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Billingnetwork Patent, Inc v. Electronic Network Systems

November 9, 2012


The opinion of the court was delivered by: Judge James B. Zagel


Plaintiff Billingnetwork Patent, Inc. ("BNP") accuses Defendants Electronic Network Systems, Inc. ("ENS") and Ingenix, Inc. ("Ingenix") of infringing United States Patent No. 6,674,229 ("'229 Patent"). On July 30, 2012, the Court conducted a hearing during which it heard evidence and argument regarding the construction of four different terms contained in Claim 1 of the '229 Patent. The Court's construction of these terms is set forth below.


Plaintiff filed its application for the '229 Patent on October 20, 1999 and the U.S. Patent and Trademark Office (PTO) issued it on April 16, 2002. The '229 Patent discloses a browser-based system that allows business operators to input and receive party billing information in real-time by the use of a browser and which also performs the billing function of producing itemized bills to responsible parties. BNP is the current assignee of the patent. *fn1 Claim 1 of the '229 Patent, which is the only claim at issue here, reads as follows (disputed terms are in bold):

An integrated internet facilitated billing, data processing, and communication system comprising: a database server and a home page of a website which provides access via an internet service provider (ISP) to said database server by a plurality of browser-based subscribers each of which have electronic access to said home page via a modem and the ISP; said home page providing only secure access by each browser-based subscriber to one of a plurality of subscriber areas within said system; means for providing electronic transfer of substantially only billing and data entry forms to the browser-based subscriber upon request, data entered on said forms, when electronically returned to a corresponding said subscriber area, then entered into said database server; said database server then, utilizing an appropriate application software thereon, producing billing invoices and statements to clients and customers for each corresponding browser-based subscriber ; mean for providing real time electronic viewing and query access of data and billing stored in said database server by each corresponding browser-based subscriber; a PC type computer electronically connected to said database server for controlling said forms as required and responding to queries entered by each browser based subscriber.


A. Generally

A patent infringement analysis involves two steps. The first step, claim construction, is a determination of the meaning and scope of the asserted patent claims. Claim construction is a matter of law for the court, subject to de novo review on appeal. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) ( en banc ), aff'd 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The second step is for the trier of fact to determine whether the accused product or method falls within the scope of the properly construed claims. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1467 (Fed. Cir. 1998) (en banc). Claim construction is to be based primarily on the "intrinsic evidence" of the patent (in order of importance): the claim language, the patent specification, *fn2 and the prosecution history *fn3 of the patent. MBO Labs., Inc. v. Becton, Dickinson & Co. , 474 F.3d 1323, 1329 (Fed. Cir. 2007); Phillips v. AWH Corp. , 415 F.3d 1303, 1315 (Fed Cir. 2005) (en banc). "[T]he claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips , 415 F.3d at 1312. See also Gillette Co. v. Energizer Holdings, Inc. , 405 F.3d 1367, 1370 (Fed. Cir. 2005) ("In construing claims the analytical focus must begin and remain centered on the language of the claims themselves."). The words in a claim usually carry their "ordinary and customary meaning," which is "the meaning that the term[s] would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application" in the context of the entire patent. Phillips , 415 F.3d at 1312-13. "[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent" in light of the specification, prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art. Id. at 1332; Phillips , 415 F.3d at 1313; Markman , 517 U.S. at 370. *fn4

In addition to the claim language, the 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." Phillips , 415 F.3d at 1315 (citing Vitronics , 90 F.3d at 1582) (internal quotation marks omitted).

The claim language need not necessarily have a customary and ordinary meaning because a patentee may act (at his considerable peril) as his own "lexicographer" and give words special meaning by clearly defining a patent term in the specification or prosecution history. Typhoon Touch Techs., Inc. v. Dell, Inc. , 659 F.3d 1376, 1382 (Fed. Cir. 2011). The specification itself may also reveal an intentional disclaimer, or disavowal, of claim scope by the inventor, in which case, "the inventor's intention, as expressed in the specification, is regarded as dispositive." Phillips , 415 F.3d at 1316. See also Alloc, Inc. v. Int'l Trade Comm'n , 342 F.3d 1361, 1370 (Fed. Cir. 2003) (holding that despite the absence of the word "play" in floor panel patent claims, the claimed invention must have included a play limitation because the claim language recited floor system features in which a play limitation was necessarily present, the specification read as a whole led to the "inescapable conclusion" of a play limitation, and the "specification also distinguished the prior art on the basis of play").

Courts are cautioned against reading an inappropriate limitation from the specification into the claims. Phillips , 415 F.3d at 1320 ("one of the cardinal sins of patent law"). See also Retractable Technologies, Inc. v. Becton, Dickinson & Co. , 653 F.3d 1296, 1305 (Fed. Cir. 2011) ("There is a fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims . . . In reviewing the intrinsic record to construe the claims, we strive to capture the scope of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow the claim language to become divorced from what the specification conveys is the invention.") (internal citation omitted); Kara Tech., Inc. v., Inc. , 582 F.3d 1341, 1348 (Fed. Cir. 2009) ("The claims, not specification embodiments, define the scope of patent protection. The patentee is entitled to the full scope of his claims, and we will not limit him to his preferred embodiment or import a limitation from the specification into the claims.").

Beyond the specification a court may consider, if in evidence, a patent's prosecution history-the "undisputed public record" of proceedings in the Patent and Trademark Office-to ascertain the true meaning of patent claim language. Markman , 52 F.3d at 980. "Yet because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes." Phillips , 415 F.3d at 1317. See also Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1380-82 (Fed.Cir.2002) (ambiguity of prosecution history made it less relevant to claim construction). "Nonetheless, the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Phillips , 415 F.3d at 1317. See also Schwing GmbH v. Putzmeister Aktiengesellschaft , 305 F.3d 1318, 1324 (Fed. Cir. 2002) ("Although prosecution history can be a useful tool for interpreting claim terms, it cannot be used to limit the scope of a claim unless the applicant took a position before the PTO that would lead a competitor to believe that the applicant had disavowed coverage of the relevant subject matter.").

Only when ambiguity remains after consulting the intrinsic evidence may the court resort to "extrinsic" evidence external to the claim language and file history to construe the claim terms. See generally Helmsderfer v. Bobrick Washroom Equip., Inc. , 527 F.3d 1379, 1382 (Fed. Cir. 2008); LB Plastics, Inc. v. Amerimax Home Prods., Inc. , 499 F.3d 1303, 1308 (Fed. Cir. 2007). Dictionaries, treatises, and inventor testimony, extrinsic evidence such as reasoned and well supported expert testimony may be useful to provide background on the technology, explain how the ...

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