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523 IP LLC v. CureMD.Com

United States District Court, S.D. New York

September 24, 2014

523 IP LLC, Plaintiff,
v.
CUREMD.COM, Defendant

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For 523 IP LLC, an Illinois corporation, Plaintiff: Kenneth Kyle Dort, LEAD ATTORNEY, PRO HAC VICE, Drinker Biddle & Reath, Chicago, IL; Clay J. Pierce, Marsha Jessica Indych, Drinker Biddle & Reath, LLP (NYC), New York, NY; Jeremiah Posedel, Patrick Kelleher, PRO HAC VICE, Drinker Biddle & Reath, Chicago, IL; Robert M. Leonard, Drinker, Biddle & Reath, LLP, New York, NY.

For CureMD.Com, Defendant: John Gleeson Aicher, Jr., LEAD ATTORNEY, Law Office of John G. Aicher, Jr., Garden City, NY; John M. Adams, Price & Adams, Pittsburgh, PA.

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OPINION AND ORDER

KATHERINE POLK FAILLA, United States District Judge.

Plaintiff 523 IP LLC (" Plaintiff" or " 523 IP" ) brought this action, claiming that the " Patient Portal" product of Defendant CureMD.Com (" Defendant" or " CureMD" ) is infringing 523 IP's patient-to-physician Internet messaging system, which was assigned Patent No. 7,702,523 (the " '523 Patent" ). CureMD responds that its product does not infringe the '523 Patent and, further, that the Patent itself is invalid. Pending before the Court are Plaintiff's motion for partial summary judgment with respect to infringement, Defendant's motion for summary judgment with respect to non-infringement and invalidity, Plaintiff's applications to exclude witness testimony made within its motion for partial summary judgment, and Defendant's separate motion to exclude portions of Plaintiff's expert's testimony. For the reasons set forth in this Opinion, the Court (i) denies both parties' motions for summary judgment without prejudice to refiling; (ii) grants in part and denies in part Plaintiff's applications to exclude; and (iii) grants in part and denies in part Defendant's motion to exclude.

BACKGROUND[1]

Because the record in this case is substantial, this Opinion is divided into three

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sections: the first sets forth the undisputed facts related to the invention, the accused product, and the procedural history of the case; the second sets forth the Court's claim construction; and the third sets forth the Court's findings on the parties' competing applications to exclude witness testimony and other evidence.

A. The Invention and the Accused Product

1. The '523 Patent

523 IP alleges that CureMD's Patient Portal infringes its patent for a " Website Messaging System," the '523 Patent. The allegedly infringed patent includes 35 claims: three independent claims (Claims 1, 16, 31) and 32 dependent claims. (Pl. 56.1 ¶ 4). Claim 31, an " apparatus" claim, is the only claim that 523 IP asserts CureMD is infringing, and the Patient Portal is the only CureMD product that 523 IP asserts infringes the '523 Patent. (Pl. 56.1 Opp. ¶ ¶ 5-6).

At base, Claim 31 describes an apparatus by which a patient can send messages to a physician using a webpage. The Summary of the '523 Patent describes the invention as follows:

A method and apparatus are provided for processing a message from a patient for one of a plurality of physicians through a web site. The method includes the steps of providing one or more web pages to the patient from the web site containing indicia of identity for each physician of the plurality of physicians and detecting selection by the patient of a physician of the plurality of physicians. The method further includes the steps of determining an information content of the message and routing the message based upon the determined information content and a predetermined routing criteria provided by the selected physician.

( '523 Patent col.1 l.38-48). Claim 31 comprises a preamble and six elements, as follows:

31. An apparatus for routing a message from a requestor to a physician through a web site, such apparatus comprising:
a plurality of message destinations provided by the physician;
a respective criteria provided by the physician for routing messages to each of the plurality of message destinations;
a form downloaded by the requestor from the web site;
an at least partially complete form created by the requestor from the downloaded

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form and returned to the web site as a message to the physician;
a content processor adapted to determine an information content of the message received from the patient and that selects a message destination of the plurality of message destinations by matching the routing criteria of the selected destination with the determined information content; and
a routing processor adapted to route the message to the selected message destination based upon the determined information content and routing criteria provided by the selected physician.

( Id. at col.12 l.4-25). The specification of the '523 Patent (the " Specification" ) contains a description of an embodiment of the invention that is about three and one-half pages in length and is accompanied by 10 figures. ( Id. at col.2-9, Figs. 1-10).

The prosecution of the '523 Patent took eight years, from 2002 to 2010. (Pl. 56.1 Reply ¶ ¶ 1-3). Sameh filed U.S. Patent Application No. 10/115,393, entitled " Website Messaging System," with the United States Patent and Trademark Office (the " PTO" ) on April 3, 2002. (Pl. 56.1 Reply ¶ 1). In 2006, the PTO patent examiner (the " Examiner" ) issued an initial rejection of the '523 Patent as anticipated by the prior art, and Sameh filed an amended patent in response. (PH Amend. A). In this amendment, Sameh revised, inter alia, Claims 1, 16, and 31, " similarly limit[ing]" them in corresponding ways. ( Id. at 10). Sameh amended Claim 31 as follows:

31. An apparatus for routing a message from a patient to one of a plurality of physiciansrequestor to a physician through a web site, such apparatus comprising:
website adapted to provide one or more web pages to the patient from the web site containing indicia of identity for each physician of the plurality of physicians;
a patient interface adapted to detect selection by the patient of a physician of the plurality of physicians;
a plurality of message destinations provided by the physician;
a respective criteria provided by the physician for routing messages to each of the plurality of message destinations;
a form downloaded by the requestor from the web site;
an at least partially complete form created by the requestor from the downloaded form and returned to the web site as a message to the physician;
a content processor adapted to determindetermine an information content of the message received from the patientand that selects a message destination of the plurality of message destinations by matching the routing criteria of the selected destination with the determined information content; and
a routing processor adapted to route the messageto the selected message destination based upon the determined information content and a predeterminedrouting criteria provided by the selected physician.

( Id. at 7-8). This amendment brought the claims to their current, as-patented form.

On February 7, 2008, the Examiner issued a final rejection of Sameh's amended application, again finding that its claims were obvious in light of prior art under 35 U.S.C. § 103. (Pl. 56.1 Opp. ¶ 60; PH Fin. Reject.). Sameh appealed the Examiner's final rejection to the Board of Patent Appeals and Interferences (the " Board" ), filing his appeal brief on March 24, 2008.

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(Pl. 56.1 Opp. ¶ 61; PH App. Br.).[2] On October 30, 2009, after consideration of briefing from both Sameh and the Examiner, and oral argument from Sameh's attorney, the Board reversed the Examiner's rejection, finding that Sameh's patent was not anticipated by prior art. (Pl. 56.1 Opp. ¶ ¶ 61, 116-22; PH Board Dec.). In accordance with this decision, the Examiner issued a " Notice of Allowance" on January 11, 2010. (Pl. 56.1 Opp. ¶ 123; PH All. Not.). Following the Notice of Allowance, the '523 Patent issued on April 20, 2010. (Pl. 56.1 Opp. 56.1 ¶ 125; '523 Patent, at [45]). On February 11, 2011, Sameh assigned all rights in the '523 Patent to 523 IP LLC, of which he is the managing partner. (Pl. 56.1 Reply ¶ ¶ 6-7).[3]

2. The CureMD Patient Portal

CureMD was co-founded by brothers Kamal and Bilal Hashmat[4] in 1999 with the mission of providing doctors with medical office solutions in one system. (Def. 56.1 ¶ ¶ 158-59; Feb. 28, 2014 Hashmat Decl. ¶ 3). That same year, the company developed a suite of integrated software products for administering billing, scheduling, and electronic medical records in a doctor's medical practice (the " All-in-One Suite" ). (Def. 56.1 ¶ 160). By 2007, CureMD advertised the " Patient Portal" as a component of its All-in-One Suite. (Pl. 56.1 Opp. ¶ 161).[5] The current Suite contains three modules: an electronic medical records (" EMR" ) module, a practice management (" PM" ) module, and the Patient Portal module. (Pl. 56.1 Reply ¶ ¶ 44, 46; Apr. 25, 2014 Hashmat Decl. ¶ 38).

CureMD's Patient Portal provides an online platform for patients to post or send messages to the staff of a given medical practice. (Pl. 56.1 Reply ¶ 22; Pl. Opp. 56.1 ¶ ¶ 162-63).[6] The message composition screen within Patient Portal resembles that of an email: there is a " to" field,

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an optional " cc" field, a " subject" field, an attachment function, a field for the message itself, a handful of text-formatting options, and a " send" button. (Apr. 25, 2014 Hashmat Decl. Ex. A; Pl. Reply 8; Pl. 56.1 Reply 23). When using the " message" function in Patient Portal, a patient selects a recipient from a list of physicians and other medical office personnel. (Pl. 56.1 Opp. ¶ 18; Pl. 56.1 Reply ¶ ¶ 23, 27). Each individual is identified by his or her name and role in the practice (e.g., physician, attending physician, billing clerk); the list does not provide any contact information, such as an email address or phone number. (Pl. 56.1 ¶ Opp. 19; Pl. 56.1 Reply ¶ 27). After the patient sends the message, it is stored in a database. (Pl. 56.1 Opp. ¶ 16).

The recipient of a message from a patient within Patient Portal accesses that message from within CureMD's application. (Feb. 28, 2014 Hashmat Decl. ¶ 28 & Ex. F). Messages from a patient are also automatically saved to the patient's electronic medical chart. ( Id. at ¶ 30 & Ex. F). However, because the Health Insurance Portability and Accountability Act of 1996, Pub. L. 104-191, 110 Stat. 1936 (" HIPAA" ), limits who within a medical practice may legally view a patient's electronic medical records, the CureMD system allows a provider to restrict access to the medical chart and, by extension, to a patient's messages saved to that chart. (Apr. 25, 2014 Hashmat Decl. ¶ 29; Pl. 56.1 Reply ¶ 29).

Within the Patient Portal, there are discrete forms for certain frequently-occurring events, such as prescription refills, appointment requests, update requests, and registration requests. (Apr. 25, 2014 Hashmat Decl. ¶ ¶ 27-28). A patient chooses which type of form to use for his or her particular request on the website. (Pl. 56.1 Reply ¶ 41).[7] Hashmat explains, and 523 IP does not contest, that when a patient performs an action such as a refill request, the patient is limited in what he or she can communicate using the website, and, in particular, is not given an opportunity to submit a narrative message (termed " freeform" messaging in this Opinion). (Apr. 25, 2014 Hashmat Decl. ¶ 47).[8] Instead, the patient can select from a list of available refills and submit the request, which shows up in the EMR module's refill request inbox for clinical staff to process. ( Id.). Similarly, appointment request forms go to an appointment request inbox, update request forms go to an update request inbox, and registration request forms go to a registration request inbox. (Pl. 56.1 Reply ¶ 46). These inboxes are also restricted to certain individuals or categories of individuals, for both legal, security, and practical reasons (e.g., a billing clerk does not need access to refill requests). ( Id. at ¶ ¶ 31-32; Apr. 25, 2014 Hashmat Decl. ¶ ¶ 31, 33).

B. Procedural Background

On April 6, 2011, counsel for 523 IP sent CureMD a letter alleging that CureMD's Patient Portal was using the patented technology of the '523 Patent, and enclosing a preliminary claim chart purporting to apply the elements of Claim 31 to the Patient Portal product. (Pl. 56.1 Opp. ¶ ¶ 8-9; Feb. 28, 2014 Hashmat Decl. Ex. A).[9] On July 12, 2011, Bilal Hashmat sent

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a response to 523 IP's counsel denying the allegations of infringement and identifying the elements of the '523 Patent that he believed were not present in the Patient Portal product. (Pl. 56.1 Opp. ¶ 10; Feb. 28, 2014 Hashmat Decl. Ex. B). On August 26, 2011, 523 IP's counsel sent a letter in response, requesting documents in support of Hashmat's assertion that the Patient Portal was non-infringing. (Pl. 56.1 Opp. ¶ 12; Feb. 28, 2014 Hashmat Decl. Ex. C). Having apparently received no documents in response, on November 3, 2011, 523 IP's counsel sent a letter demanding access to CureMD's application and enclosing a draft complaint. (Pl. 56.1 Opp. ¶ 13; Feb. 28, 2014 Hashmat Decl. Ex. D). Shortly thereafter, Hashmat prepared and sent to 523 IP a response to 523 IP's claim chart, in which he outlined why he believed the Patient Portal was non-infringing. (Pl. 56.1 Opp. ¶ 14; Feb. 28, 2014 Hashmat Decl. Ex. E).

On December 30, 2011, 523 IP filed the instant action against CureMD, alleging direct infringement under 35 U.S.C. § 271(a), indirect infringement by inducement under 35 U.S.C. § 271(b), and contributory infringement under 35 U.S.C. § 271(c), and seeking damages, injunctive relief, and fees. (Dkt. #1). 523 IP amended the complaint on June 21, 2012 (Dkt. # 10), and CureMD answered on August 2, 2012, denying infringement and asserting six affirmative defenses: failure to state a claim; non-infringement; invalidity; prosecution history estoppel; laches, estoppel, acquiescence, or waiver; and unclean hands (Dkt. #15). CureMD asserted no counterclaims.

523 IP moved for partial summary judgment with respect to infringement, seeking to leave damages issues for trial, on February 28, 2014. (Dkt. #50). Included in that motion and in subsequent responsive papers were applications for the exclusion of CureMD witnesses' testimony. ( See Dkt. #50, 65, 78). On March 6, 2014, CureMD filed its motion for summary judgment with respect to non-infringement and invalidity. (Dkt. #55). Both summary judgment motions were fully briefed on May 16, 2014. (Dkt. #65, 66, 75, 78). CureMD then filed a separate Daubert motion on May 20, 2014, seeking the exclusion of portions of the testimony of Joseph Sameh, 523 IP's expert and the inventor of the '523 Patent. (Dkt. #81). That motion was fully briefed on June 8, 2014. (Dkt. #90, 91).

CLAIM CONSTRUCTION

Claim construction is required before a determination regarding infringement can be made where there is a dispute between the parties over claim meaning. See Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1370 (Fed. Cir. 2003) (" A determination of infringement requires a two-step analysis. First, the court determines the scope and meaning of the patent claims asserted and second, the properly construed claims are compared to the allegedly infringing device." (citations, quotation marks, and alterations omitted)); see also PSC Computer Prods., Inc. v. Foxconn Int'l, Inc., 355 F.3d 1353, 1357 (Fed. Cir. 2004) (declining to construe uncontested claims in determining the scope of an invention).

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At a May 17, 2013 conference before the Honorable William H. Pauley III, the United States District Judge to whom this case was previously assigned, counsel for 523 IP indicated its position (not disputed by counsel for CureMD) that there was no need for a claim construction hearing because " the facts are pretty clear," but committed to advising the Court promptly if such a hearing were needed. (May 17 Tr. 8). The parties' briefing on their respective summary judgment motions belies counsel's assertion. The parties do not agree on the correct interpretation of the claim at issue, Claim 31. 523 IP argues that the language of Claim 31 is clear as written and needs no further construction. (Pl. Reply 3). CureMD, however, argues that the terms of Claim 31 have no plain and ordinary meaning, are ambiguous, and need construction. (Def. Opp. 6-7). The Court agrees. 523 IP is attempting to have its cake and eat it too: while arguing that no claim construction is necessary, 523 IP implicitly gives the claims a construction -- and an impermissibly overbroad one at that -- in support of its infringement arguments.

A. Applicable Law

" It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citation omitted). Patent construction is a question of law, the interpretation of which is entrusted to judges. Markman v. Westview Instruments, Inc., 517 U.S. 370, 391, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). However, " district courts are not (and should not be) required to construe every limitation present in a patent's asserted claims." O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (citing U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)). Rather, " [c]laim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement." Id. (alteration in original) (quoting U.S. Surgical, 103 F.3d at 1568 (" [Claim construction] is not an obligatory exercise in redundancy." )). In construing a patent claim, a court " should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history." PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1362 (Fed. Cir. 2005) (citation omitted).

" The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation." Phillips, 415 F.3d at 1313. " In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314. Additionally, " the context in which a claim term is used in the asserted claim can be highly instructive." Id. (noting, as an example, that the claim at issue refers to " steel baffles," strongly implying that the term " baffles" does not inherently mean objects made of steel).

Other than the language of the patent claim itself, " the specification is the single best guide to the meaning of a claim term" to a person of ordinary skill in the art. Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1378 (Fed. Cir. 2006). In other words, " claims must be read in view of the specification, of which they are a part." Phillips, 415 F.3d at 1315

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(citation omitted). Within the specification, a patentee " can act as his own lexicographer to specifically define terms of a claim contrary to their ordinary meaning." Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc., 467 F.3d 1370, 1376 (Fed. Cir. 2006) (citation omitted). Although courts use the specification " to interpret the meaning of a claim," they must " avoid the danger of reading limitations from the specification into the claim" itself. Phillips, 415 F.3d at 1323. The task is " captur[ing] the scope of the actual invention," rather than " strictly limiting the scope of the claims to the embodiments disclosed in the specification or divorcing the claim language from the specification." Id. at 1324.

The prosecution history may also " inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution." Phillips, 415 F.3d at 1317. Indeed, because the prosecution history includes the applicant's express representations made to the PTO examiner, it may be " of critical significance in determining the meaning of the claims." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The prosecution history's instructive value is mitigated, however, by the fact that it " represents an ongoing negotiation between the PTO and the applicant ... [and] often lacks the clarity of the specification." Phillips, 415 F.3d at 1317.

Disclaimers made during prosecution may define the scope of a claim, where there is a " clear and unambiguous disavowal of claim scope." Saffran v. Johnson & Johnson, 712 F.3d 549, 559 (Fed. Cir. 2013) (citation omitted), cert. denied, 134 S.Ct. 1023, 188 L.Ed.2d 138 (2014). Applicants need not " submit affirmative disclaimers along the lines of 'I hereby disclaim the following ...' during prosecution ... to meet the applicable standard." Id. Instead, a statement that " extends beyond illuminating 'how the inventor understood the invention,' [and] provide[s] an affirmative definition for the disputed term" can constitute a prosecution disclaimer. Id. (citation omitted) (finding patentee's statement made in distinguishing prior art that " the device used is a sheet rather than a preformed chamber" not only disclaimed " chambers," but also affirmatively defined the device recited in the claims as a " sheet" (citations omitted)); see also Sunovion Pharms., Inc. v. Teva Pharms. USA, Inc.., 731 F.3d 1271, 1277 (Fed. Cir. 2013) (holding that " repeated and definitive remarks" in prosecution history sufficed to provide a definition of a claim term (citation omitted)); Uship Intellectual Properties, LLC v. United States, 714 F.3d 1311, 1315 (Fed. Cir. 2013) (finding that any statement by the applicant " to the PTO characterizing [the] invention may give rise to a prosecution disclaimer" ).

In construing claims, the district court should not " redefine claim recitations or [] read limitations into the claims to obviate factual questions of infringement and validity." Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1331 (Fed. Cir. 2011). Rather, the role of the district court in claim construction is to " give meaning to the limitations actually contained in the claims, informed by the written description, the prosecution history if in evidence, and any relevant extrinsic evidence." Id.

" The claims, specification, and file history, rather than extrinsic evidence, constitute the public record of the patentee's claim, a record on which the public is entitled to rely." Vitronics Corp., 90 F.3d at 1583. Thus, " [i]n those cases where the public record unambiguously describes the scope of the patented invention, reliance

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on any extrinsic evidence is improper." Id.[10]

B. Analysis

Claim 31 consists of a preamble, the transition term " comprising," and six elements or limitations.[11] Only certain terms and limitations are disputed by the parties; the Court will therefore only construe disputed terms and terms that are necessary to the construction of disputed terms.

1. The Preamble of Claim 31 Does Not Limit the Claim

The preamble of Claim 31 reads, " An apparatus for routing a message from a requestor to a physician through a web site, such apparatus." ('523 Patent col.12 l.4-5). CureMD argues that the term " web site" in the preamble should be construed to limit the claimed apparatus to handling messages that a requestor sends from a web site on the Internet. (Def. Br. 19).[12] 523 IP does not dispute that the apparatus necessarily involves a " web site," but argues that construing the preamble " would be a pointless exercise in redundancy." (Pl. Opp. 21 n.3 (citing U.S. Surgical Corp., 103 F.3d at 1568)). The Court agrees, in view of the content of the preamble and the applicable law.

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As a threshold issue, whether and to what extent a preamble limits a patent claim is unsettled; the general rule is that preamble language acts only as a limitation on the claim when it " recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim." Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (citations and quotation marks omitted). This determination is made on a case-by-case basis. " 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." Id. " A preamble is not limiting, however, where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention." Symantec Corp. v. Computer Assocs. Int'l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (citations and quotation marks omitted).

The preamble of Claim 31 identifies the kind of invention as an apparatus (as opposed to, for example, a process) and describes the purpose of the invention as that of a means to route messages from a requestor to a physician through a web site. Basically, it " only [] state[s] a purpose" of the invention. Symantec Corp., 522 F.3d at 1288. That the invention is online as part of a website is already apparent from the name of the patent, " Website Messaging System" ('523 Patent, at [54]), and from the context of the claim, and is in any case uncontested by 523 IP (Pl. Opp. 21 n.3).

CureMD could argue (although it does not) that, as in Eaton Corp., the " limitations in the body of the claim rely on and derive antecedent basis from the preamble." 323 F.3d at 1339 (finding that, where a limitation stated " during the gear shift ratio," it referred back to the particular sequence defined by the preamble (emphasis in Eaton Corp.)). The first, second, and fourth elements of Claim 31 all refer to " the physician" ; the third element refers to " the requestor" ; and the third and fourth refer to " the web site." However, while it is true that each of these uses of the definite article " the" refers back to the use of the term in the preamble, the preamble itself serves merely as a reference point. Unlike Eaton Corp., the preamble here does not contain substantive, structural descriptions. Nothing in Claim 31's preamble gives the claim " life, meaning, and vitality." Id. The Court will therefore not consider the preamble as a limitation to the claimed invention or further construe its meaning.

2. " Comprising" Means " Including But Not Limited To"

The meaning of the term " comprising" is not disputed by the parties, but the Court construes it here because, as the word appears in patents, it has a distinct legal meaning that aids the Court in delineating claim scope. As used in a patent's preamble, " comprising" means including but not limited to -- it " raises a presumption that the list of elements is nonexclusive." Dippin' Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007). Notably, however, " '[c]omprising' is not a weasel word with which to abrogate claim limitations." Id. (alteration in original) (quoting Spectrum Int'l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed. Cir. 1998)). Where " 'comprising' appears at the beginning of the claim[,] ... [it] indicates ... that an infringing process could practice other steps in addition to the ones mentioned." Id. All the enumerated steps or elements, however, must be practiced " as recited in the claim for a process to infringe." Id. Thus, the Court construes Claim 31 as necessarily including the six enumerated limitations, while acknowledging that elements

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in addition to those recited may be found in an apparatus within the scope of the claim.

3. Multiple Recipients Within a Single System Do Not Constitute a " Plurality of Message Destinations Provided by the Physician"

The proper construction of Claim 31's limitation of " a plurality of message destinations provided by the physician" is hotly disputed by the parties. ('523 Patent col.12 l.6-7). CureMD contends that the Court should construe " a plurality of message destinations" to mean " communication devices" -- such as a cell phone, pager, palm pilot, or computer -- " selected by the physician under any of a number of communication formats to deliver messages to the physician." (Def. Br. 20-21). Arguing prosecution disclaimer, CureMD further asserts that Sameh, in prosecuting his patent, asseverated that a single database that permits access to messages by multiple recipients did not constitute a " plurality of message destinations." ( Id. at 20, 26). 523 IP also relies on the prosecution history, but argues from it that the term " plurality of message destinations" should be construed broadly to include not only devices, but also other individuals (" other physicians, residents, staff" ), as well as multiple staff members selected as recipients by patients accessing messages on a " unified database." (Pl. Opp. 22 (citing PH App. Resp. 5)).

Based upon consideration of the claim language, as well as a review of the Specification and the prosecution history, the Court agrees with CureMD that " message destinations" means devices external to the patented system; agrees with 523 IP that such devices can belong to individuals other than the physician; and disagrees with 523 IP that multiple recipients within a single system constitutes " a plurality of message destinations." Accordingly, the Court adopts its own construction of the limitation as described below.

First, the Court considers the language of the claim itself: " a plurality of message destinations provided by the physician." A " plurality" necessarily means more than one message destination. This suggests that storage of messages on a " unified database" within the system itself, and accessed only through the system, does not constitute a " plurality of message destinations." ( See Def. Br. 26). But 523 IP argues that multiple recipients within a database means multiple destinations because the messages are routed to the appropriate destination (recipient) within the database. ( See Pl. Opp. 22). Either construction is reasonable given the claim language alone, so it is necessary to consult other intrinsic evidence to resolve the ambiguity.

Every reference in the Specification to a " message destination" is to one that exists outside the patented invention. For example, the Specification refers to: " any of a number of communication formats (e.g., Internet, voice channel through the public switched telephone network (PSTN), voice channel through a cellular system, data through a cellular system, pager, palm pilot, etc.)" ('523 Patent col.2 l.46-50); " a computer terminal, a telephone console and a cell phone" ( id. at col.2 l.60-61); " communication devices of other physicians or non-physicians" ( id. at col.3 l.12-13); a " list of communication devices" ( id. at col.8 l.5); a " pager" ( id. at col.8 l.29); a " computer" ( id. at col.8 l.33, 50); and " a cell phone or a telephone" ( id. at col.8 l.55). The Specification repeatedly refers to " communication devices" ( see id. at col.2 l.55; col.3 l.3-4, 8, 11, 12, 15; col.8 l.5), and touts the ability of the claimed invention to " accommodate the mobile nature of physicians" by " alter[ing] [the physician interface]

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to include [a] changing range of communication devices" ( id. at col.3 l.6-8). Additionally, Figure 10 of the Specification illustrates a web page, a " Routing Entry Form," on which the physician can enter " message destinations" and order them according to the priority level of the message. ('523 Patent Fig.10). The examples of message destinations illustrated by the form are telephone, pager, email, ...


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