United States District Court, N.D. Illinois, Eastern Division
For VendoNet, Inc., Plaintiff: Arthur Anthony Gasey, LEAD ATTORNEY, Joseph Nevi Hosteny, III, Niro, Haller & Niro, Chicago, IL; Raymond P. Niro, LEAD ATTORNEY, Niro, Scavone, Haller & Niro, Ltd., Chicago, IL; Peter Peckarsky, PRO HAC VICE, Peter Peckarsky, Washington, DC.
For Redbox Automated Retail, LLC, Defendant: Ramsey M. Al-Salam, LEAD ATTORNEY, Perkins Coie LLP, Seattle, WA; Carmen G Wong, PRO HAC VICE, Perkins Coie LLP, Seattle, WA; Matthew F Carmody, Loeb & Loeb LLP, Chicago, IL; Steven M Lubezny, Perkins Coie LLP, Chicago, IL.
Memorandum Opinion And Order
Manish S. Shah, United States District Judge.
The initial claim construction opinion and order in this case held, in part, that: " In claim 38, step 4 must precede step 5, and step 5 must precede step 7. There is no limitation on where in the sequence step 6 may fall." Plaintiff, VendoNet, Inc., asks me to reconsider that ruling. VendoNet urges that the correct construction does not limit step 7 to being performed only after step 5. As discussed below, VendoNet repeats arguments it made previously, and those arguments remain unpersuasive. VendoNet's motion for reconsideration is therefore denied.
Also, the parties have requested construction of a term not previously construed: " input device." I adopt a construction apparently agreed upon by the parties: " a device, such as, but not limited to, a selector button, a keyboard, a trackball, or some combination of the foregoing, which enables a customer to enter information." Because the issue is not ripe for ruling, I do determine whether " input device" encompasses the DVD return slots on Redbox's kiosks.
I. Legal Standards
In the context of claim construction, a motion for reconsideration may be raised at any stage of the case. See, e.g., Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002); see also Fed.R.Civ.P. 54(b). A motion to reconsider serves an important function where the " court has misunderstood a party, where the court has made a decision outside the adversarial issues presented to the court by the parties, where the court has made an error of apprehension (not of reasoning), where a significant change in the law has occurred, or where significant new facts have been discovered." Broaddus v. Shields, 665 F.3d 846, 860 (7th Cir. 2011) (citing Bank of Waunakee v. Rochester Cheese Sales, Inc., 906 F.2d 1185, 1191 (7th Cir. 1990)).
As described in the earlier opinion, claim construction is a matter of law. See Markman v. Westview Instruments, 517 U.S. 370, 391, 116 S.Ct. 1384, 134 L.Ed.2d 577 (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 " heavy presumption that claim terms carry their full ordinary and customary meaning, " is rebutted if the applicants " expressly relinquished claim scope during prosecution." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); see also Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1366-67 (Fed. Cir. 2012) (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 concerns vending-machine technology. The abstract reads: 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.
'656 patent at 1. The patent claims that VendoNet asserts against Redbox recite methods for providing vending-machine customers with access to a computer network. Representative claim 38, which consists of a preamble followed by seven numbered steps, states in full (disputed phrase 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 ...