The opinion of the court was delivered by: Matthew F. Kennelly, United States District Judge
CORRECTED MEMORANDUM OPINION AND ORDER
Engate is the owner by assignment of the twelve patents involved in this case, all of which relate to real-time transcription systems used by court reporters and attorneys.*fn1 Engate has sued the defendants, three court reporting agencies, for infringement. Recognizing that the first step in any infringement case is claim construction, see K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362 (Fed. Cir. 1999), the parties submitted briefs and claim charts in support of their respective positions concerning how the various disputed claim elements should be construed; on January 3, 2003, they also presented oral argument on the issue. The purpose of this Memorandum Opinion and Order is to set forth the Court's construction of the disputed claim language.
The construction of the claims of a patent is a question of law to be determined by the court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995). In determining the meaning of the terms of the claims, the court considers "intrinsic" evidence, which consists of the language of the claims, the specification of the patent, and the prosecution history. Id. at 979; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Claims are construed objectively, without reference to the accused device, and only to the extent necessary to resolve the controversy between the parties. Vivid Technologies, Inc. v. American Science, 200 F.3d 795, 803 (Fed. Cir. 1999).
After filing their initial briefs on claim construction, the parties resolved many of their differences and filed supplemental charts highlighting the claim terms about which they still disagree. One additional dispute was resolved at the hearing on January 3 when the defendants notified the Court and Engate that they accepted Engate's construction of claim 15 of U.S. Patent No. 5,940,800. We address the remaining disputes below.
The phrase "real time" appears throughout the patents, each of which addresses either a real-time reporting system or a specific feature or apparatus to make such a system easier to use. Engate asks us to construe this phrase to mean:
as instantaneously as possible, limited by a
reporter's ability to transcribe text, the CAT
[computer-aided transcription] system's ability to
convert the transcribed text into readable text, and
the ability of the utilized software and hardware to
display the converted text.
Engate's Claim Construction Brief, p. 3. The defendants argue that "real time" means that a written, video or audio record "is generated virtually simultaneously during the speaking of words during a testimonial proceeding so that the user can immediately use the record." Defendants' Claim Construction Brief, p. 4.
The Court was initially fuzzy as to whether the parties' constructions actually posed a conflict; after all, even in the context of real time reporting involving a court reporter, the words do not magically appear on a screen once spoken, but appear only after the court reporter has entered corresponding keystrokes and the transcription system has interpreted those keystrokes. At the January 3 hearing, the defendants explained that the conflict exists because of the "utilized software and hardware" language in Engate's definition. The defendants have no quarrel with the limitations concerning human (court reporter) capability and CAT system capability allowed under Engate's construction. They argue, however, that the way Engate has worded the limitation regarding software and hardware, it is really no limitation at all, and that the claim could encompass, for example, hardware consisting of "a can and a string," or the situation where a party takes a disk from the CAT system back to his office and downloads the disk to his hard drive — an event which could take place hours or days after the signals were originally transcribed. Under anyone's definition, neither of these scenarios produces a "real time" result. Thus, although these situations are unlikely — especially because the parties using the patented inventions will in all probability be more technologically sophisticated than that — we agree that Engate's definition is insufficient to capture the spirit of the technology. Accordingly, we construe the phrase "real time" to mean: as instantaneously as possible, limited by the ability of the reporter to transcribe text, the ability of the CAT system to convert the transcribed text into readable text, and the ability of the software/hardware that is directly connected to the transcription means to display the converted text.
The `704 patent — the patent from which all of the other patents-in-suit stem — is entitled "down-line transcription system for manipulating real-time testimony"; it was issued November 29, 1994 and discloses "[a] transcription network having linked computer terminals for a court reporter and for examining, defending and associate attorneys. . . ." U.S. Patent No. 5,369,704, abstract. The patented invention "relates to a transcription system used by court reporters; and more particularly, it relates to a method and apparatus incorporating an automatic transcription system for providing real-time use and manipulation of transcribed testimony by attorneys, judges, court reporters, witnesses and clients." Id., col. 1, lines 6-11. In addition to the real time language, which appears throughout the `704 patent, the parties disagree about the interpretation of certain elements of claims 1 and 16, which claim:
1. A transcription network comprising:
transcription means for generating transcript
signals representative of spoken words in real time;
an attorney's terminal receiving the transcript
signals generated by said transcription means for
an associate's terminal receiving the transcript
signals generated by said transcription means for
said associate's terminal providing for the
generation of messages to be transmitted to said
attorney's terminal, and, prior to transmissions,
providing for the association of the generated
messages with selected portions of the transcript
said attorney's terminal providing for the display
of the selected portions of the transcript signals
through access to the associated messages received
from said associate's terminal.
16. A transcription network comprising:
transcription means for producing transcript signals
representative of spoken words in real time;
a plurality of examining terminals receiving and
displaying transcript signals produced by said
a first communication link connected to provide for
the exchange of messages between said examining
a plurality of defending terminals receiving and
displaying transcript signals produced by said
transcription means; and
a second communication link isolated from said first
communication link and connected to provide for the
exchange of messages between said defending
U.S. Patent No. 5,369,704, col. 33, lines 4-19; col. 34, lines 36-51.
The parties first dispute whether these claims dictate that the associates' terminals receive the transcript signals via the attorneys' terminals. The defendants argue that the claims disclose terminals connected in series. Engate argues that that setup is simply one embodiment and that serial connection is not required under the claim language; according to Engate, the claims also read on a "hub and spokes" setup where all of the terminals receive the transcribed signals directly from the court reporter. On this the Court agrees with Engate; the claim language and the specification both suggest that the associates' terminals may receive the initial transcript signal the same way as the attorneys' terminals do, i.e., directly from the CAT system. See id., col. 7, lines 12-18 ("Specifically, the attorney's terminal and associate's terminal receive text signals representative of spoken words from the reporter's terminal via the communication link, and display the text."); col. 16, lines 13-15 ("Referring back to FIG. 1, CAT system 13 communicates a sentence down-line to terminals 15, 16, 17, 18 when that sentence has been fully transcribed."). To support their contention, the defendants point to a passage from the "preferred embodiment" section of the specification. The cited passage unquestionably describes a system wherein the CAT system communicates directly with the lead examining and lead defending attorney terminals, which then in turn communicate with the respective down-line associates' terminals. See U.S. Patent No. 5,369,704, col. 8, line 67 — col. 9, line 9. But claims are not limited to the preferred embodiment disclosed in the specification. Thus, although the preferred embodiment routes the communication from the reporter's terminal through the CAT system to the lead attorneys terminals and then to the associate attorneys' terminals, nothing in the claim language requires that setup. We are therefore not at liberty to read this limitation into the claims. See Interactive Gift Express, Inc. v. Compuserve Inc., 231 F.3d 859, 874 (Fed. Cir. 2000) (citing Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 865 (Fed. Cir. 1988); SRI Int'l. v. Matsushita Electric Corp. of American, 775 F.2d 1107, 1121 (Fed. Cir. 1985)).
The parties also dispute whether the associate's terminal must receive the transcript signals in "real time." The defendants argue that they must; Engate argues that no such limitation appears in the claim language. Based on the claim language, the Court agrees with the defendants. Although it is true that the element relating to the associate's terminal does not contain the phrase "real time," the same is true of the element relating to the attorney's terminal. U.S. Patent No. 5,369,704, col. 33, lines 9-10, 7-8. And no one disputes that the attorney's terminal receives the transcript signals in real time. Moreover, in light of our ruling above that the associates' terminals may receive the transcription directly from the CAT system, this is the only logical reading of the claims, and indeed, the same language we cited above compels this conclusion. Finally, as the defendants note, to the extent the claim language leaves any room for doubt, the prosecution history confirms that the associates' terminals receive and display the transcript signals in real time. See Bennett's PTO Response of March 28, 1994, p. 12 ("Receiving and displaying the transcript signals in real time, an associates [sic] terminal also provides for the generation of messages and the association of such messages with selected portions of the transcribed signals. . . . In contradistinction, Sprague, et al discloses none of these limitations directed to providing contextual message exchange in a real time transcription environment. . . .").
3. The `395 Patent — Claim 7
United States Patent No. 6,026,395, issued February 15, 2000, discloses a "down-line transcription system having real-time generation of transcript and searching thereof"; the patented invention relates to "a method and apparatus for providing context sensitive searching of a current transcript, other case evidence and case law which may be locally or remotely located." U.S. Patent No. ...