual output proposals. The Court rejects adding specific, identifiable to those constructions for the same reasons it rejects adding identifiable to the construction of this term. 7 generic answers based on market research. See 739 Patent, col. 2. Therefore, Defendants limitation of a customer as the person providing answers to the questions presented is nothing more than the plain meaning of the term when read in context of the claim as a whole. Accordingly, this term does not require construction. information identifying a customer's desired equipment features and uses ( 776 Patent, claim 61); plurality of questions relating to features and uses of the equipment ( 776 Patent, claim 61); and plurality of answers to the questions, the answers specifying the customer's desired equipment features and uses ( 776 Patent, claim 61) CWC s Proposed Construction Defendants Proposed Construction No construction needed; if the terms need to be information identifying a customer's desired construed they should be given its plain and equipment features and uses as information ordinary meaning. separately identifying a customer's desired equipment features and the customer's desired equipment uses plurality of questions relating to features and uses of the equipment as at least two questions, at least one of which relates to features of the equipment and at least one of which relates to uses of the equipment plurality of answers to the questions, the answers specifying the customer's desired equipment features and uses as answers separately identifying the customer's desired features of the equipment and the customer's desired uses of the equipment Defendants present similar arguments for these related terms. For the first term, Defendants argue the phrase desired equipment modifies both features and uses. Docket No. 111 at 13. Defendants further argue [t]he specification of the 776 Patent also demonstrates that the claimed information separately identifies the customer s desired equipment features and the customer s desired equipment uses. Id. at 14 (emphasis by Defendants). For the next term, Defendants argue of the equipment modifies both features and uses and that at least 8 one question must relate to the equipment features and a separate question must relate to equipment uses. Id. at 14 15. For the third term, Defendants argue desired equipment modifies both features and uses and that at least one answer must relate to the equipment features and a separate answer must relate to equipment uses. Id. at 15. Therefore, Defendants propose constructions that clearly state there is one at least one question and answer regarding a customer s desired equipment features and at least one other question and answer regarding a customer s desired equipment use. CWC responds that the claim scope as already been resolved in the Staples Order s construction of plurality of questions relating to the features and uses of the products, and that the term needs no construction. Docket No. 114 at 4. Defendants argument that there must be separate questions relating to the equipment features and uses has already been rejected. Staples at 725 26 ( The specification does not require questions and answers on both features and uses . . . . [N]owhere is there any statement that the invention requires at a minimum a question and an answer on a customer s desired options (or features) and a question and an answer on a customer s desired interests (or uses). ). However, Defendants are correct that desired equipment modifies both features and uses and that of the equipment modifies both features and uses. See, e.g., 776 Patent at col. 2:20 28 (describing both a customer s desired equipment uses and the customer s features of interest in the equipment). Such reading of the term is consistent with its plain and ordinary meaning; therefore it is not necessary to adopt more complicated language. Accordingly, this term does not require construction. 9 equipment environment pictures ( 776 Patent, claim 61) and an image of an environment in which the product for sale is to be used ( 739 Patent, claims 1, 11, and 20) CWC s Proposed Construction Defendants Proposed Construction No construction needed; if the terms need to be equipment environment pictures as two or construed each should be given its plain and more pictures, illustrating an environment in ordinary meaning. which the equipment may be used, which do not include an image of the equipment an image of an environment in which the product for sale is to be used as an image, illustrating an environment in which the product for sale may be used, which does not include an image of the product for sale Defendants argue that the product for sale cannot be displayed in equipment environment pictures and the image of the environment cannot include the picture (or image) of the particular product for sale because the claims separately identify environment pictures (or images) and product pictures (or images). Docket No. 111 at 18 19. Therefore, Defendants are arguing the environment pictures (or images) cannot contain the particular product for sale. CWC responds that there is nothing in the intrinsic record to support Defendants argument. Docket No. 114 at 5. Defendants arguments are not substantially different from the arguments the Court rejected in the Staples and HMA Orders. The Defendants in those cases argued that environment pictures [images] should not include pictures of products. See Staples at 731; HMA at 9. As the Court has previously ruled, [t]he patentee used the terms (1) product pictures, (2) environment pictures, and (3) text segments to refer to three separate types of pictures. But that does not necessarily mean that a product picture must be devoid of anything but the product or that an environment picture must be devoid of anything but the environment. Staples at 732. Defendants attempt to distinguish their position by clarifying that they only propose to exclude the particular product for sale from being in the environment picture, whereas 10 the Defendants in the HMA case argued the environment picture must be devoid of any product. Docket No. 111 at 19, n.4. Defendants fail to show, however, why such distinction has any bearing on the analysis. Accordingly, these terms do not require construction. picture ( 776 Patent, claim 61 and 739 Patent claims 1, 11, and 21) CWC s Proposed Construction Defendants Proposed Construction No construction needed; if the term needs to be an image construed it should be given its plain and ordinary meaning. Defendants argue the 739 Patent uses the terms image and picture interchangeably, as Defendants argue the examiner did during prosecution of the 776 Patent. Docket No. 111 at 36. Defendants also argue that the plain and ordinary meaning of picture refers to a photograph, which Defendants submit is too narrow because in the context of the patents-in-suit, a picture relate[s] to any visual, non-textual representation of the subject (e.g., product or environment), such as drawings, caricatures and computer generated images. Id. at 36 37. CWC replies that everything in the intrinsic record defines a picture in accordance with its plain and ordinary meaning. Whether the picture is a sketch or of photographic quality is irrelevant. Docket No. 114 at 5. The claims use picture and image interchangeably. See, e.g., 739 Patent claim 1 (describing the selecting of a product and environment image from a static database that stores pictures ). However, Defendants fail to show that such equivalency requires a construction. There is nothing in the intrinsic record that indicates the patentee used anything other than the plain and ordinary meaning of the term picture. Nor have Defendants shown, beyond a conclusory statement, that the plain and ordinary meaning of picture is limited to photographs and thus contrary to its use in the asserted patents. 11 Accordingly, this term does not require construction. compiling the gathered equipment information in the computer into the customized proposal ( 776 Patent claim 61) CWC s Proposed Construction Defendants Proposed Construction No construction needed; if the term needs to be dynamically assembling in the computer a construed it should be given its plain and particular equipment picture, a particular ordinary meaning. equipment environment picture, and a particular text segment each of which was separately selected in response to at least one of the answers to create the customized proposal Defendants first argue that the word dynamically must be added to the Court s prior construction of compiling because the entire purpose of th[e] invention, as expressed throughout the 776 specification, is to solve various problems by dynamically creating customized, printed proposals for potential purchasers of a product. Docket No. 111 at 21. Defendants next argue that their construction is necessary to clarify the gathered equipment information refers to the information that was retrieved in step (c) of the claim (i.e., particular equipment picture; particular environment picture; and particular text segment; ). Id. at 21 22. Defendants addition of dynamically is unnecessary and potentially confusing. The claim language already requires the compiling to be done automatically. 776 Patent claim 61 ( [A]utomically compiling the gathered equipment information . . . . ). Defendants have not shown why the Court should add dynamically and whether that word would replace the claim term automatically. Regarding what the gathered equipment information refers to, the parties agreed at oral argument that the plain meaning of the term is that the gathered equipment information of step (d) is the same information that was retrieved in step (c). Docket No. 145 at 52:9 12, 55:17 56:3. Therefore, the Defendants proposed construction listing out the gathered 12 equipment information is unnecessary. See U.S. Surgical Corp., 103 F.3d at 1568 ( Claim construction . . . is not an obligatory exercise in redundancy. ). Accordingly, this term does not require construction. customized visual output ( 739 Patent, claims 11, 12, 13, 17, and 18); single composite customized visual output ( 739 Patent, claim 11); single composite visual output ( 739 Patent, claims 1, 2, 11, and 20) CWC s Proposed Construction Defendants Proposed Construction a single image that includes the selected text a single, displayed image (i) that combines the and an image of a product in a product selected text, the selected image of a product, environment and the selected image of a product environment (ii) for selling a tangible product to a specific, identifiable customer based upon the customer's desired features and uses of the tangible product for sale CWC argues the Court should adopt its prior construction of these terms as a single image that includes the selected text and an image of a product in a product environment. Docket No. 114 at 7 8 (quoting HMA Order at 10). Defendants argue their modification of the Court s construction in the HMA Order is necessary to clarify the visual output is the output that displays the customized proposals that are generated by the alleged invention. Docket No. 111 at 9. Defendants additional limitations are redundant in light of the surrounding claim language. See, e.g., 739 Patent, claim 1 (the customized visual output includes the tangible product for sale and created based on a customer s desired feature and desired uses ). Removing the redundant language from Defendants construction leaves it equivalent to CWC s. Therefore, there is no dispute over this claim term. Accordingly, these terms are construed as a single image that includes the selected text and an image of a product in a product environment. 13 tangible product ( 739 Patent, claims 1, 11, and 20) CWC s Proposed Construction Defendants Proposed Construction No construction needed; if the term needs to be a specific, identifiable product construed it should be given its plain and ordinary meaning. Defendants argue their proposal will avoid jury confusion and/or inevitable last-minute (and unnecessary) disputes over [the] plain and ordinary meaning [of tangible product ] at trial. Docket No. 111 at 35. Defendants claim [t]he 739 Patent explicitly describes and discloses the output of the claimed computer-implemented technology as a customized proposal for a specific product of interest to the consumer that is identifiable by the features and uses specified in the customer s answers to a plurality of questions about the product. Id. CWC replies that [s]omething tangible is nothing more than something that is touchable. Words such as specific and identifiable are merely backdoor attempts to read in limitations Defendants have urged repeatedly in customized proposal, [ ]customized visual output, customer, and of particular interest to the customer. Docket. No. 114 at 8. Introducing specific and identifiable needlessly adds complication and confusion to a well-understood term. The claim language identifies a tangible product as one that is for sale. 739 Patent, claim 1. Likewise, the Background and Summary of the Invention uses the context of the car industry to describe a car dealership creating a customized proposal highlighting information for a car that a customer may take on a test drive. 739 Patent, cols 1 2. These descriptions are fully consistent with the ordinary meaning of a tangible product as a product that exists and is for sale. Accordingly, this term does not require construction. 14 automatically selecting by the computer system, in response to at least one of the received answers, an image of a tangible product for sale, an image of an environment in which the product for sale is to be used and a text segment comprised of a description of the product specifications and performances that are of particular interest to the customer ( 739 Patent, claim 1, 11); and automatically selects, in response to at least one of the answers, an image of a tangible product for sale, an image of an environment in which the product for sale is to be used and a text segment comprised of a description of the product specifications and performances that are of particular interest to the customer ( 739 Patent, claim 20) CWC s Proposed Construction Defendants Proposed Construction No construction needed; if the terms need to be automatically selecting by the computer construed they should be given its plain and system, in response to at least one of the ordinary meaning. received answers, an image of a tangible product for sale [of particular interest to the customer], an image of an environment in which the product for sale is to be used [of particular interest to the customer] and a text segment comprised of a description of the product specifications and performances [of particular interest to the customer] Defendants argue their proposed constructions are intended to clarify that the phrase of particular interest to the customer applies to each of the following limitations in the 739 Patent, claims 1, 11, and 20: (1) an image of a tangible product for sale, (2) an image of an environment in which the product for sale is to be used, and (3) a text segment comprised of a description of the product specifications and performances. Docket No. 111 at 24. Defendants urge that [t]he claims are clear, the specification is clear, and the parties and [the Federal Circuit] panel in the Hyundai case were clear that the phrase of particular interest to the customer applies to each of the limitations . . . . Id. at 25. Defendants argue that judicial estoppel should preclude CWC from arguing otherwise. Id. at 25 26. CWC argues that at the Federal Circuit, it presented an alternative argument where it claimed the plain and ordinary meaning of this phrase does not require of particular interest to apply to each of the selections. Docket No. 114 at 9 (citing id., Ex. 1, Clear with Computers v. 15 Hyundai Motor Am., Inc., No. 2012-1291, 2/5/2013 Hr g Tr. at 30:22 31:1). Thus, CWC claims it is being consistent by now arguing the same thing. See Docket No. 114 at 9. The dispute involving these terms in the Xerox and Staples Orders focused on whether a particular product picture, a particular product environment picture, and a particular text segment are selected in three separate steps. See Xerox at 6 (citing Staples at 735) (finding this selected information must be selected in three separate steps). The current dispute concerns whether the phrase of a particular interest modifies each of these selections. CWC addressed this issue both at post-trial in the Hyundai case and on appeal at the Federal Circuit. Notably, during the Hyundai post-trial briefing, the parties and the Court understood that the selections must be of particular interest to a customer. Hyundai, No. 6:09-cv-479, Docket No. 413 at 4-5 (E.D. Tex. Jan. 9, 2012) (holding [t]he particular interest limitation requires that the selected environment in which a product is displayed be of particular interest to the customer ). Likewise, at the Federal Circuit, CWC s primary argument assumed the selected environmental image was of particular interest to the customer. Docket No. 114, Ex. 1 at 29, Clear with Computers v. Hyundai Motor Am., Inc., No. 2012-1291, Feb. 5, 2013 Hr g Tr. at 28:11 29:16). Additionally, the specification treats each of the selections as being of particular interest to the customer. 739 Patent at col. 2:31 35 (The customized proposal . . . contains pictures, textual descriptions, and pricing information that is all of interest to and relevant to a specific customer, since all of the pictures and text were linked together based upon the customer s answers. ); col. 4:50 5:44 (describing Figs. 1A and 1B, which illustrate the environmental pictures, product options and text segment are based on the customer s needs, desires, or interests); col. 11:23 28 (explaining the individual feature, benefits, and environments . . . are 16 of particular interest to the individual customer ). The specification thus confirms that of particular interest modifies all the selections. Accordingly, these terms are construed as automatically selecting by the computer system, in response to at least one of the received answers, an image of a tangible product for sale, an image of an environment in which the product for sale is to be used, and a text segment comprised of a description of the product specifications and performances, wherein the product, environment, and text segment are each of particular interest to the customer. of particular interest to the customer ( 739 patent, claims 1, 11 and 20) CWC s Proposed Construction Defendants Proposed Construction No construction needed; if the term needs to be desired by the specific, identifiable customer as construed it should be given its plain and specified by his/her answers to the questions ordinary meaning. and not generic information about the product provided to all customers of the product Defendants argue that the Court should construe this disputed term because particular interest is a subjective term of degree relating to a person s mental preferences ( interest ) modified by an indefinite adjective ( particular ). Docket No. 111 at 15 16. Defendants contend that because the 739 Patent teaches away from predetermined, generic brochures for all customers, what the claim refers to as of particular interest to the customer cannot include generic information. Id. at 16. Defendants also argue that construction of this term must provide an objective criteria for determining whether something is of particular interest and therefore, met by the claims. In the context of the 739 Patent, the interest of a specific, identifiable customer is derived from the answers to questions posed to the customer. Id. at 17. CWC responds that Defendants are improperly attempting to import their definition of customer here. Docket No. 114 at 10. CWC further claims the term does not require any 17 objective criteria and that the Federal Circuit held of particular interest to the customer does not require a construction. Docket No. 114 at 10. The Court has already discussed the claim scope and construction of customer above, and there is no need to incorporate that discussion into the term of particular interest. Defendants negative limitation of not generic information about the product provided to all customers of the product is too broad and could exclude information that is provided to more than one customer. For example, multiple customers may answer individual questions in a similar manner and thereby receive the same information that is of particular interest to them, but this does not necessarily mean the information is generic or outside the scope of the claims. The specification describes the invention as a system that queries a customer to determine his or her interests and creates customized proposal based on those interests. 739 Patent cols. 1 2. The selected product image, environment image, and text are based on the interests of the customer, which is consistent with the ordinary meaning that they are of particular interest to the customer. Accordingly, this term does not require construction. active database ( 739 Patent, claims 1, 11, and 20) CWC s Proposed Construction a database that is alterable based on user input Defendants Proposed Construction a database that is alterable during generation of a composite visual output based on user input Defendants argue that the claims make clear that the active database is only alterable during generation of the composite visual output. Docket No. 111 at 27. According to Defendants, the active database is only used in the context of generating the claimed single composite visual output. Id. Defendants claim this temporal limitation is also needed because 18 CWC s infringement contentions accuse instrumentalities that are wholly unrelated to the customized visual output. 4 CWC responds that the Court should adopt its construction from the HMA Order. Docket No. 114 at 10. CWC argues that [n]othing in the plain language of the claims states during generation of a composite visual output. Id. CWC also criticizes Defendants for improperly relying on infringement theories as a basis for their proposed construction. Id. at 11. Noninfringement disputes are a separate inquiry from claim construction. Defendants concerns about the breadth of CWC s infringement contentions, however valid, are not a legitimate reason to add their proposed temporal limitation to the claim. Additionally, Defendants proposal, as written, is not more limiting than CWC s. Both parties appear to assume Defendants construction mandates that the active database is alterable only during generation of a composite visual output, though the proposed language is not so restricting. Defendants did not address this inconsistency at oral argument. Assuming the Defendants meant that an active database is alterable only during generation of a composite visual output, the Defendants did not justify such a negative limitation. The active database clearly is alterable during the generation, but the claim does not prohibit the active database from being altered at other times. Though the preferred embodiment describes that the active database is typically altered during the generation of a composite visual output, such a limitation is not mandatory, nor is it found in the claim language. See 739 Patent at col. 6:3 11 ( Customer-related information may be entered . . . typically beginning at the time the program is first started, and may continue to be entered intermittently throughout the time the 4 Defendants cite CWC s infringement contentions against Defendant JCB for example. Docket No. 111 at 27. CWC identifies the Find a Dealer form, wherein a user enters their zip code into a form to generate a map showing Recommended JCB Dealer[s] as meeting this limitation however, this form is not used to create the JCB product profile page, which is the identified single composite visual output of claim 11 of the 739 Patent. 19 program is running, ). Therefore, the Court adopts its prior construction expressed in the HMA Order. Accordingly, an active database is a database that is alterable based on user input. customer information ( 739 Patent, claims 1, 11, 20) CWC s Proposed Construction Defendants Proposed Construction No construction needed; if the term needs to be information about the customer that is used to construed it should be given its plain and generate the customized visual output ordinary meaning. Defendants argue their proposal properly explains that the customer information is used to generate the customized visual output. Docket No. 111 at 28. Defendants explain that [b]ecause customer information is within the wherein clause, a clause having the purpose of providing more detail on how the customized visual output is generated, the customer information is necessarily used in generating the customized visual output. Id. at 29. Defendants submit that the specification and the prosecution history similarly explain that the customer information is linked with all the other information that is used to generate the customized visual proposal. Id. at 30. CWC replies that Defendants wherein and linking arguments cannot and do not overcome the heavy presumption that the terms in a patent claim should be given their ordinary meanings. Docket No. 114 at 11. According to Defendants, customer information is a well understood term and there is nothing in the claim language [that says] the [customized visual output] is based on the customer information. Docket No. 145 at 70:22 24. Defendants added requirement that the information is used to generate the customized visual output is redundant and unnecessary in light of the surrounding claim language. For example, claim 1 of the 739 Patent recites a single composite visual output is generated by a selection device that is operatively interconnected to the active database, which contains the 20 customer information, in the same way the selection device is operatively connected to a static database, which contains the product text and pictures. Thus, Defendants are correct that the customer information is used in the generation of the customized visual output. However, such a reading is nothing more than the plain meaning of the term read in context of the claim. CWC did not rebut Defendants citations to the specification and prosecution history, which are consistent with this reading. Accordingly, this term does not require construction. dynamically building a template utilizing the selection device to fill in the template to produce the [single] customized visual output ( 739 Patent, claims 1, 11, 20) CWC s Proposed Construction Defendants Proposed Construction constructing a template that may be modified dynamically constructing a customized to fit selected images and text utilizing the template filled in by the selection device using selection device; customer information selected from the active database and text and pictures from the static See single composite visual output and database customized visual output ; plain and ordinary meaning for remaining terms. Defendants argue that [w]hile the Court construed dynamically building a template in [the] HMA case, that construction did not consider the dispute between the parties in this action, i.e., the meaning of [the] utilizing the selection device to fill in the template to produce the customized visual output/single composite visual output language. Docket No. 111 at 32. Defendants submit that given the claimed wherein clause, the active database (storing customer information) and the static database (storing text and pictures) are necessary for generating the customized visual output. Id. at 32 33. Otherwise, Defendants argue, the claim would be vague and ambiguous as to what the selection device is using to fill in the template. Id. at 33. Finally, Defendants criticized CWC s construction for not including the word dynamically. Defendants assert dynamically should be included or construed because the 21 patentee added it during prosecution to explain that the system, method or computer readable product according to the present disclosure dynamically builds a template. Id. at 33 34 (quoting id., Ex. J, 5/27/2009 Amendment Under 37 C.F.R. §1.116 and Statement of Substance of Interview at 14) (emphasis added). CWC responds that [t]he term wherein and the remaining claim terms have not changed since the Court ruled on this term in the HMA Order. The reliance on the prosecution history is also misplaced and was also before this Court previously. Docket No. 114 at 11. The amendment which added the word dynamically shows the patentee used the phrase dynamically building a template to mean the process of utilizing a selection device to fill in the template. Docket No. 111, Ex. J at 14 (5/27/2009 Amendment under 37 C.F.R. §1.116 and Statement of Substance of Interview). Utilizing a selection device to fill in the template is part of the claim language. 739 Patent, claim 1. Therefore construing the term dynamically building a template utilizing the selection device to fill in the template . . . does not need to repeat the word dynamically as part of the construction as Defendants suggest. Additionally, Defendants language restating the roles of the active database, static database, and customer information is unnecessary in light of the surrounding claim language. For example, claim 1 of the 739 Patent recites that the system dynamically building a template utilizing the selection device . . . to produce the single composite visual output, and that the selection device is operatively interconnected to an active database [and] a static database. Incorporating these claim limitations in the construction of the dynamically building terms is thus improper. Removing this language from Defendants proposal results in essentially the same construction the Court adopted in the HMA Order and that CWC advocates. 22 Accordingly, they dynamically building terms are construed as constructing a template that may be modified to fit selected images and text utilizing the selection device. CONCLUSION For the foregoing reasons, the Court interprets the claim language in this case in the manner set forth above. For ease of reference, the Court s claim interpretations are set forth in a table in Appendix A. So ORDERED and SIGNED this 12th day of June, 2014. __________________________________ LEONARD DAVIS UNITED STATES DISTRICT JUDGE 23 APPENDIX A Claim Term customized proposal customer information identifying a customer's desired equipment features and uses Court s Construction No construction is necessary. No construction is necessary. No construction is necessary. plurality of questions relating to features and uses of the equipment plurality of answers to the questions, the answers specifying the customer's desired equipment features and uses equipment environment pictures ( 776 Patent, claim 61) and an image of an environment in which the product for sale is to be used ( 739 Patent, claims 1, 11, and 20) picture ( 776 Patent, claim 61 and 739 Patent claims 1, 11, and 21) compiling the gathered equipment information in the computer into the customized proposal ( 776 Patent claim 61) customized visual output ( 739 Patent, claims 11, 12, 13, 17, and 18); single composite customized visual output ( 739 Patent, claim 11); single composite visual output ( 739 Patent, claims 1, 2, 11, and 20) tangible product ( 739 Patent, claims 1, 11, and 20) automatically selecting by the computer system, in response to at least one of the received answers, an image of a tangible product for sale, an image of an environment in which the product for sale is to be used and a text segment comprised of a description of the product specifications and performances that are of particular interest to the customer ( 739 Patent, claim 1, 11); and automatically selects, in response to at least one of the answers, an image of a tangible product for sale, an image of an environment in which the product for sale is to be used and a text segment comprised of a description of the product specifications and performances that are of particular interest to the customer ( 739 Patent, claim 20) No construction is necessary. No construction is necessary. No construction is necessary. No construction is necessary. No construction is necessary. a single image that includes the selected text and an image of a product in a product environment No construction is necessary. automatically selecting by the computer system, in response to at least one of the received answers, an image of a tangible product for sale, an image of an environment in which the product for sale is to be used, and a text segment comprised of a description of the product specifications and performances, wherein the product, environment, and text segment are each of particular interest to the customer 24 Claim Term of particular interest to the customer ( 739 patent, claims 1, 11 and 20) active database ( 739 Patent, claims 1, 11, and 20) customer information ( 739 Patent, claims 1, 11, 20) dynamically building a template utilizing the selection device to fill in the template to produce the [single] customized visual output ( 739 Patent, claims 1, 11, 20) Court s Construction No construction is necessary. a database that is alterable based on user input No construction is necessary. constructing a template that may be modified to fit selected images and text utilizing the selection device 25
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