DECISION CONSTRUING DISPUTED CLAIM TERMS (Markman Decision)
This is a patent infringement case.
Plаintiff, Raymond Joao, is a licensed patent attorney. He holds nineteen patents and has more than thirty pending applications. In March 2003, Joao and Robert Bock obtained patent number 6,529,725 (“the ’725 patent”) for something called a “transaction security apparatus and method.” In plain English, the patent was for a device that would notify a person on-line that a transaction involving his bank account was occurring, thus giving him the opportunity to disallow the transaction. Plaintiffs contend that the patent covers defendant Jack Henry’s software products, which enable banks and their customers to perform stop payment transactions over the Internet. Defendant Sleepy Hollow, Bank is a licensed user of Jack Henry’s software.
To date, plaintiffs have not produced, made, sold or licensed their invention, and it is not clear - who would buy it, since banks were offering remote banking services — services that include the ability to issue a stop payment order to a bank — for
Before reaching the merits, this Court must construe the terms used in the patent. This function has residеd with the Court since the Federal Circuit decided, in
Markman v. Westview Instruments, Inc.,
The form a
Markman
hearing takes lies in the sound discretion of the Court.
See, e.g., Rubie’s Costume, Co. v. Disguise, Inc.,
No. 99 Civ. 3189(AGS),
Principles of Claim Construction
Certain principles that are deeply embedded in patent law guide the court in claim construction.
The meaning of a claim should be interpreted in light of the intrinsic evidence, comprised of the claims and the specification of the patent, and the prosecution history.
Markman,
To define the scope of the patented invention, the Court must first look at the words of the claims themselves.
Vitronics Corp.,
The court also may consider the prosecution history of the patent.
Id.
(citing
Markman,
Finally, claim language should be read in a manner that causes the claim to make sense. Courts are to construe claims so as to sustain a patent’s validity where possible.
ACS Hosp. Sys., Inc. v. Montefiore Hosp.,
Construction of Disputed Claims
A. “At least one of ... and ...”
The first and most interesting disputed term is the phrase, “At least one of .... and ...” The phrase is used throughout the patent, in the same- rnanner each time: ,. > ■
“[W]herein the limitation or restriction prohibits a withdrawal from at least one of a checking account, a savings account, and an automated teller account, or prohibits use of at least one of a checking account, a savings account, and an automated teller machine account.” (’725 patent, Claims 108, 135,138 and 164);
“[W]herein the banking transaction is at least one of a clearing transaction, a check clearing transaction, an account charging transaction, and a charge-back transaction.” '(Id., Claim 118);
“[WJherein the apparatus is programmed for at least one of automatic activation, self-activation, automatic operation, and self-operation.” (Id., Claims 128 and 157); and
“[Wjherein the banking transaction is
at least one of
a clearing transaсtion, a check clearing transaction, an account charging transaction, a charge-back transaction,
and
Plaintiffs urge that the disputed phrase, when used in connection with a list of items (which is the way it is used in the patent in suit) means, “Only one item from the list or any combination of items in the list.” Using the phrase, “At least one of A, B and C,” as an example, plaintiffs say the claim means only A, or only B, or only C, or any combination of A, B and C.
Defendants argue that the phrase means, “One or more of each of the items contained in the list.” Using the same example, defendants contend that the phrase, “At least one of A, B and C,” means, “One or more of A, one or more of B, and one or more of C.”
I construe the phrase “at least one of ... and ...” in connection with a list of items to mean, “One or more of one or more of the items contained in the list.”
If I were to look only to the plain meaning of the language, defendants would be indisputably correct. This is' a simple matter of good English grammar (admittedly, a lost art). According to William Strunk, Jr. and E.B. White’s classic authority on grammatical construction, The Elements of Style, 27 (4th ed.2002), “An article of a preposition applying to all the members of the series must either be used only before the first term or else bе repeated before each term.” Here, the preposition “of’ (or, rather, the phrase “one of’) appears only before the first term in the sequence. It thus applies to every individual term that follows — to A, and to B, and to C. Or, to put it in the context of the claims in suit, the phrase “at least one of a clearing transaction, a check clearing transaction, an account charging transaction, and a charge-back transaction” means at least one of each kind of transaction. The construction favored by plaintiffs would, as a matter of proper grammar, read, “at least one of a clearing transaction, a check clearing transaction, an account charging transaction, or a charge-back transaction.” Use of the disjunctive preposition “or,” rather than the additive preposition “and,” makes a tremendous difference if all I care about is the grammatically correct construction of the phrase.
Use of the grammatically correct interpretation of the disputed language — which I will call the “plain meaning” of the language — was endorsed by the Federal Circuit in the recent case of
SuperGuide Corporation v. DirecTV Enterprises, Inc.,
However, in SuperGuide, interpreting the phrase in the grammatically correct fashion made sense in the context of the patent specifications. Reading the phrase in the same way here would render the claims utter nonsense.
Take again the phrase, “wherein the banking transaction is at least one of a clearing transaction, a check clearing transaction, an account charging transaction, and a charge-back transaction.” A single banking transaction cannot be all four, so reading the disputed phrase additively — while grammatically correct— means it does not make any sense. That suits defendants’ purposes nicely, of course, but it does not comport with the rules for proper claim construction.
One of the things I have learned in my brief but intensive introduction to patent law is that plain English grammar and syntax are not always endorsed by either patent examiners or courts interpreting patents. My personal favorite example of this phenomenon is the word “one,” which in plain English means “one and no more than one”- but which in patent English means “one or more than one,” or “at least
Here, it is far more sensible to read the disputed phrase as though plaintiffs had used the word “or” in place of “and.” Indeed, that is what plaintiffs do in the specifications. They substitute either the word “or” or the phrase “and/or” for the word “and” every time they describe an embodiment of the claim. For еxample, despite phrasing their claims as “at least one of a checking account, a savings account and an ATM account,” they state, “FIG. 4 illustrates a block diagram of an alternate embodiment of the apparatus of the present invention which is utilized in conjunction with a checking account, savings account and/or ATM account and/or transaction (hereinafter referred to as a ‘banking transaction.’).” ’725 patent, col. 20, line 63 — col. 1, line 10. Or, despite the use of the word “and” in the phrase “at least one of a clearing transaction, a check clearing transaction, an account charging transaction, and a charge-back transaction,” the specifications state, “The apparatus and method of the present invention may be utilized to obtain account owner authorization in a banking and/or financial transaction.” The specification continues in this vein, making repeated references to “a savings account or a checking account number,” “determining] the status of the account” and “the transaction,” as in “.. .the account owner may either utilize the reply or two-way pager feature on the communication device 104 in order to either approve or authorize the transaction or disapprove of, or void, the transaction.”(the relevant portions of the specification are found at col. 24, line 49 — col. 28, line 5).
Ironically,
SuperGuide
offers further support for adopting the ungrammatical but sensible reading of the disputed phrase. In that case, the disputed phrase was “at least one of selection and storage of program start time, program end time, program service and program type.” In the first instance, the Federal Circuit concluded that the grammatically correct reading of the phrase “ at least one of... .and....” was the “plain аnd ordinary meaning of the disputed language.”
SuperGuide, supra,
I agree with defendants that the plain meaning of the language is conjunctive, not disjunctive. But when I go on to test that proposition by referring to the specifications — as I must, under the teaching of
Hoechst Celanese, supra, 78
F.3d at 1578—it becomes clear that the patentee did not intend to use the phrase in its plain and ordinary way. Rather, the language used in the specifications is either disjunctive (“or”) or both conjunctive and disjunctive (“and/or”). And unlike Figure 4a in
SuperGuide,
Figure 4 in the ’725 patent plainly diagrams a transaction that supports a disjunctive, rather than conjunctive, reading of the relevant term. In
Therefore, in the context of the ’725 patent, I define the phrase “at least one of... and..in connection with a list of items to mean “one or more of one or more of the items contained in the list.” I hasten to add that this definition is adopted solely to square the claim language in the ’725 patent with the patent’s specifications. Thus, this decision has absolutely no precedential value for any other patent.
B. “Receiver”
“Receiver” is construed to mean, “A device for receiving signals or data from an outside source and converting those signals or data to usable form.”
Defendants urge that the term be construed in accordance with the definition that appears in the relevant technical dictionary, MCGRAW-HlLL DICTIONARY OF SCIENTIFIC AND TECHNOLOGICAL TERMS, 1759 (6th ed.2003). In connection with the field of electronics, which for our purposes appears the most germane of the fields listed, that source defines a “receiver” as:
The complete equipment required for receiving modulated radio waves and converting them into original intelligence, such as into sounds or pictures, or converting to desired useful information as in a radar receiver.
Plaintiff argues that defendants’ construction is too limiting, because the tеrm “receiver” is used to cover different sorts of devices in different parts of the patent. Indeed, plaintiff urges that the ’725 patent discloses at least nine receivers in nine separate elements.
Plaintiffs’ proposed definition, however — “A device that can receive something” — is almost ridiculously overbroad, not to mention tautological. Defendants are correct that this definition fails to provide the court with any elucidation of the intended scope of the term.
A review of the relevant specifications contains no indications that plaintiffs did not intend for receiver to have its ordinary mеaning.
I choose to modify the MoGraw-Hill definition by eliminating its unnecessary and confusing references to radio and radar. Plaintiffs’ patent clearly contemplates the use of computers and computer terminals; indeed, the specifications indicate that the receiver is to receive signals and/or data from a “central processing computer.” Radar has nothing whatever to do with the sort of “receiver” contemplated here.
C. “Communication Device”
“Communication device” is defined as, “An apparatus for the transmission of intelligence between two or more points.” This definition accurately summarizes whаt a communications device would do — it would communicate, by transmitting data.
Plaintiffs’ proposed definition is, “A device having a receiver and a transmitter, or a device having a receiver, or a device having a transmitter.” In other words, plaintiff defines a “communication device” as a receiver, or a transmitter, or a device that contains both a receiver and a transmitter. Plaintiff obviously takes this tack because its specifications designate a computer as the “device” that “communicates” — and computers “communicate” with other computers.
But plaintiffs’ disjunctive definition cannоt possibly be correct, because it defines a “device having a receiver” (but no transmitter) as a “communications device.” A bare receiver (i.e., a device that can receive data, but not transmit data) cannot possibly be a “communications device,” because “communication” requires the trans
It is equally clear from the specifications that a bare receiver cannot be a “communication device” for purposes of the ’725 patent. Here is how the contested language appears in context:
[W]herein the limitation or restriction is transmitted to a rеceiver from a communication device associated with an individual account holder. ’725 patent, col. 48, line 29-31.
In this patent, in these claims, the communications device sends data (in the form of a limitation or restriction) to a receiver. Thus, in the context of the claims in suit, the communications device is the sending device, and the receiver is the receiving device. If a communications device could be “a device having a receiver” (but no transmitter), it would be incapable of “transmitting] to a receiver.” Thus, in the context of the claims in suit, the communications device cannot possibly be a bare receiver. It must, therefore, either be a transmitter, or be something that contains a transmitter.
I hasten to add that nothing in the definitions of “receiver” and “communication device” that I adopt rules out a computer or other input/output (I/O) device as being either a “receiver” or a “communications device.”
D. “Central Processing Device”
“Central Processing Device” is construed as “That part of a computer containing the circuits required to interpret and execute instructions.”
This definition, propounded by defendants, is found in the MoGraw-Hill Dictionary OF SCIENTIFIC AND TECHNOLOGICAL Terms, 356 (6th ed.2003). It meets the first rule of patent construction — that the plain meaning of a term shall be used to define it.
This definition is also consistent with plaintiffs’ use of the term throughout the patent. For reasons that are not entirely clear to this Court, plaintiffs use this term interchangeably with the more.,common “central processing unit” (CPU) and with the term “central processing computer.” Indeed, in most instances, plaintiffs use the word “unit” or “computer” rather than “device.” For example, the illustrations in Figures 1, 4, 7, and 11 of the ’725 patent include “central processing computers.” Figure 8 depicts three “CPU’s.” The “SUMMARY OF THE INVENTION” refers repeatedly to a “central processing computer.” ’725 patent, col. 3-12. The “DESCRIPTION OF THE PREFERRED EMBODIMENT” section refers reрeatedly to various “central processing units” and “central processing computers.” Id., col. 12-44. In fact, the first time this Court sees mention of a “central processing device” is in a subsection of the “DESCRIPTION OF THE PREFERRED EMBODIMENT” section describing the patent claims, at column. 46, line 12.
In any event, “device” and “unit” strike me as essentially equivalent, and my intuition is borne out by the Dictionary of SCIENTIFIC AND TECHNOLOGICAL TERMS, p.
Defendants’ proposed definition also comports with the definition of the term “processing” that was stipulated by the parties. Both sides agree that “processing” means “operating on data or information, or to perform a series of actions or operations directed toward a particular result.” A processing “device” is, therefore, something that accomplishes “processing” as defined by the parties. In a computer, that device is the “central processing unit.”
Defendants’ effort to further limit the definition by suggesting that the word “central,” as used in the phrases, “central processing device” оr “CPU,” is somehow analogous to the word’s use in the phrase “central computer means” that was the subject of discussion in
British Telecommunications v. Prodigy
Communications,
Plaintiffs’ effort to broaden the definition beyond the one proposed by defendants is equally misguided. “Something that processes something” defines nothing. In connection with this Markman proceeding, I have processed a great deal of informаtion. That does not mean that the term “central processing device” as used in the ’725 patent could be read onto my brain.
E. “Signal”
“Signal” means, “A visual, aural or other indication used to convey information.”
Defendants’ proposed definition of “signal” — which I accept — also comes from the DICTIONARY OF SCIENTIFIC AND TECHNOLOGICAL TeRms, page 1929. The dictionary definition captures the plain meaning of the word and encapsulates precisely what a signal is. The word “signal” is quite common in our language, and there is not the slightest indication in the specifications that plaintiff intended anything other than the word’s plain and ordinary meaning. Indeed, the dictionary definition is completely consistent with the repeated use of the word “signal” in the 61 pages of quotations from the ’725 patent. I cannot imagine what else the word could mean — in any of the quoted passages — if it did not mean what the dictionary says it means.
Plaintiffs’ proposed definition, “Something having information,” is not only vague and uninformative, but wildly over-broad. Lots of things have information but are not signals. A book has information; a book is not a signal. The periodic table of elements has information; the periodic table is not a signal.
Plaintiffs’ proposed alternative definition, “An indication having data, information, and/or a message, and/or an indication conveying data, information, and/or a message,” when parsed (or “deconstructed,” as English scholars would put it), is nothing more than a complicated and inelegant way of rephrasing the dictionary definition’s spare, non-redundant prose.
Plaintiffs’ complaint that the dictionary definition is “too limiting in light of the manner in which Plaintiffs have used the term throughout the specification” is unpersuasive. For example, plaintiffs contend that the word “signal” corresponds to
F. “Hold”
The term “hold” in the context of the ’725 patent means, “A notation limiting access to funds in a checking, savings or automated teller machine account.”
This term appears in the claims as follows:
Wherein the central processing device determines whether a hold for prohibiting a withdrawal is placed on at least one of a checking account, a savings account, and an automated teller machine account, and further wherein the central processing device disallows the banking transaction. (Claims 135 and 164).
Plaintiffs would have this court construe thе term “hold” as “something that prohibits something from happening.” Again, the proposed definition is insufficiently specific to connote anything remotely related to the patent in suit.
Noting that the invention relates to banking, defendants point out that the term “hold” is a term of art in the banking industry. The construction it proposes comes directly from the BaRRons’ Business Guide, Dictionaey of Banking TeRMS (4th ed.2000):
“A notation limiting an account owner’s access to his or her funds.”
Plaintiff protests that this definition is too restrictive — even though it would qualify as the “plain and ordinary meaning” of the word to anyone familiar with the banking industry — because their invention is intended to be used by the owner of an account to prevent others from obtaining access to his or her funds. See ’725 Patent, “BACKGROUND OF THE PRESENT INVENTION,” at Col. 2, line 60-Col. 3 line 35.
The confusion arises because the person not skilled in the art of banking thinks about a “stop payment” order very differently than a banker does. When the average person writes a check to someone and then directs the bank to stop payment on it, he naturally is trying to prevent the person holding the check from getting at the account owner’s money. But to a person skilled in the art of banking, when a check is presented for payment, it is the owner of the account who is trying to аccess his own money. He is trying to access it so that it can be remitted to some third party. The check, written and signed by him, is the method by which he accesses his funds. If at some point he changes his mind, the owner of the account directs the bank to stop payment on the check. As far as the bank is concerned, the stop payment order limits the owner’s ability to access the funds in his account by negating the owner’s prior instruction (via the check) that the funds should be accessed.
By omitting the modifier “account owner’s” before the word “access” in defendants’ proposed definition, we solve this problem and allow the word to make sense in all the contexts in which plaintiffs use it in their patent.
G. “Banking Transaction”
I define the last disputed term, “banking transaction,” as follows: “An activity affecting a deposit account, such as a deposit of funds or a withdrawal.”
Again, plaintiffs propose a definition that is vague and overbroad — “Something carried out or performed with a bank.” Defendants’ proposed definition, “An activity affecting a deposit account, such as a deposit of funds or a withdrawal, carried out at the request of the account owner,” hits closer to the mark, no doubt because that is the definition of “banking transaction” found in the Dictionary of Banking TeRms. The only problem with the definition is that, as used in the ’725 patent, the term “banking transaction” can mean a transaction authorized by the account owner or one that is not authorized by the account owner. The Dictionary of Banking Terms limits the definition to an owner-authorized transaction. Such a limitation does not work in connection with this particular patent, which is designed to allow a customer to stop not just transactions that he authorized but has had second thoughts about, but also transactions that he has not authorized, but that are occurring because someone other than the owner has obtained access to the owner’s account. In this day and age, where information and identity theft is rampant, it would be foolish to pretend that banking transactions cannot be initiated — and sometimes completed — by -persons other than account owners. The use of the term “banking transaction” throughout the ’725 specifications contemplates the possibility of unauthorized banking transactions. Therefore, the DiCTionary of BANKING Terms definition is too restrictive.
Again, there is an easy fix. Placing a period after the word “withdrawal” in the DICTIONARY OF BANKING TERMS definition, and eliminating the phrase, “Carried out at the request of the account owner,” solves the problem while casting the definition in terms that are familiar to one skilled in the art of banking.
CONCLUSION
This concludes the Markman phase of this proceeding. The parties are directed to report for a conference on Friday, December 10, 2004, at 10:30 a.m. so the Court can enter a further scheduling order.