The opinion of the court was delivered by: Buckwalter, S. J.
Currently pending before the Court is a patent claim construction pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). For the following reasons, the disputed claim terms are construed as indicated in this Memorandum and the accompanying Order.
The present patent involved is U.S. Patent No. 5,631,953 ("the '953 Patent"). Although there are eight Claims within the '953 Patent, Claims 1, 2, 4, and 6 contain all the disputed terms at issue. Claim 1 recites (with disputed terms in bold):
A circuit arrangement for integration of EDP systems in utilization of telephone systems connected to a public ISDN or Euro ISDN telephone network, the circuit arrangement comprising a plurality of telephone extensions which are directly connectable to a telephone network selected from the group consisting of a public ISDN telephone network and Euro ISDN telephone network; a first line; an intelligent telephone system arranged so that said telephone extensions are connectable with said at least one telephone network through said first line and said intelligent telephone system; a plurality of personal computers; an integration element arranged between said intelligent telephone system and said personal computers, said integration element receiving signals via at least one connection element selected from the group consisting of an SDLC connection element and an ISDN connection element via a second line from said at least one telephone network via said intelligent telephone system and sending back signals to said at least one telephone network, said integration element also sending a data record assigned an appropriate information via a third line, via a LAN connected to a LAN server by a fourth line and via a fifth line to said personal computers again; a computing system; and a software layer arranged so that conversion of the signals into a data record and vice versa is carried by said integration element, by said computing system by said software layer and by said at least one connection element with an internal software. ('953 Patent, col. 5 line 52-col. 6 line 12 (emphasis added).)
In addition Claim 2 states:
A circuit arrangement as defined in claim 1, wherein said personal computers are provided with keyboards so that a speech or data communication between a caller via said at least one telephone network and a competent party on one of said telephone extensions with a respectively assigned one of said personal computers is sent to another competent party and back after the respective competent party has sent a data record assigned the appropriate information to said integration element by operating said keyboard of the respectively assigned one of said personal computers, and a necessary signal leaving said integration element is applied at said intelligent telephone system and a connection to at least one another telephone extension is established, so that a connection to every telephone extension simultaneously provides an immediate integration of said personal computer assigned to said telephone extension in the established speech and data communication. (Id. col. 6 lines 13-29 (emphasis added).) Claim 4 recites:
A circuit arrangement as defined in claim 2, wherein said integration element is formed so that it is possible to hold an applied speech and data communication in conference where required together with at least one further competent party. (Id. col 6 lines 47-51 (emphasis added).) Finally, Claim 6 states:
A circuit arrangement as defined in claim 1, wherein said integration element is formed so that data are transferable when a speech and data has been established by every competent part even during a conference and by all competent parties both to and from a caller to every participating competent party and between the competent parties with and without a caller. (Id. col. 6 lines 56-62 (emphasis added).)
B. General Description of Technology at Issue
In the simplest of terms, the technology to be construed in this case concerns circuit arrangements of hardware and software that allow the integration of speech (telephone systems) with data systems. These systems permit agents in customer service call centers to obtain information from their personal computer about the person calling for assistance at the same time he or she takes the call. As explained by the parties' experts at the Markman hearing, when a person calls a customer service center, the technology inputs the caller's telephone number into a computer system which converts it into a computer-readable request. The server then processes the request, obtains information about the customer calling, and creates a "screen pop," wherein the various information about that particular customer will automatically appear on the screen of the agent's personal computer at the same time the agent answers the call. (N.T. June 7, 2011, 18:21-24- 24:25, 59:12-63:24.) The agent may then use his or her personal computer to make requests from a centrally shared server -- which stores all the data about the clients -- to obtain additional information, transfer the customer to another agent, or conference in another agent. (N.T. June 7, 2011, 26:5-28:8, 58:9-59:10.) Both parties have agreed that the technology runs on what is called a client/server architecture, wherein the agent's personal computer ("the client") runs the customer service application and the database server answers requests from the client to get data. (N.T. June 7, 2011, 24:14-20.) This is distinct from the host/terminal architecture, wherein the host runs and controls the application and holds all the data, and the agent's terminal is simply an input and output device. (N.T. June 7, 2011, 21:8-23:12.)
Plaintiff CSB-System International, Inc. ("CSB") brought the present patent action against Defendant SAP America, Inc. ("SAP") in this Court on May 11, 2010 alleging that one of Defendant's products infringed on the '953 Patent held by Plaintiff. Following several conferences, the parties failed to reach complete agreement as to the proper construction of several claim terms. The parties submitted extensive briefing on the issue and proceeded to a one-day Markman hearing on June 7, 2011, at which time each side offered a short tutorial and the testimony of an expert witness. Thereafter, the parties had the opportunity to submit short post-Markman briefs, as well as stipulations regarding additional agreed-upon terms and any modified proposals for construction of still-disputed terms. Presently before the Court are two sets of disputed terms: (1) those on which the parties have conflicting definitions and (2) those which Defendant claims are too indefinite to be construed. Having considered the entirety of the existing record, the Court addresses each set of these disputed terms individually.
A. Standard of Review for Claim Construction
The first step in a patent infringement analysis is to define the meaning and scope of the claims of the patent. Markman, 52 F.3d at 976. Claim construction, which serves this purpose, is a matter of law exclusively for the court. Id. at 979. Specifically, the focus of a court's analysis must begin and remain on the language of the claims, "for it is that language that the patentee chose to use to 'particularly point[ ] out and distinctly claim[ ] the subject matter which the patentee regards as his invention.'" Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (quoting 35 U.S.C. § 112, ¶ 2).
The terms used in the claims bear a "heavy presumption" that they mean what they say and have their ordinary and customary meaning. Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002). That 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, i.e., as of the effective filing date of the patent application." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). To determine the ordinary meaning of a term, the court should review "the same resources as would" the person of ordinary skill in the art. Multiform Desicants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). As such, the ordinary meaning may be derived from a variety of sources including intrinsic evidence, such as the claim language, the written description, drawings, and the prosecution history; as well as extrinsic evidence, such as dictionaries, treatises, or expert testimony. Dow Chem. Co. v. Sumitomo Chem. Co., Ltd., 257 F.3d 1364, 1373 (Fed. Cir. 2001).
Generally, a person of ordinary skill in the art would not understand the ordinary and customary meaning of a claim term in isolation. Where ambiguity in the meaning of the term exists, the "most significant source" of authority is "the intrinsic evidence of record, i.e., the patent itself, including the claims, the patent specification*fn1 and, if in evidence, the prosecution history." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); see also Phillips, 415 F.3d at 1313 (holding that a person of ordinary skill in the art is deemed to read the claim terms in the context of the entire patent, including the specification). The specification "is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1587. Indeed, the patent specification is usually dispositive as to the meaning of words. Phillips, 415 F.3d at 1316. However, it is improper to import limitations from the specification to the claims. Id. at 1323; Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1364-65 (Fed. Cir. 2003); see also Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998) ("(a) one may not read a limitation into a claim from the written description, but (b) one may look to the written description to define a term already in a claim limitation, for a claim must be read in view of the specification of which it is a part" ). On occasion, "the specification may reveal a special definition given to a claim term . . . that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). The specification may also "reveal an intentional disclaimer, or disavowal, of claim scope by the inventor . . . [, which] is regarded as dispositive." Id. (citing SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001)).
"[T]he claims themselves [also] provide substantial guidance as to the meaning of particular claim terms." Phillips, 415 F.3d at 1314. Both "the context in which a term is used in the asserted claim" and the "[o]ther claims of the patent in question" are useful for understanding the ordinary meaning. Id. Thus, "[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Renishaw, 158 F.3d at 1250.
The court "should also consider the patent's prosecution history, if it is in evidence." Markman, 52 F.3d at 980. This consists of "the complete record of proceedings before the Patent Office and includes the prior art cited during examination." Phillips, 415 F.3d at 1317. "Like the specification, the prosecution history provides evidence of how the [Patent and Trademark Office] and the inventor understood the patent." Id. at 1317 (citing Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1206 (Fed. Cir. 1992)). Nonetheless, it is the least probative form of intrinsic evidence because it "represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation." Id.
If ambiguity still exists after considering all the intrinsic evidence, the court may rely on extrinsic evidence, which is "all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. Notably, extrinsic evidence is "less significant than the intrinsic record in determining 'the legally operative meaning of claim language.'" C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (quoting Vanderlande Indus. Nederland BV v. Int'l Trade Comm'n, 366 F.3d 1311, 1318 (Fed. Cir. 2004)). However, "dictionaries, and especially technical dictionaries, . . . have been properly recognized as among the many tools that can assist the court in determining the meaning of particular terminology." Phillips, 415 F.3d at 1318 (citing Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). Additionally, expert testimony can provide background on the technology at issue, explain how it works, speak to what a person of ordinary skill in the art would understand, and establish that a particular term has a particular meaning in the pertinent field. Id.
Ultimately, during claim construction, "[t]he sequence of steps used by the judge in consulting various sources is not important; what matters is for the court to attach the appropriate weight to be assigned to those sources in light of the statutes and policies that inform patent law." Id.
B. Discussion of Claim Terms
Originally, the parties proposed constructions for each term that reflected significant differences in their respective understandings of this Patent. For its part, Plaintiff generally offered unwieldy definitions, which closely narrowed the scope of the terms and which included limitations and additions found nowhere with the patent language. Defendant, on the other hand, generally provided the broadest possible definition of the claim terms, seemingly disregarding their meaning within the context of the patent and relying on either plain dictionary definitions or simple spelling out of acronyms.*fn2 The Court found none of these proposals particularly convincing, especially given the patent language and the expert testimony offered at the Markman hearing.
Apparently, the parties themselves concurred with this assessment, as they have now provided the Court with modified proposals that, notably, are substantially close in meaning. It is these modifications that the Court uses as a starting point for the analysis and which are set forth below.*fn3
Claim Term CSB's Modified Proposal SAP's Modified Proposal
EDP Systems Electronic Data Processing A computing system that system consists of computers receives, stores, operates on, and software for the records, or outputs data. processing of data, including a shared database.
Telephone extensions which Telephones and/or other Telephone extensions of the are directly connectable to a devices such as fax devices of type that can be directly telephone network selected the type that can be directly connected to either the public from the group consisting of connected to either the public ISDN or Euro ISDN a public ISDN telephone "ISDN" or Euro "ISDN" telephone network. This is a network and Euro ISDN telephone network. close ended Markush group. telephone network Personal Computers A desktop, floor-standing, or A desktop, floor-standing, or portable microcomputer that portable microcomputer that usually consists of a system usually consists of a system unit, a display monitor, a unit, a display monitor, a keyboard, one or more keyboard, one or more diskette drives, internal fixed diskette drives, internal fixed storage, and an optional storage, and an optional printer. A PC is designed printer. A PC is designed primarily to give independent primarily to give independent computing power to a single computing power to a single user and is used as a client. user and are inexpensively priced for purchase by individuals or small businesses.
Integration Element A component that converts A component that converts signals into data records and signals into data records, and vice versa. vice versa, and sends the data record to the personal computer so that the personal computer can use the data record to make a request to the server to retrieve corresponding customer information.
Server A functional unit that A shared computer on the provides shared services to Local Area Network (LAN) PCs/workstations over a that responds to requests network in response to from telephone software queries from clients. installed on the personal computer.
Data Record A set of data used to An electronic file containing electronically send data, the electronic file being information from one device processed by local software to another, including on a personal computer. querying information from a database.
The Court now turns to a construction of each of these disputed claim terms.
As set forth above, Plaintiff argues that an Electronic Data Processing or "EDP" system "consists of computers and software for the processing of data, including a shared database." Defendant, on the other hand, defines the term as, "[a] computing system that receives, stores, operates on, records, or outputs data." The sole substantive difference between these two definitions is whether EDP includes a shared database.
For several reasons, this Court adopts Plaintiff CSB's definition. First, turning to the intrinsic evidence, Figure 1 of the specification reveals that the EDP system contains multiple computers running software all connected to a LAN server, which houses data shared among the various computers. (See '953 Patent, Fig. 1.) Moreover, the specification discloses that the LAN server operates as a shared database, which is a crucial part of the EDP system. In particular, when describing what occurs when a customer call arrives at the call center, the specification states:
[W]hen a call is connected to a telephone extension 2 a signal is immediately sent on line b by the intelligent telephone system 3 to the integration element 5, which assigned the appropriate information in a data record by the integration element 5, is passed via the LAN 9 to the associated personal computer 4. Here it is possible to pass the caller data and information directly from the LAN server 10 and its database at the same time as the call arrives.
('953 patent, col. 4 lines 48-55 (emphasis added).) The specification goes on to state that when a call needs to be transferred to another customer service agent, the EDP uses a shared database to transmit the needed information to the new agent:
Here too, all the necessary data are displayed immediately after the connection has been made on his personal computer 12, released by signals of the intelligent telephone system 3 which is converted into a data record in the integration element 5 and was sent via LAN 9 with inclusion of the database of the LAN server 10 and the associated lines c; d; e to the personal computer 12 and the necessary communication can take place immediately. (Id. col. 4 line 63-col. 5 line 3 (emphasis added).)
In addition, although not as probative, Plaintiff's expert, Dr. Mark Gaynor,*fn4 concluded that a person of ordinary skill in the art ("POSITA") would recognize that the EDP, as used in the '953 Patent, includes a shared database. Citing to the specification, he noted that "the specification makes clear that the server has a database from which it serves database records." (Decl. of Mark Gaynor, ¶ 33, Mar. 29, 2011 ("Gaynor Decl.").) He went on to remark that a POSITA would recognize the shared database as a key element of the EDP as used in the '953 Patent. (Id. ¶ 37.)
Defendant's contrary evidence is unconvincing. First, it argues that the preamble to Claim 1 reveals that it is the claimed "circuit arrangement" and not the EDP systems -- which are merely components of that arrangement -- that comprises the common database. (Def. SAP's Opp. Claim Constr. Br. 18.) That language states, "[w]hat is claimed as new and desired to be protected by Letters Patent is set forth in the appended claims. . . . [a] circuit arrangement for integration of EDP systems in utilization of telephone systems connected to a public ISDN or Euro ISDN telephone network." ('953 Patent, col. 5 lines 49-54.) While the Court acknowledges the ambiguous phrasing of this sentence, a broader reading of it in the context of the entire specification clarifies that the EDP itself contains the common database, which is then integrated into claimed architecture.
Moreover, SAP cites to Newton's Telecom Dictionary, which defines "EDP" as "Electronic Data Processing. Also DP, as in Data Processing. Basically, a machine (also called a computer) that receives stores, operates on, records, and outputs data. . . ." NEWTON'S TELECOM DICTIONARY 376 (8th ed. 1994). As set forth above, however, such extrinsic evidence is "less significant than the intrinsic record in determining 'the legally operative meaning of claim language.'" C.R. Bard, Inc. v. U.S. Surgical Co., 388 F.3d 858, 862 (Fed. Cir. 2004) (quotation omitted). It is also settled that, "the specification may reveal a special definition given to a claim term . . . that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Phillips, 415 F.3d at 1316. In this case, the dictionary definition is clearly at odds with the terms of the Patent. First, where the dictionary describes a single "machine" or "computer," both parties concede that the EDP in the present case involves a system of computers. Moreover, the language of the '953 Patent clearly encompasses a shared database as part of the EDP. Faced with such discrepancies, the language of the specification must control.
Third, although SAP often relies on its own expert, Suresh Gursehaney,
it is notable that
Mr. Gursahaney effectively conceded that the '953 Patent's use of EDP
meant to include a shared database. In his Declaration, he stated that
"the construction of EDP System proposed by CSB and Gaynor is
generally understandable" and took issue only with the use of the term
"common" as a descriptor for database since it was unclear whether the
word meant "shared" or "ordinary" and thus "lack[ed] clarity and
actually add[ed] ambiguity" to the proposed construction.*fn5
(Decl. of Suresh Gursahaney, ¶ 23, Apr. 29, 2011 ("Gursahaney
Decl.) (emphasis added).) Mr. Gursahaney never inferred that the "EDP"
in the '953 Patent does not include a database at all. CSB has now
corrected such purported ambiguity by using the term "shared" in place
of "common" in its proposed definition,*fn6 making it
reasonable to assume that Mr. Gursahaney would accept CSB's definition
In short, the Court defines the term "EDP" as "Electronic Data Processing system consists of computers and software for the processing of data, including a shared database." As explained above, the inclusion of a shared database is clearly disclosed by the specification. Moreover, the Court adopts the term "processing of data" in lieu of SAP's proposal that the system "receives, stores, operates on, records, or outputs data," absent any explained substantive difference between the two definitions.
2. Telephone Extensions Which Are Directly Connectable to a Telephone Network Selected from the Group Consisting of a Public ISDN Telephone Network and EURO ISDN Telephone Network
The next term requiring construction is "[t]telephone extensions which are directly connectable to a telephone network selected from the group consisting of a public ISDN telephone network and Euro ISDN telephone network." Both parties now agree that the language of "selected from the group consisting of" denotes a closed Markush group*fn7 limited to either the public ISDN or Euro ISDN. The main dispute arises in whether the term "telephone extensions" refers to simply "telephone extensions" -- as proposed by SAP -- or should be expanded to include "telephones and/or other devices such as fax devices" -- as proposed by CSB.
The Court struggles slightly with this claim construction. As noted by SAP, the abstract portion of the specification expressly states that "telephone sets" are directly connected to the public ISDN or Euro ISDN telephone system, with no mention of any other devices such as fax devices. ('953 Patent, Abstract.). Moreover, in the prosecution history, the Examiner's Statement of Reasons for Allowance note, when distinguishing the prior art, that "none of the art of record suggest nor teach a circuit arrangement as claimed in independent claim 6*fn8 comprising telephone sets directly connected to the public ISDN or Euro-ISDN." (Def. SAP's Opening Claim Constr. Br., Ex. J, 2 (emphasis added).)
Nevertheless, the Court finds CSB's definition significantly more convincing. First, it is notable that the above language does not clearly exclude fax devices from being directly connectable to the public telephone network in the Patent. Although the Abstract portion of the specification describes "telephone sets," the remainder of the specification repeatedly makes the broader reference to "telephone extensions." Further, to the extent the cited prosecution history discusses only "telephone sets," the claim examiner was looking solely at "independent claim 6," which clearly describes only the setting up of conference calls through the system, and does not involve any fax communications.
Second and more importantly, the specification and claim language appear to explicitly contemplate the integration element functioning as a fax device for all the connected PCs. After describing the basic architecture and the various functions possible, as set forth in Claims 1-6, the specification states as follows:
Parallel to the above mentioned voice and data communication it is possible for every competent party to send the caller a fax.
This simultaneous and parallel fax transmissions next to the ongoing speech and data communication via the connection of the respective personal computer 4, 12 or 14 is made simultaneously via the line e with the LAN 9 with inclusion of the LAN server 10 via the line d, via the line c with the integration element 5 comprising the computing system 6, the software 7 and the SDLC or ISDN connection element 8 with an internal software and via the line b with the intelligent telephone system 3 to the public ISDN or Euro ISDN telephone network and thus to the caller by operating the keyboard of the personal computer 4; 12 or 14. ('953 Patent, col. 5 lines 18-31 (emphasis added).) Such language suggests that by simple operation of the personal computer, the customer service agent can direct that a fax be sent parallel to speech and data via a line directly connectable to a public telephone system through the intelligent telephone system. Claims 7 and 8 of the '953 then specifically claim the ability to send a fax. Indeed, Claim 8 discloses:
A circuit arrangement as defined in claim 1, wherein said integration element is formed so that in addition to the speech and data communication, a fax transmission is made parallel between the respective competent party and the caller using the keyboard of a respective one of said personal computers by using the connection of the respective personal computer with said at least one telephone network via said fixed line with the LAN with inclusion of the LAN server via said fourth line, via said third line with the integration element comprising said computing system, said software, said at least one connection element with the internal software, and via said second line with the intelligent telephone system. (Id. col. 7 line 9-col. 8 line 10.)
While the language of these latter Claims is somewhat obtuse -- as conceded by both parties -- Dr. Gaynor provided helpful guidance in his Opposition Declaration. He noted that Claim 8 expressly requires that the fax transmission be made on the same lines as the speech and data, meaning that the '953 patent teaches that other devices must be directly connectable to a telephone network. (Opposition Decl. of Mark Gaynor, ¶ 43, Apr. 29, 2011 ("Gaynor Opp. Decl.").) Dr. Gaynor went on to opine that a POSITA would view CSB's proposed definition as more complete and precise as it takes into account the disclosures of Claims 7 and 8. (Id. ¶ 45.)
SAP's sole response argument is that this language does not show the telephone extension transmitting the fax. Rather, according to SAP, "a customer service agent uses the keyboard of the personal computer to transmit the fax without the telephone extension . . . the customer service agent transmits the fax to the integration element (telephony server), which then converts the fax into a signal that is understood by the intelligent telephone system (telephone switch) and transmitted to the caller." (Def. SAP's Opening Claim Constr. Br. 14 n. 9.) Dr. Gaynor clarified, however, that "SAP confuses the initiation and control of a fax transmission with the device for fax transmissions." (Gaynor Opp. Decl. ¶ 44.) He went on to note that "[w]hile the PC's control the initiation of sending a fax, the integration element itself has the additional ability to act as central fax device for all those PC's. By this way the integration element represents also a special telephone device connected to the telephone network that could control a fax transmission." (Id.)
Given the foregoing discussion, and SAP's lack of any supporting extrinsic evidence for its proposed construction, the Court must concur with CSB. Accordingly, the phrase "telephone extensions which are directly connectable to a telephone network selected from the group consisting of a public ISDN telephone network and Euro ISDN telephone network," shall be construed to mean "telephones and/or other devices such as fax devices of the type that can be directly connected to either the public ISDN or Euro ISDN telephone network." Further, the phrase shall be deemed to encompass a closed Markush group.
The next term at issue is the seemingly innocuous phrase "personal computer." As noted above, the parties' initial proposed constructions could not have been more divergent from one another. Presently, however, the parties are in almost complete accord on this term, both agreeing that the definition should be taken in substantial part from the IEEE Standard Computer Dictionary, as follows:
A desktop, floor-standing, or portable microcomputer that usually consists of a system unit, a display monitor, a keyboard, one or more diskette drives, internal fixed storage, and an optional printer. A PC is designed to give independent computing power to a single user . . . (Pl. CSB's Opening Claim Constr. Br., Ex. 8, IBM DICTIONARY OF COMPUTING, 507 (10th ed. 1993)). The sole variance exists in how this definition should end. SAP advocates for using the entirety of the definition in the IBM Dictionary of Computing, which concludes with the phrase "and are inexpensively priced for purchase by individuals or small businesses." CSB, however, eschews this phrase and seeks the alternate ending "and is used as a client."
Unfortunately, because the parties' current proposals are new, neither party briefed the bases for their constructions, argued them during the Markman hearing, or presented any expert testimony on them. To the extent that the parties jointly adopt the well-phrased definition from the IBM Dictionary of Computing, the Court sees no reason to construe the term otherwise. The remaining question is whether to expand the definition past the point to which the parties already agreed and, if so, which party's addition to adopt. SAP's proposal -- "and are inexpensively price for purchase by individuals or small businesses" -- is taken directly from the IBM dictionary definition. Notably, however, dictionary definitions "focus the inquiry on the abstract meaning of the words rather than on the meaning of the claim terms within the context of the patent." Phillips, 415 F.3d at 1321. For that reason, "there may be a disconnect between the patentee's responsibility to describe and claim his invention, and the dictionary editors' objective of aggregating all possible definitions for particular words." Id. SAP's proposal is clearly representative of such a disconnect, as it fails to explain how the general pricing of personal computers has any bearing or impact on the construction of the '953 Patent as a whole. Nor has SAP shown that a person of ordinary skill in the art at the time of the '953 Patent would view the term "personal computer" as being an item that must be inexpensively priced for purchase by an individual or small business. (See N.T. June 7, 2011, 89:11-18 (testimony from Gaynor that "inexpensively priced" is not relevant).) Indeed, both parties' expert tutorials agreed that the technology at issue is frequently used in high-volume call centers for large companies, suggesting that the inexpensive pricing of personal computers has no bearing on why they are included in the '953 Patent. See Roche Diagnostics Corp. v. Selfcare Inc., 186 F. Supp. 2d 914, 918 (S.D. Ind. 2002) ("A claim term will not be given a common dictionary meaning . . . if such a reading would be nonsensical in light of the patent disclosure, or specification."). Accordingly, the Court declines to adopt this limitation.
CSB's proposed addition suffers the same fate. CSB points to nothing in the patent specification or claim language that creates a limitation on the use of personal computers as clients. While, as conceded by both parties, the '953 Patent generally appears to disclose a client/server architecture, CSB's addition describes not what the term "personal computer" means, but rather what the personal computer does within that architecture. CSB fails to point to any intrinsic or extrinsic evidence to support such a definition. As such, giving the term "personal computer" its ordinary meaning, the Court cannot find that its construction should include any such description of its use.
In light of the foregoing, the Court constructs the term "personal computer" to mean "[a] desktop, floor-standing, or portable microcomputer that usually consists of a system unit, a display monitor, a keyboard, one or more diskette drives, internal fixed storage, and an optional printer.
A PC is designed to give independent computing power to a single user."
With respect to the next term -- "integration element" -- the parties have again substantially changed their stances on the appropriate construction. In the initial claim construction briefs, CSB offered a lengthy definition involving a "combination of hardware and software that translates intelligent telephone system signals into computer-readable data and vice-versa, such as conversion of digital commands from computers and connection elements into content and control signals understood by intelligent telephone systems." SAP, on the other hand, presented a cursory definition that simply described the term as "[a] component that converts signals into data." At the Markman hearing, the parties then identified the key difference in their proposals as the absence of bi-directionality in SAP's definition. Specifically, CSB contended that the integration element had the ability to both convert signals into data and data into signals -- an ability not disclosed by SAP. CSB also took issue with SAP's failure to acknowledge that the integration element included both hardware and software and failure to provide context as to how the integration element is used.
Following the Markman hearing, however, the parties agreed on the bi-directionality of the integration element, yet still have not come to an agreement on the appropriate construction of the term. CSB now presents the shorter of the two proposals, as follows: "A component that converts signals into data and vice versa." SAP, on the other hand, describes it as "[a] component that converts signals into data records, and vice versa, and sends the data record to the personal computer so that the personal computer can use the data record to make a request to the server to retrieve corresponding customer information."
Given these new positions, the Court is left with a somewhat bare record to explain either definition. Accordingly, we turn to the intrinsic evidence for guidance. The specification clearly discloses that the integration element is bi-directional:
[A]n integration element [is] arranged between the intelligent telephone system and the personal computers, the integration element receiving signals via at least one connection element selected from the group consisting of an SDLC connection element and an ISDN connection element via a second line from the at least one telephone network via the intelligent system and sending back signals to the at least one telephone network, the integration element also sending a data record assigned an appropriate information via a third line, via a LAN connected to a LAN server by a fourth line and via a fifth line to the personal computers and receiving a data record from the personal computers again, a computing system, and a software layer arranged so that a conversion of the signals into a data record and vice versa is carried by the integration element, by the computing system, by the software layer and by the at least one connection element with an internal software.
('953 Patent, col. 2 lines 48-64 (emphasis added).) Further, the Abstract plainly notes that "[t]he conversion of the signals into the set of data and vice versa is performed by the integration component." ('953 Patent, Abstract.) Such clear language requires that the Court adopt the entirety of CSB's definition, which also mirrors the first phrase of SAP's definition.
The remaining question is whether the proper construction requires inclusion of SAP's proposed phrase "and sends the data record to the personal computer so that the personal computer can use the data record to make a request to the server to retrieve corresponding customer information." The specification language expressly discloses that the integration element "send[s] a data record . . . via a LAN connected to a LAN server . . . to the personal computers." Such a function is also found in Figure 1 of the patent showing the integration element connected through the LAN server to the personal computers. However, the remainder of SAP's phrase -- "so that the personal computer can use the data record to make a request to the server to retrieve the corresponding customer information" -- goes beyond the scope of an "integration element"'s ordinary meaning to a POSITA to include an explanation of what happens to the data records after the integration element is no longer involved. This results in language that is confusingly redundant of other claim limitations.
More importantly, SAP's definition, as is, fails to explain that the integration element also receives data records from the personal computers, which it then converts into signals readable by the intelligent telephone system. Such an omission pays short shrift to the bi-directionality that -- as admitted by both parties -- is key to the functioning of the integration element.
As such, the Court adopts the following construction: "[a] component that converts signals from the intelligent telephone system into data records, which it sends to the personal computer, and receives data records from the personal computer, which it can then convert into signals sent to the intelligent telephone system." Such a construction both reflects the bi-directionality of the integration element and establishes a context for how the integration element is used within the '953 patent.
The parties further dispute the proper construction of the term "server." CSB's current proposal suggests that it is "[a] functional unit that provides shared services to PCs/workstations over a network in response to queries from clients." SAP's current proposal, however, defines "server" as "[a] shared computer on the Local Area Network ("LAN") that responds to requests from telephone software installed on the personal computer." For the most part, the parties appear to be in concurrence that a server provides shared services to personal computers over a network and responds to requests from clients. Despite this relative symmetry, several areas of dispute remain. First, the parties disagree as to whether a server should be defined as "a functional unit" or a "computer." Second, the parties differ on to whether the network should be defined as simply a "network" or the "Local Area Network." Third, the proposed constructions differ on whether the server responds to "queries from clients" or responds to "requests from telephone software installed on the personal computer." The Court discusses each issue individually.
As to the first discrepancy, the specification repeatedly references the server and includes it as number 10 in Figure 1. Nothing in the patent language, however, provides any guidance as to whether the "server" is a "computer" or a "functional unit." Accordingly, the Court turns to extrinsic evidence of record. Newton's Telecom Dictionary, cited by SAP, offers a lengthy definition, which states in part:
A server is a shared computer on the local area network that can be as simple as a regular PC set aside to handle print requests to a single printer. Or more usually, it is the fastest and brawniest PC around. It may ...