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March 17, 2003


The opinion of the court was delivered by: Joan B. Gottschall, United States District Judge


Plaintiff Databurst, LLC ("Databurst") has brought this patent infringement action against Checkfree Corporation ("Checkfree") alleging that Checkfree has infringed Databurst's United States Patent No. 5,007,084 ("'084 patent"). This opinion construes disputed claims of the `084 patent to determine their scope and meaning. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). Each party has submitted its respective position on claim construction, enabling the court to address the disputed claim elements as a matter of law.

Patent '084

The '084 patent covers a bill payment system for sending, receiving and authorizing payment of bills that consists of three general components. According to Checkfree, the '084 patent relates to a "system for broadcasted billing information and allowing a user to pay a bill." (Checkfree Mot. at 3.) Checkfree describes the system as containing three components: (1) broadcast equipment that prepares and broadcasts billing information; (2) a Payment Authorization and Information Device ("PAID") at a user's location; and (3) an Information Center that receives and processes payment instructions from a user.

Under the system as described by Checkfree, a supplier (such as a credit card issuer) generates bill data for its customers and broadcast equipment (the first component) reads the bill data and "pushes" it out to all users. Checkfree describes the information as "pushed" (not pulled) because the user does nothing to retrieve the data. According to Checkfree, the user has a special device called a PAID (the second component) that automatically receives the bill data for all users, but selects only that portion of the bill data belonging to that particular user. The user may then use the PAID (which has a keyboard) to send instructions to the Information Center (the third component) which then directs a transfer of funds to pay the bill. The user may also use the PAID to notify the supplier of a change of address.

Databurst, on the other hand, describes the '084 patent in broader terms and denies that the patent is a "push" device. According to Databurst, the '084 patent relates to "an apparatus that delivers, receives, and facilitates payment of a bill." (Databurst Mot. at 3.) Databurst agrees that there are three components, but describes them as follows: (1) equipment that prepares and transmits billing information; (2) a telecommunications system; (3) a PAID at the location of the user which receives the billing information and allows a user to deliver an order to make payment of an electronic bill. According to Databurst, the '084 patent would cover a system where a supplier sends only an individual user's billing information to the user.

Databurst argues that the claims of the '084 patent encompass an apparatus (such as Checkfree's) that utilizes the Internet to deliver billing information for a single user who can then authorize payment. On the other hand, Checkfree argues that such an apparatus would fall outside the scope of the '084 patent because the '084 patent only contemplates the telecommunication of billing data for all users and cannot cover a system that transmits bill payment information for only a single user.

Claim Construction Principles

An infringement analysis is a two-step process. The first step is determining the meaning and scope of the patent claims allegedly infringed, also known as claim construction. Mahurkar v. Arrow Int'l, Inc., 160 F. Supp.2d 927, 932 (N.D.Ill. 2001) (citing Markman, 52 F.3d at 976). Courts must construe the claims as a matter of law before turning to the second step, the factual application of those claims to the accused products. Id.

The American patent system attempts to both secure the patentee's rights and to put others on notice of what the patentee has removed from the public domain for the life of the patent. Arachnid, Inc. v. Merit Ind., Inc., 201 F. Supp.2d 883, 887 (N.D.Ill. 2002). In light of these goals, the court first looks to the language of the patent itself, including the claims, the specification, and the prosecution history, as the primary source for construing patent claims. Id. The language of the claim defines the scope and meaning of that claim. York Products, Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996). The language of the claims is to be given its ordinary and accustomed meaning. Johnson Worldwide Assoc., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999). There are two instances in which the court may give a claim term a meaning outside of the ordinary one. When the patentee has chosen to be his own lexicographer, the court may allow a special definition so long as it is clearly stated in the patent specification or history. Id. at 990; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The second occasion arises when the terms used by the patentee "so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used." Zebco, 175 F.3d at 990.

Second, the court looks to the patent specification, which must contain a written description of the invention that is clear and complete enough to enable those of ordinary skill in the art to make and use it. Vitronics, 90 F.3d at 1582. The specification is "always highly relevant" and is the "single best guide to the meaning" of a disputed term. Id. All claims must be read in view of the specification, which acts as a sort of dictionary to explain the invention and may also help to define the terms used in the claims. Markman, 52 F.3d at 979.

Third, the court may also consider the prosecution history of the patent, which contains the complete record of the proceedings before the Patent and Trademark Office, including any express representations made by the patentee regarding the scope of the claims. Vitronics, 90 F.3d at 1582. Often significant in determining the scope of a claim, the prosecution history can and should be used to understand the language used in the claim. Id. Such history may include an examination of the prior art, which may give guidance as to what the patent does and does not cover. Id. at 1583.

Finally, extrinsic evidence, such as expert and inventor testimony, dictionaries and learned treatises, may be considered only to assist the court in understanding the patent, not to vary or contradict the terms of the claims. Markman, 52 F.3d at 980-81. Extrinsic evidence should be relied upon only if the analysis of intrinsic evidence fails to resolve an ambiguity in the disputed claim term. Vitronics, 90 F.3d at 1584. Judges are free to consult dictionaries at any time to better understand the underlying technology, and may rely on dictionary definitions as the ordinary and accustomed meaning of a term, as long as that definition does not contradict any definition found in the patent itself. Id. at 1584, n. 6. A court may rely on prior art to aid in the court's understanding and to demonstrate how a disputed term is used by those skilled in the art. Id. at 1584. Opinion testimony of experts ...

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