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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) ) ) ) ) ) ) ) ) ) )
AMERICAN PATENT DEVELOPMENT CORPORATION, LLC, Plaintiff, v. MOVIELINK, LLC, Defendant.
C.A. No. 07-605-JJF
PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
Thad J. Bracegirdle (Del. No. 3691) REED SMITH LLP 1201 Market Street Suite 1500 Wilmington, Delaware 19801 (302) 778-7500 (Telephone) (302) 778-7575 (Fax) E-mail: [email protected]
Mark W. Wasserman (admitted pro hac vice) Matthew R. Sheldon (admitted pro hac vice) Reed Smith LLP 3110 Fairview Park Drive Suite 1400 Falls Church, Virginia 22042 (703) 641-4200 (Telephone) (703) 641-4340 (Fax) E-mail: [email protected] [email protected]
Counsel for Plaintiff, American Patent Development Corporation, LLC
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TABLE OF CONTENTS Page INTRODUCTION ...........................................................................................................................1 ARGUMENT...................................................................................................................................1 A. B. C. The Law Governing Claim Construction.............................................................................1 Claims That APDC Contends Movielink Infringes. ............................................................3 Claim Terms in Dispute. ......................................................................................................4 1. 2. 3. 4. 5. "central station. "......................................................................................................4 "user site." ................................................................................................................7 "video product." .......................................................................................................7 "data establishing a limit for authorized viewing of said video product"................8 "transmitting from said central station to said user site a digital data stream comprising said video product, and data establishing a limit for authorized viewing of said video product. " ..............................................................................9 "decoding said data establishing a limit." ..............................................................13 "storing a result of said decoding step.".................................................................14 "blocking access." ..................................................................................................15 "comparing an output of said local clock signal generator with said result of said decoding step." ...........................................................................................16 "erasing said video product." .................................................................................17
6. 7. 8. 9.
10.
CONCLUSION..............................................................................................................................18
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TABLE OF AUTHORITIES Page CASES Broadcast Innovation, LLC v. Echostar Commc'n Corp., 240 F. Supp. 2d 1127 (D. Colo. 2003)....................................................................................10 CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ................................................................................................2 Comark Commc'n v. Harris Corp., 156 F.3d 1182 (Fed. Cir. 1998) ................................................................................................2 Commissariat a l'Energie Atomique v. Samsung Electronics Co., 524 F. Supp. 2d 546 (D. Del. 2007)........................................................................................12 Ekchian v. Home Depot, Inc., 104 F.3d 1299 (Fed. Cir. 1997) ................................................................................................2 Ex parte Schwarze, 151 U.S.P.Q. (BNA) 426 (Bd. App. 1966)...............................................................................6 Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951 (Fed. Cir. 2000) ................................................................................................. 2 In re Reynolds, 443 F.2d 384 (CCPA 1971) ................................................................................................5, 15 Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968 (Fed. Cir. 1999) ..................................................................................................2 Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419 (Fed. Cir. 1987) ................................................................................................5 Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) aff'd, 517 U.S. 370 (1996) .........................................................1 Minnesota Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559 (Fed. Cir. 1992) ................................................................................................2 Pfizer v. Ranbaxy Labs, Ltd., 457 F.3d 1284 (Fed. Cir. 2006) ................................................................................................2
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Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ...................................................................................... passim Serrano v. Tellular Corp., 111 F.3d 1578 (Fed. Cir. 1997) ................................................................................................5 Therma-Tru Corp. v. Peachtree Doors Inc., 44 F.3d 988 (Fed. Cir. 1994) ..............................................................................................5, 16 Toshiba Corp. v. Juniper Networks, Inc., 2007 WL. 2574744 (Fed. Cir. Sept. 6, 2007) .........................................................................12 Vitronics Corp. v. Conceptronics Inc., 90 F.3d 1576 (Fed. Cir. 1996) ............................................................................................2, 12 WeddingChannel.Com, Inc. v. The Knot, Inc., 2005 WL. 165286 (S.D.N.Y. Jan. 26, 2005) ....................................................................11, 12 STATUTES 37 C.F.R., §1.5(b) ............................................................................................................................5
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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) ) ) ) ) ) ) ) ) ) )
AMERICAN PATENT DEVELOPMENT CORPORATION, LLC, Plaintiff, v. MOVIELINK, LLC, Defendant.
C.A. No. 07-605-JJF
PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF Plaintiff, American Patent Development Corporation, LLC ("Plaintiff" or "APDC"), by counsel, submits the following Opening Claim Construction Brief: INTRODUCTION The inventions disclosed and claimed in U.S. Patent 5,400,402 (the "'402 Patent") relate to downloading a digitally encoded video program to a user's viewing equipment, typically a personal computer or similar viewing device, using a data network or other electronic transmission medium from a service provider facility, such as a website and its supporting backoffice equipment.1 The inventions involve controlling access to the downloaded digitally encoded video program at the personal computer or other similar viewing device. ARGUMENT A. The Law Governing Claim Construction. Construction of patent claims, which define the scope of a patentee's rights under a patent, is a matter of law for the Court. See Markman v. Westview Instruments, Inc., 52 F.3d
1 For the Court's convenience, a copy of the '402 Patent is attached as Exhibit A.
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967, 970 (Fed. Cir. 1995) aff'd, 517 U.S. 370 (1996). Claim terms are to be given their ordinary and accustomed meaning as understood by one of ordinary skill in the art. See HockersonHalberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 955 (Fed. Cir. 2000). See also CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) ("Generally speaking, [courts] indulge a 'heavy presumption' that a claim term carries its ordinary and customary meaning"). However, "the 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, including the specification." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Although the specification provides "context," the Federal Circuit repeatedly has held that an infringer may not "read" into a patent claim additional limitations that appear in examples set forth in the specification, but which are not expressly set forth in the claim. See Pfizer v. Ranbaxy Labs, Ltd. 457 F.3d 1284, 1290 (Fed. Cir. 2006); accord Wyeth Laboratories, Inc. v. Impax Laboratories, Inc., (D. Del.) CV 06-222-JJF, Memorandum and Order, Dec. 13, 2007 (attached hereto as Exhibit B); see also Comark Commc'n v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998); Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1303 (Fed. Cir. 1997); Minnesota Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1566 (Fed. Cir. 1992). Infringers often attempt to limit the scope of a patent claim to only what is described in the specification as a preferred embodiment of the invention or in the file history as an illustrative one. Patent claims, however, are not limited to any preferred or illustrative embodiment. See Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 973 (Fed. Cir. 1999). Moreover, a claim is construed to encompass all of the preferred embodiments unless
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there is strong evidence to the contrary. See Vitronics Corp. v. Conceptronics Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); Affymetrix Inc. v. Illumina, Inc., CV 04-901 JJF, Memorandum and Order August 16, 2006 ("8/16/06 Order") (attached hereto as Exhibit C). Finally, in cases of commonly used terms of art, the Court may refer to extrinsic sources such as dictionaries or technical treatises for purposes of claim construction. See Phillips, 415 F.3d at 1322 ("Dictionaries or comparable sources are often useful to assist in understanding the commonly understood meaning of words . . . ."). B. Claims That APDC Contends Movielink Infringes. APDC asserts that Movielink, LLC ("Movielink") infringes Claims 1 and 2 of the '402 Patent. Claim 1 of the '402 Patent reads: A method for providing a video product from a central station to a user site, comprising the steps of: transmitting from said central station to said user site a digital data stream comprising said video product, and data establishing a limit for authorized viewing of said video product; storing said video product at said user site; decoding said data establishing a limit for authorized viewing of said video product; storing a result of said decoding step; blocking access to said video product stored at said user site if said limit for authorized viewing is exceeded. Claim 2 of the '402 Patent reads: A method for providing a video product from a central station to a user site, comprising the steps of:
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transmitting from said central station to said user site a digital data stream comprising said video product, data establishing a time period during which viewing of said video product is authorized; storing said video product at said user site; decoding said data establishing a time period during which viewing of said video product is authorized; storing a result of said decoding step; comparing an output of said local clock signal generator with said result of said decoding step; erasing said video product stored at said user site if the result of said comparing step is that the time period during which viewing of said video product is authorized has expired. C. Claim Terms in Dispute. Based upon Movielink's responses to APDC's discovery requests, in addition to the parties' "meet and confer" discussion on claim interpretation, APDC believes the Court should interpret the following claim terms: (1) "central station"; (2) "user site"; (3) "video product"; (4) "data establishing a limit"; (5) "transmitting from said central station to said user site a digital data stream comprising said video product, and data establishing a limit for authorized viewing of said video product"; (6) "decoding said data establishing a limit"; (7) "storing"; (8) "blocking access to said video product"; (9) "comparing an output of a local clock signal generator with said results of said decoding step"; and (10) "erasing said video product." 1. "central station."
APDC's Proposed Construction: One or more computers or other data processing devices operated together in order to deliver video on demand service to a user site. Supporting Argument:
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"[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, including the specification." Phillips, 415 F.3d at 1313. In addition, the meaning consistent with the patentee's explanation in the specification controls the interpretation of the claim term. See Serrano v. Tellular Corp., 111 F.3d 1578, 1582 (Fed. Cir. 1997) (where the particular usage by the patentee governs construction of new terms). See also 8/16/06 Order (Exhibit C). In light of these principles, a "central station" under the '402 Patent can encompass any number of devices that are operating together in connection with a downloaded video product delivery system. Specifically, the '402 Patent states that the "host computer in conjunction with other electronics transmits the video program . . .." See '402 Patent, col. 1, line 31 (emphasis added). The '402 Patent also states that "each program is preprogrammed in a memory device selectable by a host computer at a central data station . . .." See '402 Patent, col. 1, line 27. The term "selectable" inherently discloses that the "host computer" is addressing commands to other data processing devices, and, that which is an inherent property of a disclosed structure is deemed part of the patent specification. See In re Reynolds, 443 F.2d 384, 389 (CCPA 1971); see also Therma-Tru Corp. v. Peachtree Doors Inc., 44 F.3d 988, 992 (Fed. Cir. 1994); Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1422 (Fed. Cir. 1987). APDC's construction of "central station" as one or more devices is further supported by the specification of U.S. Patent No. 4,506,387 (the "'387 Patent"), which the '402 Patent expressly incorporates by reference.2 See '402 Patent, col. 1, line 21. Therefore, the '387 Patent is deemed to be part of the '402 Patent specification. See 37 C.F.R., §1.5(b) ("Essential material 2 For the Court's convenience, a copy of the '387 Patent is attached as Exhibit D.
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may be incorporated [into the specification] by reference . . . to a U.S. patent . . .."); see also Ex parte Schwarze, 151 USPQ (BNA) 426 (Bd. App. 1966). The '387 Patent describes an embodiment of a "central data station" which includes a "host computer electrically connected to [an] electronic switching system," which in turn "is electrically connected to a library of memory modules." See '387 Patent, col. 3, line 57. In addition, the disclosure states that the "host computer selects the memory device . . . [a]nd causes the [video] program stored therein to be transmitted by a fiber optic line to a data receiving station at the user's location." See '387 Patent, col. 1, line 58. Moreover, the '387 Patent discloses that "the host computer transmits other instructions and information to the viewer . . .." See '387 Patent, col. 7, line 64. In other words, in the '387 Patent, the "data receiving station," i.e. the "user site," receives data transmitted from both the "host computer" and the "memory modules." The patent drawings and references make clear that the host computer and memory devices are distinct transmission sources. See '387 Patent, Figure 1 (Items 128, 56, 58, 60, 62). The specification of the '402 Patent does not require that the equipment comprising the "central station" reside in close physical proximity. At column 2, line 59, the specification of the '402 Patent recites that "[t]he high speed data link may, for example, be a fiber optic, publicly switched telephone link, a satellite link or a cable television link." The nature of these embodiments, well known in the art, describe a "central station" whose elements may be geographically distributed, even while electronically connected. Thus, "central station," as used in Claims 1 and 2 of the '402 Patent, should be construed to include the collection of equipment operated together in order to deliver a video product to the end-user and is not limited to a single computer server or single geographic location.
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2.
"user site."
APDC's Proposed Construction: The combination of equipment located remotely from the central station used by the viewer to receive from the central station and access a video product. Supporting Argument: The term "user site" is described in the '402 Patent as follows: "a customer site, indicated within the dashed block 10 [of Figure 1] is connected by a high speed data link to a remote central station." See '402 Patent, col. 2, line 57. Figure 1 shows an embodiment comprised of a microprocessor, memory interface and control, a video memory and a television for displaying the image. All of these equipment types are shown in Figure 1 to be within the box, indicated as the item 10 referred to at column 2, line 57 of the '402 Patent. 3. "video product."
APDC's Proposed Construction: A set of downloaded and stored video data that contains a video program. Supporting Argument: The specification of the '402 Patent describes the video downloading process as follows: "The link serves to download, at high speed, a video program to a specific customer address from which an order has been placed." See '402 Patent, col. 2, line 68. The specification goes on to describe one embodiment where the "video data will be stored in digital form at the central station and at the customer site." See '402 Patent, col. 2, line 62. The description further explains that at the customer site, referring to the microprocessor, "it retrieves the stored digital video data . . .." See '402 Patent, col. 3, line 20. Accordingly, the '402 Patent specification
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describes a video product as a set of downloaded and stored video data that contains a video program. 4. "data establishing a limit for authorized viewing of said video product."
APDC's Proposed Construction: One or more data values that set an expiration threshold for either a limited viewing time period or a limited number of views of a video product or a combination thereof. Supporting Argument: The claim term "data establishing a limit" is not a commonly used technical term. Therefore, the Court should review the specification of the '402 Patent to understand the inventor's intended meaning. "[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, including the specification." Phillips, 415 F.3d at 1313. The specification of the '402 Patent states that in one embodiment, "the time limit or the prescribed number of times, can be encoded at the central station in instructions that accompany the down-loaded data." See '402 Patent, col. 3, line 35. In another embodiment, the limits are "fixed by data specified by instructions included with the downloaded data." See '402 Patent, col. 3, line 48. In yet another embodiment, it is described as "both a time limit and a numerical access limit coded in the instructions." See '402 Patent, col. 4, line 2. The numerical access is "the count of the number of times . . . [the video product] has been accessed . . .." See '402 Patent, col. 4, line 9. The specification further contemplates that the system operates" in a time limit mode or access limit mode or a combination of both modes." See '402 Patent, col. 3, line 53.
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Therefore, "data establishing a limit for authorized viewing of said video product" is properly construed to mean one or more data values that set an expiration threshold for either a limited viewing time period or a limited number of views of a video product or a combination thereof. 5. "transmitting from said central station to said user site a digital data stream comprising said video product, and data establishing a limit for authorized viewing of said video product."
APDC's Proposed Construction: Transmitting data from one or more computers or data processing devices operated together in order to provide video on demand service to the remotely located combination of equipment used by the viewer to receive and access a video product, such data containing: (i) video data that when received and stored at the user site is a video product, and (ii) one or more data values that set an expiration threshold for either a limited viewing time period or a limited number of views of the video product or a combination thereof. Supporting Argument: The claim element "transmitting from said central station to said user site a digital data stream comprising said video product, and data establishing a limit for authorized viewing of said video product" must be construed in a manner that is consistent with the '402 Patent specification. As noted above, the "central station" is "one or more computers or other data processing devices operated together in order to provide video on demand service." Therefore, "transmitting from said central station" includes transmissions from one or more computers or other data processing devices that function together as the central station. In addition, "data stream" is commonly used in the computer industry, and the Court may refer to extrinsic sources such as dictionaries or technical treatises for purposes of claim construction with regard to commonly used terms. See Phillips, 415 F.3d at 1322.
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The application that matured into the '402 Patent was filed on June 7, 1993. A technical dictionary defines "data stream" as "a sequence of digitally encoded signals used to represent information in transmission." Federal Standard 1037C Glossary of Telecommunications Terms, August 7, 1996 (attached hereto as Exhibit E). Similarly, the district court in Broadcast Innovation, LLC v. Echostar Commc'n Corp., 240 F. Supp.2d 1127 (D. Colo. 2003), decided that with regard to a digital video delivery patent with a priority date of July 18, 1995, the "ordinary and customary meaning is that a 'data stream' is 'a sequence of data elements.'" Broadcast Innovation, LLC, 240 F. Supp.2d at 1140 (citing The Dictionary of Computing, 127 (4th ed. 1996)). Moreover, the words "digital data stream" are part of the phrase "transmitting from said central station to said user site a digital data stream comprising a video product, and data establishing a limit . . .." Therefore, the "data stream" in Claims 1 and 2 refers to a "sequence of data elements" transmitted from "one or more computers" that function together as the "central station." The '387 Patent provides additional support for the conclusion that the "transmitting" step may encompass transmissions from multiple sources within the "central station." As discussed above, the '402 Patent incorporates the '387 Patent by reference. The '387 Patent states that the "host computer selects the memory device . . . [a]nd causes the [video] program stored therein to be transmitted by a fiber optic line to a data receiving station at the user's location." See '387 Patent, col. 1, line 58. The '387 Patent further states that "the host computer transmits other instructions and information to the viewer . . .." See '387 Patent, col. 7, line 64. In other words, the '387 Patent expressly describes how the "data receiving station," i.e. the "user site," receives data transmitted separately from both the "host computer" and the "memory modules." The '387
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Patent drawings and references make clear that the host computer and memory devices are distinct transmission sources. See '387 Patent, Figure 1 (Items 128, 56, 58, 60 and 62). Therefore, the "digital data stream" referred to in the '402 Patent includes data transmitted from one or more computers at the "central station" to the "user site." "Digital data stream" does not mean only data which originates from a single computing device. In addition, the punctuation and associated claim language make clear that Claims 1 and 2 may encompass separate transmissions of the "video product" and "data establishing a limit" as well as a single transmission of both. The comma in the claim element "transmitting from said central station to said user site a digital data stream comprising said video product, and data establishing a limit . . ." separates the element "a digital data stream comprising said video product" from the element ", and data establishing a limit." The comma requires the transmission step to be construed so that the transmission of the "video product" may be a distinct action from the transmission of the "data establishing a limit." The function of the comma in this regard cannot be ignored because federal courts do not ignore punctuation in patent claims. In WeddingChannel.Com, Inc. v. The Knot, Inc., 2005 WL 165286 (S.D.N.Y. Jan. 26, 2005), for example, the district court was faced with the question of whether a comma in a patent claim separated items. The district court held that a patent claim construction that ignored a comma in the patent claim element at issue was incorrect. The court reasoned as follows: It is axiomatic that "[a] claim must be read in accordance with the precepts of English grammar." WeddingChannel's proposed construction of element [B] conforms to rules of standard English grammar. The Knot's proposed construction does not: The Knot simply ignores the comma following the word "module" in element [B]. On this basis, WeddingChannel's proposed construction is adopted. WeddingChannel.Com, Inc., 2005 WL 165286 at * 8 (citations omitted).
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This Court has likewise followed this principle. In Commissariat a l'Energie Atomique v. Samsung Electronics Co., 524 F. Supp.2d 546 (D. Del. 2007), this Court stated that "Samsung is correct that, grammatically, the separation of 'means for polarizing' and 'thickness of the [liquid crystal] layer' with commas and the inclusion of each in separate 'wherein' clauses indicates that those are separate phrases requiring separate constructions." In addition, the Federal Circuit has recognized the critical importance of punctuation - including commas - in claim construction. In Toshiba Corp. v. Juniper Networks, Inc., 2007 WL 2574744, at * 4 (Fed. Cir. Sept. 6, 2007), the Federal Circuit upheld a district court's claim construction, noting that separating two elements of the claim would be improper because "[i]f the patentee desired [such a separation], it would have used commas to set off the phrase." (emphasis added.) In this case, the '402 Patent does use a comma to set off the phrase "a digital data stream comprising said video product" from the phrase "and data establishing a limit." In addition, the separate transmissions indicated by the comma being expressly described as an embodiment in the specification cannot be excluded from the claims without "highly persuasive evidentiary support." See 8/16/06 Order, citing Vitronics Corp. v. Conceptronics Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). Therefore, the '402 Patent claim language, the specification, and the punctuation make clear that the transmitting step is properly construed as: "Transmitting data from one or more computers or data processing devices operated in order to deliver a video on demand service to the remotely located combination of computer equipment and viewing devices used by the viewer to receive and access a video product, such data containing: (i) video data that when received and stored at the user site is a video product, and (ii) one or more data values that set an
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expiration threshold for either a limited viewing time period or a limited number of views of the video product or a combination thereof." 6. "decoding said data establishing a limit."
APDC's Proposed Construction: The interpretation by a computer program or hardware logic operating at the user site of the data values that set an expiration threshold. Supporting Argument: "Decoding" is a commonly used term in the computer industry. Again, the Court may refer to extrinsic sources such as dictionaries or technical treatises for purposes of claim construction with regard to commonly used terms. See Phillips, 415 F.3d at 1322. Webster's dictionary defines "decode" to mean "to convert (as a coded message) into intelligible form" or "to recognize and interpret (an electronic signal)." See http://www.webster.com/dictionary/decode (attached hereto as Exhibit F). Similarly, a technical dictionary defines "decode" as "to convert data by reversing the effect of previous encoding" or "to interpret a code." See Federal Standard 1037C Glossary of Telecommunications Terms, August 7, 1996 (attached hereto as Exhibit G). The specification of the '402 Patent states that "the time limit or the prescribed number of times, can be encoded at the central station in instructions that accompany the down-loaded data." See '402 Patent, col. 3, line 35. The specification also states that "the limit data is decoded from the downloaded data stream." See '402 Patent, col. 4, line 31. The '402 Patent specification further states that in one embodiment, "decoded limiting data is stored in a register . . . the output of the register is coupled to an input of a comparator, whose other inputs include the output of a time of day clock generator . . .." See '402 Patent, col. 3, line 68. Finally, the '402 Patent specification also states that "the function of decoding may be performed as a hardware
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operation as shown here, or as a programmed operation of the microprocessor 30." See '402 Patent, col. 3, line 63. For the foregoing reasons, "decoding said data establishing a limit" means "the interpretation by a computer program or hardware logic operating at the user site of the data values that set an expiration threshold." 7. "storing a result of said decoding step."
APDC's Proposed Construction: The input of one or more data items resulting from the interpretation of the data values that set an expiration threshold into a memory device from which such data items may be retrieved. Supporting Argument: "Storing" is also a commonly used term in the computer and communications industry. Thus, "the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Phillips, 415 F.3d at 1314. "Storage" is defined as "[t]he retention of data in any form, usually for the purpose of orderly retrieval and documentation." See Federal Standard 1037C Glossary of Telecommunications Terms, August 7, 1996 (attached hereto as Exhibit H). Webster's Dictionary defines "storing" as "to place or leave in a location (as a warehouse, library, or computer memory) for preservation or later use or disposal." See http://www.merriamwebster.com/dictionary/storing (attached hereto as Exhibit I). The '402 Patent specification is consistent with this usage: it states that in one embodiment, "decoded limiting data is stored in a
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register . . . the output of the register is coupled to an input of a comparator, whose other inputs include the output of a time of day clock generator . . .." See '402 Patent, col. 3, line 68. Accordingly, "storing a result of said decoding step" should be construed as "the input of one or more data items resulting from the interpretation of the data values that set an expiration threshold into a memory device from which such data items may be retrieved." 8. "blocking access."
APDC's Proposed Construction: Denying access to the video product by means of operating a computer program or hardware logic to prevent viewing of the video product, the removal of the video product from the user site, or designating as deleted the data storage locations at the user site where such video product is stored. Supporting Argument: "Access" is another commonly used word, and has a technical definition: "To obtain the use of a resource." Federal Standard 1037C Glossary of Telecommunications Terms, August 7, 1996 (attached hereto as Exhibit J). In addition, the specification of the '402 Patent states that the user's computer "erases or otherwise (e.g. scrambling) limits access to the stored data . . .." See '402 Patent, col. 3, line 22. Moreover, it describes the process "to erase the video data stored in memory or to otherwise block access to the data by the television set." See '402 Patent, col. 4, line 46. The claim term "blocking access" includes using encryption, referred to in the '402 Patent specification as "scrambling" techniques, to preserve the data while prohibiting access to it through the operation of program or hardware logic. See '402 Patent, col. 3, line 22. In this case, "scrambling" inherently discloses that some computer program or hardware logic is preventing access to the video product. See In re Reynolds, 443 F.2d at 389 (the specification is deemed to
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disclose that which is inherently part of what is expressly disclosed); Therma-Tru Corp., 44 F.3d at 993. Therefore, "blocking access" is construed to mean "denying access to the video product by means of operating a computer program or hardware logic to prevent viewing of the video product, the removal of the video product from the user site, or designating as deleted the data storage locations at the user site where such video product is stored." 9. "comparing an output of said local clock signal generator with said result of said decoding step."
APDC's Proposed Construction: Using an operating computer program or hardware logic to determine whether the local time indicated by the equipment at the user site is prior to, equal to, or after the expiration time indicated by the result of the interpretation of the data values that set an expiration threshold. Supporting Argument: The '402 Patent specification states that in one embodiment, "decoded limiting data is stored in a register . . . the output of the register is coupled to an input of a comparator, whose other inputs include the output of a time of day clock generator . . .." See '402 Patent, col. 3, line 68. In this case, the Court can turn to extrinsic evidence to construe the commonly used term "comparator." A relevant extrinsic definition of a "comparator" is: "a device that compares two items of data and indicates the result of that comparison." Federal Standard 1037C Glossary of Telecommunications Terms, August 7, 1996 (attached hereto as Exhibit K). In addition, referring to Figure 3 of the '402 Patent, the comparison step is shown in a flow chart: "comparison decision block 54 to determine if the limit has been reached." See '402 Patent, col. 4, line 35. Thus, "comparing an output of said local clock signal generator with said result of said decoding step" should be construed as "using an operating computer program or hardware logic
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to determine whether the local time indicated by the equipment at the user site is prior to, equal to, or after the expiration time indicated by the result of the interpretation of the data values that set an expiration threshold." 10. "erasing said video product."
APDC's Proposed Construction: To remove or obliterate the downloaded and stored video data from the storage locations where the video data is stored, such as to clear, overwrite or designate as deleted such storage locations. Supporting Argument: Again, in this case, the Court can turn to extrinsic evidence to construe the commonly used term "erase." "Erase" is defined as "[t]o obliterate information from a storage medium, such as to clear or to overwrite." Federal Standard 1037C Glossary of Telecommunications Terms, August 7, 1996 (attached hereto as Exhibit L). Similarly, Webster's Dictionary defines "erase" as "to remove (recorded matter) from a magnetic medium; also: to remove recorded matter from
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CONCLUSION Claims 1 and 2 of the '402 Patent are clear based on the language of the claims and the specification. Therefore, there is no need to analyze the arguments made during prosecution. See Phillips, 415 F.3d at 1317 ("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."). For the foregoing reasons, plaintiff American Patent Development Corporation respectfully requests the Court to construe Claims 1 and 2 of U.S. Patent No. 5,400,402 as set forth herein.
AMERICAN PATENT DEVELOPMENT CORPORATION, LLC By Counsel
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REED SMITH LLP
By:
/s/ Thad J. Bracegirdle Thad J. Bracegirdle (Del. No. 3691) 1201 Market Street Suite 1500 Wilmington, Delaware 19801 (302) 778-7500 (Telephone) (302) 778-7575 (Fax) E-mail: [email protected]
Mark W. Wasserman (admitted pro hac vice) Matthew R. Sheldon (admitted pro hac vice) Reed Smith LLP 3110 Fairview Park Drive Suite 1400 Falls Church, Virginia 22042 (703) 641-4200 (Telephone) (703) 641-4340 (Fax) E-mail: [email protected] [email protected] Counsel for Plaintiff, American Patent Development Corporation, LLC
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CERTIFICATE OF SERVICE I hereby certify that on August 28, 2008, I electronically filed the foregoing Plaintiff's Opening Claims Construction Brief with the Clerk of Court using CM/ECF which will send notification of such filing to the following counsel of record: Jeffrey L. Moyer, Esq. Richards, Layton & Finger, P.A. One Rodney Square Wilmington, Delaware 19899 Scott W. Breedlove, Esq. Vinson & Elkins LLP Trammel Crow Center 2001 Ross Avenue Suite 3700 Dallas, Texas 75201-2975
/s/ Thad J. Bracegirdle Thad J. Bracegirdle (Del. No. 3691)
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