MEMORANDUM OPINION AND ORDER
K. NICOLE MITCHELL, Magistrate Judge.
This Memorandum Opinion construes the disputed claim terms in U.S. Patent No. 7, 822, 816 ("the 816 Patent"). For the reasons stated herein, the Court adopts the constructions set forth below.
Plaintiff MacroSolve, Inc. alleges that Defendants Newegg Inc. and GEICO Insurance Agency, Inc. et al, (collectively "GEICO") infringe the 816 patent. The 816 Patent discloses a "System and Method for Data Management." The prior art involved gathering data away from a computer, traditionally on paper forms, and then later entering it into a computer. The invention taught in the 816 Patent allows information to be gathered by a handheld device and transmitted to the second computer through a loosely connected network. This combination eliminates extra steps and cuts down on delays and inaccuracies.
"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) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent's intrinsic evidence to define the patented invention's scope. Id. at 1313-1314; Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims, the rest of the specification and the prosecution history. Phillips, 415 F.3d at 1312-13; Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary meaning as understood by one of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
Claim language guides the Court's construction of claim terms. Phillips, 415 F.3d at 1314. "[T]he context in which a term is used in the asserted claim can be highly instructive." Id. Other claims, asserted and unasserted, can provide additional instruction because "terms are normally used consistently throughout the patent." Id. Differences among claims, such as additional limitations in dependent claims, can provide further guidance. Id.
"[C]laims must be read in view of the specification, of which they are a part.'" Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). "[T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own terms, give a claim term a different meaning that it would otherwise possess, or disclaim or disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes terms possess their ordinary meaning, this presumption can be overcome by statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). This presumption does not arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).
The specification may also resolve ambiguous claim terms "where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone." Teleflex, Inc., 299 F.3d at 1325. For example, "[a] claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct." Globetrotter Software, Inc. v. Elam Computer Group Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, "[a]lthough the specification may aid the court in interpreting the meaning of disputed language in the claims, particular embodiments and examples appearing in the specification will not generally be read into the claims." Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); see also Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim construction because a patentee may define a term during prosecution of the patent. Home Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) ("As in the case of the specification, a patent applicant may define a term in prosecuting a patent"). The wellestablished doctrine of prosecution disclaimer "preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution." Omega Eng'g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The prosecution history must show that the patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002); see also Springs Window, 323 F.3d at 994 ("The disclaimer... must be effected with reasonable clarity and deliberateness.'") (citations omitted)). "Indeed, by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover." Spectrum Int'l v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1988) (quotation omitted). "As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public's reliance on definitive statements made during prosecution." Omega Eng'g, Inc., 334 F.3d at 1324.
Although, "less significant than the intrinsic record in determining the legally operative meaning of claim language, " the Court may rely on extrinsic evidence to "shed useful light on the relevant art." Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises may help the Court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but such sources may also provide overly broad definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony may aid the Court in determining the particular meaning of a term in the pertinent field, but "conclusory, unsupported assertions by experts as to the definition of a claim term are not useful." Id. Generally, extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms." Id.
The patent in suit may contain means-plus-function limitations that require construction. Where a claim limitation is expressed in means-plus-function language and does not recite definite structure in support of its function, the limitation is subject to 35 U.S.C. § 112 ¶ 6. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). In relevant part, § 112 mandates that "such a claim limitation be construed to cover the corresponding structure... described in the specification and equivalents thereof." Id. (citing 35 U.S.C. § 112 ¶ 6.). Accordingly, when faced with means-plus-function limitations, courts "must turn to the written description of the patent to find the structure that corresponds to the means recited in the [limitations]." Id.
Construing a means-plus-function limitation involves two inquiries. The first step requires "a determination of the function of the means-plus-function limitation." Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). Once a court has determined the limitation's function, "the next step is to determine the corresponding structure disclosed in the specification and equivalents thereof." Medtronic, 248 F.3d at 1311. A structure is corresponding "only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim." Id. Moreover, the focus of the corresponding structure inquiry is not merely whether a structure is capable of performing the recited function, but rather whether the corresponding structure is "clearly linked or associated with the [recited] function." Id.
A. Agreed Terms
The parties have agreed to the construction of several terms. 4-5d Chart at 3 [Doc. No. 445-1 at 3].
In view of the parties' agreements on the proper construction of each of the identified terms, the Court ADOPTS AND APPROVES these constructions.
B. Disputed Terms
Defendant GEICO argues that "questionnaire" should be given its plain meaning and that MacroSolve's construction is not the plain meaning of "questionnaire." Doc. No. 438 at 4 n. 1. MacroSolve and Defendant Newegg contend that the term "questionnaire" requires construction and offer competing proposals. Based on the parties' arguments, there is an actual dispute over the proper scope of the claim language. Therefore it must be resolved by the Court. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008).
The parties dispute four key issues: (1) whether the "questionnaire" must be a form or program; (2) whether the "questionnaire" must include internal branching logic; (3) whether the "questionnaire" must be a "complete" form or program as Defendant Newegg proposes; and
(4) whether the "questions" in the questionnaire can be statements.
Program or Form
MacroSolve contends that "questionnaire" is a broad term and can be any request for information. Doc. No. 433 at 4. MacroSolve argues that the specification defines a questionnaire as a series of questions or statements that calls for a response. Doc. No. 441 at 2. MacroSolve points to patent language stating that "the series of questions/statements will collectively be referred to as a questionnaire." 816 Patent at 8:18-19. MacroSolve argues that while a questionnaire is inclusive of forms or programs, it is not a requirement. Doc. No. 441 at 3. According to MacroSolve, the defining characteristic is a request for information. Id.
Defendant Newegg argues that a questionnaire is more than simply a request for information. Doc. No. 438 at 4. Newegg relies on language in the specification that analogizes a "questionnaire" with a "program" or "form". Id. The specification states that "questionnaire, " form", and "program" can be used interchangeably. 816 Patent at 8:19-24. Newegg contends that by analogizing the questionnaire to a form or program, the applicant made it clear that a questionnaire is more than just a request for information. Doc. No. 438 at 5.
The phrase "program or form" should be included in the construction based on the specification language. The specification states that "program" and "form" are used interchangeably with "questionnaire." 816 Patent at 8:22-24. Additionally, the specification refers to the "questionnaire" as a program several times. Id. at 5:40-41 ("[T]he program and user responses are coded in such a fashion as to substantially reduce the bandwidth requirements...."); Id. at 5:47-48 ("In practice, a program is created by entering a series of prompts...."). The claim language also references the "questionnaire" being created by a computer. Id. at 14:43. Based on this language a questionnaire is something more than a "request for information."
In addition, MacroSolve's construction is too broad because it potentially encompasses the prior art. The Background of the Invention section details the disadvantages of the prior art and how the 816 invention avoids these drawbacks. Id. at 1:21-28. One problem with the prior art was the use of paper forms and the inherent inaccuracies caused by needing to reenter information. Id. The 816 Invention fixes this issue by eliminating the extra steps. Id. at 2:44-46. This is possible because the "form may be entered on-line." Id. at 10:12-13. Based on this language, the patentee intended for a "questionnaire" to be more than a paper form. Thus a "questionnaire" is a "program or form."
Internal Branching Logic
The second issue is whether the program must include "internal branching logic." Internal branching logic would be instructions that provide a path through the questionnaire based on the user responses. MacroSolve argues that this is an unwarranted limitation on the invention. Doc. No. 441 at 4. MacroSolve contends that while a questionnaire can contain branching logic, it is not a requirement. Id. MacroSolve disputes Newegg's assertion that the patent "consistently" describes a questionnaire as containing branching logic. Id. MacroSolve argues that the portions of the patent Newegg relies on are referring to an optional feature. Id. at 5. In support, MacroSolve points to an example in the specification that contains no branching logic. Id. Finally MacroSolve argues that Newegg's construction ignores the doctrine of claim differentiation. Doc. No. 433 at 6. MacroSolve points to Claim 3, which contains the requirement that a branching path be included. 816 Patent 14:1-4. MacroSolve argues that reading a "branching logic" requirement into the construction of questionnaire would render this portion of claim 3 redundant. Doc. No. 433 at 6.
Newegg contends that the 816 Patent consistently refers to a questionnaire as presenting questions and being controlled by operating logic. Doc. No. 438 at 4. For the branching logic requirement, Newegg points to patent language that states "the questionnaire is actually designed to include internal branching logic that is implemented by the OIS." 816 Patent at 8:19-24. Newegg argues that this, along with repeated references to "programs", shows that a questionnaire contains operating logic. Doc. No. 438 at 5. In support, Newegg quotes portions of the patent describing adaptive functionalities that would require internal branching logic. Id. at 7. Newegg argues that MacroSolve's claim differentiation argument is misplaced because the focus of claim 3 is not branching logic, but rather on adding extra requirements to the questionnaire creation process. Id. at 8. Newegg cites to steps within Claim 3 that reference "using a design computer" and "entering a series of questions into a questionnaire design computer program." Id. Newegg contends these are additional limitations and therefore claim differentiation is not applicable. Id.
"Internal branching logic" is only a preferred embodiment and not a requirement. Branching logic is not mentioned in the method steps for Claim 1. In contrast, Claim 3 requires the questionnaire to have a "branching path" for each question. 816 Patent at 14:1-4. Since Claim 3 recites this requirement and is dependent on Claim 1, claim differentiation is applicable. See, e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) ("Where the limitation that is sought to be read into' an independent claim already appears in a dependent claim, the doctrine of claim differentiation is at its strongest"). Newegg relies on language in the specification stating that "the questionnaire is actually designed to include internal branching logic...." 816 Patent at 8:20-21. But that paragraph begins with a modifier that makes it clear the specification is referring to a preferred embodiment. Id. at 8:12 ("According to the preferred arrangement....") Two paragraphs later the specification describes a client creating a questionnaire and states "symbols... may be used to control conditional branching." Id. at 8:38-40. This makes it clear that conditional branching is an optional feature.
Newegg argues that claim differentiation does not apply because Claim 3's focus is instead on other limitations like using a "design computer program" to create the questionnaire. But the next two steps in Claim 3 show the "design computer" is there because it is needed to create the branching logic. Step (a)(ii) involves identifying the possible answers, and step (a)(iii) creates the branching path using the design computer. Id. at 13:65-14:4. Thus, the design computer is not a new limitation but rather the antecedent basis that allows the branching path to be created using "said questionnaire design computer program." Id. at 13:67; 14:3-4.
The specification also gives an example of a practical use for the invention. A "mystery shopper" application is detailed that involves the shopper entering information as she moves through the drive-thru and receives her food. Id. at 10:38-11:8. The questions given in this example follow a linear path rather than branching based on the shopper's answers. If the questionnaire was required to contain branching logic this example would be read out of the specification. Newegg argues that the shopper example does contain logic because the questions still follow a logical order that begins at pulling into the drive-through and ends when the customer receives her food. Markman T.R. at 18:13-19. But this is a linear logical order, not a path with conditional branching.
There is a difference between operating logic and branching logic. Branching logic would mean the questionnaire adapts and presents different questions depending on the responses. Operating logic would not require this adaptability, but it would be needed just to present any questionnaire. While the ability to branch is not necessary, some form of operating logic is inherent in the idea of a program. Even the linear mystery-shopper example was controlled by operating logic. 816 Patent at 11:9-11. In the Markman hearing, counsel for MacroSolve agreed with the idea of questionnaires having some basic level of operating logic. Markman T.R. at 29:12-15 ("[T]here may be one agreement.... [A] series of questions is going to have operating logic in some sense because they're going to be presented in order...."). But since the "program or form" construction already captures the idea of operating logic, including it in the construction is unnecessary.
Based on the specification and claim language the questionnaire can branch but it is not required. Accordingly, the construction of "questionnaire" will not contain a branching logic requirement.
The third issue is whether the "questionnaire" must be "complete." MacroSolve's position is that the inclusion of "complete" in the construction is vague and circular. Markman TR at 16:1-2. MacroSolve argues that the use of "comprising" in the claim language makes it clear that other elements may be present. Doc. No. 433 at 5. An example is given in the patent involving a questionnaire that is capable of being incrementally updated. 816 Patent at 9:1-8. MacroSolve contends that this shows a questionnaire can be "incomplete" and yet still covered by the patent claims. Doc. No. 433 at 5.
Newegg's position is that the word complete is not being used to denote a "consisting of" transition. Instead, Newegg argues that the word "complete" would be included to make clear that the questionnaire being transmitted to the remote device includes everything Newegg believes is required. Doc. No. 438 at 9. Newegg contends that this is consistent with the specification because the patent states the questionnaire is only sent "when [it] is complete." Id. (citing 816 Patent at 8:57-58). Newegg agrees that the questionnaire can be updated, but argues that it still must be complete when sent. Doc. No. 438 at 9.
The claim language does not indicate that a questionnaire must be "complete." Including "complete" in the construction is unnecessary and could lead to confusion. Adding "complete" to the definition could imply there are certain features, like branching logic, that must be included before the questionnaire can be sent. As previously discussed, optional features like branching logic are not required. Accordingly the questionnaire does not need to be "complete."
Statements or Questions
The fourth issue is whether the questionnaire can contain statements instead of questions. MacroSolve argues that based on the patent language, the questionnaire can contain "questions or statements." Doc. No. 441 at 3 (citing 816 Patent at 8:12-19). MacroSolve contends that a blank field with a label like "Name:" is still requesting a response from the user and could be part of a "questionnaire."
Newegg appears to have conceded that the questionnaire can contain statements. During the Markman hearing Newegg's counsel represented that the definition for questionnaire could include the phrase "questions or statements requesting information." Markman TR 22:6-10.
In case there is still a dispute, the questionnaire can include either questions or statements. The specification states that "[f]or purposes of the instant disclosure, the series of questions/statements will collectively be referred to as a questionnaire." Col 8:17-19. Based ...