Uship Intellectual Properties, LLC v. United States
2011 U.S. Claims LEXIS 663
| Fed. Cl. | 2011Background
- USHIP sued the Government in the Court of Federal Claims asserting infringement of seven Ramsden family patents related to automated package shipping kiosks.
- The court adopts a claim-construction framework, drawing from Markman and Vitronics, prioritizing intrinsic evidence (claim language, specification, prosecution history).
- The patents ('464, '220, and '014) share a lineage: '464 is a continuation-in-part of '948, which itself traces to '532; '220 and '014 are continuations of the '799/ '532 family, with related specifications incorporated.
- The Government and IBM participate as third-party defendant and responsive parties; the court addresses standing and jurisdiction under 28 U.S.C. § 1498(a).
- The court construes disputed terms in the '464 and '220/'014 patents, including whether the 'integrated ... unit' is a single physical container or a functionally integrated system, and whether preambles limit claim scope.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the court may construe disputed claims in light of intrinsic evidence and preambles limit | USHIP argues preambles and intrinsic evidence define the scope; multiple embodiments show functional integration, not necessarily a single container. | Government/IBM contend preambles limit scope to a single, integrated machine; prosecution history supports a single-container interpretation. | Preambles are limiting and define the integrated unit as a functionally integrated system, not necessarily housed in one container. |
| Whether 'integrated ... unit' requires a single physical container or a functionally integrated system | Integrated means a cooperative, interrelated whole; may be multiple containers integrated functionally. | Integrated means a single, physically integrated machine; system parts must reside in one housing. | The court construes 'integrated ... unit' as a system that is functionally integrated but not necessarily contained in a single physical container. |
| Whether 'unattended' means no attendant is present or merely capable of use without an attendant | Unattended means usable by a customer without an attendant; avoid importation of limitation from faults in unattended drop-boxes. | Unattended means no attendant is present; the term unambiguously limits the claim. | Unattended is unambiguous and means no attendant is present. |
| Whether Claim 7's 'means for inputting' is indefinite and includes voice-recognition as corresponding structure | Voice-recognition should be a corresponding structure under 112,6 for the inputting function. | Only keypad/keyboard disclosed as corresponding structure; voice-recognition is not sufficiently described. | Means for inputting is limited to keypad (28) or keyboard (226); no voice-recognition structure disclosed. |
| Whether 'control means for analyzing ... and calculating the fee' is indefinite and whether a CPU/PLC constitutes valid corresponding structure | CPU/PLC constitute the structure; algorithm or detailed data flows may be necessary for a special-purpose computer. | There is insufficient algorithmic disclosure; general-purpose computer with disclosed data is not enough for §112,6. | The limitation is indefinite; lacks sufficient corresponding structure to perform the function. |
Key Cases Cited
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (Supreme Court 1996) (claims meaning is a matter of law for the court)
- Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576 (Fed. Cir. 1996) (intrinsic evidence is primary in claim construction)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (specification is the best guide to claim meaning)
- In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011) (post-Katz guidance on means-plus-function structure disclosure)
- Aristocrat Techs. Australia Pty Ltd v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008) (general-purpose computer needs algorithm or detailed structure)
- AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236 (Fed. Cir. 2007) (means-plus-function limitations require corresponding structure)
- Lockheed Martin Corp. v. Space Systems/Loral, Inc., 324 F.3d 1308 (Fed. Cir. 2003) (function after 'means for' defines scope; where and whereby clauses matter)
- BBA Nonwovens Simpsonville, Inc. v. Superior Nonwovens, LLC, 303 F.3d 1343 (Fed. Cir. 2002) (distinguishing location/locus language from function in means-plus-function)