The opinion of the court was delivered by: Rosemary M. Collyer United States District Judge
MODIFIED MEMORANDUM OPINION REGARDING CLAIMS CONSTRUCTION
Papst Licensing GMBH & Co. ("Papst") acquired two patents from inventor Michael Tasler and in this MDL has alleged that digital camera manufacturers that sell products in the United States have infringed its patents. Pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), the Court is required to construe the contested claims of the patents before a jury can determine whether the accused products infringe.
Papst alleges that the Camera Manufacturers*fn1 (also referred to as "CMs") infringe two patents: U.S. Patent Nos. 6,470,399 (" '399 Patent") and 6,895,449 (" '449 Patent") (collectively the "Patents"). The Court held a claims construction hearing on September 22 through 24, 2008, with the benefit of extensive briefing and arguments by Papst and the Camera Manufacturers.*fn2 For purposes of this MDL, Papst is treated as the plaintiff regardless of how any individual lawsuit originated in its home court.
The Court issued its Memorandum Opinion Regarding Claims Construction on June 12, 2009. Papst filed a Request for Clarification and Reconsideration of Part of the Court's Order Regarding Claims Construction on July 13, 2009. See Dkt. # 321. This Modified Opinion grants the request for reconsideration. For ease of future review, if any, it contains the full opinion in a single document and the June 12, 2009, Memorandum Opinion and Order [Dkt. ## 312 & 313] will be vacated.
Papst is a German company, whose business is to acquire and enforce intellectual property rights. That is, it acquires patents on products or methods invented by others and then searches the world for products it might challenge for infringement. When faced with such a challenge, the allegedly infringing party chooses whether (1) to enter into a licensing agreement and pay royalties to Papst or (2) to take part in patent infringement litigation, either as a defendant in an infringement suit seeking damages filed by Papst or as a plaintiff in a suit seeking declaratory judgment of non-infringement against Papst. In this case, Papst acquired certain rights to the Patents from the inventor, Michael Tasler. Papst then sought to negotiate license agreements with manufacturers of digital cameras all over the world. When numerous manufacturers who sell digital cameras in the United States refused to enter licensing agreements with Papst, Papst and the manufacturers filed lawsuits against one another and this MDL ensued.
The invention at issue is a "Flexible Interface for Communication Between a Host and an Analog I/O Device Connected to the Interface Regardless of the Type of the I/O Device." '399 Patent, Title; '449 Patent, Title (lower case substituted). "In this title I/O means input/output device," Tr. 1:6 (Papst), but the I/O device is repeatedly referred to as a "data transmit/receive device" in the Patents. See, e.g., '399 Patent, col. 13:1-2 & col. 3:43-44 (stating "regardless of the type of the data transmit/receive device attached"); '449 Patent, col. 11:63-64 & col. 4:6-7 (same). The invention was designed to provide fast data communication between an analog I/O device and a digital computer ("host device") by converting the analog data to digital, formatting it, and transferring the data to the computer without the need for special software; this was accomplished by telling the computer that the invented interface device was an I/O device already known to the computer (and for which the computer already had drivers), regardless of what kind of data transmit/receive device was attached to the interface device. '399 Patent, Abstract; '449 Patent, Abstract. When the computer responded with a data request command, the interface device interpreted the command as a data transfer request and forwarded the digitized data originating from the analog data transmit/receive device. '399 Patent, col. 13:9-13.*fn3 "It is the object of the present invention to provide an interface device for communication between a host device [computer] and a data transmit/receive device whose use is host device-independent and which delivers a high data transfer rate." '449 Patent, col. 3:20-23 (emphasis added); see '399 Patent, col. 3:24-27 ("It is an object of the present invention to provide an interface device for communication between a host device and a data transmit/receive device whose use is host device-independent and which delivers a high data transfer rate.").
The '399 Patent was issued on October 22, 2002, with an application date of March 3, 1998; the '449 Patent was issued on May 17, 2005, with an application date of August 15, 2002. As of March 1998, when Mr. Tasler applied for the '399 Patent, "interface devices themselves were known but they had certain problems.... [T]o get these prior art interface devices to talk to computers, they required these sophisticated drivers which were prone to malfunction and had poor data transfer rates." Tr. 1:5 (Papst).*fn4 Another problem with the prior art was that "if you start[ed] installing specific drivers for each piece of hardware that you add[ed] to the computer, these drivers [could] start butting heads with each other... [and] [t]he computer crashe[d]." Id. 1:6 (Papst). Drivers "are the software programs that are used by the computer to communicate with the hardware that's attached to the computer. So for each and every hardware device that you connect to a computer there has to be a driver that allows the computer to communicate with that hardware device. So when you attach[ed] these prior art interface devices, we [had] drivers that caused problems." Tr. 1:5 (Papst). However, all kinds of computers could "communicate with... very common hardware devices such as hard disk drives" and printers. Id. 1:7 (Papst). "The present invention is based on the finding that both a high data transfer rate and host device-independent use can be achieved if a driver for an input/output device customary in a host device, normally present in most commercially available host devices, is utilized," instead of special driver software. '399 Patent, col. 4:23-27; see also '449 Patent, col. 3:27-30 (same).
[T]o make his invention flexible [Mr. Tasler sought] to simulate one of these customary devices [such as the hard disk drive already on the computer] and be able to communicate with the computer with the language that it already knew and to in fact configure the data to simulate files and file systems that the computers would expect to see, [making the communication between the device and the computer] faster and more reliable.
He also saw that by not writing drivers, specific drivers for his own interface device and instead causing the computer to use the drivers that were supplied by the computer makers that he would achieve a more reliable invention, a more reliable data communication and in fact, the drivers for certain of these devices such as the disk drives were highly optimized for each operating system so they worked very well and transferred data at a very fast rate compared to the drivers for the known interface devices.
Also he made it easier to hook one of these up. He put into the interface device the ability to respond to an inquiry from a computer and generate a response that would cause the computer to recognize it as a piece of hardware that [the computer] already knew about and then by doing that [the interface device] allowed the computer to install, recognize and install the interface device without any input from the person who is using the computer [because no special driver was needed].
To illustrate the nature of the invention at the claims construction hearing, Papst showed a "prototype board" (an integrated circuit board) and "matched up" the devices on the prototype board "that corresponded with some of the things that are shown" in Figure 2 of each Patent. Id. 1:11 (Papst); see also id 1:19-20 (Papst). "[T]he circuit board itself was designed by Mr. Tasler," id. 1:13 (Papst), meaning that Mr. Tasler himself selected and arranged the configuration and connections between the parts on the circuit board. Id. 1:13-14 (Papst). Papst noted calibration relays on the right side of the board, suggesting the inputs, amplifiers, and sample and hold circuits in Figure 2, where the interface device would be connected to the data transmit/receive device. Id. 1:11 (Papst). The prototype board also had a digital signal processor, an EEPROM (electrically erasable programable read only memory) chip for non-volatile memory, and volatile random access memory (RAM). Id. Volatile memory is no longer retained when the computer is turned off, while non-volatile memory remains. Tr. 3:138 (Papst). In addition, a small computer system interface (SCSI) chip was on the prototype board where the interface device would be connected to the computer, in order to "generate the signals that actually communicate with the computer." Id. Under the '399 Patent, the interface device was designed to "receive analog data and convert it to digital data and put it in a form that [could] be transferred to the host computer." Id. 1:21-22 (Papst). Digitizing analog data was insufficient by itself; the interface device was also designed to achieve "formatting it into a proper file, put[ting] it in a file system that the host computer [could] recognize," because, otherwise, "the standard driver, disk driver for a computer would not be able to use that digital information." Id. 1:22 (Papst). The '449 Patent does not "recite that the interface device has to receive analog data," id. 1:21 (Papst), but "[w]ith respect to the [']399 Patent, the Patent [O]ffice thought they were patenting an interface device that received analog data and processed it and provided it to a host computer. And that's what the claims covered." Id. 1:25 (Papst).
The '399 and '449 Patents share the same drawings and much of the same specification. The '449 Patent is a "continuation or divisional" patent that covers other aspects of the invention and that "claims priority back to the 399 Patent." Id. 1:27, 30 (Papst). The '449 Patent omits references to analog-to-digital conversion but "add[s] in the requirement that when it responds to the inquiry command [from the computer], [the interface device] identifies itself as a storage device." Id. 1:29 (Papst).
"[T]he interface device... is configured by the processor and the memory. That certainly suggests some software." Id. 1:30 (Papst). In addition, the '399 Patent references a "first command interpreter" and a "second command interpreter," both of which are "configured." Id. 1:31 (Papst). Thus, at the Markman hearing, Papst asserted that the Patents have aspects of both a hardware patent and a software patent. Id.; but see Papst's Markman Br. at 2 (stating that the interface device, "in the context of [the] patents-in-suit, is a hardware device that serves as a bridge between a computer... and a data device that acquires or transmits data").
The first Claim of each Patent contains most of the terms that need to be construed. Claim One of the '399 Patent states:
1. An interface device for communication between a host device, which comprises drivers for input/output devices customary in a host device and a multi-purpose interface, and a data transmit/receive device, the data transmit/receive device being arranged for providing analog data, comprising: a processor; a memory; a first connecting device for interfacing the host device with the interface device via the multi-purpose interface of the host device; and a second connecting device for interfacing the interface device with the data transmit/receive device, the second connecting device including a sampling circuit for sampling the analog data provided by the data transmit/receive device and an analog-to-digital converter for converting data sampled by the sampling circuit into digital data, wherein the interface device is configured by the processor and the memory to include a first command interpreter and a second command interpreter, wherein the first command interpreter is configured in such a way that the command interpreter, when receiving an inquiry from the host device as to a type of a device attached to the multi-purpose interface of the host device, sends a signal, regardless of the type of the data transmit/receive device attached to the second connecting device of the interface device, to the host device which signals to the host device that it is an input/output device customary in a host device, whereupon the host device communicates with the interface device by means of the driver for the input/output device customary in a host device, and wherein the second command interpreter is configured to interpret a data request command from the host device to the type of input/output device signaled by the first command interpreter as a data transfer command for initiating a transfer of the digital data to the host device. '399 Patent, col. 12:41-67 & col. 13:1-13.
Claim One of the '449 Patent states:
1. An interface device for communication between a host device, which comprises drivers for input/output devices customary in a host device and a multi-purpose interface, and a data transmit/receive device comprising the following features: a processor; a memory; a first connecting device for interfacing the host device with the interface device via the multi-purpose interface of the host device; and a second connecting device for interfacing the interface device with the data transmit/receive device, wherein the interface device is configured by the processor and the memory in such a way that the interface device, when receiving an inquiry from the host device as to the type of a device attached to the multi-purpose interface of the host device, sends a signal, regardless of the type of the data transmit/receive device attached to the second connecting device of the interface device, to the host device which signals to the host device that it is a storage device customary in a host device, whereupon the host device communicates with the interface device by means of the driver for the storage device customary in a host device, and wherein the interface device is arranged for simulating a virtual file system to the host, the virtual file system including a directory structure. '449 Patent, col. 11:45-67 & col. 12:1-6.
A. Claims Construction Principles Generally
The "claims" of a patent are those descriptions of the invention that are numbered and follow the introductory phrase, "[w]hat is claimed." An understanding of a patented invention must start and end with the claims themselves which identify and distinguish the inventor's invention. To determine whether a patent claim has been infringed, a court must undertake a two-step process. The court first construes or interprets each contested claim, or phrase or word within a claim, to determine its meaning and scope; only afterward are the claims compared to the accused device(s). O.I. Corp. v. Teckmar Co. Inc., 115 F.3d 1576, 1580 (Fed. Cir. 1997). This litigation is at the first stage of this process.
The interpretation of patent claims is exclusively a question of law. Markman, 517 U.S. 370. In claims construction, a court must interpret the words of each contested claim from the perspective of one skilled in the art at the time of invention, in light of the patent documents and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Words in the claims of a patent are given their ordinary and customary meaning, that is, the meaning that the term would have had to a person of ordinary skill in the pertinent art at the time of the invention. Id. at 1312-13. "[T]he 'ordinary meaning' of a claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1314. Although words are generally given their ordinary meaning, "a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history." Vitronics Corp. v. Conceptronics Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). When a specification expressly defines terms or defines terms by implication, the specification will be held to limit the claims accordingly. Phillips, 415 F.3d at 1321. Phillips discredited the approach of prior cases holding that claim terms were to be given the broadest possible ordinary meaning and that the specification should only be consulted for a clear disavowal of such meaning. Id. at 1319-21. The Phillips court reasoned that this approach resulted in unduly expansive claim construction and improperly restricted the role of the specification in claim construction. Id. (disavowing Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) and cases following its approach).
Claim construction should be undertaken independent of any consideration of how the claims may or may not be read on the accused product. SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985). "[C]laims are not construed to 'cover' or 'not to cover' the accused device. That procedure would make infringement a matter of judicial whim." Id.; see also Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1326-27 (Fed. Cir. 2006) (the court should not prejudge the infringement analysis by construing claims with an aim to include or exclude a particular product, but knowledge of the accused product is helpful to provide context and focus).
In construing a claim, a court starts with the intrinsic evidence of its meaning - the claims, the specification, and the prosecution history. Vitronics, 90 F.3d at 1582; see Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (the starting point for claim interpretation must be the claims themselves). The "prosecution history" of a patent is the complete public record of the proceeding before the U.S. Patent and Trademark Office ("PTO"). Phillips, 415 F.3d at 1317. The public record includes the original application and any claim amendments and explanations made by the applicant. Vitronics, 90 F.3d 1582. For example, a patent applicant may limit claims during prosecution by modifying claim language to overcome examiner rejection, by distinguishing a reference, or by disavowing claim coverage. Omega Eng'g Inc. v. Raytek Corp., 334 F.3d 1314, 1323-25 (Fed. Cir. 2003). The specification of a patent "must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science... to make and use the same." PTO Rules § 1.71(a). "The specification must set forth the precise invention... in such a manner as to distinguish it from other inventions and from what is old." Id. § 1.71(b). The specification is the "single best guide to the meaning of a disputed term." Vitronics, 90 F.3d 1582.
The Federal Circuit has recognized a fine line between reading a claim in light of the specification and reading a limitation into a claim from the specification. Phillips, 415 F.3d at 1323. The former is appropriate and necessary; the latter constitutes error. Id. For example, a discussion in a specification of a particular embodiment of an invention does not normally confine the invention to that particular embodiment. Id. (citing Nazomi Comm., Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005)). "To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so." Id. at 1323. Usually the specification clearly states whether it is setting out specific examples of the invention or whether the patentee intends the embodiments in the specification to be coextensive with the claims. Id. A court does not improperly read a limitation into a claim where the claim contains the term and the court looks to the specification for a definition of the term, even if that definition is set forth in a preferred embodiment. Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1378-80 (Fed. Cir. 2006) (claim limited by the term "adjustable" and specification defined term).
Courts may not redraft claims to make them operable or to sustain their validity. Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004). However, "[w]hen claims are amenable to more than one construction, they should when reasonably possible be interpreted so as to preserve their validity." Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1557 (Fed. Cir. 1996).
B. Use of Expert Testimony
Expert testimony regarding the construction of claim terms is outside the claims, the specification, and the prosecution history and is, therefore, extrinsic to those vital sources of information. If the intrinsic information from those sources is unambiguous or sufficient for claims construction, a court should not rely on extrinsic evidence, such as expert testimony, to determine the meaning of the claims. Boss Control, Inc. v. Bombardier, Inc., 410 F.3d 1372, 1377 (Fed. Cir. 2005); Bell & Howell Doc. Mgmt. v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1977). That is, extrinsic evidence may not be "used to vary claim terms from how they are defined, even implicitly, in the specification or file history." Vitronics, 90 F.3d 1584-85. However, extrinsic evidence may be considered for the purpose of:
(1) providing background on the technology;
(2) explaining how an invention works;
(3) ensuring that the court's understanding of the technical aspects comports with that of a person skilled in the art; and/or
(4) establishing that a particular term in the patent or prior art has a particular meaning in the relevant field.
Phillips, 415 F.3d at 1318. Whether to admit extrinsic expert testimony lies in a court's discretion. Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350, 1357 (Fed. Cir. 2006); Serio-US Indus., Inc. v. Plastic Recovery Tech. Corp., 459 F.3d 1311, 1319 (Fed. Cir. 2006). If admitted, expert testimony must be considered in the context of the patent and the file history. Phillips, 415 F.3d at 1319.
In this case, the Court held a tutorial hearing on September 3, 2008, prior to the Markman hearing. At the tutorial, the Court heard and admitted evidence from experts falling under the first three categories identified in Phillips. Papst also sought to admit expert evidence for the purpose of the claims construction hearing. Papst submitted with its opening brief the declaration of an expert, C. Douglass Locke, Ph.D. See Papst's Markman Br., Ex. C. Because the intrinsic evidence - the claims, the specification, and the prosecution history - provide the full record necessary for claims construction, the Court did not admit expert testimony at the Markman hearing. To the extent that Papst relies on the Locke Declaration for the definition of the claims in the Patents, see Papst's Markman Br. at 21-24, the Court will disregard the Declaration.
The Camera Manufacturers have asked the Court to construe a series of terms from the Patents. Papst approached the Markman briefing with a less specific (and less helpful) analysis that combined terms and concepts directed more to the accused cameras than to the invention itself. The task is made more difficult because the invention was never, as far as the record reveals, actually manufactured or used as contemplated by the inventor. The Court directed argument at the hearing to follow the order of terms identified by the Camera Manufacturers in Exhibit R to their opening Markman Brief [Dkt #188] and thereafter to address a few additional terms proposed for construction by Papst (some of the latter are no longer at issue). Thus, the Court construes the following terms from the Patents:
C. "data transmit/receive device"
D. "for communication between [the host device and the data transmit/receive device]"
E. "multi-purpose interface"
G. "a first connecting device for interfacing the host device with the interface device via the multi-purpose interface of the host device"
H. "second connecting device for interfacing the interface device with the data transmit/receive device"
I. "first command interpreter" and "sends a signal regardless of the type of data"
J. "second command interpreter"
K. "wherein the interface device is configured by the processor and memory to include a first command interpreter and a second command interpreter"
L. "inquiry" and "inquiring"
N. "an input/output [storage] device customary in a host device"
O. "the driver for the input/output [storage] device customary in a host device"
P. "the usual driver for the input/output [storage] device"
Q. "whereupon the host device communicates with the interface device by means of the driver for the input/output [storage] device customary in a host device"
S. buffer terms - "a buffer to buffer data to be transferred between the data transmit/receive device and the host device" and "a data buffer for permitting independence in terms of time of the data transmit/receive device attachable to the second connecting device from the host device"
U. "simulating a virtual file system"
V. "specific driver for the multi-purpose interface"
W. "digital signal processor"
Y. "root directory" and "processor"
Z. Claim Two of the '399 Patent
The Camera Manufacturers propose that the term "interface device" be construed to mean "a stand-alone device that a user can readily physically connect to and disconnect from a host device and a data transmit/receive device and that directs communication between these devices when they are connected." Tr. 1:104 (CMs). They assert that the invented "interface device" is for communicating between a host device and a data transmit/receive device, i.e., the invention is neither the host nor the data transmit/receive device, but rather a separate device that enables communication between the other two. Papst retorts that "interface device" should be construed to mean the structure defined in the body of the Claims and that nothing in the Claims requires the interface device to be separate from the data transmit/receive device.*fn5
Claim One of the Patents contains a preamble that limits the Claim. Claim One of the Patents states:
1. An interface device for communication between a host device, which comprises drivers for input/output devices customary in a host device and a multi-purpose interface, and a data transmit/receive device, the data transmit/receive device being arranged for providing analog data, comprising: a processor; a memory; a first connecting device...; and a second connecting device.... '399 Patent, col. 12:41-53 (emphasis added); '449 Patent, col. 11:45-57(same). The preamble to Claim One is the portion in italics above. Papst asserts that the term "interface device" as set forth in the preamble does not limit the Claim and thus the term should not be construed by the Court. Specifically, Papst contends that the preamble uses the words "[a]n interface device... comprising," thereby indicating that the invention is defined in the body of the Claim, i.e., "a processor; a memory; a first connecting device...; and a second connecting device...." '399 Patent, col. 12:48-54; '449 Patent, col. 11:51-57. Papst further argues that to construe the term "interface device" in the preamble would be to improperly import limitations from the specification into the Claim. See Phillips, 415 F.3d at 1323.*fn6
The preamble to Claim One serves as a claim limitation for three reasons. First, "[i]f the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or if the claim preamble is necessary to give life, meaning, and vitality to the claim, then the claim preamble should be construed as if in the balance of the claim." Pitney Bowes, 182 F.3d at 1305 (internal quotation omitted). In these Patents, the preamble is limiting because it describes structures that comprise the invention and the relationships among those structures: "An interface device for communication between a host device... and a data transmit receive device." See '399 Patent, col. 12:42-45; '449 Patent, col. 11:46-49.
Second, where a preamble provides an antecedent basis for terms found in the body of the claims, it acts as a "necessary component of the claimed invention" and serves as a claim limitation. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952-53 (Fed. Cir. 2006). Here, the body of the Patents repeatedly refers back to the structures first identified in the preamble by using the word "the" and thus incorporates the terms by reference. See, e.g., '399 Patent, col. 12:50-52 ("a first connecting device for interfacing the host device with the interface device...."); '449 Patent, col. 11:53-55 (same).
Third, where a preamble is used during prosecution of the patent to distinguish prior art, the preamble may serve as a claim limitation. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347 (Fed. Cir. 2008). In the prosecution history for the '399 Patent, Mr. Tasler distinguished prior art (the McNeil patent, U.S. Patent No. 5,499,378) by amending the preamble to state "... and a data transmit/receive device, the data transmit/receive device being arranged for providing analog data...." CMs' Markman Br., Ex. C (" '399 File History") at ...