The opinion of the court was delivered by: Matthew F. Kennelly, District Judge
MEMORANDUM OPINION AND ORDER
Rowe International Corp. and Arachnid, Inc. have sued Ecast, Inc., Rock-Ola Manufacturing Corp., and View Interactive Entertainment Corp. claiming that they have infringed six patents owned by Arachnid and licensed to Rowe: U.S. Patent Nos. 5,355,302, 5,781,889, 6,397,189, 6,381,575, 5,848,398, and 6,970,834 (the Arachnid patents). Rowe also asserts that defendants have infringed U.S. Patent No. 6,598,230. Ecast has counterclaimed against AMI Entertainment, Inc. for infringement of U.S. Patent No. 5,341,350. The case is before the Court for construction of disputed language in the claims of these patents. The Court held a claim construction hearing on April 6, 2007.
Each of the patents at issue in this case involves computer jukeboxes and computer jukebox networks. Prior to the development of computer jukebox systems, conventional jukeboxes contained vinyl records, compact discs, or digital music files that users could select by paying a fee and pressing a button. These systems required the jukebox to house all the songs available for selection, thereby requiring the jukebox operator to visit each jukebox to update the music available. The operator also would visit the jukeboxes to collect money, information regarding how often songs were played, and other data. The song selections necessarily were limited by the storage space available at each jukebox.
The computer jukeboxes that are the subject of the patents at issue in this case each have a central management station that can distribute digital music to multiple jukeboxes. The central management station also stores advertisements and other information that can be transmitted to the jukeboxes. The computer jukebox system also allows the jukeboxes to store certain songs (for example, those that are frequently played), so that they do not have to be transmitted from the central management station repeatedly. In addition, the central management station can collect data regarding the songs being played, fees collected, etc., thereby eliminating the need for an operator to regularly visit each computer jukebox.
Construing the patent claims is the first step in a patent infringement case. See Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1373 (Fed. Cir. 2004). Claim construction is a question of law for the Court to decide. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995).
A court begins the analysis by examining the claim language itself. See HockersonHalberstadt, Inc. v. Avia Group Intern., Inc., 222 F.3d 951, 955 (Fed. Cir. 2000). The claim term's ordinary and customary meaning, as understood by persons skilled in the relevant technology, serves as the default meaning. See id. The Court may also consider additional intrinsic evidence, which includes the other parts of the patent, and the prosecution history of the patent, and extrinsic evidence, namely evidence that is not inherent in the patent itself.
Apart from the claim language, the most important type of intrinsic evidence is the specification. The specification consists of "a written description of the invention, and of the manner and process of making and using it" and a description of "the best mode contemplated by the inventor of carrying out his invention," followed by "one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112. The specification "is always highly relevant to the claim construction analysis . . . it is the single best guide to the meaning of a disputed term." Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)(citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
The Federal Circuit has repeatedly emphasized that the claims of a patent "must be construed so as to be consistent with the specification." Merck & Co. v. Teva Pharmaceuticals USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003). The court has also stated that it is important to bear in mind that "'the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim.'" Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (quoting Renishaw PLC v. Marposs SpA, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). This "full understanding" can be obtained, the court has indicated, only by careful review of the inventor's written description of the invention in the specification.
The written description does not limit the scope of the invention as described in the patent claim, because it sometimes describes just one way of practicing the invention -- the "preferred embodiment" of the invention. See Phillips, 415 F.3d at 1323; see 35 U.S.C. § 112. A patent applicant is not required to put into the written description section every conceivable embodiment of his invention. Sunrace Roots Enterprise Co. v. SRAM Corp., 336 F.3d 1298, 1305 (Fed. Cir. 2003); Rexnord, 174 F.3d at 1344.
For this reason, the Federal Circuit has cautioned that it is improper for a court to "import[ ] limitations from the specification into the claims absent a clear disclaimer of claim scope." Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1373 (Fed. Cir. 2007). The "clear disclaimer" requirement is satisfied only if there is "a clear disclosure that the patentee intended the claims to be limited as shown." MBO Laboratories, Inc. v. Becton Dickinson & Co., 474 F.3d 1323, 1334 (Fed. Cir. 2007); Phillips, 415 F.3d at 1323. In other words, a court cannot deviate from the ordinary meaning of a claim term simply by pointing to the written description or the identification of the "preferred embodiment" contained in the written description. Fuji Photo Film Co. v. Ficosa North America Corp., 299 F.2d 1313, 1325 (Fed. Cir. 2002).
Another important source of intrinsic evidence is the prosecution history of the patent. Like the specification, "the prosecution history provides evidence of how the PTO and the inventor understood the patent." Phillips, 415 F.3d at 1317. Though often not as clear as the specification, the prosecution history can show "whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id.
The Federal Circuit has authorized judges to rely on extrinsic evidence if the Court "deems it helpful in determining 'the true meaning of language used in the patent claims." Id. at 1318 (citing Markman, 52 F.3d at 980). The court has emphasized, however, that extrinsic evidence is "'less significant than the intrinsic record'" in determining the meaning of the patent claims. Phillips, 415 F.3d at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). Extrinsic evidence includes "all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980 (citation omitted). Extrinsic evidence, however, must be considered in the context of the intrinsic evidence. Phillips, 415 F.3d at 1319. Moreover, the Federal Circuit has noted that flaws are inherent in each type of extrinsic evidence, e.g., dictionary definitions and expert testimony, and courts must assess that evidence accordingly. Id.
Dictionaries may be used in claim interpretation, but only to "assist in understanding the commonly understood meaning of words," Phillips, 415 F.3d at 1322, and the Court must take care to "'scrutinize the intrinsic evidence in order to determine the most appropriate definition.'" Atofina v. Great Lakes Chemical Corp., 441 F.3d 991, 996 (Fed. Cir. 2006) (quoting Free Motion Fitness, Inc. v. Cybex International, Inc., 423 F.3d 1343, 1348-49 (Fed. Cir. 2005)). In Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996), the court stated that expert testimony about the meaning of claim terms may properly be used "only to help the court come to the proper understanding of the claims" and "may not be used to vary or contradict the claim language" or to "contradict the import of other parts of the specification." Id. at 1584. The court, however, has approved the use of expert testimony to explain how persons working in the relevant technological or scientific field would understand the meaning of terms used in the patent. Merck & Co. v. Teva Pharmaceuticals USA, Inc., 347 F.3d 1367, 1372 (Fed. Cir. 2003).
In Phillips, the Federal Circuit reconfirmed that "expert testimony can be useful to a court . . . to provide background on the technology at issue, to explain how an invention works, to ensure . . . the court's understanding of the technical aspects of the patent . . . , or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Phillips, 415 F.3d at 1318. Conversely, however, expert testimony that is "conclusory" -- in other words, unexplained or unsupported -- is "not useful to a court," and courts likewise should not rely on expert testimony that contradicts the intrinsic evidence. Id. With these standards in mind, the Court turns to the construction of the disputed terms in the patents at issue in this case.
The parties dispute the construction of five terms in the '302 patent, four in claim 1 and one in claim 3. Claim 1 discloses "[a] computer jukebox . . . comprising song selection means actuable by a user for generating a signal representing a song selected from a plurality of songs stored in said jukeboxes; a programmable computer memory storing digital data representing each selectable song stored in said jukebox and a catalog file including data for each stored song representing the identity of said song and the location in said computer memory of the digital data representing said song; a communication interface for receiving said digital song data, said song identity data and said storage space data . . . and . . . processing means responsive to a song selection signal for accessing said digital data representing a selected song from said computer memory to apply said song data to said digital to analog converter and said processing means being responsive to digital song data, song identity data and storage space data received by said communication interface to control the storage of said digital song data to update said jukebox.
Opening Brief, Ex. 1 at 8:44-9:8 (emphasis added). Claim 3 discloses a "computer jukebox as recited in claim 1 wherein said communication interface includes a modem."*fn1 Id. at 9:16-17 (emphasis added).
a. "Song Selection Means"
Both parties agree that "song selection means actuable by a user"is written in means-plus-function form. "An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure . . . in support thereof, and such claim shall be construed to cover the corresponding structure . . . described in the specification and equivalents thereof." 35 U.S.C. § 112, ¶ 6. To construe a claim written in means-plus-function form, the Court must identify the function recited in the claim and then identify the corresponding structure set forth in the written description that performs that particular function. See Globetrotter Software v. Elan Computer Group, 236 F.3d 1363, 1368 (Fed. Cir. 2001). A disclosed structure "qualifies as 'corresponding' structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim." Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005).
Plaintiffs contend that the recited function is "generating a signal representing a song selected from a plurality of songs stored in said jukebox." They contend that the structure is "one or more keys" because it is disclosed in the specification. The specification states that "one or more selection keys" are used to provide a user with an interactive interface to the computer jukebox. Opening Brief, Ex. 1 at 5:44-49. Plaintiffs argue that the term "keys" includes any type of key that can generate a signal, including a physical key on a keyboard or a virtual key on a visual touchscreen. Defendants agree with plaintiffs' recitation of the function. They contend, however, that the corresponding structure in the specification is "keys on a keyboard," which they argue cannot include keys on a visual touchscreen as proposed by plaintiffs.
The '302 patent specification does not teach that the invention can employ a visual touchscreen. The patent, therefore, does not "clearly link or associate" keys on a visual touchscreen with the agreed function. See Default Proof, 412 F.3d at 1298. Rather, the specification always identifies the term "selection keys" with the "keyboard" disclosed in figure 1, which is "a block diagram of the computer jukebox system of the present invention." See Opening Brief, Ex. 1 at 2:54-55; 5:42-51; 7:19-26. The Court agrees with defendants that figure 1 illustrates that the "keyboard" and "display" are separate items that are connected to the central processing unit by a bus. They are not, as plaintiffs contend, the same thing. Moreover, the specification always identifies "selection keys" as separate from the display. For example, the specification teaches that
[u]sing the bus 124, the processing circuit 121 also controls a visual display 125, one or more selection keys 123 and a coin bill detector 126 to provide the user with an interactive interface to the jukebox 13. The keys 123 provide signals representing user inputs such as displayed song selection. The display 125 displays alpha numeric information as well as pictorial graphics to interface with the user.
Id., Ex. 1 at 5:44-51. In short, the specification teaches that the visual display and selection keys are separate components of the invention.
Plaintiffs contend that even though the '302 patent does not disclose a visual touchscreen, the Court should look at claim 1 of the '398 patent, which does. Claim 1 of the '398 patent includes the phrase "song selection means displayed on said visual screen." Id., Ex. 5 at 9:55-59. Defendants point out that the '398 patent is not part of the '302 patent or its prosecution history and thus cannot provide "corresponding structure" for a means-plus-function element in the '302 patent. See Goldenberg v. Cytogen, Inc., 373 F.3d 1158, 1166-68 (Fed. Cir. 2004). Even were it permissible to look at the '398 patent to construe "song selection means" in the '302 patent, the disclosure of a visual touchscreen in the '398 patent does not support the construction proposed by plaintiffs. To the contrary, it merely highlights that the inventors knew how to claim a video touchscreen but chose not to do so in the '302 patent.
In sum, the Court construes "song selection means" in the '302 patent as "a keyboard that is separate from the display actuable by a user for generating a signal representing a song selected from a plurality of songs stored in the jukebox." The same construction applies to the term "means for permitting a user . . . to select at least one song . . ." in claims 1 and 7 of the '889 patent.
The digital jukebox described in the '302 patent includes "a catalog file including data for each stored song representing the identity of said song and the location in said computer memory of the digital data representing said song." Opening Brief, Ex. 1 at 5:18-19 (emphasis added). The specification states that it includes seven fields: title, classification (genre), song address (where the song is stored in the jukebox), song size, graphics address, graphics size, and play count. Id. at fig. 2; 2:56-58. Plaintiffs contend that "catalog file" means "a file that includes information associated with songs." Opening Brief at 7. Defendants contend that catalog file should be construed as "a data structure made up of song records, with each song record having the fields set forth in Figure 2." Resp. Brief at 6. In other words, defendants contend that the catalog file must include, for each song, data in each of the seven fields. Plaintiffs argue that the claim does not require that there be data in each field or category for each song.
Defendants' proposed construction amounts to an impermissible attempt to read the preferred embodiment in figure 2 as a limitation of the claim. Nazomi Comm., Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005). The plain language of the claim shows that the catalog file need have only two of the fields depicted in figure 2: "the identity of said song and the location in said computer memory of the digital data representing said song." Opening Brief, Ex. 1 at 8:55-58. Defendants' proposed construction disregards the claim language itself, which is the first place to look when construing disputed terms. See HockersonHalberstadt, 222 F.3d at 955. The Court therefore construes the term "catalog file" as "a file that includes information identifying a song and the location of the digital data representing the song in the computer memory." The same construction applies to the term "catalog file" in claims 2 and 10 of the '889 patent.
c. "Communication Interface"
The computer jukebox has a "communication interface for receiving" data from the central management system. Opening Brief, Ex. 1 at 8:59-61. Plaintiffs contend that this term means "a connection between components that allows communication from one component to the other." Id. at 8. Defendants contend that the term means "the point at which data is received by or sent from the jukebox from or to the central management station." Resp. Brief at 8. Defendants' construction would limit the communication interface to one that permits point-to-point communication between the jukeboxes and the central management station without intervening routing.
Defendants are again improperly attempting to read a limitation into the claim from the specification. They rely on the testimony of their expert, Dr. Sigurd Meldal, to argue that a person of ordinary skill in the art would understand that the communication interface is a point- to-point system because the central management system and the jukebox "use respective modems . . . to maintain serial communication on the transmission link" and the transmission link "may be a cable system such as a public or private telephone lines or the like." Resp. Brief, Ex. F at ¶¶ 37-40. However, as plaintiffs' expert, Dr. Bradley Dickinson, points out, a skilled artisan would understand that communication networks between computers do not require fixed transmission paths. Rather, "cable and telephone modems are regularly used to connect remote devices through multiple interconnections using networks that are not point-to-point." Reply Brief, Ex. 21 at ¶ 32.
The Court need not base its construction on the experts' opinions, however, because it is plain that defendants rely too heavily on the diagram in figure 1 to the exclusion of the actual claim language. The fact that the diagram in figure 1 shows a line between the modem in the jukebox and modem in the central management system does not mean that intervening devices such as repeater stations, routers, firewalls, and nodes cannot be utilized. The specification also describes embodiments that routinely use intervening routing devices, such as cable and telephone systems. Opening Brief, Ex. 1 at 3:30-32. Moreover, to the extent that figure 1 shows the limitation inferred by defendants, it is part of the specification. Space Sys./Loral, Inc. v. Lockheed Martin Corp., 405 F.3d 985, 987 (Fed. Cir. 2005) (written description requirement in specification includes "[w]ords, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.") (citation omitted). A limitation from the specification may not be imported into the claim in these circumstances. MBO Labs., 474 F.3d at 1334.The Court therefore construes "communication interface" as "the point at which data is received by or sent from the jukebox from or to the central management station." The same construction applies to the term "communication interface" in patents '889, '189, '575, '398, and '834.
The '302 patent discloses "processing means being responsive to digital song data, song identity data and storage space data received by said communication interface to control the storage of said digital song data to update said jukebox."Opening Brief, Ex. 1 at 8:67-9:8 (emphasis added). The parties agree that "processing means" is a means-plus-function claim. The parties also agree that the function disclosed in the claim is "being responsive to digital song data, song identity data and storage space data received by said communication interface to control the storage of said digital song data to update said jukebox." They dispute, however, how the disclosed function should be construed. The dispute centers on the proper construction of the terms "digital song data," "song identity data," and "storage space data."
Plaintiffs contend that "digital song data" is digital data representing at least one song. Defendants contend that "digital song data" means "the digital representations of a plurality of songs." Resp. Brief at 11. Defendants base their proposed construction on the preamble of claim 1, which discloses "[a] computer jukebox capable of being updated upon the receipt of digital data representing a plurality of songs . . . ." Opening Brief, Ex. 1 at 8:44-46. Plaintiffs argue that the language in the preamble merely describes an obvious characteristic of a jukebox: it receives data for multiple songs.
The Court adopts plaintiffs' construction of "digital song data." As plaintiffs point out, the specific claim limitation at issue is directed to "processing means responsive to a song selection signal for accessing said digital data representing a selected song," not a "plurality of songs." Id. at 8:67-68 (emphasis added). The language in the preamble quite clearly describes the computer jukebox's ability to receive data for multiple songs; it does not describe a limitation on "digital song data."
Plaintiffs contend that "song identity data" should be given its ordinary meaning: data that identifies a song. Defendants contend that "song identity data" means a song record having all seven fields set forth in figure 2 (title, classification, song address, etc.). Figure 2, however, is not part of the claim language. Moreover, defendants have offered no appropriate basis to import this limitation into the claim. Defendants point to independent claims in the '575 patent that disclose "song identity data" to support their proposed construction; they claim that in that patent, "song identity data" must include all seven data fields. As explained below in the construction of terms in the '575 patent, however, the Court does not construe "song identity data" to require that every song record include data in each of the seven fields in figure 2. Defendants have not demonstrated that "song identity data" should be given anything other than its plain meaning. The Court adopts plaintiffs' construction of "song identity data."
Plaintiffs contend that "storage space data" means "data from which the size of the digital song can be determined." Opening Brief at 9. Defendants' proposed construction is similar, but it includes a limitation that the song size be expressed in bytes.*fn2 In support, defendants point to a description of "song size field" in a preferred embodiment as "containing the number of bytes in length of the compressed digital data . . . ." Id., Ex. 1 at 3:54-56. As stated earlier, it is impermissible to import a limitation from the specification to the claim in these circumstances. Nazomi Comm., 403 F.3d at 1369. Though "storage space data" may be expressed in bytes, there is no limitation in the claim that prevents it from being expressed in some other unit of measurement.
Defendants contend that Arachnid further limited claim 1 during the prosecution history to overcome an objection to patentability based on the prior art. Defendants contend that Arachnid "expressly disavowed computer jukeboxes in which the songs are stored in 'fixed-size blocks.'" Resp. Brief at 12 (citing Ex. I at 4-5). Arachnid told the patent examiner that a prior art patent referred to as the Sidi patent does not disclose or suggest a computer jukebox having a communication interface for receiving 'storage space data' as recited in claims 1-5. Nor does Sidi disclose or suggest a processing means responsive to 'storage space data received by said communication interface to control the storage of said digital song data to update said jukebox' as recited in claims 1-5. Rather, the Sidi system stores the data in 'blocks which are fixed in size and fairly large.'  Since songs are of different lengths, the use of fixed sized blocks as disclosed in Sidi invariabl[y] results in wasted memory space. By contrast, the use of 'storage space data' as claimed in claims 1-5 allows the processing means accesses to perform memory management functions when new songs are added to the computer memory, thereby optimizing the available storage space in the memory . . . In view of the above, claims 1-5 are believed allowable over Sidi . . . . Claim 6 depends from claim 1 and is believed allowable over Sidi for the reasons discussed above.
Resp. Brief, Ex. I at 4-5, 9. Arachnid contends that it did not disclaim blocks of a fixed size when it distinguished its invention from Sidi because the Sidi patent discloses blocks of a fixed size only at the central server, not at the jukebox. Arachnid is correct that the Sidi patent discloses the use of hard disks for storage of large fixed size blocks only at the central server. It also discloses the use of "two buffer memories of equal capacity . . . " on outlet cards that are incorporated within the server.*fn3 Id., Ex. H at 1:62-64. The buffer memories in the Sidi patent receive data from a direct memory access channel server in the server, which in turn is connected to the hard disk. The buffer memories are controlled by an auxiliary processor in the outlet unit that enables the memories to alternate between emptying and filling with data at a high speed.
Id. at 1:62-2:2. The data in the buffers is then transferred to the outlets (akin to the jukeboxes in the patents-in-suit). The Sidi patent does not disclose how data is stored once it reaches the outlets.
It is easy to see how Arachnid's argument to the examiner has caused confusion. Indeed, Arachnid attempted to distinguish its invention from the Sidi patent because of its use of "storage space data" as opposed to Sidi's use of "blocks which are fixed in size and fairly large." Resp. Brief, Ex. I at 4-5, 9. A clearer way to distinguish the present invention from Sidi would have been to explain to the examiner that the present invention includes a means to efficiently store large amounts of data on the jukebox terminals ("storage space data"), in contrast to the Sidi patent, which does not address how data sent from the server and received by the outlets is stored.
A disclaimer during the prosecution of a patent must be clear and unambiguous before it can be used to limit the scope of a claim. See Invitrogen Corp. v. Biocrest Mfg. L.P., 327 F.3d 1364, 1367 (Fed. Cir. 2003).Because Sidi does not disclose how data is stored at the outlets, Arachnid could not have clearly and unambiguously disclaimed how such data is stored by distinguishing its invention from Sidi. Therefore, the Court declines to find such a disclaimer. The Court construes the function of the "processing means" as "being responsive to digital data representing at least one song, data representing one or more identifying characteristics of an individual song, and ...