The opinion of the court was delivered by: Katherine B. Forrest, District Judge:
USDC SDNY DOCUMENT ELECTRONICALLY FILED
OPINION AND ORDER OPINION AND ORDER (MARKMAN)
In 2011, plaintiffs Microsoft Corporation ("Microsoft") and SAP AG and SAP America, Inc., ("SAP") (collectively, "plaintiffs") commenced separate lawsuits against DataTern, Inc., ("DataTern" or "defendant") for declarations of invalidity and non-infringement of two patents: U.S. Patent Nos. 6,101,502 (filed Sept. 25, 1998) ("'502 Patent") and 5,937,402 (filed June 19, 1997) ("'402 Patent"). Both patents-in-suit relate to inventions addressing object-oriented software applications interfacing with relational databases.
The '502 Patent is entitled "Object Model Mapping and Runtime Engine for Employing Relational Database with Object Oriented Software." The '402 Patent is entitled "System for Enabling Access to a Relational Database from an Object Oriented Program."
The parties are now before the Court on claim construction. With respect to the '502 Patent, they have requested construction of the following four terms*fn1
2. "to create at least one interface object;"
3. "[at least one interface object] associated with an object corresponding to a class associated with the object oriented software application;" and
The parties have also requested that this Court construe five terms with respect to the '402 Patent:
2. "logical primary key column;"
3. "designating one column of the logical table as the logical primary key column;"
4. "normalized relational schema object representing the logical table" (plaintiffs)/ "normalized relational schema object" (defendant); and
The Court construes the above terms as set forth below.
Claim construction is a question of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). This Court's task is neither to broaden nor narrow the claims - but rather to define them as a matter of law and thereby provide guidance as to the parameters of the patented invention. See Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001).
In construing the meaning of a term, the question is not what that term would mean to an average lay person, but what that term would have meant to one "of ordinary skill in the art in question at the time of the invention." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). The applicable date for claim construction purposes is the filing date of the first application to which the invention relates back - not the date upon which the patent issued. See Phillips, 415 F.3d at 1313.
There is a substantial body of law setting forth the appropriate tools with which a court should work in construing claims, the order in which those tools should be utilized, and the weight that should be given to additional resources brought to bear on proffered constructions. A court may use intrinsic - and, if necessary, extrinsic - evidence. See Nazomi Commc'ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1368 (Fed. Cir. 2005) (instructing courts to refer to intrinsic evidence first).
Intrinsic evidence includes the claims and specifications in the patent, as well as the patent's file history (or wrapper). See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir. 2005). The single most important source for the meaning of a term is the language of the claim itself - the language of a claim defines the scope of the patent holder's exclusive rights. Phillips, 415 F.3d at 1312.
One skilled in the art is "deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313. The specification is the "single best guide to the meaning of a disputed term." Id. at 1315; see also On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1338, 1340 (Fed. Cir. 2006) ("[T]he scope and outer boundary of claims is set by the patentee's description of his invention," id. at 1338, and "the claims cannot be of broader scope than the invention that is set forth in the specification," id. at 1340.)
The patent itself provides critical guidance as to context. The Federal Circuit has instructed courts that even seemingly non-technical terms cannot be construed according to their "ordinary meaning" divorced from that context. See Tap Pharm. Prods., Inc. v. Owl Pharm., L.L.C., 419 F.3d 1346, 1354 (Fed. Cir. 2005). When referring to dictionary definitions, courts must therefore take care not to run afoul of this contextual principle. Phillips, 415 F.3d at 1322. Put another way, if the context of a patent suggests a more specialized or specific meaning, that context controls over the definition set forth in a dictionary (even a technical dictionary).
Patent prosecution history can be significant to proper claim construction. Statements the patentee may have made in connection with patent prosecution can be binding if the statements placed clear and unmistakable limits on claims. See Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374-75; Phillips, 415 F.3d at 1317; see also Kripplez v. Ford Motor Co., 667 F.3d 1261, 1266-67 (Fed. Cir. 2012) (statements made during patent prosecution proceedings are binding on the patentee and can be considered as such during claim construction); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002)("[T]he prosecution history (or the file wrapper) limits the interpretation of claims so as to exclude any interpretation that was disclaimed or disavowed during prosecution in order to obtain claim allowance.").
Binding patentees to statements they made during a patent prosecution prevents claim terms from varying as the need and situation changes. See Southwall Techs., 54 F.3d at 1578 ("A patentee may not proffer an interpretation for purposes of litigation that would alter the indisputable public record consisting of the claims, the specification and the prosecution history, and treat the claims as a 'nose of wax.'").
With respect to expert witnesses, courts apply Rule 702 of the Federal Rules of Evidence and evaluate whether the testimony is helpful. Ideally, the experts would testify live so that a court could also evaluate the credibility of the witness. Courts must also consider whether proffered opinions meet the standards set forth in Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). Rule 702 provides:
A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case.
Fed. R. Evid. 702. In addition, a court should not consider mere ipse dixit of an expert - that is, conclusory statements without analytical basis. Country Rd. Music, Inc v. MP3.com, Inc., 279 F. Supp. 2d 325, 330 (S.D.N.Y. 2003).
Plaintiffs and defendant submitted expert declarations in support of their proffered constructions. They declined to call either expert live at the Markman hearing or to cross-examine the other side's expert live at the hearing (though they were deposed). The Court was therefore unable to make credibility determinations, evaluate how the experts' proffered constructions withstood live cross-examination, or hear the experts' responses to the Court's specific inquiries. The Court must evaluate their opinions based on its overall view as to consistency between those opinions and the totality of the information available regarding the correct construction.
Both plaintiffs' and defendant's experts appear to have expertise in the area of object-oriented programming and relational databases. Neither side has questioned the qualifications of the other's expert or suggested that there are Daubert issues with respect to their proffered opinions.
The central issue for this Court in this Markman decision is to determine how one of ordinary skill in the art would interpret the contested claims. The temporal reference point is 1997-1998: the '402 Patent issued in 1999 based on an application dating back to 1997; the '502 Patent issued in 2000 based on two provisional applications dating back to 1997 (11 Civ. 2365, Dkt. No. 90, Exs. C, E) and an application in 1998.
Plaintiffs' expert, Dr. Anthony Hosking, has written a book on the state of the art in dynamic memory management for object storage in object-oriented programming languages. (11 Civ. 2365, Dkt. No. 91 ("Hosking Decl."), ¶ 4.) He has also written a number of articles on, inter alia, dynamic memory management for object storage, persistent storage for objects and concurrency in object-oriented systems. (Id.) Defendant submitted a declaration from Neeraj Gupta. (11 Civ. 2365, Dkt. No. 88, Ex. B ("Gupta Decl.").) Gupta received his Bachelor of Science in 1994 and his Masters of Science in Computer Engineering in 1995 from the Massachusetts Institute of Technology (Id. ¶ 2.) He does not list any publications but does state that he is a named inventor on five issued U.S. patents, including one relating to object-oriented programming. (Id. ¶ 6); see also U.S. Patent No. 6,629,153 (filed Sept. 17, 1997). In his declaration he states that he has a decade of experience in programming, development and design with respect to object-oriented applications and relational databases. (Id. ¶ 4.)
The Court carefully reviewed both declarations in connection with the other intrinsic and, as appropriate, extrinsic evidence necessary to construe the claims at issue.
Plaintiffs' Proposed Construction: "A set of classes and the relationships among those classes underlying the implementation of the object-oriented software application." (11 Civ. 2365, Dkt. No. 92, Ex. A ("JCCC") at 1.)
Defendant's Proposed Construction: "No further construction is necessary. To the extent any further construction is deemed necessary: A template with a predetermined standardized structure that may include representing object classes, attributes of those object classes and inheritance relationships among classes." (Id.)
The correct construction of the term "object model" requires a brief description of how object-oriented programming relates to the inventions set forth in the '502 and '402 Patents. Object-oriented programming has been used by computer programming developers since the 1960s - with increasing popularity to today. (Hosking Decl. ¶ 13.) ...