Markman ruling for j2 Global Communications, Inc approximate 137 days
in response to
by
Message: Wake up Tommeeek!
Excerpt of Markman Ruling transcript , October ,2, 2011
The plaintiff, j2 Global Communications, Inc. (“j2") is the
owner of U.S. Patent Numbers 6,208,638 (“‘638 Patent"); 6,350,066
(“‘066 Patent"); 6,597,688 (“‘688 Patent"); and 7,020,132 (“‘132
Patent"). j2 alleges that Captaris, Inc. and Easylink Services
International Corp. (collectively “Defendants”) have offered to
sell and provide, have sold and provided, and continue to offer to
sell and provide products and services that infringe one or more
claims of the patents.
After reviewing the materials submitted by the parties and
holding a Markman hearing on October 15, 2010, the court construes
Case 2:09-cv-04150-DDP -AJW Document 205 Filed 03/04/11 Page 1 of 28 Page ID
#:4926
1 The court heard arguments at the October 15, 2010,
Markman hearing with respect to the ‘066 Patent and the ‘638
Patent. The court, therefore, at this time reserves construction
of the disputed terms with respect to the ‘132 Patent and the ‘688
Patent until it hears corresponding oral arguments.
2
the disputed claim terms related to the ‘066 Patent and the ‘638
Patent in the manner set forth below.1
I. BACKGROUND AND PATENTS-IN-SUIT
A. Generally
The technology at issue relates to user receipt and
transmission of facsimile and telephone messages over the Internet,
and of ways to making those messages available to users. The ‘066
Patent describes a method or system for making messages available
to users over the internet. The ‘638 Patent describes a method for
accomplishing reliable transmission of facsimile messages to users
in email form. The ‘688 and ‘132 Patents, which share common
specifications and drawings, relate the ability of the user to send
messages via e-mail that can be received at a facsimile machine.
The four patents can generally be grouped into two categories:
Patents ‘066 and ‘638 relate to a message being received by a user,
or an “inbound” message; Patents ‘688 and ‘132 relate to a message
that a user is sending, or an “outbound” message.
Three of the Patents, ‘066, ‘638, and ‘688, have undergone
reexamination. A reexamination certificate issued May 9, 2009, for
the ‘066 Patent, cancelling claims 1-35 and adding claims 36-57 as
amended versions of claims 1-35; claims 36-57 were determined to be
patentable. (May 9, 2009, ‘066 Reexamination Certificate; App. Sec.
1C.) A reexamination certificate issued December 9, 2008, for the
‘638 with claims 1 and 13 determined to be patentable as amended;
Case 2:09-cv-04150-DDP -AJW Document 205 Filed 03/04/11 Page 2 of 28 Page ID
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claims 2-12 and 14-22 determined to be patentable as dependent from
claims 1 and 13; and newly-added claims 23-40 determined to be
patentable. (Dec. 9, 2008, ‘638 Reexamination Certificate; App.
Sec. 2C.) A reexamination certificate issued March 11, 2008, for
the ‘688 Patent, determining that all of claims 1-27 were
patentable as originally issued.
II. THE CLAIM CONSTRUCTION PROCESS
A patent infringement analysis involves two steps: (1)
determining the meaning and scope of the patent claims asserted to
be infringed; and (2) comparing the properly construed claims to
the accused device. See generally Markman v. Westview Instruments,
Inc., 517 U.S. 370 (1996). The first step in this sequence is
presently before the Court.
“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.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (internal quotation marks omitted). The
construction of a particular patent claim term presents a question
of law, to be decided by the Court. Markman, 517 U.S. at 391.
The starting point for claim construction is a disputed term’s
ordinary meaning. Phillips, 415 F.3d at 1313. Ordinary meaning,
in the patent claim construction context, is the meaning that a
person of ordinary skill in the art would attribute to a claim term
in the context of the entire patent at the time of the invention,
i.e., as of the effective filing date of the patent application.
ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1374 (Fed.
Cir. 2009).
Case 2:09-cv-04150-DDP -AJW Document 205 Filed 03/04/11 Page 3 of 28 Page ID
#:4928
The claims, of course, do not stand alone; a person of
ordinary skill in the art “is deemed to read [a] 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 1313-14 (emphasis
added). Accordingly, the specification is “the primary basis for
construing the claims” in light of the “statutory requirement that
the specification describe the claimed invention in full, clear,
concise, and exact terms.” Id. at 1315 (internal quotation marks
omitted) (emphasis added).
In determining the proper construction, the claim language,
specification, and prosecution history – together referred to as
the “intrinsic evidence” – are of paramount importance. Id. at
1315 (“[T]he best source for understanding a technical term is the
specification from which it arose, informed, as needed, by the
prosecution history.” (emphasis added) (internal quotation marks
omitted)). Consistent with this principle, courts have recognized
that the specification may reveal a special definition given to a
claim term by the patentee that differs from the meaning it would
otherwise possess. Id. at 1316. In such cases, the inventor’s
lexicography governs. Id. In other cases, the specification may
reveal an intentional disclaimer, or disavowal, of claim scope by
the inventor. Id.
While the court interprets claim terms in light of the
specification, it should generally not “import[] limitations from
the specification into the claims absent a clear disclaimer of
claim scope.” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d
1361, 1373 (Fed. Cir. 2007). “[T]he distinction between using the
Case 2:09-cv-04150-DDP -AJW Document 205 Filed 03/04/11 Page 4 of 28 Page ID
#:4929
specification to interpret the meaning of a claim and importing
limitations from the specification into the claim can be a
difficult one to apply in practice.” Phillips, 415 F.3d at 1323.
In walking this “tightrope,” Andersen, 474 F.3d at 1373, the court
hews to the question of “how a person of ordinary skill in the art
would understand the claim terms.” Phillips, 415 F.3d at 1323.
Consideration of intrinsic evidence will resolve any claim
term ambiguity in most circumstances. See id. at 1313-14. Where
it does not, however, the Court may consider certain “extrinsic
evidence.” See id. at 1317. Expert testimony, for example, may
provide helpful background on the technology at issue, explain how
an invention works, or establish that a claim term has a particular
meaning in the relevant field. See id. at 1319. Dictionaries and
treatises may also be helpful in this regard. Id. at 1318.
Precedent counsels against reliance on dictionary definitions at
the expense of the specification, however, because such reliance
“focuses the inquiry on the abstract meaning of words rather than
on the meaning of claim terms within the context of the patent.”
Id. at 1321; see also Nystrom v. Trex Co., 424 F.3d 1136, 1145
(Fed. Cir. 2005).
The court’s ultimate goal is to construe the disputed terms in
a manner consistent with the way the inventor defined them and a
person of ordinary skill in the art would understand them. “The
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.” Phillips, 415 F.3d
at 1316 (internal quotation marks ommitted).
Case 2:09-cv-04150-DDP -AJW Document 205 Filed 03/04/11 Page 5 of 28 Page ID
#:4930
owner of U.S. Patent Numbers 6,208,638 (“‘638 Patent"); 6,350,066
(“‘066 Patent"); 6,597,688 (“‘688 Patent"); and 7,020,132 (“‘132
Patent"). j2 alleges that Captaris, Inc. and Easylink Services
International Corp. (collectively “Defendants”) have offered to
sell and provide, have sold and provided, and continue to offer to
sell and provide products and services that infringe one or more
claims of the patents.
After reviewing the materials submitted by the parties and
holding a Markman hearing on October 15, 2010, the court construes
Case 2:09-cv-04150-DDP -AJW Document 205 Filed 03/04/11 Page 1 of 28 Page ID
#:4926
1 The court heard arguments at the October 15, 2010,
Markman hearing with respect to the ‘066 Patent and the ‘638
Patent. The court, therefore, at this time reserves construction
of the disputed terms with respect to the ‘132 Patent and the ‘688
Patent until it hears corresponding oral arguments.
2
the disputed claim terms related to the ‘066 Patent and the ‘638
Patent in the manner set forth below.1
I. BACKGROUND AND PATENTS-IN-SUIT
A. Generally
The technology at issue relates to user receipt and
transmission of facsimile and telephone messages over the Internet,
and of ways to making those messages available to users. The ‘066
Patent describes a method or system for making messages available
to users over the internet. The ‘638 Patent describes a method for
accomplishing reliable transmission of facsimile messages to users
in email form. The ‘688 and ‘132 Patents, which share common
specifications and drawings, relate the ability of the user to send
messages via e-mail that can be received at a facsimile machine.
The four patents can generally be grouped into two categories:
Patents ‘066 and ‘638 relate to a message being received by a user,
or an “inbound” message; Patents ‘688 and ‘132 relate to a message
that a user is sending, or an “outbound” message.
Three of the Patents, ‘066, ‘638, and ‘688, have undergone
reexamination. A reexamination certificate issued May 9, 2009, for
the ‘066 Patent, cancelling claims 1-35 and adding claims 36-57 as
amended versions of claims 1-35; claims 36-57 were determined to be
patentable. (May 9, 2009, ‘066 Reexamination Certificate; App. Sec.
1C.) A reexamination certificate issued December 9, 2008, for the
‘638 with claims 1 and 13 determined to be patentable as amended;
Case 2:09-cv-04150-DDP -AJW Document 205 Filed 03/04/11 Page 2 of 28 Page ID
#:4927
claims 2-12 and 14-22 determined to be patentable as dependent from
claims 1 and 13; and newly-added claims 23-40 determined to be
patentable. (Dec. 9, 2008, ‘638 Reexamination Certificate; App.
Sec. 2C.) A reexamination certificate issued March 11, 2008, for
the ‘688 Patent, determining that all of claims 1-27 were
patentable as originally issued.
II. THE CLAIM CONSTRUCTION PROCESS
A patent infringement analysis involves two steps: (1)
determining the meaning and scope of the patent claims asserted to
be infringed; and (2) comparing the properly construed claims to
the accused device. See generally Markman v. Westview Instruments,
Inc., 517 U.S. 370 (1996). The first step in this sequence is
presently before the Court.
“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.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (internal quotation marks omitted). The
construction of a particular patent claim term presents a question
of law, to be decided by the Court. Markman, 517 U.S. at 391.
The starting point for claim construction is a disputed term’s
ordinary meaning. Phillips, 415 F.3d at 1313. Ordinary meaning,
in the patent claim construction context, is the meaning that a
person of ordinary skill in the art would attribute to a claim term
in the context of the entire patent at the time of the invention,
i.e., as of the effective filing date of the patent application.
ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1374 (Fed.
Cir. 2009).
Case 2:09-cv-04150-DDP -AJW Document 205 Filed 03/04/11 Page 3 of 28 Page ID
#:4928
The claims, of course, do not stand alone; a person of
ordinary skill in the art “is deemed to read [a] 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 1313-14 (emphasis
added). Accordingly, the specification is “the primary basis for
construing the claims” in light of the “statutory requirement that
the specification describe the claimed invention in full, clear,
concise, and exact terms.” Id. at 1315 (internal quotation marks
omitted) (emphasis added).
In determining the proper construction, the claim language,
specification, and prosecution history – together referred to as
the “intrinsic evidence” – are of paramount importance. Id. at
1315 (“[T]he best source for understanding a technical term is the
specification from which it arose, informed, as needed, by the
prosecution history.” (emphasis added) (internal quotation marks
omitted)). Consistent with this principle, courts have recognized
that the specification may reveal a special definition given to a
claim term by the patentee that differs from the meaning it would
otherwise possess. Id. at 1316. In such cases, the inventor’s
lexicography governs. Id. In other cases, the specification may
reveal an intentional disclaimer, or disavowal, of claim scope by
the inventor. Id.
While the court interprets claim terms in light of the
specification, it should generally not “import[] limitations from
the specification into the claims absent a clear disclaimer of
claim scope.” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d
1361, 1373 (Fed. Cir. 2007). “[T]he distinction between using the
Case 2:09-cv-04150-DDP -AJW Document 205 Filed 03/04/11 Page 4 of 28 Page ID
#:4929
specification to interpret the meaning of a claim and importing
limitations from the specification into the claim can be a
difficult one to apply in practice.” Phillips, 415 F.3d at 1323.
In walking this “tightrope,” Andersen, 474 F.3d at 1373, the court
hews to the question of “how a person of ordinary skill in the art
would understand the claim terms.” Phillips, 415 F.3d at 1323.
Consideration of intrinsic evidence will resolve any claim
term ambiguity in most circumstances. See id. at 1313-14. Where
it does not, however, the Court may consider certain “extrinsic
evidence.” See id. at 1317. Expert testimony, for example, may
provide helpful background on the technology at issue, explain how
an invention works, or establish that a claim term has a particular
meaning in the relevant field. See id. at 1319. Dictionaries and
treatises may also be helpful in this regard. Id. at 1318.
Precedent counsels against reliance on dictionary definitions at
the expense of the specification, however, because such reliance
“focuses the inquiry on the abstract meaning of words rather than
on the meaning of claim terms within the context of the patent.”
Id. at 1321; see also Nystrom v. Trex Co., 424 F.3d 1136, 1145
(Fed. Cir. 2005).
The court’s ultimate goal is to construe the disputed terms in
a manner consistent with the way the inventor defined them and a
person of ordinary skill in the art would understand them. “The
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.” Phillips, 415 F.3d
at 1316 (internal quotation marks ommitted).
Case 2:09-cv-04150-DDP -AJW Document 205 Filed 03/04/11 Page 5 of 28 Page ID
#:4930
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