Summary
comparing claim construction to an episode of The Big Bang Theory television show in which a character defines a heart-attack-like event as an event that is like a heart attack
Summary of this case from Meridian Mfg., Inc. v. C&B Mfg., Inc.Opinion
No. C 12–2016–MWB.
2013-03-4
SERVERSIDE GROUP LIMITED and Serverside Graphics, Inc., Plaintiffs, v. TACTICAL 8 TECHNOLOGIES, L.L.C., and Bank of Iowa Corporation, Defendants.
Charles T. Steenburg, Hunter D. Keeton, Michael A. Albert, Wolf, Greenfield & Sacks, PC, Boston, MA, Glenn L. Johnson, Nyemaster Goode, P.C., Cedar Rapids, IA, for Plaintiffs. Michael A. Dee, Brant D. Kahler, G. Brian Pingel, Brown, Winick, Graves, Gross, Baskerville & Schoenebaum, PLC, Des Moines, IA, for Defendants.
Charles T. Steenburg, Hunter D. Keeton, Michael A. Albert, Wolf, Greenfield & Sacks, PC, Boston, MA, Glenn L. Johnson, Nyemaster Goode, P.C., Cedar Rapids, IA, for Plaintiffs. Michael A. Dee, Brant D. Kahler, G. Brian Pingel, Brown, Winick, Graves, Gross, Baskerville & Schoenebaum, PLC, Des Moines, IA, for Defendants.
MEMORANDUM OPINION AND ORDER REGARDING CONSTRUCTION OF DISPUTED PATENT CLAIM TERMS
MARK W. BENNETT, District Judge.
+-----------------+ ¦TABLE OF CONTENTS¦ +-----------------¦ ¦ ¦ +-----------------+
+-------------------------------------------------------------------+ ¦I. ¦INTRODUCTION ¦629 ¦ +-------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦A. ¦Procedural Background ¦629 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦1. ¦Serverside's Delaware action ¦629 ¦ +----+----+----+------------------------------------------------------+------¦ ¦ ¦ ¦2. ¦Procedural landmarks in the Iowa action ¦630 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦B. ¦Factual Background ¦631 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦1. ¦The patents-in-suit ¦631 ¦ +----+----+----+------------------------------------------------------+------¦ ¦ ¦ ¦2. ¦Undisputed and disputed claim terms ¦638 ¦ +----+----+----+------------------------------------------------------+------¦ ¦ ¦ ¦3. ¦The claims at issue ¦641 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦ ¦ +-----+--------------------------------------------------------------+-------¦ ¦II. ¦LEGAL ANALYSIS ¦644 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦A. ¦Undisputed Claim Terms ¦644 ¦ +----+----+----------------------------------------------------------+-------¦ ¦ ¦B. ¦Disputed Claim Terms ¦644 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦1. ¦Standards For Patent Claim Construction ¦645 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦ ¦a. ¦Function and types of claims ¦645 ¦ +----+----+---+----+--------------------------------------------------+------¦ ¦ ¦ ¦ ¦b. ¦The two-step patent infringement analysis ¦646 ¦ +----+----+---+----+--------------------------------------------------+------¦ ¦ ¦ ¦ ¦c. ¦The claim construction process ¦647 ¦ +----------------------------------------------------------------------------+
+-------------------------------------------------------------------------------------------------------+ ¦ ¦ ¦ ¦ ¦i. ¦Consideration of the claims and the specification ¦647 ¦ +--+-+-+-+------+---------------------------------------------------------------------------------+-----¦ ¦ ¦ ¦ ¦ ¦ii. ¦The doctrine of “claim differentiation” ¦648 ¦ +--+-+-+-+------+---------------------------------------------------------------------------------+-----¦ ¦ ¦ ¦ ¦ ¦iii. ¦The relationship between construction and the ‘‘definiteness” requirement ¦648 ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ +--+-+-+-+------+---------------------------------------------------------------------------------+-----¦ ¦ ¦ ¦ ¦ ¦iv. ¦The role of prosecution history ¦649 ¦ +--+-+-+-+------+---------------------------------------------------------------------------------+-----¦ ¦ ¦ ¦ ¦ ¦v. ¦The role of dictionaries and other sources ¦649 ¦ +-------------------------------------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦ ¦d. ¦The ultimate standard ¦650 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------------+ ¦ ¦ ¦2. ¦“Customer identifier corresponding to the remote customer” ¦650 ¦ +----------------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦ ¦a. ¦Proposed constructions ¦650 ¦ +----+----+---+----+--------------------------------------------------+------¦ ¦ ¦ ¦ ¦b. ¦Arguments of the parties ¦650 ¦ +----+----+---+----+--------------------------------------------------+------¦ ¦ ¦ ¦ ¦c. ¦Rejection of the Iowa Defendants' construction ¦651 ¦ +----------------------------------------------------------------------------+
+------------------------------------------------------------------------------------------+ ¦ ¦ ¦ ¦ ¦i. ¦The “uniqueness” requirement ¦651 ¦ +--+-+-+-+------+--------------------------------------------------------------------+-----¦ ¦ ¦ ¦ ¦ ¦ii. ¦Exclusion of a randomly generated alphanumeric code ¦653 ¦ +--+-+-+-+------+--------------------------------------------------------------------+-----¦ ¦ ¦ ¦ ¦ ¦iii. ¦Exclusion of generation using information provided by the customer ¦653 ¦ +--+-+-+-+------+--------------------------------------------------------------------+-----¦ ¦ ¦ ¦ ¦ ¦iv. ¦Transformation on a customer's financial account information ¦654 ¦ +------------------------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦ ¦d. ¦Rejection of Serverside's construction ¦655 ¦ +----+----+---+----+--------------------------------------------------+------¦ ¦ ¦ ¦ ¦e. ¦The tentative construction ¦655 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦3. ¦“Secure unique identifier” ¦657 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦ ¦a. ¦Proposed constructions ¦657 ¦ +----+----+---+----+--------------------------------------------------+------¦ ¦ ¦ ¦ ¦b. ¦Arguments of the parties ¦658 ¦ +----+----+---+----+--------------------------------------------------+------¦ ¦ ¦ ¦ ¦c. ¦Rejection of the parties' constructions ¦659 ¦ +----+----+---+----+--------------------------------------------------+------¦ ¦ ¦ ¦ ¦d. ¦The tentative construction ¦660 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦4. ¦“Encrypted customer information” ¦662 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦ ¦a. ¦Proposed constructions ¦662 ¦ +----+----+---+----+--------------------------------------------------+------¦ ¦ ¦ ¦ ¦b. ¦Arguments of the parties ¦662 ¦ +----+----+---+----+--------------------------------------------------+------¦ ¦ ¦ ¦ ¦c. ¦Rejection of the parties' constructions ¦663 ¦ +----+----+---+----+--------------------------------------------------+------¦ ¦ ¦ ¦ ¦d. ¦The tentative construction ¦664 ¦ +----------------------------------------------------------------------------+
+---------------------------------------------------------------------------+ ¦ ¦ ¦ ¦ ¦i. ¦Encryption ¦664 ¦ +----+---+---+---+------+-------------------------------------------+-------¦ ¦ ¦ ¦ ¦ ¦ii. ¦Customer information ¦665 ¦ +----+---+---+---+------+-------------------------------------------+-------¦ ¦ ¦ ¦ ¦ ¦iii. ¦The composite construction ¦665 ¦ +---------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦C. ¦Summary Of Tentative Constructions ¦666 ¦ +----+----+----------------------------------------------------------+-------¦ ¦ ¦D. ¦The Markman Hearing ¦668 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦1. ¦Additional evidence and the parties' positions ¦668 ¦ +----+----+----+------------------------------------------------------+------¦ ¦ ¦ ¦2. ¦Insertion of the “unique” limitation ¦670 ¦ +----------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦ ¦a. ¦Arguments at the hearing ¦670 ¦ +----+----+---+----+--------------------------------------------------+------¦ ¦ ¦ ¦ ¦b. ¦Analysis ¦672 ¦ +----------------------------------------------------------------------------+
+------------------------------------------------------------------------------------------------+ ¦ ¦ ¦3. ¦Insertion of the “not a randomly generated alphanumeric code” limitation ¦675 ¦ +------------------------------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦ ¦a. ¦Additional background ¦676 ¦ +----------------------------------------------------------------------------+
+---------------------------------------------------------------------------+ ¦ ¦ ¦ ¦ ¦i. ¦The Tuchler prior art ¦676 ¦ +----+---+---+---+-----+--------------------------------------------+-------¦ ¦ ¦ ¦ ¦ ¦ii. ¦The prosecution history ¦680 ¦ +---------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦ ¦b. ¦Arguments at the hearing ¦683 ¦ +----+----+---+----+--------------------------------------------------+------¦ ¦ ¦ ¦ ¦c. ¦Analysis ¦685 ¦ +----------------------------------------------------------------------------+
+--------------------------------------------------------------------------------+ ¦ ¦ ¦ ¦ ¦i. ¦Disclaimer as to “encrypted customer information” ¦685 ¦ +---+--+--+--+-----+-------------------------------------------------------+-----¦ ¦ ¦ ¦ ¦ ¦ii. ¦Disclaimer as to “customer identifiers” generally ¦687 ¦ +--------------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦ ¦ +------+-------------------------------------------------------------+-------¦ ¦III. ¦CONCLUSION ¦690 ¦ +----------------------------------------------------------------------------+
I sometimes wonder if patent attorneys—and attorneys generally—turn off their sense of humor when they get into litigation. For example, in the TV series Big Bang Theory, when the following conversation occurs among Howard Wolowitz, an engineer, Dr. Sheldon Cooper, a theoretical physicist, and Penny, a waitress and aspiring actress, while the gang is at a hospital waiting for news about what caused Howard's mother to collapse, we all know why it's funny:
Howard: They're running tests. I don't know. It may have been a heart attack or heart-attack-like event.
Penny: What's the difference?
Sheldon: A heart-attack-like event is an event that's like a heart attack.
Penny: Thanks for clearing that up.
On the other hand, when the plaintiffs' patent attorneys argue in written submissions prior to a Markman hearing that I should construe “secure unique identifier” as “unique identifier which is secure,” it appears that no one—at least no one but me—is laughing. Similarly, when the defendants' patent attorneys argue in pre-hearing submissions that “logic games” lead to the conclusion that the same claim term is indefinite, it appears that no one but me finds the “games” amusing. Although construing the meaning of patent claim terms is a serious business, it is difficult to take seriously some of the arguments offered—apparently with a straight face—in support of constructions of certain claim terms in this case.
See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).
I. INTRODUCTION
A. Procedural Background
1. Serverside's Delaware action
On June 22, 2011, plaintiffs Serverside Group Limited and Serverside Graphics, Inc., collectively “Serverside,” filed the original Complaint in this patent infringement action, against fifteen defendants, in the United States District Court for the District of Delaware (the Delaware action). Serverside's Complaint alleges infringement of certain claims of its U.S. Patent No. 7,931,199 (the '199 patent), entitled “Computerized Card Production Equipment,” in Count I, and infringement of certain claims of its related U.S. Patent No. 7,946,490 (the '490 patent), also entitled “Computerized Card Production Equipment,” in Count II.
On February 17, 2012, United States District Court Judge Richard Andrews entered a Memorandum Opinion in the Delaware action, in response to motions by several of the defendants, in which he concluded, inter alia, that the claims against defendants Tactical 8 Technologies, L.L.C., and Bank of Iowa Corporation, collectively “the Iowa Defendants,” should be transferred to this court, pursuant to 28 U.S.C. § 1406(a). That same day, Judge Andrews also entered a separate Order transferring the claims against the Iowa Defendants to this court pursuant to 28 U.S.C. § 1406(a).
2. Procedural landmarks in the Iowa action
After this action was transferred to this district, it was initially assigned to Chief United States District Court Judge Linda R. Reade. On March 14, 2012, the Iowa Defendants filed a joint Answer (docket no. 96), in this court, to Serverside's Complaint, denying Serverside's patent infringement claims against them. On April 18, 2012, United States Magistrate Judge Jon S. Scoles filed a Scheduling Order, Discovery Plan, And Order On Miscellaneous Pretrial Matters (Scheduling Order) (docket no. 112). Among other things, the Scheduling Order set requirements for various submissions concerning claim construction and set a Markman hearing on claim construction for February 22, 2013. On April 19, 2012, Chief Judge Reade entered an Order Setting Civil Jury Trial, Final Pretrial Conference, And Requirements For The Proposed Final Pretrial Order (Trial Setting Order) (docket no. 113), scheduling the trial in this matter for the two-week period beginning on January 21, 2014. On April 19, 2012, Chief Judge Reade also entered an Order (docket no. 114), prescribing the format for the claim chart for claim construction required in the Scheduling Order.
On August 29, 2012, Chief Judge Reade entered an Order (docket no. 117) reassigning this case to me. On November 13, 2012, I entered an Order Clarifying Trial Date, Resetting Final Pretrial Conference Time, And Stating New Requirements For Final Pretrial Order (Amended Trial Setting Order) (docket no. 120), reiterating that the trial is scheduled to begin during the two-week period beginning on January 21, 2014, but modifying other requirements for trial preparation.
My changing schedule required me to reset the Markman hearing, more than once, from the date originally set in the Scheduling Order. The Markman hearing was finally reset for February 20, 2013, by Order (docket no. 122) filed December 20, 2012. The following day, December 21, 2012, the parties filed their Joint Claim Terms Submission (docket no. 123), pursuant to the Scheduling Order, identifying the construction of nine claim terms of the patents-in-suit as “undisputed,” and only three claim terms as “disputed.” They offered profoundly different constructions of the three “disputed” terms, however.
On January 18, 2013, the Iowa Defendants filed their Claim Construction Brief (docket no. 124), to which they attached, as Exhibit 1, a copy of the ' 199 patent; as Exhibit 2, a copy of the '490 patent; as Exhibit 3, a portion of the prosecution history of the '199 patent (Amendments To The Claims, Attorney Docket No. 086887–0052, to Application No. 12/954,277); as Exhibit 4, another portion of the prosecution history to the '199 patent (another set of Amendments To The Claims, Attorney Docket No. 066371–0071, to Application No. 12/132,516); as Exhibit 5, another portion of the prosecution history to the '199 patent (Remarks, Attorney Docket No. 066371–0071, to Application No. 12/132,516); as Exhibit 6, an October 2, 2012, Order in the Delaware action construing terms of the '199 patent and the ' 490 patent; and, as Exhibit 7, a portion of the prosecution history to both patents (Remarks, Attorney Docket No. 08667–0037, to Application No. 10/545,833). Also on January 18, 2013, Serverside filed its Opening Claim Construction Brief (docket no. 125), to which Serverside attached, as Exhibit A, another copy of the '199 patent; as Exhibit B, another copy of the '490 patent; as Exhibit C, another copy of the October 2, 2012, Order on claim construction in the Delaware action; and, as Exhibit D, an excerpt of the McGraw–Hill Dictionary of Scientific and Technical Terms (6th ed.2003). On February 8, 2013, Serverside filed its Rebuttal Claim Construction Brief (docket no. 126), to which Serverside attached, as Exhibit A, a portion of the prosecution history of both patents (Amendment, Attorney Docket No. 066371–0027, to Application No. 10/545,833). Also on February 8, 2013, the Iowa Defendants filed their Responsive Claim Construction Brief (docket no. 127), but with no additional attachments.
As I have done in other patent infringement cases, see Ideal Instruments, Inc. v. Rivard Instruments, Inc., 498 F.Supp.2d 1131, 1136 (N.D.Iowa 2007); Maytag Corp. v. Electrolux Home Prods., Inc., 411 F.Supp.2d 1008, 1015–16 (N.D.Iowa 2006); TransAmerica Life Ins. Co. v. Lincoln Nat'l Life Ins. Co., 550 F.Supp.2d 865 (N.D.Iowa 2008), on February 18, 2013, a few days before the Markman hearing, I provided the parties with a Tentative Draft of this Memorandum Opinion And Order Regarding Construction Of Disputed Patent Claim Terms, based on the parties' written submissions concerning claim construction. In the past, I have found that such a procedure was very effective in focusing the parties' arguments on true disputes about construction of pertinent claim terms as well as on specific parts of my tentative claim constructions where the parties believed that I had gone wrong. The parties in the prior patent cases appeared to agree, because they recommended that I follow such a procedure for rendering Markman decisions in future patent cases. It was my hope that doing so in this case would achieve some of the same benefits, and I was not disappointed.
On February 20, 2013, I held a Markman hearing, at which Serverside was represented by Michael A. Albert of Wolf, Greenfield & Sacks, P.C., in Boston, Massachusetts, and local counsel Glenn Johnson of Nyemaster Goode, P.C., in Cedar Rapids, Iowa, and the Iowa Defendants were represented by Michael A. Dee and Brian Pringel of Brown, Winick, Graves, Gross, Baskerville & Schoenebaum, P.L.C., in Des Moines, Iowa. The Markman hearing consisted of oral argument and submission, by the Iowa Defendants, of additional documentary evidence, described in more detail in Section II.D. The parties' arguments were clear, cogent, and presented with consummate professionalism.
The issues of claim construction are now fully submitted.
B. Factual Background
1. The patents-in-suit
As noted above, Serverside alleges that the Iowa Defendants are infringing certain claims of two of Serverside's patents. Those two patents are U.S. Patent No. 7,931,199 (the '199 patent), issued April 26, 2011, and entitled “Computerized Card Production Equipment,” and U.S. Patent No. 7,946,490 (the '490 patent), issued May 24, 2011, and also entitled “Computerized Card Production Equipment.” Both patents arise from provisional application No. 60/447,972, filed on February 18, 2003, and are continuations of application No. 10/545,833, filed as application No. PCT/GB2004/00626 on February 17, 2004, and a continuation-in-part of application No. 10/406,519, filed on April 3, 2003. The '199 patent is a continuation of application No. 12/132,516, filed on June 3, 2008, which is a further continuation of application 10/545,833. Consequently, the Abstracts, Figures, Cross–Reference To Related Applications, Technical Fields, Backgrounds, Summaries, Brief Descriptions Of The Drawings, and Detailed Descriptions of the two patents are nearly identical. Unless otherwise indicated, citations to and quotations from the '199 patent appear in the identical location, in identical form, in the '490 patent. I will refer to titled sections of the patents in the singular and quote portions of the patents using the '199 patent as the source, unless otherwise required. Identically numbered claims of the two patents are sometimes stated in identical language and sometimes stated somewhat differently, albeit with much overlap of claim terms, so I will always differentiate between the claims of the two patents.
The Abstract initially explains, rather opaquely, that “[a]n apparatus and method for manipulating IMAGE
The figure that appears with the Abstract of the '490 patent is actually Figure 1 of the patents, which “illustrates a computer system for remote manipulation of IMAGE
It may also be helpful to include here two other figures that illustrate two additional embodiments of the claimed invention, Figures 11 and 12. As the Brief Description Of The Drawings explains,
FIG. 11 illustrates a method of operating a computer system for remote manipulation of IMAGE
As the Brief Description Of The Drawings also explains,
FIG. 12 illustrates a method of operating a computer system for remote manipulation of IMAGE
2. Undisputed and disputed claim terms
I believe that identifying the “undisputed” and “disputed” claim terms—albeit without the parties' supporting comments or citations—will help clarify the claims of the two patents-in-suit that Serverside alleges that the Iowa Defendants are infringing, when I set out the claims at issue below. I begin with the nine undisputed claim terms.
For the first seven “undisputed” claim terms, the parties have adopted the claim term constructions determined by Judge Andrews in his October 2, 2012, Order on claim construction in the Delaware action. See Joint Claim Terms Submission (docket no. 123), Exhibit A, n. 1; Defendants' Appendix (docket no. 124), Exhibit 6 (Judge Andrews's Order). They have agreed upon the constructions of two more “undisputed” claim terms.
+----------------------+ ¦UNDISPUTED CLAIM TERMS¦ +----------------------+
+---------------------------------------------------------------------------+ ¦ ¦ ¦Relevant ¦ ¦ +---+-----------------------------+----------+------------------------------¦ ¦No.¦Claim Term/Phrase ¦Claim(s) ¦Agreed Construction ¦ +---------------------------------------------------------------------------+
+----------------------------------------------------------------------------+ ¦ ¦ ¦'199: 1, ¦ ¦ ¦ ¦ ¦2, 9, ¦ ¦ ¦ ¦ ¦14–16, 18,¦“a transaction card (e.g., ¦ ¦ ¦ ¦22, 25, 29¦credit card, debit card, ATM ¦ ¦1 ¦“financial transaction card” ¦'490: 1, ¦card, or similar card), but ¦ ¦ ¦ ¦2, 9, ¦not a prepaid bearer card” ¦ ¦ ¦ ¦14–16, 18,¦ ¦ ¦ ¦ ¦22, 25, ¦ ¦ ¦ ¦ ¦29–31 ¦ ¦ +---+------------------------------+----------+------------------------------¦ ¦ ¦“financial record of the ¦ ¦“record of financial ¦ ¦2 ¦remote ¦'199: 1 ¦information of the customer ¦ ¦ ¦customer that personalized the¦'490: 1 ¦that personalized the IMAGE
IMAGE
IMAGE
The following paragraphs of the Detailed Description of the Tuchler patent explain the figures included above and are central to the parts of the prosecution history of the patents-in-suit of interest here:
[0021] FIGS. 1 and 2 illustrate a personalized financial transaction card or gift card 10 according to the present invention. The gift card 10 includes a plastic card body 12 having an outer perimeter 14, a front side 16, and a back side 18. The card body 12 is sized to be similar to credit cards and debit cards and can be stored in a wallet or a purse. The front side 16 includes an identification number field 20 and three data fields 24A, 24B, 24C. The back side 18 includes a fourth data field 24D. One having ordinary skill in the art will appreciate that the front and back sides 16, 18 could alternatively include one, two, three, five, or more data fields and that the location of the data fields can be changed to a significant degree, as explained in greater detail below.
[0022] In the illustrated embodiment, the first data field 24A includes the name and perhaps trademark 26 of a card issuer (e.g., a store name, the name of a shopping mall, and the like). The second data field 24B and the third data field 24C are user specified data fields and may include images and/or text as specified by a customer. The fourth data field 24D includes directions and instructions, explaining how and where the card 10 can be used. A magnetic strip 25 extends across the bottom of the back side 18 and stores identification and account information. Further identification and account information can be printed on the card 10, stored in an optical data carrier (e.g., a bar code), or can be incorporated in a memory chip, which can be imbedded in the card body 12.
[0023] FIG. 3 illustrates a card personalization system 28, including a programming station 32 (e.g., a personal computer, a dedicated network terminal, a point of sale terminal, a handheld computer, a cellular phone, a personal data assistant, and the like). In the illustrated embodiment, the programming station 32 is located in a retail establishment. However as described in greater detail below, the programming station 32 can be located in a number of locations, including but not limited to stores, kiosks, shopping malls, and other public places.
[0024] In the embodiment illustrated in FIG. 3, the programming station 32 includes a central processing unit (“CPU”) 34, which manages the operations and communications of the programming station 32. As is commonly known in the art, the CPU 34 may be a single integrated circuit designed specifically as an ASIC to effect all necessary processing and communications functions. Alternatively, the CPU 34 may include a collection of discrete electronic components for effecting the processing and communications functions separately. The programming station 32 also includes a viewing screen 36, a money slot 38 or credit/debit card swipe (for entering a monetary value into the programming station 32), a card dispenser 40, and a printer 41 all connected to the CPU. The programming station 32 also includes three data entry tools 42 for entering or uploading data, in the form of text messages and/or graphic images, into the programming station 32. More specifically, the programming station 32 includes a scanner 42A, a digital camera 42B, and a keyboard 42C. In other embodiments (not shown), the programming station 32 can also or alternately include other data entry tools 42 (e.g., a CD–ROM drive, a disk drive, a touch-screen, a mouse, and the like) for uploading or entering data into the programming station 32, or the programming station 32 may include only one or any number of the aforementioned data entry tools 42 in any combinations.
[0025] The programming station 32 communicates through the CPU with a card management system 44 (e.g., a network server a computer database, a personal computer, a super computer, and the like) over a network 46 in accordance with a standardized communication protocol and/or a standardized object protocol, depending on the type of network and the type of data being transmitted. The card management system 44 stores account information and customer profile information (e.g., addresses, billing information, phone numbers, spending history, credit history, and the like). Additionally, the card management system 44 stores card information, such as, for example, card identification numbers, the number of cards issued, the next available card identification number, card activation codes, and the like.
Tuchler Patent, ¶¶ [0021]-[0025] (emphasis added).
The most critical portions of the Detailed Description of the Tuchler patent in the portions of the prosecution history cited by the parties are the following:
[0035] After the customer has entered text messages and/or graphic images (referred to hereafter collectively as “personalized data”) in the data entry fields, the customer presses the “enter” key, transmitting the completed template to the card management system 44....
* * *
[0039] Once the customer has selected a payment option and the card management system 44 has accepted payment, the card management system 44 assigns a random alphanumeric identifier to the personalized data and creates an account in act 72. The account is identified by the alphanumeric identifier and is credited with the dollar value selected by the customer in act 54 or act 68. The card management system 44 stores the account information, including the identifier and the dollar value credited to the account, in a database. As shown in FIG. 3, in some applications, the stores A, B, C can access the account information via the network 46. Therefore, when the card 10 is used to make a purchase, the purchase amount can be debited directly from the account. In one embodiment, the programming station 32 is at the point of purchase and is integrated within the programming station 32. In this embodiment, the programming station 32 is a gift card dispenser and the only data transferred between the card management system 44 and the programming station 32 is the dollar value input by the customer and assigned to the gift card 10.
[0040] In act 76, the card management system 44 transmits the personalized data and the identifier to the printer 41, which prints, embosses, or laminates the specified images onto the gift card 10....
Tuchler Patent, ¶¶ [0035], [0039]-[0040] (emphasis added).
ii. The prosecution history
On June 28, 2010, the Examiner filed an Office Action, Iowa Defendants' Exhibit 10—which was submitted only at the Markman hearing, not with pre-hearing briefing—rejecting all claims of the pending application for the patents-in-suit. That Office Action, inter alia, rejected application claim 1, in part, because “[p]aragraphs 0023–0025 [of Tuchler] disclose a module to receive a customer identifier that corresponds to the remote customer that personalized the image [and] further discuss a controller operable, based on the customer identifier, to cause printing of the personalized customer image onto the card material and to cause application of relevant financial information from the financial record onto the card material.” Exhibit 10 at 3 (emphasis added).
That Office Action also stated,
With respect to claims 15 and 16 [of Serverside's application], Tuchler discloses in paragraph 0039 that the image processor computer comprises a module for generating the customer identifier and that the production equipment is configured to connect to a computer system of a card issuer comprising a module to generate the customer identifier.
* * *
With respect to claims 20 and 21 [of Serverside's application], Tuchler discloses in paragraphs 0022–0025 that the customer identifier is provided with the personalized image, and equipment comprises a reader configured to interpret the customer identifier and cause the controller to fetch the relevant financial record and further that the customer identifier is provided with a financial record, and equipment comprises a reader configured to interpret the customer identifier and cause the controller to fetch the relevant personalized image.
* * *
With respect to claims 24–26 [of Serverside's application], Tuchler discloses in paragraph 0039, that the customer identifier comprises [a] secure unique identifier.
Exhibit 10 at 5–6 (emphasis added).
Serverside's response, Iowa Defendants' Exhibit 5—which was attached to prehearing briefing—was to amend application claims and to assert two main arguments relevant to the limitation currently at issue: (1) that Tuchler does not disclose a “customer identifier,” but a “data identifier,” and (2) that the “random” identifier in Tuchler could not be a “customer identifier” or “encrypted customer information.” More specifically, Serverside argued, as follows:
Amended claim 1 now includes the feature previously identified as an option in dependent claim 24—that the customer identifier comprises encrypted customer information.
No objection to this option in claim 24 was made in the report. Accordingly, it appears that the Examiner regards this feature as patentable.
Further, it is submitted that the Examiner's arguments regarding claims 15 and 16 identify the random alphanumeric identifier referred to in paragraph [0039] of Tuchler as corresponding to the customer identifier of the present invention. Even if the randomly selected alphanumeric identifier was to be regarded as a customer identifier, however, it is randomly selected. Random selection cannot possibly comprise encrypted customer information.
There is nothing anywhere in Tuchler to teach or suggest in any way that the identifier of Tuchler, which is stated to be a random alphanumeric identifier, should instead be a customer identifier comprising encrypted customer information.
Accordingly, it is submitted that amended claim 1 is not anticipated by Tuchler.
Exhibit 5 at 9 (underlining in the original; italics added).
Serverside's assertion that Tuchler disclosed only a method related to “bearer cards” or “gift cards,” rather than all “financial transaction cards,” also figured in Serverside's argument that Tuchler discloses only a “data identifier,” not a “customer identifier.” On this issue, Serverside argued, inter alia, as follows:
It is respectfully submitted that the skilled person understands that a gift card is a bearer card which is useable by anyone and is not related to a financial account of a customer or related to a customer identify [sic] or identifier. This understanding is supported by paragraph [0004] of Tuchler, which explains the use of gift cards as “the purchaser can give the card as a gift to a cardholder. The cardholder can then use the card in the issuer's stores instead of cash,” and by paragraph [0039] of Tuchler, which states that “the card management system 44 assigns a random alphanumeric identifier to the personalized data and creates an account in act 72. The account is identified by the alphanumeric identifier and is credited with the dollar value selected by the customer in act 54 or act 68. The card management system 44 stores the account information, including the identifier and the dollar value credited to the account, in a database.”
Accordingly, it is respectfully submitted that Tuchler explicitly teaches that the gift card, which is intended to be given away by the customer as a gift, does not correspond to a financial account of the customer and that the account information, that is the financial account information, related to the gift card, is associated with a random identifier and not an identifier of the customer.
Exhibit 5 at 10 (emphasis added).
Serverside also took issue with the Examiner's conclusion that Tuchler discloses a module configured to receive a customer identifier that corresponds to the remote customer that personalized the image, as follows:
Tuchler relates to a method and system for producing personalized gift cards wherein a login page is provided to allow a customer to create a personalized account which details customer information along with the name of the intended recipient as well as the amount of money that the customer would like credited to the gift card (see Tuchler paragraph [0029] ). Once the personalized account is created, the customer is directed towards a selection menu of templates for personalizing the gift card and which may allow a customer to upload a graphic image (see Tuchler paragraphs [0031] to [0034] ). When the customer has finished personalizing the gift card, the customer is directed to a billing screen where the customer can select a payment option (see Tuchler paragraph [0036] ). Finally, when the customer has selected a payment option and payment has been accepted, a random alphanumeric identifier is assigned to the personalized data and creates an account identified by the alphanumeric identifier and the gift card is credited with the dollar value selected by the customer for the intended recipient (see Tuchler paragraph [0039] ).
There is no disclosure in paragraphs [0023] to [0025] of Tuchler of a customer identifier that corresponds to the remote customer that personalized the image as in the present application. The randomly assigned alphanumeric identifier disclosed in Tuchler paragraph [0039] is not a customer identifier, as can be clearly understood from the explicitly stated requirement that it is “randomly assigned”. In fact, the random alphanumeric identifier of Tuchler does not relate to the customer that personalized the image but is assigned to the personalized data or the entered text messages and/or graphic images selected for the intended recipient (see paragraph [0039] of Tuchler).
Further, Tuchler states in paragraph [0039] that the account which is credited with the dollar value is also identified by the random alphanumeric identifier. Although the random alphanumeric identifier of Tuchler can be used to identify the account associated with the gift card, this account is associated only with the gift card. It is not associated with the remote customer that personalized the image.
Since Tuchler does not disclose any customer identifier that corresponds to the remote customer that personalized the image, it is not possible for Tuchler to disclose a controller operable, based on said (undisclosed) customer identifier to cause printing of the personalized customer image onto the card material and the application of the relevant financial information onto the card material.
Exhibit 5 at 11–12 (emphasis added).
Finally, for present purposes, Serverside took issue with the Examiner's conclusion that Tuchler discloses that the image processor computer comprises a module for generating the customer identifier, as follows:
As discussed above, paragraph [0039] of Tuchler discloses only generating a random alphanumeric identifier which is assigned to the personalized data and used to identify an account. Such a random alphanumeric identifier, being random, cannot identify a customer. Accordingly, generating the random alphanumeric identifier cannot be regarded as generating a customer identifier.
Accordingly, it is respectfully submitted that Tuchler does not disclose the features of claims 15 and 16.
Exhibit 5 at 13–14 (emphasis added).
Notwithstanding that Serverside argued that Tuchler does not disclose a “customer identifier,” only a “data identifier,” in a further Office Action, Iowa Defendants' Exhibit 11—which was only submitted at the Markman hearing—the Examiner continued to describe Tuchler as disclosing a “customer identifier that corresponds to the remote customer that personalized the image.” See, e.g., Exhibit 11 at 4. Nevertheless, the Examiner found allowable subject matter, as follows:
8. Claims 24 and 25 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form, including all of the limitations of the base claim and any intervening claims.
The following is an examiner's reason for allowance: Although prior art includes teachings of computerized financial transaction card production equipment operable to apply one or more personalized images to a financial transaction card, the above identified prior art of record, taken alone, or in combination with any other prior art, fails to teach or fairly suggest the specific features of claims 24 and 25 of the present claimed invention. Specifically prior art fails to teach the computerized financial transaction card production equipment, wherein the customer identifier comprises an identifier selected from a secure unique identifier and a one-way code and furthermore fails to teach the computerized financial transaction card production equipment, wherein the customer identifier comprises a oneway code created by a one-way code function applied to financial account information of the remote customer. These specific limitations are not disclosed in prior art and moreover, one of ordinary skill in the art would not have been motivated to come to the claimed invention.
Exhibit 11 at 7–8 (emphasis added). The parties agree that the Examiner also eventually allowed the claims of the '490 patent, in portions of the prosecution history not submitted before or at the Markman hearing.
b. Arguments at the hearing
The Iowa Defendants asserted that the prosecution history and disclaimers in the prosecution history are particularly important to the proper construction of patent claim terms and patent scope. They contended that this is true in this case, because Serverside has taken positions about other claim constructions in the Delaware action, specifically, as to whether or not “financial transaction cards” in the patents-in-suit should be construed to include “bearer cards,” that were inconsistent with its arguments in the prosecution history. They pointed out that the Delaware court resolved the disputes over the construction of those claim terms on the basis of disclaimers in the prosecution history. The Iowa Defendants then reiterated and amplified their argument that Serverside disclaimed “a randomly generated alphanumeric code” for any “customer identifier,” including “encrypted customer information,” in the prosecution history of the patents-in-suit. The Iowa Defendants argued that Serverside has resurrected the argument that it made to the PTO that Tuchler teaches a “data identifier,” not a “customer identifier,” but they asserted that the PTO never accepted that argument.
More specifically, the Iowa Defendants explained that, in the Office Action in new Exhibit 10, the Examiner repeatedly recognized that Tuchler teaches a “customer identifier”; that, in Serverside's responsive argument, in Exhibit 5, Serverside attempted to rebut that reading of Tuchler by asserting that Tuchler teaches a “data identifier,” not a “customer identifier,” but also amended the patent claims to add what is now the last limitation of claim 1 to each patent, which explains what the “customer identifier” can be—a “secure unique identifier” or a “one-way code” in the '199 patent, and “encrypted customer information” in the '490 patent; and Serverside then argued in its response to the Office Action, see Exhibit 5, at 9, that nothing in Tuchler teaches that “a random alphanumeric identifier” should instead be a “customer identifier” comprising “encrypted customer information,” that “a randomly selected alphanumeric identifier,” being random, cannot possibly comprise “encrypted customer information,” and that there is a distinction between a “customer identifier” and a “data identifier.” From this history, the Iowa Defendants argued that the reason for narrowing the definitions of “customer identifiers” in amended claims was to obtain patentability and that Serverside disclaimed “customer identifiers” that were “randomly generated alphanumeric codes.”
The Iowa Defendants pointed to new Exhibit 11, at 4, the PTO's further Office Action after Serverside's arguments in Exhibit 5, as still referring to Tuchler as disclosing a module configured to receive a “customer identifier,” and making further references to a “customer identifier” in Tuchler. Thus, the Iowa Defendants argued that the PTO never accepted Serverside's distinction between a “customer identifier” and a “data identifier.” Instead, they argued, the PTO allowed claim 1 of the '199 patent, as explained in Exhibit 11, at 8, because prior art did not teach a “customer identifier” comprising an identifier selected from a “secure unique identifier” and a “one-way code,” and elsewhere allowed claim 1 of the '490 patent, which teaches a “customer identifier” encompassing “encrypted customer information.” This, they argued, shows that only these limitations of the “customer identifier” made them patentable, not the argument that Tuchler did not disclose a “customer identifier,” only a “data identifier.”
Finally, the Iowa Defendants argued that Serverside is now trying to recapture what it disclaimed. The Iowa Defendants argued that the notice function of the patents and their prosecution history is not served by allowing such recapture.
In response, Serverside argued that claim 1 of the '199 patent, as amended and allowed by the PTO, claims that the “customer identifier” “comprises” certain identifiers, but, in patent law, “comprises” is an open-ended term, meaning “including but not limited to.” Thus, Serverside argued, claim 1 of the '199 patent does not limit the possible “customer identifiers” to a “secure unique identifier” and a “one-way code,” and claim 1 of the '490 patentclaims “encrypted customer information” only as an example of a “customer identifier.” Serverside pointed out that there is no language in Exhibit 5 stating or implying that it was limiting the concept of “customer identifier” only to the categories expressly claimed. Serverside also argued that this “customer identifier” issue was “a side show,” because the critical issue was whether Tuchler, which related only to a prepaid gift card or bearer card, was going to prevent Serverside's patents from issuing, and it did not. Serverside pointed out that it repeatedly argued in the prosecution of the patents-in-suit that a gift card does not have a “customer identifier,” it only has an identifier corresponding to the card account, i.e., a “data identifier,” so that the card can be given to someone other than the customer. Serverside also pointed out that it argued to the PTO that the “random alphanumeric identifier” of Tuchler does not relate to “the customer that personalized the image,” but is assigned to the personalized data or the entered text messages and/or graphic images selected for the intended recipient, and is associated only with the gift card, not with “the remote customer that personalized the image.” None of these statements in the prosecution history, Serverside argued, is a statement that a “customer identifier” cannot be “a random alphanumeric code.”
In rebuttal, the Iowa Defendants argued that I need not consider whether the PTO implicitly adopted Serverside's distinction between a “customer identifier” and a “data identifier,” because the PTO explicitly continued to describe Tuchler as disclosing a “customer identifier” after Serverside asserted that distinction. Rather, the Iowa Defendants argued, the PTO allowed the claims after they were modified to add specific forms for the “customer identifier,” demonstrating that the new claims were allowed because they disclaimed “a random alphanumeric identifier” for such a “customer identifier.” The Iowa Defendants also urged me to find a disclaimer of “a random alphanumeric identifier” to keep Serverside from again changing its arguments about the meaning of claim terms. The Iowa Defendants argued that the disclaimer of “a random alphanumeric identifier” in the prosecution history at issue here is at least as clear as the disclaimer of “bearer cards” found by the Delaware court.
c. Analysis
As I noted above, the Iowa Defendants' rationale for inserting the “not a randomly generated alphanumeric code” limitation does not depend upon the specific claim term into which the Iowa Defendants would like that limitation inserted. On the one hand, neither the portions of the prosecution history that the Iowa Defendants relied on before the Markman hearing nor the additional portions that they relied on at the Markman hearing convince me that Serverside disclaimed “a randomly generated alphanumeric code” as to every form of “customer identifier.” On the other hand, the parts of the prosecution history specifically brought to my attention at the Markman hearing lead me to a different conclusion as to whether or not Serverside disclaimed “a randomly generated alphanumeric code” as to a particular form of “customer identifier,” specifically, “encrypted customer information”—even though the parties did not assert that there should or might be different results as to different forms of “customer identifiers.” My analysis of whether or not Serverside disclaimed “a randomly generated alphanumeric code” for the first and third disputed claim terms, therefore, is claim-term-by-claim-term.
i. Disclaimer as to “encrypted customer information”
I believe that an isolated question concerning insertion of the “but not a randomly generated alphanumeric code” here is whether or not Serverside disclaimed “a random alphanumeric identifier” as to “encrypted customer information” in claim 1 of the '490 patent and claims depending from it. The doctrine of claim differentiation supports the conclusion that independent claims of related patents that use different claim terms must have different scope. See Kraft Foods, Inc., 203 F.3d at 1365–69 (noting that there is a presumption that two independent claims have different scope when different words or phrases are used in those claims). The prosecution history specifically cited at the Markman hearing has also led me to a conclusion about whether or not Serverside disclaimed “a random alphanumeric identifier” as to “encrypted customer information” that is different from my conclusion about whether or not Serverside did so as to “customer identifiers” generally. See Deere & Co., 703 F.3d at 1354 (stating that “ ‘[t]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which [it] appears, but in the context of the entire patent, including the specification,’ ” (quoting Phillips, 415 F.3d at 1313), and that “claim terms are understood in light of the specification”).
As set out above, one of Serverside's responses to the Office Action in Exhibit 10, which rejected the claims of the patent application, was the following:
Further, it is submitted that the Examiner's arguments regarding claims 15 and 16 identify the random alphanumeric identifier referred to in paragraph [0039] of Tuchler as corresponding to the customer identifier of the present invention. Even if the randomly selected alphanumeric identifier was to be regarded as a customer identifier, however, it is randomly selected. Random selection cannot possibly comprise encrypted customer information.
There is nothing anywhere in Tuchler to teach or suggest in any way that the identifier of Tuchler, which is stated to be a random alphanumeric identifier, should instead be a customer identifier comprising encrypted customer information.
Accordingly, it is submitted that amended claim 1 is not anticipated by Tuchler.
Exhibit 5 at 9 (underlining in the original; italics added). Although Exhibit 5 was submitted prior to my tentative draft ruling on claim construction, this passage was not pointed out to me until the Markman hearing. Furthermore, its specific effect on the third disputed claim term, “encrypted customer information,” which is but one form of “customer identifier” claimed in the patents-in-suit, did not become clear to me until I considered it in the context of the parties' more general oral arguments about whether or not the “but not a randomly generated alphanumeric code” limitation should be part of the construction of any “customer identifier.” I now conclude that this statement is a “ ‘clear and unmistakable disavowal of scope during prosecution’ ” as to “encrypted customer information,” see Grober, 686 F.3d at 1341 (quoting Computer Docking Station Corp., 519 F.3d at 1374–75);01 Communique Lab., 687 F.3d at 1297, that is, it is a clear and unmistakable disavowal of a “randomly selected alphanumeric identifier” as “encrypted customer information,” on the specific ground that “random selection” is not “encryption.”
Serverside's arguments that there is no disavowal of claim scope, because this statement must be read in the context of the larger dispute about whether or not Tuchler discloses a method for personalizing anything other than “bearer cards,” and in the context of a dispute about whether or not Tuchler discloses “customer identifiers” at all, rather than “data identifiers,” do not defeat this conclusion. In the prosecution of the patents-in-suit, Serverside argued that a “randomly selectedalphanumeric identifier” is not “encrypted customer information,” but Serverside specifically conceded, for the sake of this argument, that the “randomly selected alphanumeric identifier” could be “regarded as” a “customer identifier.” Exhibit 5 at 9 (“Even if the randomly selected alphanumeric identifier was to be regarded as acting as a customer identifier, however, it is randomly selected. Random selection cannot possibly comprise encrypted customer information.” (underlining in the original)).
Consequently, I now conclude that the construction of the third disputed claim term that “stays true to the claim language and most naturally aligns with the patent's description of the invention,” and consequently, is “the correct construction” of this disputed claim term, Phillips, 415 F.3d at 1316 (stating this as the ultimate standard for claim construction), and, additionally, the construction that does not allow the patentee to recapture claim scope lost by a clear and unmistakable disavowal of scope during prosecution, Grober, 686 F.3d at 1341, does require insertion of a “but not a randomly generated alphanumeric code” limitation.
Specifically, my final construction of the third disputed claim term, “encrypted customer information,” is “customer information coded from original text into language unintelligible to unauthorized persons, but not into a randomly generated alphanumeric code.”
ii. Disclaimer as to “customer identifiers” generally
In contrast, I find no “clear and unmistakable” disavowal of “a randomly generated alphanumeric code” or a “random alphanumeric identifier” as “customer identifiers” generally. Grober, 686 F.3d at 1341. I cannot find such a disclaimer where Serverside argued, repeatedly, as to “customer identifiers” generally, that Tuchler did not disclose a “customer identifier” at all, but a “data identifier.” See Exhibit 5 at 10, 11–12 (quoted above). The difference between these statements and the statement that I concluded, above, disavowed “a random alphanumeric identifier” as to “encrypted customer information” is that these statements dispute not just how a customer is identified, but whether a customer is identified at all by the identifier described in Tuchler. As noted above, in the course of the prosecution of the patents, Serverside conceded, for purposes of its argument concerning “encrypted customer information,” that Tuchler did disclose a “customer identifier.” See Exhibit 5 at 9. Serverside did not do so as to any other “customer identifier” in any other part of the prosecution history that has been brought to my attention. The Iowa Defendants' argument that the Examiner never expressly adopted the “customer identifier”/“data identifier” distinction that Serverside asserted tells us nothing about whether or not Serverside clearly and unmistakably disavowed claim scope when it insisted upon this distinction, because the issue for a disclaimer is Serverside's conduct, not the Examiner's. See Grober, 686 F.3d at 1341 (explaining that the question is whether the patentee made a “clear and unmistakable” disavowal of claim scope).
The one statement by Serverside in the prosecution history regarding whether “random alphanumeric identifiers” can, as a general matter, be “customer identifiers” is the only one cited by the Iowa Defendants in their pre-hearing briefing:
As discussed above, paragraph [0039] of Tuchler discloses only generating a random alphanumeric identifier which is assigned to the personalized data and used to identify an account. Such a random alphanumeric identifier, being random, cannot identify a customer. Accordingly, generating the random alphanumeric identifier cannot be regarded as generating a customer identifier.
Exhibit 5 at 13–14 (emphasis added). At first blush, this statement appears to be analogous to the statement that I found was a disclaimer of “a random alphanumeric identifier” as to “encrypted customer information.” A little deeper examination leads to a different conclusion, however.
As Serverside pointed out in pre-hearing briefing and at the Markman hearing, it insisted in the prosecution of the patents-in-suit that the “identifier” described in Tuchler was not a “customer identifier” at all, but a “data identifier,” and the statement quoted just above is made in precisely that context, as indicated by the first sentence of the quoted paragraph. The “personalized data” to which the “random alphanumeric identifier” is assigned is described in Tuchler at paragraph [0035] as text entered by the customer in “data entry fields,” such as messages and/or graphic images, not as personalized data of the customer, and paragraph [0039] explains that the account that the “random alphanumeric identifier” is used to identify is not an account of the customer, but the card account, which is credited with the dollar value selected by the customer. Thus, as Serverside argued, “[s]uch a random alphanumeric identifier,” that is, one that identifies personal data entered by the customer to appear on the card and that is used to identify the card account, cannot identify the customer who purchased the card. Although Serverside argued in the prosecution of the patents-in-suit that “[s]uch a random alphanumeric identifier, being random, cannot identify a customer,” Exhibit 5 at 14 (emphasis added), this argument was still about whether a customer is identified at all by the identifier described in Tuchler, not just how a customer is identified.
Thus, I again conclude that this purported “disclaimer” does not even create an ambiguity about narrowing the “customer identifier,” at least as claimed in the '199 patent, to exclude “a random alphanumeric code.” See Elbex Video, 508 F.3d at 1371. Indeed, there is nothing resembling a “clear and unmistakable” disclaimer of a “random alphanumeric code” as a “customer identifier” within the meaning of the patents-in-suit. Grober, 686 F.3d at 1341;01 Communique Lab., 687 F.3d at 1297.
Nevertheless, the Iowa Defendants argued at the Markman hearing that Serverside made an amendment in the course of prosecution of the application concerning what comprises a “customer identifier” by adding the last limitation of allowed claim 1 of the '199 patent, which narrows “customer identifier” to comprise “an identifier selected from a secure unique identifier and a one-way code,” and we must now presume that such a narrowing amendment was made to obtain patentability over the “random alphanumeric identifier” in Tuchler. The Iowa Defendants are correct that a patentee must overcome a presumption that a narrowing amendment was made to secure the patent, and that the patentee can only do so by making a “strong showing” that there is some other explanation for the limitation. Energy Transp. Group, 697 F.3d at 1359. Even so, I have my doubts, in the first instance, that a presumption has arisen that any amendment was made to obtain patentability over the “random alphanumeric identifier” in Tuchler, and no doubts that, if the presumption has arisen, it has been overcome.
First, as to whether or not the presumption has arisen, I note that the Iowa Defendants have failed to point to any portion of the prosecution history that disclaims a “random alphanumeric identifier” as a “secure unique identifier” or as a “one-way code” (“hash value”) or that distinguishes a “secure unique identifier” or a “one-way code” from a “random alphanumeric identifier.” Indeed, in the Office Action in Exhibit 10, the Examiner apparently concluded that a “random alphanumeric identifier” is a “secure unique identifier,” because the Examiner stated that claims 24 through 26 were rejected on the ground that “Tuchler discloses in paragraph 0039, that the customer identifier comprises [a] secure unique identifier,” Exhibit 10 at 5, and the only “identifier” described in paragraph [0039] of Tuchler is a “random alphanumeric identifier.” Tuchler at ¶ [0039].
Even assuming that the presumption arises, Serverside has made a “strong showing” that rebuts it. Energy Transp. Group, 697 F.3d at 1359. Although, in Exhibit 10, the Examiner disallowed dependent claims 24 through 26 of the application, in which the “customer identifier comprises a secure unique identifier,” the Examiner observed, in Exhibit 11, that application claims 24 and 25 would be allowable “if rewritten in independent form, including all of the limitations of the [rejected] base claim and any intervening claims.” Exhibit 11 at 7, ¶ 8. Indeed, the Examiner explained that such an independent claim would be allowable, because prior art did not teach the specific features of application claims 24 and 25, which claimed that the “customer identifier” comprises a “secure unique identifier.” Exhibit 11 at 8. This conclusion appears to be directly contrary to the Examiner's earlier conclusion in Exhibit 10 that a claim in which the “customer identifier comprises a secure unique identifier” is not patentable over Tuchler. What changed between Exhibit 10 and Exhibit 11, then, must be the Examiner's belief that Tuchler disclosed a “secure unique identifier” by disclosing a “random alphanumeric identifier.”
Moreover, as Serverside argued, claim 1 was not allowed because it was limited to a “customer identifier” that was limited to a choice of either (that is, selected from) a “secure unique identifier” or a “one-way code,” and neither such identifier was a “random alphanumeric identifier”; rather, the allowed claim states that the “customer identifier comprises an identifier selected from a secure unique identifier and a one-way code.” '199 Patent, claim 1 (emphasis added). As Serverside pointed out, the Federal Circuit Court of Appeals has held that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in openended claims containing the transitional phrase comprising” unless a patentee has “ ‘evidence[d] a clear intent’ to limit ‘a’ or ‘an’ to ‘one.’ ” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed.Cir.2008) (quoting KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed.Cir.2000)); accord ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314, 1320 (Fed.Cir.2012) ( “ ‘The transition ‘comprising’ creates a presumption ... that the claim does not exclude additional, unrecited elements.' ” (quoting Crystal Semiconductor Corp. v. TriTech Microelectronics Int'l, Inc., 246 F.3d 1336, 1348 (Fed.Cir.2001))). Thus, claim 1, as allowed, does not exclude additional, unrecited forms of the “customer identifier” other than “an identifier selected from a secure unique identifier and a one-way code,” even supposing that prosecution history would not permit a “secure unique identifier” or a “one-way code” to be a “random alphanumeric identifier.”
Thus, I now conclude that the construction of the second disputed claim term, “customer identifier that corresponds to the remote customer that personalized said image,” that “stays true to the claim language and most naturally aligns with the patent's description of the invention,” and consequently, is “the correct construction” of this disputed claim term, Phillips, 415 F.3d at 1316 (stating this as the ultimate standard for claim construction), and, additionally, the construction that does not allow the patentee to recapture claim scope lost by a clear and unmistakable disavowal of scope during prosecution, Grober, 686 F.3d at 1341, or a narrowing amendment to obtain patentability, see Energy Transp. Group, 697 F.3d at 1359, does not require insertion of a “but not a randomly generated alphanumeric code” limitation.
Thus, my final construction of the first disputed claim term, “customer identifier that corresponds to the remote customer that personalized said image,” is the same as my tentative construction, “a signal, character, or group of characters that matches with the customer that personalized the image.”
III. CONCLUSION
Upon the foregoing, I construe the “undisputed” claim terms at issue in this patent infringement action as shown in the following chart:
+----------------------+ ¦UNDISPUTED CLAIM TERMS¦ +----------------------+ +---------------------------------------------------------------------------+ ¦ ¦Claim Term/ ¦Relevant ¦Agreed ¦ +---+-----------------------------+----------+------------------------------¦ ¦No.¦Phrase ¦Claim(s) ¦Construction ¦ +---------------------------------------------------------------------------+ +----------------------------------------------------------------------------+ ¦ ¦ ¦'199: 1, ¦ ¦ ¦ ¦ ¦2, 9, ¦ ¦ ¦ ¦ ¦14–16, 18,¦“a transaction card (e.g., ¦ ¦ ¦ ¦22, 25, 29¦credit card, debit card, ATM ¦ ¦1 ¦“financial transaction card” ¦'490: 1, ¦card, or similar card), but ¦ ¦ ¦ ¦2, 9, ¦not a prepaid bearer card” ¦ ¦ ¦ ¦14–16, 18,¦ ¦ ¦ ¦ ¦22, 25, ¦ ¦ ¦ ¦ ¦29–31 ¦ ¦ +---+------------------------------+----------+------------------------------¦ ¦ ¦“financial record of the ¦'199: 1 ¦“record of financial ¦ ¦2 ¦remote customer that ¦'490: 1 ¦information of the customer ¦ ¦ ¦personalized the image” ¦ ¦that personalized the image” ¦ +---+------------------------------+----------+------------------------------¦ ¦3 ¦“one-way code” ¦'199: 1 ¦“a hash value created from ¦ ¦ ¦ ¦ ¦customer information” ¦ +---+------------------------------+----------+------------------------------¦ ¦ ¦ ¦ ¦Means plus function term, with¦ ¦ ¦ ¦ ¦the function being “providing ¦ ¦ ¦“image processing means for ¦ ¦an image, based on ¦ ¦ ¦providing an image, produced ¦ ¦instructions for manipulation,¦ ¦ ¦based on said instructions for¦'490: ¦for application to the ¦ ¦4 ¦manipulation, for application ¦30–31 ¦financial transaction card,” ¦ ¦ ¦to the financial transaction ¦ ¦and the associated structure ¦ ¦ ¦card” ¦ ¦being “an image processor ¦ ¦ ¦ ¦ ¦(see, e.g., back end software ¦ ¦ ¦ ¦ ¦110 and image manipulation ¦ ¦ ¦ ¦ ¦emulator 256)” ¦ +---+------------------------------+----------+------------------------------¦ ¦ ¦ ¦ ¦Means plus function term, with¦ ¦ ¦ ¦ ¦the function being “embedding ¦ ¦ ¦ ¦ ¦the customer identifier in the¦ ¦ ¦ ¦ ¦personalized image” and the ¦ ¦ ¦ ¦ ¦associated structure being “a ¦ ¦ ¦“means for embedding the ¦' 199: 25 ¦back end server (such as ¦ ¦5 ¦customer identifier in the ¦'490: 25 ¦server 1103 or 1203) that ¦ ¦ ¦personalized image” ¦ ¦embeds the customer identifier¦ ¦ ¦ ¦ ¦in the personalized image, for¦ ¦ ¦ ¦ ¦example by embedding the ¦ ¦ ¦ ¦ ¦identifier in a bar code, ¦ ¦ ¦ ¦ ¦machine readable code, or ¦ ¦ ¦ ¦ ¦metadata” ¦ +---+------------------------------+----------+------------------------------¦ ¦ ¦ ¦ ¦The three phrases are means ¦ ¦ ¦ ¦ ¦plus function claim terms, ¦ ¦ ¦ ¦ ¦with the function being ¦ ¦ ¦“computer program means for ¦'199: 30 ¦“presenting to a remote ¦ ¦6 ¦presenting to a remote ¦'490: ¦customer or remote user a user¦ ¦ ¦customer the remote user ¦30–31 ¦interface” and the associated ¦ ¦ ¦interface” ¦ ¦structure being “a user ¦ ¦ ¦ ¦ ¦interface (see, e.g., front ¦ ¦ ¦ ¦ ¦end software 105 and Figs. ¦ ¦ ¦ ¦ ¦3–10)” ¦ +---+------------------------------+----------+------------------------------¦ ¦ ¦“computer program means for ¦ ¦ ¦ ¦ ¦presenting to a remote ¦ ¦ ¦ ¦ ¦customer a user interface” ¦ ¦ ¦ +---+------------------------------+----------+------------------------------¦ ¦ ¦“computer program means for ¦ ¦ ¦ ¦ ¦presenting to a remote user an¦ ¦ ¦ ¦ ¦user interface” ¦ ¦ ¦ +---+------------------------------+----------+------------------------------¦ ¦ ¦ ¦ ¦The phrase is a means plus ¦ ¦ ¦ ¦ ¦function claim term, with the ¦ ¦ ¦ ¦ ¦function being “receiving ¦ ¦ ¦“image instruction means for ¦'199: 30 ¦instructions for manipulation ¦ ¦7 ¦receiving instructions for ¦'490: ¦of an image file” and the ¦ ¦ ¦manipulation of an image file”¦30–31 ¦associated structure being “an¦ ¦ ¦ ¦ ¦image compilation server ¦ ¦ ¦ ¦ ¦coupled to a communications ¦ ¦ ¦ ¦ ¦link (see, e.g., image ¦ ¦ ¦ ¦ ¦compilation server 108)” ¦ +---+------------------------------+----------+------------------------------¦ ¦ ¦ ¦ ¦“a customer identifier that is¦ ¦ ¦“an identifier selected from a¦ ¦chosen from one of two ¦ ¦8 ¦secure unique identifier and a¦' 199: 1 ¦available options: a secure ¦ ¦ ¦one-way code” ¦ ¦unique identifier or a one-way¦ ¦ ¦ ¦ ¦code” ¦ +---+------------------------------+----------+------------------------------¦ ¦ ¦“instructions defining said ¦ ¦“instructions for implementing¦ ¦ ¦plurality of manipulations ¦'199: 29 ¦all of the manipulations that ¦ ¦9 ¦applied to the graphical ¦'490: 29 ¦a remote user applies to a ¦ ¦ ¦representation” ¦ ¦graphical representation on a ¦ ¦ ¦ ¦ ¦remote terminal” ¦ +----------------------------------------------------------------------------+
Upon the foregoing, I also construe the “disputed” claim terms at issue in this patent infringement action as shown in the following chart:
+--------------------+ ¦DISPUTED CLAIM TERMS¦ +--------------------+ +------------------------------------------------------------------------------------+ ¦ ¦ ¦ ¦ ¦ ¦ ¦Iowa ¦ ¦ +---+------+--------+------------+------------+------------+------------+------------¦ ¦ ¦ ¦ ¦ ¦Iowa ¦ ¦Defendants' ¦ ¦ +---+------+--------+------------+------------+------------+------------+------------¦ ¦ ¦Claim ¦ ¦Serverside's¦Defendants' ¦Court's ¦Proposed ¦Court's ¦ +---+------+--------+------------+------------+------------+------------+------------¦ ¦ ¦Term/ ¦Relevant¦Proposed ¦Proposed ¦Tentative ¦Revised ¦Final ¦ +---+------+--------+------------+------------+------------+------------+------------¦ ¦No.¦Phrase¦Claim(s)¦Construction¦Construction¦Construction¦Construction¦Construction¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ +------------------------------------------------------------------------------------+ +--------------------------------------------------------------------------------------------------------------------------------+ ¦ ¦“customer ¦ ¦ ¦ ¦“a signal, ¦ ¦“a signal, ¦ ¦ ¦identifier ¦'199: ¦ ¦A unique code,¦character, or ¦ ¦character, ¦ ¦ ¦that ¦1–4, ¦ ¦but not a ¦group of ¦“a unique signal, character, or group of ¦or group of ¦ ¦ ¦corresponds ¦6–8, ¦No ¦randomly ¦characters ¦characters, ¦characters ¦ ¦1¦to the ¦10–13, ¦construction¦generated ¦that matches ¦but not a randomly genergenerated by ic code , ¦that matches¦ ¦ ¦customer mote¦15, ¦required. ¦alphanumeric ¦with the ¦that matches with the customer that personalized¦with tomer ¦ ¦ ¦customer that¦17–18, ¦ ¦code, 24–28 ¦cussonalized ¦the image” ¦that perthat¦ ¦ ¦personalized ¦20–21, ¦ ¦ ¦the image” ¦ ¦personalized¦ ¦ ¦said image” ¦ ¦ ¦ ¦ ¦ ¦the image” ¦ +-+-------------+-------+------------+--------------+--------------+------------------------------------------------+------------¦ ¦ ¦“customer ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦identifier ¦'490: ¦If ¦ ¦ ¦ ¦ ¦ ¦ ¦corresponding¦1–4, ¦construed, ¦ ¦ ¦ ¦ ¦ ¦ ¦to the remote¦6–8, ¦then: ¦ ¦ ¦ ¦ ¦ ¦ ¦customer”/ ¦10–13, ¦“information¦ ¦ ¦ ¦ ¦ ¦ ¦“customer ¦15, ¦used to ¦ ¦ ¦ ¦ ¦ ¦ ¦identifier ¦17–18, ¦identify the¦ ¦ ¦ ¦ ¦ ¦ ¦that ¦20–21, ¦remote ¦ ¦ ¦ ¦ ¦ ¦ ¦corresponds ¦24–28, ¦customer or ¦ ¦ ¦ ¦ ¦ ¦ ¦to the remote¦30–31 ¦user.” ¦ ¦ ¦ ¦ ¦ ¦ ¦customer” ¦ ¦ ¦ ¦ ¦ ¦ ¦ +-+-------------+-------+------------+--------------+--------------+------------------------------------------------+------------¦ ¦ ¦ ¦ ¦ ¦ ¦“a secure, ¦ ¦“a secure, ¦ ¦ ¦ ¦ ¦ ¦ ¦unique signal,¦ ¦unique ¦ ¦ ¦ ¦ ¦ ¦ ¦character, or ¦ ¦signal, ¦ ¦ ¦“secure ¦ ¦No ¦ ¦group of ¦ ¦character, ¦ ¦2¦unique ¦'199: 1¦construction¦Indefinite. ¦characters ¦ ¦or group of ¦ ¦ ¦identifier” ¦ ¦required. ¦ ¦that can be ¦ ¦characters ¦ ¦ ¦ ¦ ¦ ¦ ¦used to ¦ ¦that can be ¦ ¦ ¦ ¦ ¦ ¦ ¦identify the ¦ ¦used to ¦ ¦ ¦ ¦ ¦ ¦ ¦customer” ¦ ¦identify the¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦customer” ¦ +-+-------------+-------+------------+--------------+--------------+------------------------------------------------+------------¦ ¦ ¦ ¦ ¦If ¦In the ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦construed, ¦alternative, ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦then: ¦if not ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦“unique ¦indefinite: ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦identifier ¦“encrypted ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦which is ¦customer ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦secure” ¦information.” ¦ ¦ ¦ ¦ +-+-------------+-------+------------+--------------+--------------+------------------------------------------------+------------¦ ¦ ¦ ¦ ¦ ¦“a unique ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦code, but not ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦a randomly ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦generated ¦“customer ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦alphanumeric ¦information ¦ ¦ ¦ ¦ ¦“encrypted ¦ ¦ ¦code, ¦coded from ¦ ¦ ¦ ¦ ¦customer ¦ ¦ ¦generated ¦original text ¦“customer information coded from original text ¦ ¦ ¦ ¦information”/¦'490: ¦No ¦within a ¦into language ¦into unique language unintelligible to ¦ ¦ ¦3¦“encrypted ¦1, ¦construction¦secure ¦that is ¦unauthorized persons, ¦ ¦ ¦ ¦remote user ¦29–31 ¦required. ¦environment by¦unintelligible¦but not into a randomly generated alphanumeric ¦ ¦ ¦ ¦information” ¦ ¦ ¦performing a ¦to ¦code ” ¦ ¦ ¦ ¦ ¦ ¦ ¦transformation¦unauthorized ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦on a ¦persons” ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦customer's ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦financial ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦account ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦information” ¦ ¦ ¦ ¦ +-+-------------+-------+------------+--------------+--------------+------------------------------------------------+------------¦ ¦ ¦ ¦ ¦If ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦construed, ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦then: ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦“customer or¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦remote user ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦information ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦which has ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦been ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦encrypted or¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦encoded” ¦ ¦ ¦ ¦ ¦ +--------------------------------------------------------------------------------------------------------------------------------+
IT IS SO ORDERED.
Serverside also argued in this response to the Office Action that Tuchler is limited to “bearer cards.” The Delaware court concluded that this argument was a disclaimer of “bearer cards,” and concluded that “financial transaction card” within the meaning of the patents-in-suit should be construed as “a transaction card (e.g., credit card, debit card, ATM card, or similar card), but not a prepaid bearer card.” The parties do not dispute that construction of “financial transaction card” in this action.
Indeed, I believe that Serverside is correct that Tuchler does not describe a “customer identifier” at all. Paragraph [0035] of Tuchler, which is quoted in pertinent part above, explains that text entered by the customer in “data entry fields,” such as messages and/or graphic images, are what Tuchler meant by “personalized data.” Paragraph [0039] of Tuchler then expressly describes “assign[ing] a random alphanumeric identifier to the personalized data and creat[ing] an account.” Furthermore, paragraphs [0022] through [0025] of the Tuchler patent, which are also quoted above, and which the Examiner relied upon as disclosing a “customer identifier that corresponds to the remote customer that personalized the image,” see, e.g., Exhibit 10 at 3, simply do not do so. The “identification” to which those paragraphs of Tuchler refer is card identification or card account identification, not identification of the customer who purchased the card as a gift for someone else.
The Iowa Defendants' Proposed Revised Construction for each disputed claim term is shown as I have placed the proposed limitations (shown underlined), not as the Iowa Defendants suggested at the Markman hearing that these limitations be placed.