United States District Court, E.D. New York
Decker A. Cammack, Gregory O. Koerner, Jonathan T. Suder, FRIEDMAN, SUDER & COOKE, Attorneys for Plaintiff,
William F. Cavanaugh, Chad J. Peterman, New York, NY, PATTERSON BELKNAP WEBB & TYLER LLP, Attorneys for Defendant.
MEMORANDUM AND ORDER
JOHN GLEESON, District Judge.
Plaintiff Secure Web Conference Corporation ("SWC") has brought patent infringement claims against Microsoft. On September 23, 2014, I held a claim construction hearing pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967, 987 (Fed. Cir. 1995) (en banc) (" Markman I "), aff'd, 517 U.S. 370 (1996) (" Markman II "). The case involves two patents: United States Patent No. 6, 856, 686 B2 ("686 Patent"), filed on March 13, 2002, describing a "Method and Apparatus for Securing E-Mail Attachments"; and United States Patent No. 6, 856, 687 B2 ("687 Patent"), filed on June 5, 2002, describing a "Portable Telecommunication Security Device." Three terms in the 686 Patent and four terms in the 687 patent are disputed. I adopt some of the proposed constructions, as detailed below, and leave a few terms uninterpreted.
Both patents at issue in this case are continuations in part of U.S. Patent No. 6, 430, 691 ("691 Patent"), filed June 21, 1999, for a "Stand-alone telecommunications security device." The 687 patent is also a continuation in part of the 686 patent. Both the 686 and 687 patents have listed as inventors Frank J. Disanto and Denis A. Krusos; the 686 Patent also lists Edward Lewit. Both patent applications were filed in the first half of 2002; the patents were issued on February 15, 2005.
The case was filed on May 1, 2013. After some discovery, it was reassigned to me on June 4, 2014.
A. Applicable Patent Law
The claims of a patent define the patented invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005); see also E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The claim "functions to forbid not only exact copies of an invention, " but also copycat products that "go to the heart of an invention [while avoiding] the literal language of the claim by making a noncritical change." Markman II, 517 U.S. at 373-74 (internal citations and quotations omitted).
"An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing." Markman I, 52 F.3d at 976. Construction of the claim is a legal question, and therefore the duty of the court. See id. at 970-71. "The construction of claims is simply a way of elaborating the normally terse claim language in order to understand and explain, but not to change, the scope of the claims." Embrex, Inc. v. Serv. Eng'g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000).
In determining the meaning of claims, courts should first consider so-called "intrinsic evidence, " which includes the patent's claims, specification, and prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996); Markman I, 52 F.3d at 979. A claim's words should be given their ordinary and customary meaning from the perspective of a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d at 1312-13.
The words of the claim are the controlling focus. See Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed. Cir. 1998). "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, 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Claims, however, must also be read in view of the specification. See Phillips, 415 F.3d at 1315. The United States Court of Appeals for the Federal Circuit has described the specification as "always relevant" to construction, "the single best guide to the meaning of a disputed term, " and usually "dispositive." Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d at 1582). Nevertheless, case law is clear that a patentee need not describe every conceivable and future embodiment of the invention in the specification. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d at 1366.
The last piece of intrinsic evidence - the prosecution history - consists of the complete record of the proceedings before the Patent and Trademark Office ("PTO") and includes prior art cited (and distinguished) during the examination of the patent. See Phillips v. AWH Corp., 415 F.3d at 1317. Neither party in this case offers prosecution history as part of its claim construction arguments.
When the intrinsic evidence does not establish the meaning of a claim, courts may also rely on other evidence - "extrinsic evidence" - including expert and inventor testimony, dictionaries, and learned treatises. Phillips, 415 F.3d at 1317; see also Markman I, 52 F.3d at 980. This evidence is useful to demonstrate how those skilled in the art would interpret the claims. See id. at 979. Nevertheless, extrinsic evidence is "less significant than the intrinsic record in determining the legally operative meaning of claim language." Phillips v. AWH Corp., 415 F.3d at 1317 (internal quotations omitted). The Federal Circuit has cautioned courts not to place too much reliance on extrinsic evidence and too little reliance on intrinsic sources. See id. at 1320. The parties rely on relatively little extrinsic evidence in their arguments before me.
B. Terms to be Construed from the 686 Patent
The parties seek construction of three terms from the 686 patent, all of which appear at least in its Claim 1: (1) "security device, " (2) "point-to-point communications session" (or "point-to-point electronic communications session"), and (3) "security data."
1. "Security Device"
Plaintiff proposes that "security device" be construed as "Hardware, or a portion thereof, with a primary function of encryption/decryption." Defendant proposes "A stand-alone telecommunications device, external to and separate from the associated microprocessor ...