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Vps, LLC (D/B/A Virtual Photo Store, LLC v. Smugmug

November 9, 2012

VPS, LLC (D/B/A VIRTUAL PHOTO STORE, LLC), PLAINTIFF,
v.
SMUGMUG, INC; DANIEL GIN PHOTOGRAPHY; SNO STUDIOS; WELSH VIDEO PRODUCTIONS, INC.; J.W. LEE PHOTOGRAPHY; AND CHICAGOLAND EVENT PHOTOGRAPHERS, DEFENDANTS.



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

MEMORANDUM OPINION AND ORDER

Plaintiff VPS, LLC, accuses Defendants SmugMug, Inc., Daniel Gin Photography, SNO Studios, Welsh Video Productions, Inc., J.W. Lee Photography; and Chicagoland Event Photographers of infringing three U.S. patents. The patents are U.S. Patent No. 6,321,231 ("'231 patent"), U.S. Patent No. 6,332,146 ("'146 patent"), and U.S. Patent No. 7,487,155 ("'155 patent"). All three patents concern a system and method for the centralized storage of digital images. On August 6, 2012, the Court conducted a hearing during which it heard evidence and argument regarding the construction of several different claims of all three patents. The Court's construction of these claims is set forth below.

I. BACKGROUND

The U.S. Patent and Trademark Office (PTO) issued the '231 patent in late 2001 (filed on August 11, 1997), the '146 patent in late 2001 (filed July 19, 2000), and the '155 patent in early 2009 (filed December 6, 2000). VPS is the current assignee of each patent. These three patents concern a system and method for the centralized storage of digital images. Providers of images may permit users to access them. Users authorized to access these images may order prints of the images or elect to have the images routed to another user or to another location. Images are not accessible by unauthorized users.

For viewing or tasks other than printing and routing, the system employs a lower-resolution copy of the stored images, which requires relatively lower bandwidth communication.

Defendant SmugMug, Inc. operates an online system for hosting, viewing, sharing, printing, and selling digital images at its website www.smugmug.com. Plaintiff VPS alleges that the SmugMug system offers image providers the storage, sharing, viewing, printing, routing, and security features of the claimed invention.

VPS accuses Defendants of infringing three U.S. patents: (1) U.S. Patent No. 6,321,231 ("'231 patent"), (2) U.S. Patent No. 6,332,146 ("'146 patent"), and (3) U.S. Patent No. 7,487,155 ("'155 patent"). I begin with some boilerplate for the reason that I have not included it in any recent opinion.

II. THE LAW OF CLAIM CONSTRUCTION

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,*fn1 and the prosecution history*fn2 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.*fn3

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. Stamps.com, 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 invention works, or to establish that a particular term in the patent has a particular meaning in the pertinent art. Phillips, 415 F.3d at 1317-18.

B. Means-Plus-Function Limitations (Claims 9-20)

Under 35 U.S.C. § 112, ¶ 6 ("Patent Act"), a patentee may express a claim element in "means-plus-function" form, stating a claim limitation as "a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. § 112, ¶ 6. Means-plus-function claiming applies only to purely functional elements that do not provide sufficient structure to perform the recited function. Phillips, 415 F.3d at 1311; Watts v. XL Sys., Inc., 232 F.3d 877, 880-81 (Fed. Cir. 2000).

A claim element is presumed to be in means-plus-function form subject to § 112, ¶ 6 if the element contains the word "means" and recites a function. Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir. 2000). To construct such an element and apply § 112, ¶ 6 a court must first identify the function of the element and then identify the corresponding structure in the specification that performs the recited function. See Inventio AG v. Thyssenkrupp Elevator Am. Corp., 649 F.3d 1350, 1355 (Fed. Cir. 2011); Micro Chem., Inc. v. Great Plains Chem. Co., Inc., 194 F.3d 1250, 1257 (Fed. Cir. 1999). § 112, ¶ 6 does not permit incorporation of structure from the specification beyond that necessary to perform the claimed function. This means-plus-function presumption is rebutted if the claim itself recites sufficient structure, material, or acts to perform the claimed function. A claim element recites sufficient structure if "the term, as the name for structure, has a reasonably well understood meaning in the art." Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996).

If a claim element does not use the word "means," there is a strong presumption that the term is not a means-plus-function limitation and that § 112, ¶ 6 does not apply. Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999). This presumption can be overcome only if the claimed structure is not sufficient to perform the recited functions or if the claim element invokes purely functional terms. Microprocesser Enhancement v. Texas Instruments, 520 F.3d 1367, 1374-75 (Fed. Cir. 2008) (reasoning that even if a claim does not use the conventional means-plus-function format, functional language may still limit the claims). The Federal Circuit has "seldom held that a limitation not using the term 'means' must be considered to be in means-plus-function form, and the circumstances must be unusual to overcome the presumption." Mass. Inst. of Tech. & Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1356 (Fed. Cir. 2006) ("MIT v. Abacus Software").

I. CLAIM CONSTRUCTION ANALYSIS

A. Asserted Claims

VPS asserts five independent claims as infringed by the defendants: claim 74 of the '231 patent (claim '231/74); claims '146/1, 12, and 17; and claim '155/1. VPS also asserts that nine dependent claims are infringed; however, the parties have not requested that the Court construe any terms of those dependent claims.

Of the asserted independent claims, three recite digital image management systems: claim '231/74; claim '146/12; and claim '155/1; and two recite methods for printing or managing digital images: claims '146/1 and 17.

B. Construction of Disputed Claim Terms

1. [claims '231/74, '146/1, '146/12, '146/17, '155/1] transparent/transparency

The parties do not quarrel over the definition of the word transparency, which the specifications describe as the prevention of access to and visibility of a stored digital image. See '231 patent col.11, ll.41-50. At issue is the proper construction of the claim elements containing the word transparency.

Defendants argue that across all five claims, transparency should be construed to mean that "all users who are not explicitly authorized by an image provider to access such provider's digital images are prevented by the system from accessing any such images and even from being able to tell that any such provider has stored any images on the system." Defendants base their construction on the specification description of transparency common to all five asserted patents (see '231 patent, col.11, ll.41-50; '146 patent, col.11, ll.42-51; '155 patents, col.11, ll.39-47), arguing that "the specification is always highly relevant to the claim construction analysis." Phillips, 415 F.3d at 1315.

Plaintiff contends that the word transparency ought to be construed according to its plain meaning ("not visible") within the context of each individual claim. In other words, the claim terms each explain specific relationships of transparency-that is, the images subject to transparency and the parties for whom the images are transparent. Plaintiff argues the file history comports with its plain language interpretation because the PTO examined the claims individually and made its determination that each claim was patentable over the prior art based on the specific transparency features of each individual claim.

The Court agrees with Plaintiff's plain language construction because the individual claims express particular transparent relationships. Specifically, the claims describe transparency of images for "all users except users identified by the first digital image provider" ('231/74 and '146/12), transparency between a first and second user authorized by two different digital image providers ('146/1), transparency of a second set of images to a first authorized user ('146/17), and transparency between a first and second image provider ('155/1). While Defendants did construe transparency in light of the specifications, their construction papers over the subtleties of the claim language and narrows the scope of the claims. See Kara Tech., 582 F.3d at 1348 ("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.").

The Court construes transparency according to its plain meaning of "not visible."

2. system/method

The term system is part of the preambles of asserted claims '231/74, '146/12, and '155/1:

Claim Preamble, plus transitional language

'231/7 "A digital image management and order delivery 4 system comprising . . . " '146/1 "A digital image management and delivery system 2 comprising . . . " '155/1 "A digital image management system comprising . . . " The term method is part of the preambles of asserted claims '146/1 and 17:

Claim Preamble, plus transitional language

'146/1 "A method for printing digital images, the method comprising the steps of . . . "

'146/1 "A method of managing digital images, the method 7 comprising the steps of . . . "

At issue is whether the above preambles should be treated as limitations of their corresponding claims. The preamble of a claim is an introductory statement that gives context to the invention by stating a basic purpose or intended use of the invention. See Symantec Corp. v. Computer Assocs. Int'l, Inc., 522 F.3d 1279, 1288-89 (Fed. Cir. 2008). ("[W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention," the preamble is not limiting.) The preamble should be treated as a limitation of the claim only if it recites essential structure or steps "necessary to give life, meaning, and vitality to the claim." If the preamble is necessary to provide "antecedent basis" for the terms in the body of the claim or if the patentee relies on the preamble during prosecution to distinguish the claimed invention from the prior art, the preamble should be treated as a limitation of the claim. Id. at 1289. In other words, a preamble should be treated as a claim limitation if doing so would prevent the claim language from becoming divorced from what the specification conveys is the invention. See Retractable Technologies, 653 F.3d at 1305.

Plaintiff argues that because the terms system and method appear in the preambles of the asserted claims and recite the general purpose or intended use of each claimed invention, these terms have simple, ordinary meanings that should not be treated as limitations of the claims and require no construction by this Court.

Defendants argue that the preamble terms system and method should be construed as "a system of complete invisibility for unauthorized users." However, Defendants do not show how the ordinary meaning of system or methods divorces the claims from their specifications. While Defendants' proposed construction incorporates general concepts of transparency and authorized users from the specifications, Defendants do not identify specific language in the claims, patent specification, or prosecution history to explain why any of the preambles should be treated as claim limitations. Thus, I adopt Plaintiff's plain language argument.

The Court construes the preamble terms system and method according to their ordinary meanings and do not treat them as limitations to the claims.

3. [claims'146/12, '146/17, '155/1] authorized user[s] identified by Of the five asserted independent claims, three recite the term authorized user[s] identified by. Specifically, claims '146/12, '146/17, and '155/1 refer to an authorized user[s] identified by the first image provider. The remaining two asserted independent claims, '231/74 and '146/1, recite the term user identified by (but do not recite "authorized"). At issue is the construction of the term authorized user[s] identified by.

Plaintiff argues that the ordinary meaning of authorized user identified by, considering the patent specification, is a user to whom an image provider has given permission to access the provider's images. The specifications for all three patents support this plain language interpretation by referring to users (i) "given permission" to access the system and download low-resolution copies of the stored images; (ii) "permissioned" to access data; (iii) "granted access" to the database; and (iv) those "logging in under a given Image Provider User's authority." See '231, '146, and '155 patents: (i) col.5, ll.11-13; (ii) col.16, ll.19-21; (iii) col.11, ll.30-34; and (iv) col.11, ll.49-53.

Defendants counter that the Court should incorporate specification details into the claims-details such as contact and security features of the system's administrative program, the authorized user being "registered" with the system, and the authorized user having an assigned username and password linked to the image provider's unique client identification number. Although the prosecution history shows that the ability of an image provider to grant others access to specific images was central to the invention, Defendants have not identified specific statements made by the patentee to the PTO that would suggest to a competitor that the applicant meant to incorporate into the claims the specification limitations Defendants seek to incorporate. See Schwing, 305 F.3d at 1324 ("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.").

Once again, Plaintiff's plain language construction prevails because it is consistent with how the specification characterizes the claimed invention. Defendants' proposed construction goes too far by incorporating details from the specifications without adequate support from the prosecution history. Because the meaning of authorized user[s] identified by can be ascertained from the plain language, Defendants' extrinsic evidence is not relevant in construing this claim.

The Court construes authorized user identified by as a user or users given permission to access images by an image provider.

4. [claims '231/74, '146/1] user

Plaintiff says the Court should apply the ordinary meaning of user, which is distinct from, and broader than, the term authorized user identified by. Under the doctrine of claim differentiation, it is presumed that different words used in different claims result in a difference in meaning and scope for each of the claims. Clearstream Wastewater Sys., Inc. v. Hydro-Action, Inc., 206 F.3d 1440, 1446 (Fed. Cir. 2000). "This doctrine cannot be used to make a claim broader than what is contained in the written description . . . but it prevents the narrowing of broad claims by reading into them the limitations of narrower claims." Id.

Plaintiff's ordinary-meaning construction is also supported by the specification, which refers to several types of users, including "browsers," "client orderers," "image providers," "jobbers," and "suppliers." See, e.g., '231 patent col.6, ll.52-65. The specification further states that "[b]rowsers and orderers are users given permission by the image providers to access the database," suggesting that there is a point at which a user does not already have permission to access any provider's photos. See, e.g., '231 patent col.6, ll.52-65 (emphasis added).

Defendants assert essentially identical constructions for the terms user and authorized user identified by.*fn4 Similar to their proposed construction for authorized user identified by, Defendants' construction for user incorporates specification details into the claims-details such as contact and security features of the system's administrative program, the authorized user being "registered" with the system, and the authorized user having an assigned username and password linked to the image provider's unique client identification number. In sum, Defendants argue that "[a] person who has been identified by an image provider and registered by the system can gain access to the system [a]s a 'user.'"

I adopt Plaintiff's proposed construction and apply the ordinary meaning of user because the term's meaning is apparent from the plain language of the claims in light of the specifications. The specifications state, "Significantly, the digital data of every image provider user is transparent to all users except those users authorized to view the data." '231 patent col.11, ll42-44 (emphasis added). This specification distinguishes between users who have access, and users who do not have access. If, according to Defendants' construction, the defining feature of a user is that at least one image provider has already authorized him or her to access the provider's images, then it would be impossible to have a user who has yet to be authorized by any image provider. Thus, Defendants' construction is incompatible with the specifications, which distinguish between a user and an authorized user. See also '231 patent col.11, ll.30-33 ("Each image provider user can specify users (such as browsers and client orderers and jobbers) who are to be granted access to the files of that particular image provider user.") (emphasis added).

5. [claim '155/1] each of the high resolution digital images having a higher bandwidth communication requirement than each of the corresponding low resolution copies The parties agree that the Court need not construe the terms high resolution and low resolution digital images, but at issue is the construction of the term bandwidth communication requirement.

Plaintiff's position is that the ordinary meaning of bandwidth communication requirement refers to a characteristic of the data being transmitted. Plaintiff argues that bandwidth communication requirement, in light of the specification language in the '231, '146, and '155 patents, refers to the relative difference between high resolution and low resolution images in terms of the time required to transmit each over a given communications channel and the degree to which the amount of information contained within each serves to tax the comparable computer resources. That is, the term describes a difference between high resolution and low resolution images with respect to the information carrying capacity necessary to transmit high and low resolution images in a given amount of time.

Defendants argue that data can be transmitted at any bandwidth, so there is no particular bandwidth required to transmit data. Rather, Defendants construe bandwidth communication requirement to mean that the data management system can be configured to set the bandwidth communication requirement for the data being transmitted. In other words, the system imposes different bandwidth communication conditions from user to user, so the term should be construed as "a minimum amount of data per unit time, the minimum being defined by the system." Defendants rely on Dan Schonfeld, Ph.D.'s analysis to conclude that bandwidth communication requirements has no ordinary meaning to one skilled in the art.*f ...


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