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In re VTran Media Technologies

July 17, 2009

IN RE: VTRAN MEDIA TECHNOLOGIES, LLC, PATENT LITIGATION


The opinion of the court was delivered by: Kauffman, J.

MDL DOCKET No. 1948

ALL CASES

MEMORANDUM

I. INTRODUCTION

The instant litigation arises from a patent dispute between Plaintiff VTran Media Technologies, LLC ("Plaintiff") and various Defendants.*fn1 Plaintiff is the assignee of two patents: U.S. Patent No. 4,890,320 (the "'320 Patent") and U.S. Patent No. 4,995,078 (the "'078 Patent"). Plaintiff filed patent infringement actions against Defendants throughout the United States, and on June 10, 2008, the Judicial Panel on Multidistrict Litigation transferred all actions to this Court for coordinated pretrial proceedings pursuant to 28 U.S.C. § 1407.

The '320 Patent was issued on December 26, 1989 from U.S. Patent Application Serial Number 07/204,585 (the "'585 application") and is entitled "Television Broadcast System for Selective Transmission of Viewer-Chosen Programs at Viewer-Requested Times." While the '585 application was pending, the inventors filed U.S. Patent Application Serial Number 07/419,263 (the "'263 application"), which was issued as the '078 Patent on February 19, 1991 with the title "Television Broadcast System for Selective Transmission of Viewer-Chosen Programs at Viewer-Requested Times." The '320 Patent and the '078 Patent share virtually identical specifications.

When the actions were transferred to this Court on June 10, 2008, a motion to dismiss Plaintiff's Complaint was pending in E.D. Pa. Civil Action No. 08-3050.*fn2 On November 3, 2008, the Court denied the motion to dismiss. In re VTran Media Techs., LLC Patent Litig., 2008 U.S. Dist. LEXIS 91440 (E.D. Pa. Nov. 3, 2008). On December 31, 2008, the parties submitted a joint claim construction and prehearing statement outlining the four claim terms in dispute. On February 24, 2009, the Court held a claim construction hearing on the four terms.*fn3

II. PRINCIPLES OF CLAIM CONSTRUCTION

"It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). "Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement." U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). A court construing a patent claim must "accord a claim the meaning it would have to a person of ordinary skill in the art at the time of the invention." Innova/Pure Water, Inc., 381 F.3d at 1116; see also Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) ("[T]he ordinary and customary meaning of a claim term 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, i.e., as of the effective filing date of the patent application."). "The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art." Phillips, 415 F.3d at 1313 (citation omitted).

A. Intrinsic Evidence

"In determining the meaning of disputed claim language, a court looks first to the intrinsic evidence of record, examining, in order, the claim language itself, the specification, and the prosecution history." Alza Corp. v. Mylan Labs, Inc., 391 F.3d 1365, 1370 (Fed. Cir. 2004).

1. Claim Language

With respect to the claim language, "the claims themselves provide substantial guidance as to the meaning of particular claim terms." Phillips, 415 F.3d at 1314. Furthermore, "the context in which a term is used in the asserted claim can be highly instructive." Id. "Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term." Id. (citing Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Because "a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning," however, the Court must read the claim language in view of the specification and the prosecution history. Vitronics, 90 F.3d at 1582.

2. Specification

With respect to the specification, also known as the written description of the patent, it "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 (quoting Vitronics, 90 F.3d at 1582); see also Merck & Co. v. Teva Pharms. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003) ("A fundamental rule of claim construction is that terms in a patent document are construed with the meaning with which they are presented in the patent document. Thus claims must be construed so as to be consistent with the specification, of which they are a part." (citations omitted)); Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998) ("The best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history."). "The importance of the specification in claim construction derives from its statutory role. The close kinship between the written description and the claims is enforced by the statutory requirement that the specification describe the claimed invention in 'full, clear, concise, and exact terms.'" Phillips, 415 F.3d at 1316 (quoting 35 U.S.C. § 112, ¶ 1). The specification may reveal a special definition given to a claim term, or "an intentional disclaimer, or disavowal, of claim scope by the inventor." Id. If the specification alters the scope or definition of a claim term, the meaning dictated by the specification governs, even if the claim term has a "meaning it would otherwise possess." Id.

3. Prosecution History

Finally, with respect to the prosecution history, which includes the complete record before the U.S. Patent and Trademark Office along with any prior art cited and distinguished during the patent examination, courts have found that it also is "of critical significance in determining the meaning of the claims." Vitronics, 90 F.3d at 1582. "Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent. Furthermore, like the specification, the prosecution history was created by the patentee in attempting to explain and obtain the patent." Phillips, 415 F.3d at 1317 (citation omitted). However, "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." Id. Nevertheless, examination of the prosecution history can be useful in understanding "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." Id. In cases "where the patentee has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim congruent with the scope of the surrender." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003). Prosecution disclaimer operates as a form of estoppel to ensure that a patentee may not construe claims one way in order to obtain the patent and then, in an infringement suit, attempt to construe the same claims another way. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) ("Such a use of the prosecution history ensures that claims are not construed one way in order to obtain their allowance and in a different way against accused infringers.").

B. Extrinsic Evidence

Generally, analysis of intrinsic evidence alone provides sufficient guidance to construe a claim properly. In such cases, the Court should not examine extrinsic evidence in claim construction. See Vitronics, 90 F.3d at 1583 ("In those cases where the public record unambiguously describes the scope of the patented invention, reliance on any extrinsic evidence is improper. The claims, specification, and file history, rather than extrinsic evidence, constitute the public record of the patentee's claim, a record on which the public is entitled to rely."). "Nonetheless, because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence." Phillips, 415 F.3d at 1319. Such evidence can include learned treatises, dictionaries, expert testimony, or any other evidence external to the patent prosecution history. Id. at 1317. Extrinsic evidence is considered less reliable than intrinsic evidence, and therefore "it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1319.

C. Means-Plus-Function Limitations

While patent claims often recite an invention's elements as physical structures (e.g., "oar" or "brake"), patent law permits an applicant to describe an element of an invention in terms of its function (e.g., "a means for rowing" or "a means for stopping"). See 35 U.S.C. § 112, ¶ 6. "Claim construction of a means-plus-function limitation includes two steps. First, the court must determine the claimed function. Second, the court must identify the corresponding structure in the written description of the patent that performs that function." Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006) (citation omitted). In every instance, "function must be determined before corresponding structure can be identified." JVW Enters., Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1330 (Fed. Cir. 2005).

In determining the function for a means-plus-function limitation, the principles of construction discussed above continue to apply, and "a court may not construe a means-plus-function limitation 'by adopting a function different from that explicitly recited in the claim.'"

Id. at 1331 (quoting Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999)). Additionally, "a court errs 'by importing the functions of a working device into the[] specific claims, rather than reading the claims for their meaning independent of any working embodiment.'" Id. (quoting Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1303 (Fed. Cir. 1999)).

"After identifying the claimed function, the court must then determine what structure, if any, disclosed in the specification corresponds to the claimed function." Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed Cir. 2002). The corresponding structure identified must perform the claimed function and be clearly linked in the specification to the performance of the function. See id. ("In order to qualify as corresponding, the structure must not only perform the claimed function, but the specification must clearly associate the structure with performance of the function."). Whether the specification adequately sets forth structure ...


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