Opinion
CASE NO. C15-0366JLR
03-28-2016
Intellicheck Mobilisa, Inc., Plaintiff, v. Wizz Systems, LLC, Defendant.
Benjamin Hellerstein, Douglas Bruce Greenswag, Theodore J. Angelis, K&L Gates LLP, Seattle, WA, for Plaintiff. David Yohannan, Stephen R. Freeland, Joseph D. Wilson, Kelley Drye & Warren, Washington, DC, Donald B. Scaramastra, Garvey Schubert Barer, Seattle, WA, for Defendant.
Benjamin Hellerstein, Douglas Bruce Greenswag, Theodore J. Angelis, K&L Gates LLP, Seattle, WA, for Plaintiff.
David Yohannan, Stephen R. Freeland, Joseph D. Wilson, Kelley Drye & Warren, Washington, DC, Donald B. Scaramastra, Garvey Schubert Barer, Seattle, WA, for Defendant.
CLAIM CONSTRUCTION ORDER
JAMES L. ROBART, United States District Judge
I. INTRODUCTION
This matter comes before the court on the parties' dispute regarding the construction of certain patent claim terms. The court has reviewed the parties' claim construction briefs (Pltf. Op. Br. (Dkt. # 38); Def. Op. Br. (Dkt. # 39); Pltf. Resp. (Dkt. # 41); Def. Resp. (Dkt. # 42)), all materials filed in support thereof, the balance of the record, and the relevant law, and has heard oral argument at a February 4, 2016, claim construction hearing (Dkt. # 49). (See also Pltf. Letter Br. (Dkt. # 55); Def. Letter Br. (Dkt. # 59).) Being fully advised, the court construes the disputed terms as set forth below.
II. BACKGROUND
This is a patent infringement case involving apparatuses, systems, and methods for verifying the authenticity of identification documents such as driver licenses (“the Invention”). (See 2d Am. Compl. (Dkt. # 45) ¶¶ 1, 3; Pltf. Op. Br. at 5; Def. Op. Br. at 7.) Plaintiff Intellicheck Mobilisa, Inc. (“Intellicheck”) is the owner by assignment of five patents—four of which are continuation patents—describing the Invention: United States Patent No. 5,864,623 (“the '623 Patent”), United States Patent No. 6,463,416 (“the '416 Patent”), United States Patent No. 6,920,437 (“the '437 Patent”), United States Patent No. 7,478,067 (“the '067 Patent”), and United States Patent No. 7,899,751 (“the '751 Patent”) (collectively, “the Patents-in-Suit”). (2d Am. Compl. ¶¶ 11, 24, 37, 50, 63; Def. Op. Br. at 7 n.1.) Intellicheck asserts that Defendant Wizz Systems, LLC, d/b/a IDScan.net (“IDScan”), has infringed its patent rights both directly and indirectly. (See 2d Am. Compl.)
The Patents-in-Suit share a common specification. For clarity and convenience, this order generally cites to the disclosure of '623 Patent, which differs from the disclosure in the other Patents-in-Suit only in line numbers.
The parties dispute the meaning of the following nine claim terms in the Patents-in-Suit:
1. human recognizable;
2. jurisdiction key;
3. Issuer Identification Number;
4. a checksum corresponding to selected human recognizable ones of said jurisdiction segments AND a corresponding
The court uses conjunctions in all caps to indicate where the parties have submitted multiple distinct phrases or words as a single term requiring construction. The conjunctions in all caps are not part of the claim terms at issue; they merely separate the phrases or words that the parties have submitted for construction.
reference checksum from said machine coded information;
5. means for reading the information of said document into said programmable apparatus;
6. means for determining whether said document includes a license format corresponding to a reference license format;
7. A programmable apparatus for authenticating a document AND authenticating, authentication, authenticate;
8. first circuitry at said first location for receiving the information read from the driver license and determining whether the read information read [sic] comports with said predetermined format;
9. a jurisdiction discriminator engine adapted to determine and authenticate a jurisdiction.
In quoting a passage from the Patents-in-Suit that appears to contain a typographical error, the court will use “[sic]” the first time it quotes the passage but not in any subsequent quotations to the same passage.
(Joint Statement (Dkt. # 37) at 3-12.) The parties' disputed terms are now before the court.
III. DISCUSSION
A. Law of Claim Construction
1. Generally
The court has the sole responsibility for construing patent claims. Markman v. Westview Instruments, Inc. , 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). Subsequent authority has clarified that the court construes claims as a matter of law, though the court may make subsidiary factual findings regarding extrinsic evidence. Teva Pharm. USA, Inc. v. Sandoz, Inc. , ––– U.S. ––––, 135 S.Ct. 831, 836–38, 840–42, ––– L.Ed.2d –––– (2015). In practice, executing the Markman mandate means following rules that rank the importance of various sources of evidence of the “true” meaning of claim terms.
“As all parties agree, when the district court reviews only evidence intrinsic to the patent...the judge's determination will amount solely to a determination of law....In some cases, however, the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period....In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence....[T]his subsidiary factfinding must be reviewed for clear error on appeal. ...The district judge, after deciding the factual dispute, will then interpret the patent claim in light of the facts as he has found them. This ultimate interpretation is a legal conclusion.” Teva Pharm. USA, Inc. , 135 S.Ct. at 841.
The Federal Circuit reiterated its view of the claim construction rules in Phillips v. AWH Corp. , 415 F.3d 1303 (Fed.Cir.2005) (en banc). Although the case focused on the role of dictionaries in claim construction, it also reviewed the claim construction process. Intrinsic evidence, which includes the patent and its prosecution history, is the primary source from which to derive a claim's meaning. Id. at 1314. The court's task is to determine the “ordinary and customary meaning” of the terms of a claim in the eyes of a person of ordinary skill in the art on the filing date of the patent. Id. at 1313 (quoting Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed.Cir.1996) ). In its review of intrinsic evidence, the court should begin with the language of both the asserted claim and other claims in the patent. Id. at 1314 ; see also Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc. , 381 F.3d 1111, 1116 (Fed.Cir.2004) (“[C]laim construction analysis must begin and remain centered on the claim language itself.”).
The court must read claim language, however, in light of the remainder of the patent's specification. Phillips , 415 F.3d at 1316 (“[T]he specification necessarily informs the proper construction of the claims.”). The specification acts as a “concordance” for claim terms, and is thus the best source beyond claim language for understanding claim terms. Id. at 1315. The inventor is free to use the specification to define claim terms as she wishes, and the court must defer to the inventor's definitions. Id. at 1316 (“[T]he inventor's lexicography governs.”). The court should “rely heavily” on the specification in interpreting claim terms. Id. at 1317. The court should not, however, commit the “cardinal sin” of claim construction—impermissibly reading limitations from the specification into the claims. Id. at 1320 (citing SciMed Life Sys. v. Advanced Cardiovascular Sys., Inc. , 242 F.3d 1337, 1340 (Fed.Cir.2001) ). Although a court should limit the meaning of a claim where the “specification makes clear at various points that the claimed invention is narrower than the claim language might imply,” the court must not read particular embodiments and examples appearing in the specification into the claims unless the specification requires it. Alloc, Inc. v. Int'l Trade Comm'n , 342 F.3d 1361, 1370 (Fed.Cir.2003) ; Constant v. Advanced Micro – Devices, Inc. , 848 F.2d 1560, 1571 (Fed.Cir.1988). Additionally, while drawings illustrating the invention may be used in construing claims, “the mere fact that the patent drawings depict a particular embodiment of the patent does not operate to limit the claims to that specific configuration.” Prima Tek II, L.L.C. v. Polypap, S.A.R.L. , 318 F.3d 1143, 1148 (Fed.Cir.2003).
More recently, the Federal Circuit has continued to stress its emphasis on the importance of reading the claims in the context of the specification and prosecution history. Laryngeal Mask Co. Ltd. v. Ambu , 618 F.3d 1367, 1370 (Fed.Cir.2010) (“The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art in question at the time of the invention when read in the context of the specification and prosecution history.”) Although the patent's prosecution history is also intrinsic evidence, it is “less useful for claim construction purposes” than the specification. Phillips , 415 F.3d at 1317. As the prosecution history documents an invention's evolution from application to the issuance of the patent, it usually “lacks the clarity of the specification....” Id. The prosecution history is useful, however, in determining when an inventor has expressly disavowed certain interpretations of her claim language. Id. Specifically, a patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution. Computer Docking Station Corp. v. Dell, Inc. , 519 F.3d 1366, 1374–75 (Fed.Cir.2008). A patentee could do so, for example, by clearly characterizing the invention in a way to try to overcome rejections based on prior art. Id. The doctrine of prosecution disclaimer “protects the public's reliance on definitive statements made during prosecution” by “precluding patentees from recapturing through claim interpretation specific meanings [clearly and unmistakably] disclaimed during prosecution.” Id. (citations omitted).
Finally, the court can consider extrinsic evidence, “including expert and inventor testimony, dictionaries, and learned treatises.” Phillips , 415 F.3d at 1317 (citing Markman v. Westview Instruments, Inc. , 52 F.3d 967, 980 (Fed.Cir.1995) ). For a variety of reasons, extrinsic evidence is usually “less reliable than the patent and its prosecution history” as a source for claim interpretation. Id. at 1318. The court thus need not admit extrinsic evidence, but may do so in its discretion. Id. at 1319.
2. Means-Plus-Function limitations
Some of the disputed terms are—or are claimed to be by IDScan—means-plus-function (“MPF”) limitations recognized by 35 U.S.C. § 112, ¶ 6. See infra Parts III.B.5-9; 35 U.S.C. § 112(f) (“An element...may be expressed as a means or step for performing a specified function without the recital of structure...in support thereof, and such claim shall be construed to cover the corresponding structure...described in the specification and equivalents thereof.”). “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) (citing JVW Enters. v. Interact Accessories, Inc. , 424 F.3d 1324, 1330 (Fed.Cir.2005) ).
B. Construction of Disputed Terms
1. human recognizable
This term appears in claims 1 and 15 of the '623 Patent and claim 1 of the '416 Patent. ('623 Patent (Dkt. # 16-1) at 15:14-17, 15:34-40, 16:48-53, 16:1-6; '416 Patent (Dkt. # 16-2) at 15:14-18.) Claim 1 of the '623 Patent provides a representative example of the term's use: “A programmable apparatus for authenticating a document which embodies information comprising both human recognizable information and machine recognizable coded information....” ('623 Patent at 15:14-17 (emphasis added).) The parties dispute whether this term requires construction at all.
IDScan proposes that the court construe this term as “alphanumeric characters or images visually perceptible and understandable to humans without machine assistance.” (Def. Op. Br. at 19.) According to IDScan, the specification makes clear that “human recognizable” means alphanumeric characters and images because the specification gives alphanumeric characters and images as examples of human recognizable information. (See id. at 17–19.) Further, IDScan argues that “[i]t cannot be disputed that” alphanumeric characters and images “are distinguished from their machine recognizable counterparts by virtue of being visually perceptible and understandable to humans without machine assistance.” (Id. at 19.)
Intellicheck asserts that no construction is necessary because the meaning of this term is evident on its face—“recognizable by a human.” (Pltf. Op. Br. at 16.) According to Intellicheck, the extrinsic evidence contains no definition of this term; rather, the specification merely contrasts this term with “machine recognizable” and “machine readable” information (Id. (citing '623 Patent at 2:51-52, 3:1-2, 3:22-24, 14:45-47).) Intellicheck argues that the extrinsic evidence provides no support for the limitations that IDScan seeks to import into this term—that is, only alphanumeric characters or images, only visually perceptible information, only understandable information, and only information that a human can recognize without machine assistance. (See Pltf. Resp. at 12-15.)
The court DECLINES TO CONSTRUE this term. IDScan's proposal would require the court to read limitations from the written description and dependent claims into this term and the claims in which it is found. Thus, IDScan suggests that the court should limit “human recognizable” to alphanumeric characters and images because the written description and other dependent claims makes clear that “human recognizable” includes such things. (See Def. Op. Br. at 18-19.) Although a court should limit the meaning of a claim where the “specification makes clear at various points that the claimed invention is narrower than the claim language might imply,” the court must not read particular embodiments and examples appearing in the specification into the claims unless the specification requires it. Alloc, Inc. , 342 F.3d at 1370 ; Constant , 848 F.2d at 1571.
The examples that IDScan identifies are just that—examples of human recognizable information; they do not make clear that the Patents-in-Suit limit or define this term as IDScan suggests. (See Def. Op. Br. at 18-19); see also Karlin Tech., Inc. v. Surgical Dynamics, Inc. , 177 F.3d 968, 971–72 (Fed.Cir.1999) (noting that the doctrine of claim differentiation, which is based on the notion that different words or phrases used in separate claims are presumed to indicate the claims have different scope, “normally means that limitations stated in dependent claims are not to be read into the independent claims from which they depend”). Furthermore, intrinsic evidence indicates that “human recognizable” encompasses information outside IDScan's proposed limitations. (See '623 Patent at 4:64-5:1 (“The human recognizable information...also preferably contains a digital signal representation that is routed to the digital-to-analog (D/A) converter 46 , which converts the digital representation into an analog signal representative of an audio signal.” (emphasis in original)).)
The court finds no indication in the record that the Patents-in-Suit use this term in anything other than its plain and ordinary meaning in everyday language. As such, the court declines to construe this term. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd. , 521 F.3d 1351, 1362 (Fed.Cir.2008) ; U.S. Surgical Corp. v. Ethicon, Inc. , 103 F.3d 1554, 1568 (Fed.Cir.1997) (“Claim construction is a matter of resolution of disputed meanings and technical scope....It is not an obligatory exercise in redundancy.”).
2. jurisdiction keys
This term appears in claims 11 and 16 of the '623 Patent. ('623 Patent at 16:27-32, 17:8-18:3.) Claim 11 reads, “The apparatus of claim 1, wherein said means for determining is further operable to determine a jurisdiction identification from a code on said document, wherein jurisdiction keys pertaining to said reference license format and said reference jurisdictional segments are enabled to be retrieved.” (Id. at 16:27-32 (emphasis added).) Claim 16 reads, “The method of claim 15, wherein said step of determining further includes determining a jurisdiction identification from a code on said document, wherein jurisdiction keys pertaining to said reference license format and said reference jurisdictional segments are enabled to be retrieved.” (Id. at 17:8-18:3 (emphasis added).) The parties agree that a jurisdiction key is information that identifies where jurisdiction segments are stored on storage media; however, the parties disagree about whether such storage locations must be “tracks.” (See Joint Statement at 8.)
IDScan proposes that the court construe this term as “information that identifies the tracks on one or more storage mediums where jurisdiction segments are stored.” (Def. Op. Br. at 21.) According to IDScan, the patentee coined this term, as it has no identifiable definition in a dictionary or other extrinsic evidence. (Id. at 20.) IDScan argues that the written description defines this term to mean information that identifies tracks where jurisdiction segments are stored—“Program segment 224 loads the jurisdiction 'keys' which identifies [sic] a record for the jurisdictional segment. More particularly, the 'keys' identify the tracks on the storage mediums 20 , 22 , 24 where jurisdiction segments are stored....” (Id. (quoting '623 Patent at 9:18-22) (emphasis in original).)
Intellicheck proposes that the court construe this term as “information identifying locations on one or more storage media where jurisdiction segments are stored.” (Pltf. Op. Br. at 16-17.) According to Intellicheck, IDScan improperly attempts to import a limitation from the written description into the claims. (Id. at 17–18.) Intellicheck maintains that the written description discloses that jurisdiction segments can be stored on tracks (such as on floppy discs or hard drives); however, the description also instructs that the Invention can use other types of storage (including volatile storage, such as random access memory (“RAM”), which does not use tracks) and refers broadly to a “record” as the location of the jurisdiction segments. (See id. at 17 (citing '623 Patent at 4:4-14, 9:18-22).)
The court agrees with Intellicheck and CONSTRUES this term as “ information identifying locations on one or more storage media where jurisdiction segments are stored.”
Neither party has indicated to the court that “jurisdiction keys” (or even “keys”) has a meaning to those of ordinary skill in the art. The patentee's use of quotations around “keys” in column nine of the specification also indicates that the patentee is coining a new term or at least using an established term in a new sense. (See '623 Patent at 9:18-22.) Where a disputed term has “no previous meaning to those of ordinary skill in the prior art[,] its meaning, then, must be found [elsewhere] in the patent.” Irdeto Access, Inc. v. Echostar Satellite Corp. , 383 F.3d 1295, 1300 (Fed.Cir.2004) (quoting J.T. Eaton & Co. v. Atl. Paste & Glue Co. , 106 F.3d 1563, 1570 (Fed.Cir.1997) ) (alterations in original). Outside of claims 11 and 16 of the '623 Patent “jurisdiction keys” appears only once in the specification. At column nine, the patentee explains, “Program segment 224 loads the jurisdiction 'keys' which identifies [sic] a record for the jurisdictional segment. More particularly, the 'keys' identify the tracks on the storage mediums 20 , 22 , 24 where jurisdiction segments are stored....” ('623 Patent at 9:18-22 (emphasis in original).) This passage indicates that jurisdiction keys are information that identifies a location on one or more storage media where jurisdiction segments are stored.
IDScan contends that the text in column nine also shows that the patentee expressly limited jurisdiction keys to information that identifies a track on one or more storage media. (See Def. Op. Br. at 20.) The court rejects this argument. The patentee initially states that jurisdiction keys identify a generic “record.” ('623 Patent at 9:18-20.) Although the patentee goes on to explain that “[m]ore particularly, the 'keys' identify tracks on storage mediums 20 , 22 , 24 ,” that language does not necessarily limit jurisdiction keys to identifying tracks. (Id. at 9:20-22 (emphasis in original).) The “[m]ore particularly” sentence can be read as a specific illustration of the sentence before it, not as a limitation on storage locations. (Id. at 9:18-22.) The court finds that reading more sensible and accurate than IDScan's proposal.
Moreover, the “[m]ore particularly” sentence is illogical when read in light of the remainder of the specification unless “tracks” is not a limit on storage locations. (Id. ) Jurisdiction keys “identify tracks on storage mediums 20 , 22 , 24 .” (Id. at 9:20-22 (emphasis in original).) Figure 1 shows that storage medium 24 is volatile storage. (Id. at Fig. 1, elt. 24; see also id. at 4:4-14.) Volatile storage includes RAM, which, Intellicheck asserts, does not use tracks. (See Pltf. Op. Br. at 17 (citing Hellerstein Decl. (Dkt. # 38-1) ¶ 3, Ex. B (excerpts from Microsoft Computer Dictionary (3d ed. 1997) (hereinafter “Microsoft Dictionary ”)) at 473 (defining “track” as “[o]ne of numerous circular data storage areas on a floppy disk or a hard drive.... Tracks, composed of sectors, are recorded on a disk by an operating system during a disk format operation.”), 502 (defining “volatile memory” as “[m]emory, such as RAM, that loses its data when the power is shut off”)).) IDScan does not rebut this assertion. (See Def. Resp. (omitting any discussion of “jurisdiction keys”).) For these reasons, the court concludes that jurisdiction keys are not limited to identifying “tracks” on storage media.
At the claim construction hearing, counsel for IDScan admitted that he was not in a position to dispute that RAM or other volatile storage does not include tracks. (See Dkt. # 49.)
3. Issuer Identification Number
This term appears in claims 1, 12, 22, and 32 of the '751 Patent. ('751 Patent (Dkt. # 16-5) at 15:14-16, 15:58-62, 16:42-56, 17:19-25.) Claim 1 reads, in pertinent part: “A method in a computing system that uses the contents of an identification document...the method comprising:... identifying, by the computing system, an issuer of the identification document based on an Issuer Identification Number that is contained in the read contents.” ('751 Patent at 15:6-9, 15:14-16 (emphasis added).) Claim 12 reads, in pertinent part: “A non-transitory computer-readable storage medium encoded with instructions that, when executed by a computer system, cause the computing system to:...identify an issuing jurisdiction of the identification document based on...an Issuer Identification Number ....” (Id. at 15:51-53, 15:58-62 (emphasis added).) The term's use in claims 22 and 32 is consistent with its use in claims 1 and 12. (See id. at 16:42-56, 17:19-25.) This term does not appear anywhere in the written description. The parties dispute whether this term is limited to American Association of Motor Vehicle Administrators (“AAMVA”) codes. (See Def. Op. Br. at 26.)
IDScan proposes that the court construe this term as “an identification number in the range of 636000 to 636062 assigned by AAMVA to an issuing jurisdiction.” (Id. at 28.) According to IDScan, to convince the Patent Office that the written description addresses this term, the applicant noted that the description incorporates by reference AAMVA standards that define the meaning of this term as “an identification number in the range of 636000 to 636062 assigned by AAMVA to an issuing jurisdiction.” (Id. at 26–28.)
Intellicheck proposes that the court construe this term as “an identifier that designates the issuing jurisdiction.” (Pltf. Op. Br. at 25.) Although the written description does not mention this term, Intellicheck argues that the written description discloses that certain identifiers can designate jurisdictions. (Id. at 25.) For instance, Intellicheck points out, the specification discloses that “[p]rogram segment 396 retrieves the jurisdiction identification (ID) and the code of the driver license 78 , which is a code indicating the AAMVA assigned Jurisdiction Number....” ('623 Patent at 13:36-38 (emphasis in original).) Intellicheck notes that during prosecution the applicant cited this passage in the specification as support for “Issuer Identification Number,” thereby demonstrating that an AAMVA Jurisdiction Number is one example of an Issuer Identification Number. (Pltf. Op. Br. at 25 (citing Hellerstein Decl. ¶ 6, Ex. E (“'751 Patent File Hist.”) at 10–11 ).) Yet, according to Intellicheck, the applicant did not limit Issuer Identification Number to this one example; rather the applicant also disclosed a generic jurisdiction identifier. (Id. (citing '623 Patent at Table 2 elt. 112, Table 4 elt. 222, 9:9-18).)
Intellicheck contends that the doctrine of claim differentiation also precludes IDScan's proposal. In particular, Intellicheck observes that several of the '751 Patent's dependent claims recite that the “format is an [AAMVA] format.” ('751 Patent at 15:45-47 (claim 9); Pltf. Resp. at 23; see also '751 Patent at 16:38-41 (claim 21), 16:63-65 (claim 25), 18:20-23 (claim 38).) Intellicheck argues that the relevant independent claims, which contain the term at issue here, are presumptively broader and therefore not limited to AAMVA numbers. (Pltf. Resp. at 23.) Finally, Intellicheck asserts that extrinsic evidence indicates that this term is not limited to AAMVA numbers. This term, Intellicheck maintains, is a generic term used for “all manner of documents,” as indicated by “the international standard 'ISO/IEC 7812 Identification Cards,”' which notes the use of an issuer identification number for identification cards used in international exchange. (Pltf. Op. Br. at 26 (citing Hellerstein Decl. ¶ 7, Ex. F (“ISO/IEC 7812-1”) at 1).)
The court CONSTRUES this term as “ a number that designates the issuing jurisdiction.”
IDScan draws an erroneous conclusion from the prosecution history. During prosecution the applicant cited an AAMVA document as support for the term Issuer Identification Number. Specifically, the applicant pointed to where the specification explains that “[p]rogram segment 396 retrieves the jurisdiction identification (ID)...which is a code indicating the AAMVA assigned Jurisdiction Number.” ('623 Patent at 13:38-38 (emphasis in original); see '751 Patent File Hist. at 10–11.) The applicant then linked Jurisdiction Number to Issuer Identification Number by citing to the AAMVA document, which (1) is incorporated by reference in the specification and (2) describes Issuer Identification Number as a number that identifies an issuing jurisdiction. (See '751 Patent File Hist. at 10–11 ; '623 Patent at 6:25-31; Yohannan Decl. (Dkt. # 40) ¶ 11, Ex. 10 (“AAMVA Recommendations”).)
IDScan's argument falters because it rests on the premise that the AAMVA document defines the term Issuer Identification Number as being limited to a particular series of numbers. (See Def. Op. Br. at 26-27.) To the contrary, the AAMVA document makes clear that the series in question is the series of Issuer Identification Numbers reserved for AAMVA members, not the entire universe of Issuer Identification Numbers. (See AAMVA Recommendations at 14 (“An application to ANSI [the American National Standards Institute] requesting the issuance of a sequential block of sixty-three (63) Issuer Identification Number (IIN) for the membership of AAMVA was submitted on August 11, 1992. On November 17, 1992, AAMVA received a reply from ISO [the International Organization for Standardization] approving the request.”).) Thus, in referencing the AAMVA document, the applicant provided a link between the specification and the term “Issuer Identification Number” but did not limit that term as used in the claims to a particular series of numbers.
Nor does the reference in the specification to “Jurisdiction Numbers assigned by AAMVA” limit this term to AAMVA's particular series of IINs. ('623 Patent at 13:36-38.) The court concludes that language is merely a description of the preferred embodiment, not a limitation on the claim. See Alloc, Inc. , 342 F.3d at 1370.
Furthermore, the remainder of the intrinsic evidence does not support the conclusion —implicit in IDScan's position—that the applicant limited the Invention's scope to reading and authenticating documents from AAMVA jurisdictions. For example, for each of the independent claims using “Issuer Identification Number,” the '751 Patent contains dependent claims that reference AAMVA standards. (See '751 Patent at 15:45-47 (claim 9), 16:38-41 (claim 21), 16:63-65 (claim 25).) Thus, claims 9, 21, and 25 cover the method, storage medium, or device of independent claims 1, 12, and 22, respectively, where the referenced format is an AAMVA format. (Id. ) Claims 10, 30, and 39 cover the method, memory or device of those independent claims where the issuing jurisdiction is a state of the United States or a province of Canada. (Id. at 15:48-49, 17:14-15, 18:23-25.) Applying the doctrine of claim differentiation, the court presumes that the relevant independent claims do not contain these limitations and thus refer to iterations of the Invention that are capable of reading and authenticating documents issued in non-AAMVA formats and by jurisdictions outside the United States and Canada. See Karlin Tech., Inc. , 177 F.3d at 971–72.
Subdivisions of the United States and Canada make up AAMVA's member jurisdictions. See AAMVA Regions & Jurisdiction Map, http://www.aamva.org/aamva-regions-and-jurisdictions-map/ (last visited March 11, 2016).
Nevertheless, the court rejects Intellicheck's attempt to define Issuer Identification Number as a generic “identifier” rather than a number. (See Pltf. Op. Br. at 25.) Neither the intrinsic nor extrinsic evidence contains any support for that position, and the term itself along with the ISO and AAMVA documents in the record indicate that an Issuer Identification Number is a number. (See ISO/IEC 7812-1 at 1; AAMVA Recommendations at 14.) At the claim construction hearing, counsel for Intellicheck conceded this point. (See Dkt. # 49.)
In fact, at the claim construction hearing, counsel for IDScan indicated that as long as the court construes this term as a number, IDScan no longer disputes the remaining aspects of Intellicheck's proposed construction. (See Dkt. # 49.)
4. checksum
The term “checksum” appears in claims 1 and 15 of the '623 Patent and claim 12 of the '416 Patent. ('623 Patent at 15:33-39, 17:1-6; '416 Patent at 17:12-14.) Although Intellicheck frames the dispute as concerning several longer phrases involving checksum (see Pltf. Op. Br. at 13-15), IDScan addresses itself only to the word “checksum” (see Def. Op. Br. at 17; Def. Resp. at 11), and Intellicheck's response confines itself to that word (see Pltf. Resp. at 11-12). The remainder of the phrases that Intellicheck discusses appears not to be disputed; therefore, the court construes only the term “checksum.” A representative example of this term's use comes from claim 1 of the '623 Patent :
A programmable apparatus for authenticating a document which embodies information comprising both human recognizable information and machine recognizable coded information, said apparatus comprising:
Means for reading the information of said document into said programmable apparatus;
...
Means for parsing said read information into jurisdictional segments ... wherein reference jurisdictional segments as included in said reference license format each have predetermined values;
...
Said means further directing the operation of said programmable apparatus
for determining whether a checksum corresponding to said human recognizable ones of said jurisdictional segments matches a corresponding reference checksum from said machine coded information and generating at least a verification signal if said information...match[es]....
('623 Patent at 15:14-39 (emphasis added).)
IDScan proposes that the court construe this term as “a digit representing the sum of the correct digits in a piece of stored or transmitted digital data, against which later comparisons can be made to correct errors in the data.” (Def. Op. Br. at 17.) IDScan argues that “checksum” is a well-settled term in the computer arts; thus, IDScan's dictionary definition of this term is the appropriate construction. (Id. (citing online versions of an Oxford Dictionary and the MacMillan Dictionary, an open-source online dictionary).) According to IDScan, this definition also conforms to the meaning of the word parts “check” and “sum” in the context of the computer arts. (Id. )
Intellicheck proposes that the court construe this term as “data for detecting tampering or alteration of information.” (Pltf. Op. Br. at 14.) Intellicheck contends that the written description shows that a checksum is an error-checking mechanism that “helps to 'determine[ ] if the data has been tampered with or altered after having been officially issued.”' (Id. at 14 (quoting '623 Patent at 11:35-37) (alterations in original).) According to Intellicheck, the specification does not suggest that this mechanism is confined to a particular type of mathematical operation. (Id. ) Rather, the specification “recites the term to mean a general error check,” which is consistent with dictionary definitions contemporaneous with the '623 Patent. (Id. (citing Microsoft Dictionary 88-89 (definition of checksum)).) Intellicheck argues that IDScan's proposal is overly specific in that it is limited to a digit using a particular type of mathematical operation—addition. (Id. at 15; see also Pltf. Resp. at 11-12.) Further, Intellicheck faults IDScan for relying on a dictionary definition from 2015, well after the filing date of the '623 Patent. (Pltf. Op. Br. at 15; Pltf. Resp. at 12.)
The court CONSTRUES this term as “ a value that is used to test for tampering or alteration of information and is calculated by sequentially combining the constituent parts of a chunk of data with a series of arithmetic or logical operations.”
Outside of Table 5, the term “checksum” appears in only one portion of the written description. That portion reads in total:
Program segment 304 loads the stored jurisdiction checksum and and [sic] passes control over to program loop 306 having a first program segment, that is, program segment 308 . The checksum determines if the data has been tampered with or altered after having been officially issued.
Program segment 308 performs the parity checksum on the track data received from program segment 304 and then passes control onto program segment 310 via signal path 338 .
('623 Patent at 11:33-41 (emphasis in original).) This passage explains what a checksum does—it determines if data has been tampered with or altered—and that explanation comports with the relevant claim language. (See id. at 15:14-39.) Yet neither this passage nor the relevant claim language offers any clue about what a checksum is.
Intellicheck suggests that the court should interpret the absence of further explanation in the specification as an indication that the patentee used checksum to refer generically to any mechanism for error checking. (See Pltf. Op. Br. at 14 (“[The specification] recites the term to mean a general error check.”).) Intellicheck then faults IDScan's proposal for lacking support in the intrinsic evidence. (See id. at 15.) Intellicheck neglects to address, however, whether this term has a more specific meaning to those of ordinary skill in the relevant art. Moreover, Intellicheck's citation to the Microsoft Dictionary indicates that this term is a specialized term that does have meaning to those of ordinary skill in the relevant art.
The 1997 edition of the Microsoft Computer Dictionary , cited by Intellicheck, defines checksum as follows:
A calculated value that is used to test data for the presence of errors that can occur when data is transmitted or when it is written to a disk. The checksum is calculated for a given chunk of data by sequentially combining all the bytes of data with a series of arithmetic or logical operations. After the data is transmitted or stored, a new checksum is calculated in the same way suing the (possibly faulty) transmitted or stored data. If the two checksums do not match, an error has occurred, and the data should be transmitted again.
(Microsoft Dictionary 88-89.) The specification shows that in the Patents-in-Suit a checksum functions in a slightly different manner than as described in the Microsoft Dictionary definition. Specifically, in the Patents-in-Suit a checksum is used to detect tampering with or alteration of information in a document, not errors in transmitting data or writing data to a disk. (See '623 Patent at 11:33-41.) Nevertheless, nothing in the specification suggests that patentee intended for checksum to refer to any and all mechanisms that can perform this function, rather than—in accordance with the ordinary meaning of checksum—a “value...calculated for a given chunk of data” by combining constituent parts of the data “with a series of arithmetic or logical operations.” (Microsoft Dictionary 88-89); see Phillips , 415 F.3d at 1316 (“[T]he specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.”).
On the other hand, the court finds insufficient support for IDScan's proposal that a checksum is limited to “a digit representing the sum of the correct digits in a piece of stored or transmitted digital data.” (Def. Op. Br. at 17.) IDScan pulls this definition from non-technical online dictionaries accessed almost twenty years after the initial application for the '623 Patent. (See id. ) As such, IDScan's definition is not persuasive evidence of the meaning of checksum to a person of ordinary skill in the art at the time of the patent application. See Phillips , 415 F.3d at 1313 ; Brookhill – Wilk 1, LLC v. Intuitive Surgical, Inc. , 334 F.3d 1294, 1299 (Fed.Cir.2003) (refusing to consider dictionary definitions that were “not contemporaneous with the patent”). Furthermore, IDScan's proposal is inconsistent with the intrinsic evidence. IDScan's proposal covers only checksums composed of “correct digits,” whereas the claim 1 contemplates that one checksum may be composed of some incorrect data. (See '623 Patent at 15:14-39 (describing a means for “determining whether a checksum corresponding to said human recognizable ones of said jurisdictional segments matches a corresponding reference checksum from said machine coded information and generating at least a verification signal if said information...match[es].”).)
In view of the specification and the contemporaneous definition from the Microsoft Dictionary , the court concludes that to a person of ordinary skill in the art at the time of the '623 Patent application, the term checksum means “a value that is used to test for tampering or alteration of information and is calculated by sequentially combining the constituent parts of a chunk of data with a series of arithmetic or logical operations.”
At the claim construction hearing, IDScan's counsel indicated that IDScan does not have any objection to this construction of “checksum.” (See Dkt. # 49.)
5. means for reading the information of said document into said programmable apparatus
This term is found in claim 1 of the '623 Patent and claim 1 of the '416 Patent. ('623 Patent at 15:14-19; '416 Patent at 15:14-20.) The relevant portion of the '623 Patent reads: “A programmable apparatus for authenticating a document which embodies information comprising both human recognizable information and machine recognizable coded information, said apparatus comprising: means for reading the information of said document into said programmable apparatus ....” ('623 Patent at 15:14-19 (emphasis added).) The relevant portion of the '416 Patent reads: “A programmable apparatus for authenticating a document which embodies identification information for an identified entity comprising both human recognizable information and machine recognizable coded information, said apparatus comprising: means for reading the information of said document into said programmable apparatus ....” ('416 Patent at 15:14-20 (emphasis added).) The parties agree that this is a means-plus-function term governed by 35 U.S.C. § 112, ¶ 6. (See Joint Statement at 8.) However, the parties disagree about whether this term requires reading both human recognizable and machine recognizable information into the apparatus. (See Pltf. Op. Br. at 18; Def. Op. Br. at 21.)
IDScan proposes that the court construe this term as “a digital scanner or its equivalent, and one or both of a magnetic reader and a bar code scanner, or their equivalent, for reading both human recognizable information and machine recognizable coded information into an apparatus.” (Def. Op. Br. at 23.) IDScan points out that in this term the patentee uses the definite article “the” before “information,” yet the only possible antecedent basis for “the information” is the phrase in the preamble “information comprising both human recognizable information and machine recognizable coded information.” (See id. at 22–23.) According to IDScan, such language shows that this term requires reading both human and machine recognizable information into the apparatus. (See id. )
Intellicheck proposes that the court construe this claim as having the function “reading information from the document into the apparatus” and the structure “a digital scanner or equivalent, a magnetic reader or equivalent, or a barcode scanner or equivalent.” (Pltf. Op. Br. at 18.) According to Intellicheck, five factors show the error in IDScan's proposal that this term requires reading both human recognizable and machine recognizable information into the apparatus: IDScan's proposal (1) excludes a preferred embodiment from the scope of the claims; (2) contradicts other uses of “the information” in the specification; (3) makes multiple dependent claims superfluous; (4) makes other dependent claims unworkable; and (5) is inconsistent with the examiner's understanding of the term. (Pltf. Resp. at 17-20; see also Pltf. Op. Br. at 18-22.)
The court agrees with IDScan and CONSTRUES this term as a means-plus-function limitation in which the function is “reading both human recognizable information and machine recognizable coded information from the document into the apparatus” and the structure is “a digital scanner or its equivalent, and one or both of a magnetic reader and a bar code scanner, or their equivalent.”“When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int'l Corp. , 323 F.3d 1332, 1339 (Fed.Cir.2003) ; see also C.R. Bard, Inc. v. M3 Sys., Inc. , 157 F.3d 1340, 1350 (Fed.Cir.1998) (“[A] preamble usually does not limit the scope of the claim unless the preamble provides antecedents for ensuing claim terms and limits the claim accordingly.”). Further, it is “well established that the definite article 'the' particularizes the subject which it precedes. It is a word of limitation as opposed to the indefinite or generalizing force of 'a' or 'an.”' NTP, Inc. v. Research In Motion, Ltd. , 418 F.3d 1282, 1306 (Fed.Cir.2005) (quoting Warner – Lambert Co. v. Apotex Corp. , 316 F.3d 1348, 1356 (Fed.Cir.2003) ). The phrase “the information” in this term finds its antecedent basis in the preamble: “A programmable apparatus for authenticating a document which embodies information comprising both human recognizable information and machine recognizable coded information....” ('623 Patent at 15:14-17 (emphasis added).) Without referring to the preamble, the reader would have no idea to what the definite phrase “the information” refers. The preamble shows that this phrase refers to “information comprising both human recognizable information and machine recognizable coded information” that is embodied in the document to be authenticated. (Id. at 15:14-19.)
Intellicheck dismisses this reference back to the preamble, arguing that the patentee used “said,” not “the,” to designate the antecedent basis of terms. (See Pltf. Op. Br. at 20 n.4.) Thus, Intellicheck maintains that “the information in said document” is a standalone sub-term that refers back to “document” in the preamble, whereas “the information” alone has no antecedent in the relevant claims. (See id. ) The court finds this argument unpersuasive. Moreover, even if Intellicheck is correct and “said document,” not “the information,” is a reference back to the preamble, the “document” in the preamble is a document “which embodies information comprising both human recognizable information and machine recognizable coded information.” ('623 Patent at 15:14-17.)
In addition, examination of the latter part of claims 1 and 15 in '623 Patent confirms that the claimed inventions must read both human recognizable information and machine coded information. Both of these claims encompass a means for “determining whether a checksum corresponding to selected human recognizable ones of said jurisdictional segments matches a corresponding reference checksum from said machine coded information.” ('623 Patent at 15:33-39, 17:1-6.) This claim language refers back to “human recognizable information and machine coded information” in the preamble and requires that both types of information have already been read into the apparatus so checksums derived from both types of information can be compared. (See id. ; see also id. at 15:14-17, 16:48-52.)
Intellicheck makes five arguments why the court should reject this interpretation. First, Intellicheck argues that this interpretation excludes a preferred embodiment. (See Pltf. Op. Br. at 18-19 (citing Vitronics Corp. , 90 F.3d at 1583–84 ) (rejecting a construction where “a preferred (and indeed only) embodiment would not fall within the scope of the patent claim”).) Intellicheck finds the preferred embodiment in question in the following language in the written description: “The information given in Table 2 is read into the CPU 12 via signal paths 82 or 86 .” ('623 Patent at 6:18-19 (emphasis in original).) Table 2 lists the information on the document (in this case a driver license), signal path 82 runs from the digital scanner (which reads human recognizable information) and signal path 86 runs from the bar code reader and the magnetic scanner (which read machine recognizable coded information). (See id. at 4:21-34, 5:48-6:16, Fig. 1.) Intellicheck argues that use of the disjunctive “or” means that the apparatus need not use both types of information. (See Pltf. Op. Br. at 19.)
The court rejects this argument. To begin, Intellicheck's reading of the written description is not the only reasonable one. The relevant passage could be read to mean that some of the information in the license makes its way to the CPU via the digital scanner while some makes its way to the CPU via the bar code reader or magnetic scanner. (See '623 Patent at 6:18-19.) The patentee's use of “paths” rather than “path” suggests this interpretation is more appropriate. (Id. ) Further, even if Intellicheck is correct that this passage discloses an embodiment that need not use both types of information, the court cannot alter the plain meaning of this term to include all aspects of each disclosed embodiment. Cf. Chef Am., Inc. v. Lamb – Weston, Inc. , 358 F.3d 1371, 1374 (Fed.Cir.2004) (“[C]ourts may not redraft claims, whether to make them operable or to sustain their validity....Where, as here, the canons of claim construction cited by [the plaintiff] are inapposite, and we must construe the claims based on the patentee's version of the claim as he himself drafted it.” (internal quotation marks omitted)).
Intellicheck next argues that the written description defines the sub-term “the information in said document” to mean either or both human recognizable and machine recognizable information. (See Pltf. Op. Br. at 19-20.) Intellicheck points out that “the digital scanner 30 , the magnetic reader 32 , and the barcode scanner 34 are each capable of reading the information on the identification card.” ('623 Patent at 4:21-23 (emphasis in original); see Pltf. Op. Br. at 19-20.) Intellicheck ends the quotation there, omitting that these devices “are each capable of reading the information on the identification card ...that is routed to these reading devices.” ('623 Patent at 4:21-24.) The court reads this passage as a whole to mean that each device is capable of reading the information routed to it. (See id. ) So read, this passage reveals nothing about whether more than one of these devices must be used to practice the described embodiment. It certainly does not show that the patentee defined “the information in said document” to mean “either human recognizable information or machine recognizable information or both.”
At the claim construction hearing and in its letter brief, Intellicheck advanced another version of this argument—that “the information” refers only to information that is stored on the identification document in both human recognizable and machine recognizable formats. (See Dkt. # 49; Pltf. Letter Br. at 1.) In making this alternate argument, Intellicheck relies on the same selective quotation from column four of the specification that the court discussed above. (See Pltf. Letter Br. at 1 (citing '623 Patent at 4:21-23).) That passage provides no more support for this alternate argument than it does for the argument Intellicheck made in its initial briefing.
For its third argument, Intellicheck turns to the doctrine of claim differentiation. (See Pltf. Op. Br. at 20-21.) Intellicheck argues that claim 22 of the '416 Patent is superfluous under IDScan's proposed construction. (See id. at 20.) Claim 22 recites selecting two devices from a list of four to perform the “reading” function of this term. ('416 Patent at 18:1-4.) Intellicheck argues that this claim cannot be narrower than claim 1 if, as under IDScan's proposal, claim 1 already requires two devices in order to read both types of information. (See Pltf. Op. Br. at 20.) Intellicheck's argument fails, however, because IDScan's proposal requires two or three devices while claim 22 requires only two. See Kraft Foods, Inc. v. Int'l Trading Co. , 203 F.3d 1362, 1368 (Fed.Cir.2000) (“[T]hat the claims are presumed to differ in scope does not mean that every limitation must be distinguished from its counterpart in another claim, but only that at least one limitation must differ.”). Intellicheck also invokes the doctrine of claim differentiation with respect to claim 14 of the '416 Patent. (See Pltf. Op. Br. at 20-21.) That argument fails because claim 14 depends on claim 4, not on claim 1, and claim 4 does not contain the term at issue here. (See '416 Patent at 15:58-16:13, 17:19-22.)
At the claim construction hearing and in its letter brief, Intellicheck also pointed out that IDScan's construction would render impossible some combinations that claim 22 allows. (See Dkt. # 49; Pltf. Letter Br. at 1-2.) For example, claim 22 would permit the reading means to be a magnetic reader and a bar code. (See '416 Patent at 18:1-4.) IDScan's construction prohibits that combination because that combination does not allow for reading human recognizable information. (See Pltf. Letter Br. at 2.) This argument fails to persuade the court that Intellicheck's construction is correct. Any inconsistency involving claim 22 of the '416 Patent cannot overcome the clear language of the term at issue here and the claims in which that term is found. See Chef Am., Inc. , 358 F.3d at 1374.
Intellicheck's fourth argument relies on claim 2, in the '623 Patent. (See Pltf. Op. Br. at 21.) That claim recites: “The programmable apparatus according to claim 1 , wherein said information of said document is encrypted.” ('623 Patent at 5:42-43 (emphasis in original).) Intellicheck argues that human recognizable information is not encrypted and therefore under IDScan's proposal claim 2 is unworkable. (See Pltf. Op. Br. at 21.) The court rejects this argument for two reasons. First, Intellicheck provides no support for its assertion that human recognizable information cannot be encrypted. (See id. ) Second, as discussed above, not requiring the reading of human recognizable information in claim 1 makes claim 1 itself unworkable because claim 1 contemplates a checksum derived from the human recognizable information.
Finally, Intellicheck cites to the prosecution history of the '623 Patent and argues that the patent examiner understood this term not to require reading both human recognizable information and machine recognizable information. (See Hellerstein Decl. ¶ 5, Ex. D (“'623 Patent File Hist.”) at 2.) The cited portion of the prosecution history is a document in which the examiner rejects this term as disclosed by three prior art references. (See id. ) Intellicheck argues that these prior art references disclosed reading only machine recognizable information and therefore the examiner must have understood this term as encompassing only a single magnetic reader. (See Pltf. Op. Br. at 21.) The court has reviewed the cited portion of the prosecution history and finds that it is not sufficiently clear or probative to overcome the intrinsic evidence discussed above. The exact manner in which the examiner found that the three prior art references disclosed this term is not clear, and therefore the examiner's opinion on the meaning of this term is not clear. (See '623 Patent File Hist. at 2.) Further, even if the court adopts Intellicheck's interpretation of the examiner's reasoning, the fact remains that the Patent Office issued the '623 Patent with this term still in it. Intellicheck does not provide enough of the prosecution history for the court to determine what the examiner ultimately concluded about the meaning of this term. The parties do not dispute any other aspects of this term. Accordingly, the court construes this term as proposed by IDScan.
For instance, the examiner might ultimately have concluded that the three prior art references did not disclose this term because this term requires multiple reading devices in order to read both human recognizable and machine recognizable information.
6. means for determining whether said document includes a license format corresponding to a reference license format
This term appears in claims 1 and 15 of the '623 Patent and claim 1 of the '416 Patent ('623 Patent at 15:20-23, 16:56-59; '416 Patent at 15:21-24.) A representative example of its use comes from claim 1 of the '623 Patent : “A programmable apparatus for authenticating a document...said apparatus comprising:... means for determining whether said document includes a license format corresponding to a reference license format based on a comparison between said read information and said reference license format....” ('623 Patent at 15:14-23 (emphasis added).) The parties agree that this is a 35 U.S.C. § 112, ¶ 6 means-plus-function term and that the function is “determining whether the document includes a license format corresponding to a reference license format based on a comparison between the read information and the reference license format.” (Joint Statement at 5; Pltf. Op. Br. at 11.) However, they disagree about what structure corresponds to that function.
IDScan's opening brief indicated that IDScan would contest function (see Def. Op. Br. at 11-14 (indicating that IDScan's proposed function is “determining whether a document is blank and/or invalid”)); however, IDScan states in its responsive brief that it no longer disputes Intellicheck's proposed function (Def. Resp. at 5 n.1 (“IDScan.net does not take issue with Intellicheck's identification of the claimed function for this claim element.”)).
IDScan proposes that the court construe the structure of this term as “a computer whose actions are directed by the algorithm specified in Table 4 of the '623 and '416 Patents, or equivalent structure.” (Def. Op. Br. at 14.) According to IDScan, the specification makes clear that program subroutine 148—which is depicted in Figure 4A, laid out in Table 4, and described in columns eight through ten of the written description—provides the structure for accomplishing the function of this term. (See id. at 11–13; '623 Patent at Fig. 4A, Table 4, 8:64-10:18.) IDScan argues that under WMS Gaming, Inc. v. International Game Technology , 184 F.3d 1339 (Fed.Cir.1999), the algorithm disclosed in Figure 4A and Table 4 is therefore the structure corresponding to the function for this term. (See Def. Op. Br. at 13-14.)
Intellicheck proposes that the court construe the structure of this term as “a processor that executes program segments 148 and 154 and equivalents, and optionally executes program segments 150 and 152 and equivalents.” (Pltf. Op. Br. at 11.) According to Intellicheck, IDScan's proposal erroneously incorporates structure not needed to perform the claimed function. (See id. at 12–13.) For instance, the program segments in Table 4 include segments for decrypting data, for displaying and storing error message information, and for using jurisdiction keys. (See id. ; Pltf. Resp. at 5.) Intellicheck asserts that none of these actions fall within the function “determining whether the... license format correspond[s] to a reference license format.” (Ptlf. Op. Br. at 12-13; Pltf. Resp. at 4-6.)
Intellicheck argues that the doctrine of claim differentiation further supports excluding decryption and jurisdiction keys because dependent claims in the '623 Patent (claims 2 and 11) contain these limitations. (See Pltf. Op. Br. at 12; '623 Patent at 15:42-46.) In addition, the latter portions of the claims in which this term appears recite displaying verification signals; therefore, Intellicheck maintains, error messages should not be a part of the term in question here. (See Pltf. Op. Br. at 13 (citing '623 Patent at 15:41, and '416 Patent at 15:42, 15:49).) Intellicheck also faults IDScan's proposal for leaving out essential structure insofar as Table 2's reference to “tracks” suggests a limitation to data from magnetic stripes, whereas the specification makes clear that the Invention can also function with digital scanner and/or a barcode scanner. (Pltf. Resp. at 6.) Finally, Intellicheck argues that the specification indicates a computer is not necessary to perform this function; rather, a processor is sufficient. (Id. at 3–4.)
The court adopts the parties' agreed construction of function and most aspects of IDScan's proposed construction of structure. Once the court identifies the function in a means-plus-function limitation, the court must then identify the corresponding structure in the written description. See Med. Instrumentation & Diagnostics Corp. v. Elekta AB , 344 F.3d 1205, 1210 (Fed.Cir.2003). This structure must be linked to the function recited in the claim. See B. Braun Med., Inc. v. Abbott Labs. , 124 F.3d 1419, 1424 (Fed.Cir.1997).
As an initial matter, the court notes that the specification supports Intellicheck's assertion that this claim requires only a processor, not a computer. (See Pltf. Resp. at 3-4.) Although the specification refers to performing the Invention on a computer, the specification repeatedly equates the term “computer” to a “CPU” or central processing unit (see '623 Patent at Fig. 1, 3:15-18, 14:66-15:1), and teaches that the Invention can be used with various programmable apparatuses that are not personal computers, such as in police cars, at check points, and in vending machines (see id. at 15:5-9).
The court agrees with IDScan regarding the remainder of the structure. “In a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” WMS Gaming, Inc. v. Int'l Game Tech. , 184 F.3d 1339, 1349 (Fed.Cir.1999). In other words, “[a] computer-implemented means-plus-function term is limited to the corresponding structure disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm.” Harris Corp. v. Ericsson, Inc. , 417 F.3d 1241, 1253 (Fed.Cir.2005).
As IDScan explains in its brief (see Def. Op. Br. at 11-13), the only structure in the written description that corresponds to the claimed function is the algorithm labeled as program subroutine 148, which is laid out in Table 4 and depicted in Figure 4A. (See '623 Patent at Fig. 4A, Table 4, 7:35-62, 8:64-10:22.) This algorithm is also explained in a more generalized form in as part of Figure 3 and Table 3. (See id. at Fig. 3, Table 3, 7:35-62; see also id. at 3:4-9 (explaining that Figure 3 is a “flow diagram of the overall operation of the programmable apparatus” whereas Figure 4A “illustrates one of the four primary program subroutines making up the overall operation illustrated” in Figure 3), 7:41-44.) Intellicheck appears to concede this characterization of the written description but resists IDScan's proposal on the basis that the algorithm in Table 4 includes some steps not corresponding to the claimed structure. (See Pltf. Op. Br. at 12 (identifying program routine 148 as directly relating to the claimed function)); see also Pltf. Resp. at 4 (citing Micro Chem., Inc. v. Great Plains Chem. Co. , 194 F.3d 1250, 1258 (Fed.Cir.1999) ); Micro Chem. , 194 F.3d at 1258 (“The statute does not permit limitation of a means-plus-function claim by adopting a function different from that explicitly recited in the claim. Nor does the statute permit incorporation of structure from the written description beyond that necessary to perform the claimed function.”). On this basis, Intellicheck attempts to excise some steps of program subroutine 148.
The court rejects Intellicheck's attempt to pick and choose which parts of subroutine 148 are within the claimed structure. The cases most helpful to Intellicheck are Harris Corp. v. Ericsson, Inc. , 417 F.3d 1241 (Fed.Cir.2005), and University of Pittsburgh v. Varian Medical Systems, Inc. , 561 Fed.Appx. 934 (Fed.Cir.2014). In both these cases, the Federal Circuit confronted a computer-implemented means-plus-function limitation and construed the corresponding algorithm at a high level of generality. See Harris Corp. , 417 F.3d at 1254 (omitting some aspects of the disclosed algorithm not necessary to perform the claimed function); Univ. of Pittsburgh , 561 Fed.Appx. at 941 (limiting the algorithm to its broadest description and declining to include more detailed iterations). These cases would seem to require the result that Intellicheck seeks; however, in both cases, the Federal Circuit based its broad construction on indications in the written description that the excluded aspects of the algorithm were optional steps. See Harris Corp. , 417 F.3d at 1254 (“Aspects of this algorithm can vary based on implementation, as the specification implies. For example, the algorithm need not be applied to 'an eight-ary PSK transmission scheme'; this is an 'illustration of the effect of [the] thus-far described decision process as applied' to such a transmission scheme. The same 'decision process' could be applied to another type of transmission scheme.” (alteration in original) (internal citations omitted)); Univ. of Pittsburgh , 561 Fed.Appx. at 941 (noting that the patent “specifically states” that the additional aspects of the algorithm were “merely implementations ” and that other implementations were also possible (emphasis in original)). Here, the court discerns nothing in the written description showing that the steps of program subroutine 148 are variable or merely one of multiple possible implementations. Program subroutine 148 is the only algorithm disclosed in the written description for performing the claimed function. Under WMS Gaming, program subroutine 148 is therefore the corresponding structure for this term. See 184 F.3d at 1349.
In attempting to refute this statement, Intellicheck relies on the following passage from the specification: “The CPU 12under the direction of its computer programs, to be more fully described with reference to FIGS. 3and 4, routes the information of the identification card 78, preferably encrypted as to be described hereinafter, via signal path 90to the decrypter routine 40.” ('623 Patent at 4:47-51 (italics added; bolding in original); see Pltf. Resp. at 4-5; Dkt. # 49; see also '623 Patent at 6:18-22.) Program subroutine 148 includes a decryption step, yet according to Intellicheck, the above passage shows that “encryption (and the corresponding decryption) is merely a preferred but not required activity.” (Pltf. Resp. at 4-5; see '623 Patent at Fig. 4, Table 4, 9:30-34; see also '623 Patent at 7:40-43.) The court disagrees with Intellicheck's interpretation of the specification. The above-quoted passage refers to encryption of the information on the identification document. (See '623 Patent at 4:47-51.) Program subroutine 148, in contrast, appears to refer to decryption of the stored reference information. (See id. at 9:15-34; see also id. at 7:35-43.) As such, the passage on which Intellicheck relies does not show that the encryption implicit in program subroutine 148 is optional.
To resist this result, Intellicheck resorts to the doctrine of claim differentiation. (See Pltf. Op. Br. at 12-13; Pltf. Resp. at 5-6; Dkt. # 49.) That doctrine, however, does not help Intellicheck here. Although the court may employ the doctrine of claim differentiation in construing a means-plus-function term, that doctrine cannot override the statutory mandate of 35 U.S.C. § 112, ¶ 6. See Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233–34 (Fed.Cir.2001). Thus, if the specification discloses only one structure to perform the claimed means, the court cannot disregard aspects of that structure in construing a means-plus-function term merely because those same aspects also appear in dependent claims. See Laitram Corp. v. Rexnord, Inc. , 939 F.3d 1533, 1538 (Fed.Cir.1991) (“A means-plus-function limitation is not made open-ended by the presence of another claim specifically claiming the disclosed structure which underlies the means clause or an equivalent of that structure.”). Accordingly, the court CONSTRUES this term as having the function “determining whether the document includes a license format corresponding to a reference license format based on a comparison between the read information and the reference license format” and the structure “a processor whose actions are directed by the algorithm specified in Table 4 of the '623 and '416 Patents, or equivalent structure.”
7. A programmable apparatus for authenticating a document AND authenticating, authentication, authenticate
The term “A programmable apparatus for authenticating a document” appears as the opening phrase in the preamble of claim 1 of the '623 Patent and claim 1 of the '416 Patent. ('623 Patent at 15:14-15; '416 Patent at 15:14-15.) The term “authenticate” (or “authenticating” or “authentication”) appears in claims 1 and 15 of the '623 Patent ; claims 1, 4, and 24 of the '416 Patent ; and claims 18 and 19 of the '067 Patent. ('623 Patent at 15:14, 16:48; '416 Patent at 15:14, 15:58, 18:9; '067 Patent at 16:9, 16:19.) These instances of the shorter term either overlap with the longer term or use “authenticate” in a manner consistent with its use in the preambles of claim 1 in the '623 and '416 Patents. The court begins with the shorter term.
a. authenticating, authentication, authenticate
IDScan proposes that the court construe this term as “determining or determination that a document, or its contents, or identification criteria contained therein, or a jurisdiction identification is invalid, fraudulent and/or tampered with using a hierarchical process comprising a license format conformance check and a jurisdictional format conformance check.” (Def. Op. Br. at 16.) According to IDScan, the specification and prosecution history describe only one possible meaning for “authenticate”: using a hierarchical computer process involving several subroutines to determine whether a document is invalid, fake, or tampered with. (Id. at 14–16.) Considering that intrinsic evidence, IDScan argues, “it is axiomatic that the terms 'authenticate' and 'authenticating”' should be construed as IDScan proposes. (Id. at 16.) IDScan asserts that these terms “could mean almost anything if not construed in light of their use in” the specification and prosecution history. (Id. )
Intellicheck proposes that the court construe this term as “verifying,” “verification,” or “verify.” (Pltf. Op. Br. at 8.) Intellicheck argues that the specification makes clear that “authenticate” means verify. For instance, the summary of the invention explains that the “present invention is directed to an authentication system that verifies the contents of documents, such as driver licenses.” ('623 Patent at 2:46-48; Pltf. Op. Br. at 9.) Intellicheck contends that the prosecution history confirms this interpretation of “authenticate.” (Pltf. Op. Br. at 9) (citing Hellerstein Decl. ¶ 2, Ex. A (“'623 Patent Pros. Hist.”) at 6 (applicant describing the invention as “using a hierarchical verification process”).) According to Intellicheck, IDScan's proposed construction amounts to an attempt to import limitations from the preferred embodiments and from a non-limiting description in the prosecution history. (Id. )
The court CONSTRUES “ authenticate” (and, with corresponding endings, “ authentication” and “ authenticating”) as “verify the authenticity of.” IDScan relies heavily on the fact that its proposal conforms to the only embodiments disclosed in the specification for authenticating a document. (See Def. Op. Br. at 14-16.) However, “[t]he number of embodiments disclosed in the specification is not determinative of the meaning of disputed claim terms....[A]n accused infringer cannot overcome the 'heavy presumption' that a claim term takes on its ordinary meaning simply by pointing to the preferred embodiment or structures or steps disclosed in the specification.” Teleflex, Inc. v. Ficosa N. Am. Corp. , 299 F.3d 1313, 1327 (Fed.Cir.2002). Instead, “claim terms take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term [a] by redefining the term or [b] by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Id. “Absent such clear statements of scope, [the court is] constrained to follow the language of the claims, rather than that of the written description.” Id. at 1328.
IDScan fails to direct the court to either an express redefinition of this term or any words or expression of manifest exclusion or restriction that support IDScan's proposal. See id. at 1327–28. IDScan points out that in the abstract the patentee explained that “[i]t is a primary object of the present invention to provide an authentication system to authenticate driver licenses that are coded with machine readable information conforming to AAMVA standards.” ('416 Patent at 2:24-27; Def. Op. Br. at 14.) The court fails to see how this broad statement could qualify as a clear statement of scope that support's IDScan's proposed definition. Further, just a few lines below the above-quoted statement, the patentee describes the invention more broadly as “directed to an authentication system that verifies the contents of documents, such as driver licenses.” ('416 Patent at 2:42-44; see also id. at 2:45-48 (“The authentication system comprises a programmable apparatus that verifies the contents of the document embodying both human recognizable and machine recognizable coded information.”).)
The portion of the '623 Patent's prosecution history to which IDScan cites likewise fails to provide any clear statement of scope that supports IDScan's position. IDScan points to correspondence wherein the applicant responds to a rejection of claim 1 on the basis of anticipation by prior art. (See Def. Resp. at 10 (citing '623 Patent Pros. Hist.14at 6).) This correspondence shows the applicant discussing the invention in a way that conforms in some respects to IDScan's proposal; however, nowhere does the applicant discuss the term authenticate, let alone define it or make any clear statements restricting its scope. (See '623 Patent Pros. Hist. at 6.) As such, IDScan fails to show that the applicant used “authenticate” in any sense other than its plain and ordinary meaning. See Teleflex, Inc. , 299 F.3d at 1327–28. Webster's defines authenticate, in part, as “to establish convincingly as accurate, true, real, or genuine.” Webster's Third New International Dictionary 146 (2002); see also id. (also defining authenticate as “to verify to the origin of”). Further, the specification shows that the Patents-in-Suit use authenticate as a synonym of verify. ('416 Patent at 2:42-48 (“The present invention is directed to an authentication system that verifies the contents of documents, such as driver licenses. The authentication system comprises a programmable apparatus that verifies the contents of the document embodying both human recognizable and machine recognizable coded information.”).) Webster's defines verify, in part, as “to confirm the truth or truthfulness of...to confirm or establish the authenticity or existence of.” Webster's Third New International Dictionary 2543. Nothing in the Patents-in-Suit indicates that authenticate—or verify—is used other than in this ordinary sense. As such the court construes this term as “verify the authenticity of.”
b. A programmable apparatus for authenticating a document
IDScan argues that this preamble language is limiting and also a means-plus-function term. (Def. Op. Br. at 16-15.) IDScan urges the court to construe it as “a computer whose actions are directed by the algorithms specified in Tables 4 and 5 of the '623 and '416 Patents, or equivalent structure, for determining whether a document or identification criteria contained therein is invalid, fraudulent, and/or tampered with.” (Joint Statement at 3.) According to IDScan, all independent claims in the '623 and '416 Patents recite an apparatus for authenticating or a method for authenticating or authentication, and these authentication preamble limitations give meaning to the respective claims as a whole and therefore should be given patentable weight. (Def. Op. Br. at 16-17.)
Intellicheck counters that this preamble language is not limiting and requires no construction. (Joint Statement at 3.) Rather, Intellicheck argues, this language is merely a high-level preamble description that identifies the claim elements that follow; it is not a limitation on the claims. (Pltf. Op. Br. at 10-11.) According to Intellicheck, IDScan is attempting to incorporate every claim limitation from the body of the claim into one phrase in the preamble. (Id. at 11.) Intellicheck asserts that this approach is improper and will only serve to confuse the jury. (Id. )
The court rejects IDScan's proposal to construe this preamble language as a means-plus-function limitation on the claims. To begin, IDScan's opening brief contains only two sentences on this subject. (See Def. Op. Br. at 16-17.) The first simply quotes the relevant preambles, and the second then concludes, “Each of these preamble 'authentication' limitations gives meaning to the respective claims as a whole, and therefore, should be given patentable weight.” (Def. Op. Br. at 16-17 (citing Gen. Elec. Co. v. Nintendo Co., Ltd. , 179 F.3d 1350, 1361–62 (Fed.Cir.1999) and Karsten Mfg. Corp. v. Cleveland Golf Co. , 242 F.3d 1376, 1380 (Fed.Cir.2001) ).) This argument is inadequately briefed and thus not properly before the court. See United States v. Great Am. Ins. Co. of N.Y. , 738 F.3d 1320, 1328 (Fed.Cir.2013) (“It is well established that arguments that are not appropriately developed in a party's briefing may be deemed waived.” (citing SmithKline Beecham Corp. v. Apotex Corp. , 439 F.3d 1312, 1320 (Fed.Cir.2006) )). Furthermore, the court sees no indication that the preamble language at issue “breathes life and meaning into the claim[s].” Gen. Elec. Co. , 179 F.3d at 1361. Instead, the preamble language merely describes the purpose and intended use of what is claimed below. See Corning Glass Works v. Sumitomo Elec. U.S.A., Inc. , 868 F.2d 1251, 1257 (Fed.Cir.1989). Accordingly, the court DECLINES TO CONSTRUE this term.
At the claim construction hearing, counsel for IDScan argued that once some language in a preamble is limiting, the entire preamble is limiting. (See Dkt. # 49.) Thus, according to IDScan, if in construing disputed term No. 5 (“means for reading...”) the court finds part of the preamble of claim 1 of the '623 Patent is limiting, the court must to find that all of that preamble is limiting and adopt IDScan's proposed construction of “programmable apparatus for authenticating a document.” (See id. ) The court asked IDScan for authority to support this theory. (See id. ) IDScan was unable to cite any authority at the time but after the hearing provided the court with the following five citations: Bell Communications Research, Inc. v. Vitalink Communications Corp. , 55 F.3d 615, 620–21 (Fed.Cir.1995) ; Manual of Patent Examining Procedures § 2111.02; Pitney Bowes, Inc. v. Hewlett – Packard Co. , 182 F.3d 1298, 1305 (Fed.Cir.1999) ; Eaton Corp. v. Rockwell International Corp. , 323 F.3d 1332, 1339 (Fed.Cir.2003) ; and Pacing Technologies, LLC v. Garmin International , 778 F.3d 1021, 1023 (Fed.Cir.2015). The court has reviewed the cited material and is not persuaded that in this context it mandates application of the hard-and-fast rule that IDScan referenced at the claim construction hearing. Accordingly, the court rejects IDScan's argument.
8. first circuitry at said first location for receiving the information read from the driver license and determining whether the read information read comports with said predetermined format
This term appears in claim 1 of the '067 Patent. That claim reads in its entirety:
Apparatus comprising:
an information reader at a first location for reading information from a driver license issued by an issuing jurisdiction, said information having a predetermined format corresponding to said jurisdiction; and
first circuitry at said first location for receiving the information read from the driver license and determining whether the read information read comports with said predetermined format , said first circuitry also outputting the information read to a remote location for further processing, said remote location being connected to said first location via a signal path.
('067 Patent at 14:63-15:7 (emphasis added).) The parties dispute whether this is a § 112, ¶ 6 means-plus-function limitation and, if so, what the scope of the structure is. (See Pltf. Op. Br. at 22-24; Def. Op. Br. at 23-26.)
IDScan proposes the court find this term to be means-plus-function term and construe it as “a computer whose actions are directed by the algorithm specified in Table 4 of the '067 Patent, or equivalent structure, or a computer whose actions are directed by the algorithm specified in Table 5 of the '067 Patent, or equivalent structure, either of which [is] used for determining whether read information comports with a predetermined format.” (Def. Op. Br. at 26.) According to IDScan, this term fails to recite sufficiently definite structure and recites function without reciting structure for performing that function. (See id. at 25.) IDScan characterizes this term as a mere nonce word that acts as a surrogate for the word “means.” (See id. )
Intellicheck disputes that this term is a means-plus-function term and argues that no construction is needed. (Pltf. Op. Br. at 22.) According to Intellicheck, the term does not recite “means for” and therefore there is a rebuttable presumption that it is not a means-plus-function limitation. (See id. at 22–23.) Intellicheck argues that IDScan has not overcome that presumption. (See id. ; Pltf. Resp. at 20-21.) Further, Intellicheck asserts that this term recites sufficiently definite structure. (See Pltf. Op. Br. at 23-24.)
The court rejects IDScan's proposal and DECLINES TO CONSTRUE this term because IDScan has not met its burden to show that this term fails to recite sufficient structure or recites function without reciting sufficient structure for performing that function. Further, Federal Circuit case law indicates that claim limitations that recite a circuitry along with its function generally have sufficient structure to avoid being means-plus-function limitations.
Under Federal Circuit precedent, if a disputed claim term does not employ the word “means,” a presumption arises that the term is not a means-plus-function term. Williamson v. Citrix Online, LLC , 792 F.3d 1339, 1348–49 (Fed.Cir.2015). The challenger can rebut that presumption by demonstrating that a person of ordinary skill in the art would not understand the term to have sufficiently definite meaning as a name for structure. See id. at 1349. The challenger must demonstrate that, to a person of ordinary skill in the art, the term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function. Id. ; Apex Inc. v. Raritan Computer, Inc. , 325 F.3d 1364, 1373 (Fed.Cir.2003) (“We next must determine whether Raritan has shown that the limitation, as understood by one of ordinary skill in the art, demonstrates that the claim term fails to recite sufficiently definite structure or else recites a function without reciting sufficient structure for performing that function.”). “In the absence of sufficient evidence, the presumption stands.” Apex , 325 F.3d at 1373.
This term does not contain the word “means.” ('067 Patent at 14:63-15:7.) As such, the court presumes that the term is not a means-plus-function limitation. See Williamson , 792 F.3d at 1348–49. The burden is therefore on IDScan to show that this term, as understood by one of ordinary skill in the art, fails to recite sufficiently definite structure or else recites a function without reciting sufficient structure for performing that function. See Apex , 325 F.3d at 1373.
IDScan falls considerably short of meeting its burden. In its opening brief, IDScan spends approximately two pages discussing this issue. (See Def. Op. Br. at 23-25.) IDScan devotes almost all of that discussion to reciting case law, particularly the Federal Circuit's Williamson decision. (See id. ) At the end of that recitation, IDScan offers only two sentences regarding the “first circuitry term”:
The term “first circuitry” in claim 1 of the '607 Patent can fair [sic] no better than the term “module” in Williamson. In both cases, the employed term is a nonce term that provides absolutely no definition of structure, merely acts as a surrogate for the term “means,” and depends entirely on the recited function to provide definition of the corresponding structure.
(Id. at 25.) These remarks are conclusory and fail to demonstrate that this term does not recite sufficiently definite structure or recites a function without reciting sufficient structure for performing that function. On this basis alone, the court rejects IDScan's proposal and declines to construe this term as a means-plus function term. See Apex , 325 F.3d at 1373 ; Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc. , No. 2:14–CV–0911–JRG–RSP, 2015 WL 6956722, at *17 (E.D.Tex. Nov. 9, 2015) (“Though Defendants provide attorney argument that 'circuitry' is a nonce word, Defendants have not pointed to persuasive evidence that the term 'circuitry' does not connote structure to one skilled in the art.”).
Furthermore, the court notes that the Federal Circuit has on three occasions confronted a “circuit” or “circuitry” term and found that such terms recites sufficient structure. See Linear Tech. Corp. v. Impala Linear Corp. , 379 F.3d 1311, 1320–21 (Fed.Cir.2004) (“We hold that because the term 'circuit' is used in each of the disputed limitations of claims 1, 44, 55, and 57 of the '178 patent with a recitation of the respective circuit's operation in sufficient detail to suggest structure to persons of ordinary skill in the art, the 'circuit' and 'circuitry' limitations of such claims are not means-plus-function limitations....”); Apex , 325 F.3d at 1373 (“[I]t is clear that the term 'circuit,' by itself connotes some structure. In the absence of any more compelling evidence of the understanding of one of ordinary skill in the art, the presumption that § 112, ¶ 6 does not apply is determinative.”); Mass. Inst. of Tech. & Elecs. For Imaging, Inc. v. Abacus Software , 462 F.3d 1344, 1355–56 (Fed.Cir.2006) (“The claim language here too does not merely describe a circuit; it adds further structure by describing the operation of the circuit. The circuit's input is 'appearance signals' produced by the scanner; its objective is to 'interactively introduce[e] aesthetically desired alterations into said appearance signals'; and its output is 'modified appearance signals.”' (alterations in original)). The term here, though less detailed than those in Linear Technology, Apex, and Massachusetts Institute, also recites a circuitry and describes its operation. (See '067 Patent at 14:63-15:7 (“[F]irst circuitry at said first location for receiving the information read from the driver license and determining whether the read information read comports with said predetermined format, said first circuitry also outputting the information read to a remote location for further processing....”).)
IDScan argues in its responsive brief that the court should find an absence of sufficient structure because this term contains less detail than the terms at issue in Linear Technology. (See Def. Resp. at 16-20.) IDScan also points out that the plaintiffs in those cases presented evidence such as dictionary definitions and expert testimony that Intellicheck has not presented here. (See id. ) With respect to the differences in detail, the court finds nothing in the case law to suggest that the level of detail here mandates a different result than in Linear Technology, Apex, and Massachusetts Institute. Nor does the absence of dictionary definition or expert testimony persuade the court to side with IDScan. The above cited cases contain multiple definitions of circuit that those courts relied on in finding that the circuit terms recited sufficient structure. See, e.g. , Linear Tech. Corp. , 379 F.3d at 1320. Moreover, even disregarding those definitions would not cause the court to alter its decision. IDScan bears the burden to rebut the presumption against applying § 112, ¶ 6. See Apex , 325 F.3d at 1373. Because IDScan has presented nothing but unsupported and conclusory argument, Intellicheck need not bolster the presumption with evidence. See id.
Intellicheck asserts that this term needs no construction, and IDScan does not offer any construction other than its proposed § 112, ¶ 6 construction. The court rejects IDScan's proposal because IDScan has failed to carry its burden to demonstrate that this term fails to recite sufficient structure. The court therefore declines to construe this term.
9. a jurisdiction discriminator engine adapted to determine and authenticate a jurisdiction
This term appears in claim 24 of the '416 Patent. The entirety of that claim reads as follows:
A programmable apparatus for authenticating an identification document of an individual comprising:
a reader adapted read [sic] information from said identification document;
a processor under the control of software including:
a jurisdiction discriminator engine adapted to determine and authenticate a jurisdiction that originated said identification document using said information; and
a comparator adapted to compare segments of said information to a predetermined acceptance criteria and generate a result; and
a reporting device adapted to provide results of said comparator.
('416 Patent at 18:9-23 (emphasis added).) The parties disagree about whether this is a means-plus-function term and, if it is such a term, what the proper structure is. (See Pltf. Op. Br. at 26-28; Def. Op. Br. at 28-29.) In addition, Intellicheck proposes a construction about which IDScan offers no argument or commentary. (See Pltf. Op. Br. at 26-27; Def. Op. Br. at 28-29; Def. Resp. at 21-22.)
IDScan proposes that the court find this term to be a means-plus-function term and construe it as “a computer whose actions are directed by the algorithms specified in Tables 4 and 5 of the '416 Patent, or equivalent structure, used to determine whether a document or identification criteria contained therein is all three of invalid, fraudulent or tampered with.” (Def. Op. Br. at 29.) According to IDScan:
It is beyond dispute that the phrase “adapted to determine and authenticate a jurisdiction” constitutes functional language. In order to ascertain whether such functional language should control and mandate treatment of the entire term as a means-plus-function term, the patent specification must be consulted to identify what, if any, jurisdiction discriminator engine structure is disclosed therein. This exercise is a fait accompli since “jurisdiction discriminator engine” does not appear even once in the '416 patent written description. The utter absence of any disclosure of jurisdiction discriminator engine leaves no room to treat the full term as anything but a means-plus-function term.
(Id. at 28–29 (citing Williamson , 792 F.3d at 1350, as support for IDScan's implicit theory that the absence of a putative structural term in the specification rebuts the presumption that § 112, ¶ 6 does not apply).)
Intellicheck argues that this term is not a means plus function term and should be construed as “ software capable of discriminating between jurisdictions to determine an issuing jurisdiction and verifying contents of the document according to the determined jurisdiction.” (Pltf. Op. Br. at 26.) According to Intellicheck, the specification discloses that the Invention runs on operating programs residing on a CPU that comprise a plurality of program segments. (Id. ) Intellicheck asserts that because those components carry out the particular steps of the Invention, it follows that the “engine” is software running on a processor. (Id. at 26–27.) Thus, Intellicheck argues, the claim term is directed to software that is capable of discriminating between jurisdictions. (Id. at 27.) Furthermore, Intellicheck contends that the court should construe “adapted to determine ...a jurisdiction” to mean determining the issuing jurisdiction, and should construe “adapted to... authenticate a jurisdiction” consistently with the term “authenticate,” supra , to mean verifying the contents of a document according to the determined jurisdiction. (Id. )
The court ADOPTS Intellicheck's proposed construction. Although the specification does not contain the term “jurisdiction discriminator engine,” Intellicheck accurately describes how the specification maps onto this term and supports Intellicheck's proposed construction. (See id. at 26–27 (citing '623 Patent at Fig. 4A, 6:32, 6:46-48, 9:36-43, 10:66-11:43).) Moreover, beyond arguing for a means-plus-function construction, IDScan has offered no opposition to Intellicheck's proposed construction. (See Def. Op. Br. at 28-29; Def. Resp. at 21; Dkt. # 49.)
The court rejects IDScan's proposal for the same reasons as with the previous term. This term does not contain the word “means” ('416 Patent at 18:9-23); therefore, a rebuttable presumption arises that this term is not means-plus-function limitation. See Williamson , 792 F.3d at 1348–49. Rather than offering evidence or even case authority to rebut this presumption, IDScan again puts forward only conclusory assertions. (See Def. Op. Br. at 28-29; Def. Resp. at 21.) IDScan appears to argue that the presumption is automatically rebutted because the putative structure—the “discriminator engine”—does not appear in the specification. (See Def. Op. Br. at 28-29.) According to IDScan, Williamson supports this principle. (See id. (citing Williamson , 792 F.3d at 1350 ).) The court, however, finds no such principle in Williamson. Moreover, IDScan presents no evidence to explain to the court how a person of ordinary skill in the art would understand this term and why that person would find that this term recites insufficient structure. (See id. ; Def. Resp. at 21.) The court therefore finds that IDScan has failed to meet its burden to rebut the presumption that this is not a means-plus-function term. See Apex , 325 F.3d at 1373.
IV. CONCLUSION
For the foregoing reasons, the court rules as follows:
(1) the court DECLINES TO CONSTRUE “human recognizable”;
(2) the court CONSTRUES “jurisdiction keys” to mean “information identifying locations on one or more storage media where jurisdiction segments are stored”;
(3) the court CONSTRUES “Issuer Identification Number” to mean “a number that designates the issuing jurisdiction”;
(4) the court CONSTRUES “checksum” to mean “a value that is used to test for tampering or alteration of information and is calculated by sequentially combining the constituent parts of a chunk of data with a series of arithmetic or logical operations”;
(5) the court CONSTRUES “means for reading the information of said document into said programmable apparatus” as a means-plus-function limitation wherein the function is “reading both human recognizable information and machine recognizable coded information from the document into the apparatus” and the structure is “a digital scanner or its equivalent, and one or both of a magnetic reader and a bar code scanner, or their equivalent”;
(6) the court CONSTRUES “means for determining whether said document includes a license format corresponding to a reference license format based on a comparison between said read information and said reference license format” as a means-plus-function limitation wherein the function is “determining whether the document includes a license format corresponding to a reference license format based on a comparison between the read information and the reference license format” and the structure is “a processor whose actions are directed by the algorithm specified in Table 4 of the '623
and '416 Patents, or equivalent structure”;
(7) the court CONSTRUES “authenticate” to mean “verify the authenticity of” and DECLINES TO CONSTRUE “A programmable apparatus for authenticating a document”;
(8) the court DECLINES TO CONSTRUE “first circuitry at said first location for receiving the information read from the driver license and determining whether the read information read comports with said predetermined format”; and
(9) the court CONSTRUES “a jurisdiction discriminator engine adapted to determine and authenticate a jurisdiction” to mean “software capable of discriminating between jurisdictions to determine an issuing jurisdiction and verifying contents of the document according to the determined jurisdiction.”