United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
MANISH S. SHAH, District Judge.
Plaintiff VendoNet, Inc. sued defendant Redbox Automated Retail, LLC for patent infringement. The asserted patent is U.S. Patent No. Reissue 43, 656, titled "Vending Machine and Computer Assembly." The patent's asserted claims concern methods for giving vending machine customers access to a computer network such as the Internet. Currently at issue is claim construction: determining the meaning of certain words and phrases in the patent's claims.
I. Legal Standards
Claim construction is a matter of law. See Markman v. Westview Instruments, 517 U.S. 370, 391 (1996); Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1358 (Fed. Cir. 2012). "A basic principle of claim construction is that the words of a claim are generally given their ordinary and customary meaning." Source Vagabond Sys. v. Hydrapak, Inc., 753 F.3d 1291, 1299 (Fed. Cir. 2014) (internal quotation marks omitted) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)). The ordinary meaning is the "meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips, 415 F.3d at 1312-13. The person of ordinary skill is assumed to read the claim terms in the context of the entire patent, including the specification and the prosecution history. Id .; SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1195 (Fed. Cir. 2013).
A term will not be given its ordinary meaning if the patent applicants intended to give the term a special definition or disclaim its ordinary scope. Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365-66 (Fed. Cir. 2012). There is "a heavy presumption that claim terms carry their full ordinary and customary meaning, " rebutted only if the applicants "unequivocally imparted a novel meaning to those terms or expressly relinquished claim scope during prosecution." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); see also Thorner, 669 F.3d at 1366-67 (a "clear and unmistakable disclaimer" is required to meet this "exacting standard"). The scope of a prosecution disclaimer depends on the nature of the argument made by the applicants to the patent office during prosecution. Cordis Corp. v. Medtronic AVE, Inc., 511 F.3d 1157, 1177 (Fed. Cir. 2008). A disclaimer during prosecution of one patent can affect terms in a related patent if either (1) the disclaimer pertained to a common phrase; or (2) the disclaimer pertained to the common invention as a whole, regardless of the specific words used to claim it. See Microsoft Corp. v. Multi-Tech Sys., 357 F.3d 1340, 1346-50 (Fed. Cir. 2004).
The '656 patent stems from a line of patent applications dating back to August 1995. '656 patent at 1. Its named inventors are James A. Satchell, Jr. and Johnson A. Asumadu. Id. Its abstract states:
A vending machine for purchasing selected items by a customer. The vending machine includes a dispensing assembly for dispensing an item and a selector assembly connected to the dispensing assembly. A computer assembly having a central computer, video display screen and a modem is connected to and actuated by the selector for connecting the computer to an Internet site and displaying a received transmission on the video screen in response to a purchased item.
Id. Plaintiff VendoNet owns the '656 patent. Dkt. 47 (amended complaint) ¶ 5. Defendant Redbox rents and sells DVDs through roughly 43, 700 kiosks located in North America. Dkt. 48 (answer to amended complaint) ¶ 7.
The patent claims that VendoNet asserts against Redbox recite methods for providing vending machine customers with access to a computer network. Claim 38 is representative and contains all of the phrases that are presently disputed. Claim 38, which consists of a preamble followed by seven numbered steps, states in full (disputed phrases italicized):
A method of providing a customer with access to at least one of a website, a home page and a computer database via a dispensing machine connectable to a communication network, said method comprising:
1) providing a dispensing machine with a connection to a communication network; and at least one of a video screen or an audio communication capability;
2) providing the dispensing machine with a storage element for storing a plurality of physical items ;
3) actuating a money acceptor or credit card reader of the dispensing machine;
4) selecting a physical item to be dispensed from the dispensing machine from among the plurality of physical items contained in the storage element;
5) dispensing the selected physical item to the customer;
6) informing the customer through at least one of the video screen and the audio communication capability that the customer may access the communication network by activating a customer input device; and,
7) upon the customer's actuation of the customer input device, permitting the customer to access the Internet/world wide web via the communication network in order to retrieve and/or send information to said website, said home page or said database.
The present disputes are: (A) whether the preamble is a substantive limitation, and if so, its meaning; (B) the meaning of "a plurality of physical items"; (C) whether steps 4, 5, 6, and 7 must be performed in a specific order; and (D) the meaning of "permitting the customer to access the Internet/world wide web via the communication network in order to retrieve and/or send information to said website, said home page or said database."
A. The Preamble
Redbox argues that claim 38's preamble is limiting, meaning it should be treated just like the numbered claim elements and considered when determining both infringement and validity. If the preamble is considered, Redbox asks me to construe the text "providing a customer with access to at least one of a website, a home page and a computer database via a dispensing machine." Redbox argues that this text requires that the dispensing machine be capable of providing access to each of (1) a website; (2) a home page; and (3) a computer database. According to Redbox, a dispensing machine that can provide access to one or two of ...