Case 1:08-cv-00373-LPS Document 163 Filed 11/13/09 Page 1 of 46 PageID #: 4133
`Case 1:O8—cv—OO373—LPS Document 163 Filed 11/13/09 Page 1 of 46 Page|D #: 4133
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`ST. CLAIR INTELLECTUAL PROPERTY :
`
`CONSULTANTS, INC.,
`
`'
`
`Plaintiff,
`
`V.
`
`Civil Action No. 04-1436-JJF-LPS
`
`MATSUSHITA ELECTRONIC
`
`INDUSTRIAL CO., LTD., et al.,
`
`Defendants.
`
`ST. CLAIR INTELLECTUAL PROPERTY 2
`
`CONSULTANTS, INC.,
`
`‘
`
`Plaintiff,
`
`V.
`
`Civil Action No. 06-403-JJF-LPS
`
`VERIZON COMMUNICATIONS, INC.,
`
`et al.,
`
`Defendants.
`
`ST. CLAIR INTELLECTUAL PROPERTY :
`
`CONSULTANTS, INC.,
`
`'
`
`Plaintiff,
`
`v.
`
`2 Civil Action No. 06-404-JJF-LPS
`
`PALM, INC., et al.,
`
`Defendants.
`
`

`
`Case 1:08-cv-00373-LPS Document 163 Filed 11/13/09 Page 2 of 46 PageID #: 4134
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`ST. CLAIR INTELLECTUAL PROPERTY
`CONSULTANTS, INC.,
`
`'
`
`Plaintiff,
`
`V.
`
`Civil Action No. 08-371-JJF-LPS
`
`RESEARCH IN MOTION, LTD., et al.,
`
`Defendants.
`
`ST. CLAIR INTELLECTUAL PROPERTY :
`
`CONSULTANTS, INC.,
`
`Plaintiff,
`
`V.
`
`FUJIFILM HOLDINGS CORPORATION,
`et al.,
`
`Defendants.
`
`'
`
`‘
`
`Civil Action No. 08-373-JJF-LPS
`
`REPORT AND RECOMMENDATION
`
`REGARDING CLAIM CONSTRUCTION
`
`In these patent infringement actions I have been asked to provide recommended
`
`constructions of numerous claim terms from multiple patents. Many of the claim terms now in
`
`dispute have been previously construed by this Court in earlier litigation. Below I provide the
`
`constructions I recommend that the Court adopt in the instant cases.
`
`

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`I.
`
`Background
`
`A.
`
`The Patents-In-Suit
`
`In these actions, St Clair asserts six patents: (i) U.S. Patent No. 5,576,757 (“the ‘757
`
`patent”), issued on November 19, 1996; (ii) U.S. Patent No. 6,094,219 (“the ‘219 patent”), issued
`
`on July 25, 2000; (iii) U.S. Patent No. 6,233,010 (“the ‘010 patent”), issued on May 15, 2001;
`
`(iv) U.S. Patent No. 6,323,899 (“the ‘899 patent”), issued on November 27, 2001; (v) U.S. Patent
`
`No. 5,138,459 (“the ‘459 patent”), issued on August 11, 1992; and (vi) U.S. Patent No.
`
`6,496,222 (“the ‘222 patent”), issued on December 17, 2002.
`
`Four of the patents — the ‘757, ‘219, ‘010, and ‘459 — share the same title: “Electronic
`
`Still Video Camera With Direct Personal Computer (PC) Compatible Digital Format Output.”
`
`The ‘899 patent is entitled “Process for Use In Electronic Camera.” The ‘222 patent is entitled
`
`“Digital Camera with Memory Format Initialization.”
`
`The inventors on each of the patents are Marc K. Roberts, Matthew A. Chikosky, and
`
`Jerry A. Speasl. Collectively, the patents-in-suit are referred to as the “Roberts Patents.” The
`
`Roberts Patents share a common specification. (D.I. 258 at 2)‘
`
`‘The column and line numbers differ from one patent to another because the preliminary
`information, e.g., bibliography, is different. Because it would be cumbersome to cite six
`specifications for each point, this Report & Recommendation typically cites to just a single
`specification at a time. Each of the Roberts Patents appear as exhibits to the parties’ Joint Claim
`Construction Chart (D.I. 248) as follows: ‘459 patent is Exhibit A; ‘757 patent is Exhibit B; ‘219
`patent is Exhibit C; ‘010 patent is Exhibit D; ‘899 patent is Exhibit E; and ‘222 patent is Exhibit
`F.
`
`Unless otherwise noted, all references to Docket Index (D.I.) numbers are to entries in the
`docket for C.A. No. 04-1436-JJF-LPS.
`
`

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`B.
`
`The Technology At Issue
`
`Each of the six patents-in-suit relate to digital camera technology. Judge Farnan has
`
`generally described the technology at issue as follows:
`
`. Using the patented cameras, analog image signals are
`.
`.
`converted into their digital equivalents. The digital equivalents are
`then compressed into a user-determined format and saved for later
`decompression and use with a personal computer.
`
`Under the conventional prior art, electronic still cameras
`produced analog equivalents for a captured image. Using this prior
`art, the conversion of the analog equivalent into a digital format for
`use with personal computers was expensive and burdensome. The
`object of the patents-in-suit was to create the more facile
`conversion of analog images into digital formats for utilization
`with personal computers.
`
`St. Clair Intellectual Property Consultants, Inc. v. Canon Inc., 2004 WL 1941340, at *1 (D. Del.
`
`Aug. 31, 2004) (hereinafter “Canon Construction”). Judge Farnan has further observed that
`
`several of the Roberts Patents cover electronic cameras that can save digital photographs in
`
`multiple memory formats for use on personal computers. See St. Clair Intellectual Property
`
`Consultants, Inc. v. Sony Corporation, 2002 WL 31051605, at *1 (D. Del. Sept. 3, 2002)
`
`(hereinafter “Sony Construction”). 2
`
`C.
`
`Disputed Claim Terms
`
`The parties present seven groupings of disputed claim terms for the Court’s construction:
`
`(1)
`
`“plurality of different data formats for different types of computer apparatus”
`
`(‘459 patent, claim 16; ‘219 patent, claim 10) and variations thereof (‘010 patent, claim 1; ‘899
`
`2The 2002 Sony Construction and 2004 Canon Construction construed claims from four
`of the Roberts Patents: the ‘459, ‘219, ‘010, and ‘899 patents. The ‘757 and ‘222 patents were
`not asserted in the earlier cases.
`
`

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`patent, claims 1 and 3; ‘219 patent, claims 1 and 16);
`
`(2)
`
`“electronic camera” (‘219 patent, claims 1, 10, and 16; ‘899 patent, claims 1 and
`
`3) and “digital camera” (‘010 patent, claim 1);
`
`(3)
`
`“image” (‘459 patent, claim 16; ‘219 patent, claims 1, 10, and 16; ‘010 patent,
`
`claim 1) and related terms (‘899 patent, claims 1 and 3);
`
`(4)
`
`“storage device” (‘899 patent, claims 1 and 3), “digital memory” (‘459 patent,
`
`claim 16), and “memory element” (‘.219 patent, claim 1);
`
`99 CC
`
`99 CG
`
`(5)
`
`“generating,
`
`converting,
`
`selecting,” and “storing” (‘459 patent, claim 16);
`
`(6)
`
`claims one party contends are means-plus-function claims: “image pick-up unit”
`
`(‘010 patent, claim 1; ‘899 patent, claims 1 and 3), “memory means” (‘219 patent, claims 10 and
`
`16), “analog to digital converter means” (‘2 19 patent, claim 16), and “logic means” (‘2 19
`
`patent, claims 10 and 16); and
`
`(7)
`
`claims the parties agree are means-plus-function claims: “output data [format]
`
`control means” (‘219 patent, claims 1, 10, and 16), “means for digitizing captured image data”
`
`(‘2 19 patent, claims 1 and 10), “[picture] image resolution determining means” (‘2 19 patent,
`
`claims 12 and 17), and “means for capturing image data corresponding to a selected image”
`
`(‘219 patent, claim 10).
`
`In the Sony Construction and the Canon Construction, Judge F aman construed many of
`
`the terms the parties dispute in the instant actions. Where applicable, these prior constructions
`
`are discussed throughout this Report & Recommendation.
`
`

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`D.
`
`Procedural Histogg
`
`The parties filed a Joint Claim Construction Chart on April 9, 2009 (D.I. 166) (hereinafter
`
`“JCCC”) and, thereafter, briefed their respective positions. The parties presented tutorials to the
`
`Court as well as their arguments on claim construction on June 1 1, 2009. (D.I. 311) (hereinafter
`
`€CTr.73)
`
`II.
`
`Legal Standards
`
`“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) (internal quotation marks omitted). Construing the claims of a patent is a
`
`question of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir.
`
`1995), afl’d, 517 U.S. 370, 388-90 (1996). “[T]here is no magic formula or catechism for
`
`conducting claim construction.” Phillips, 415 F.3d at 1324. Instead, the court is free to attach
`
`the appropriate weight to appropriate sources “in light of the statutes and policies that inform
`
`patent law.” Id.
`
`“[T]he words of a claim are generally given their ordinary and customary meaning .
`
`.
`
`.
`
`[which is] the meaning that the term would have to a person of ordinary skill in the art in
`
`question at the time of the invention, i.e., as of the effective filing date of the patent application.”
`
`Id. at 1312-13 (internal citations and quotation marks omitted). “[T]he ordinary meaning of a
`
`claim term is its meaning to the ordinary artisan after reading the entire patent.” Id. at 1321
`
`(internal quotation marks omitted). The patent specification “is always highly relevant to the
`
`claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of
`
`

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`a disputed term.” Vitronics Corp. v. Conceptronic, Inc, 90 F.3d 1576, 1582 (Fed. Cir. 1996).
`
`While “the claims themselves provide substantial guidance as to the meaning of particular
`
`claim terms,” the context of the surrounding words of the claim also must be considered.
`
`Phillips, 415 F.3d at 1314. Furthermore, “[o]ther claims of the patent in question, both asserted
`
`and unasserted, can also be valuable sources of enlightenment .
`
`.
`
`. [b]ecause claim terms are
`
`normally used consistently throughout the patent .
`
`.
`
`. .” Id. (internal citation omitted).
`
`It is likewise true that “[d]ifferences among claims can also be a useful guide .
`
`.
`
`.
`
`. For
`
`example, the presence of a dependent claim that adds a particular limitation gives rise to a
`
`presumption that the limitation in question is not present in the independent claim.” Id. at 1314-
`
`15 (internal citation omitted). This “presumption is especially strong when the limitation in
`
`dispute is the only meaningful difference between an independent and dependent claim, and one
`
`party is urging that the limitation in the dependent claim should be read into the independent
`
`claim.” SunRace Roots Enter. Co. v. SRAM Corp, 336 F.3d 1298, 1303 (Fed. Cir. 2003).
`
`It is also possible that “the specification may reveal a special definition given to a claim
`
`term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
`
`inventor’s lexicography governs.” Phillips, 415 F.3d at 1316. It bears emphasis that “[e]ven
`
`when the specification describes only a single embodiment, the claims of the patent will not be
`
`read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
`
`using words or expressions of manifest exclusion or restriction.” Liebel-Flarsheim Co. v.
`
`Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), c_z}j”d, 481
`
`F.3d 1371 (Fed. Cir. 2007).
`
`In addition to the specification, a court “should also consider the patent’s prosecution
`
`

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`history, if it is in evidence.” Markman, 52 F.3d at 980. The prosecution history, which is
`
`77 CC
`
`“intrinsic evidence,
`
`consists of the complete record of the proceedings before the PTO [Patent
`
`and Trademark Office] and includes the prior art cited during the examination of the patent.”
`
`Phillips, 415 F.3d at 1317. “[T]he prosecution history can often 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, making the claim scope narrower than it would
`
`otherwise be.” Id.
`
`A court also may rely on “extrinsic evidence,” which “consists of all evidence external to
`
`the patent and prosecution history, including expert and inventor testimony, dictionaries, and
`
`learned treatises.” Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the
`
`court in determining the meaning of a term to those of skill in the relevant art because such
`
`dictionaries “endeavor to collect the accepted meanings of terms used in various fields of science
`
`and technology.” Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful “to
`
`ensure that the court’s understanding of the technical aspects of the patent is consistent with that
`
`of a person of skill in the art, or to establish that a particular term in the patent or the prior art has
`
`a particular meaning in the pertinent field.” Id. Nonetheless, courts must not lose sight of the
`
`fact that “expert reports and testimony [are] generated at the time of and for the purpose of
`
`litigation and thus can suffer from bias that is not present in intrinsic evidence.” Id. Overall,
`
`while extrinsic evidence “may be useful” to the court, it is “less reliable” than intrinsic evidence,
`
`and its consideration “is unlikely to result in a reliable interpretation of patent claim scope unless
`
`considered in the context of the intrinsic evidence.” Id. at 1318-19.
`
`Finally, “[t]he construction that stays true to the claim language and most naturally aligns
`
`

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`with the patent’s description of the invention will be, in the end, the correct construction.”
`
`Renishaw PLC v. Marposs Societa ’per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows
`
`that “a claim interpretation that would exclude the inventor’ s device is rarely the correct
`
`interpretation.” Osram GmbH v. Int 7 Trade Comm ’n, 505 F.3d 1351, 1358 (Fed. Cir. 2007)
`
`(internal quotation marks omitted). Thus, if possible, claims should be construed to uphold
`
`validity. See In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
`
`III.
`
`Construction Of Disputed Claim Terms
`
`A.
`
`Whether the patents require one-to-one correspondence
`
`of file format with computer hardware architecture?
`(Construction of category (1) claim terms: “plurality of diflerent data
`formats for different types ofcomputer apparatus” and variations thereof)
`
`The parties’ first dispute centers on whether the patents-in-suit require what has been
`
`referred to as a “one-to-one correspondence” between file formats and computer hardware
`
`architecture. St. Clair contends that the claim terms are not limited to such a one~to-one
`
`correspondence. Therefore, St. Clair proposes that the disputed claim term “plurality of different
`
`data formats for different types of computer apparatus” be construed as:
`
`a plurality of different data formats for different types of computer
`apparatus where: (1) a ‘data format’ is the arrangement of digital
`data in a file including image, audio, text or other data and
`includes, at least, MPEG, JPEG, GIF, TIFF, PICT, BMP, JFIF,
`
`DCF, TXT, DOC, WPD and WAV, and (2) a ‘computer apparatus’
`is a computer and any operating system or application software
`loaded on the computer.
`
`Judge Farnan has adopted St. Clair’s proposed construction twice before. See Canon
`
`Construction, 2004 WL 1941340, at *2-4; Sony Construction, 2002 WL 31051605, at *2.
`
`

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`Defendants, on the other hand, insist that the patents require the one-to-one
`
`correspondence. Accordingly, they propose that “plurality of different data formats for different
`
`types of computer apparatus” be construed as “two or more different arrangements of digital data
`
`in a file, wherein each different arrangement is in one-to-one correspondence with a particular
`
`type of computer architecture (e.g., IBM PC/Clone or Apple Macintosh).” (D.I. 259 at 7)
`
`On this dispute I agree with St. Clair. Having reviewed the claims, the specification, the
`
`prosecution history (including that generated during the re—examinations), and the extrinsic
`
`evidence of record, I conclude that the patents-in-suit are not limited to the one-to-one
`
`correspondence Defendants propose.
`
`As an initial matter, Defendants are correct that Judge Farnan’s two prior claim
`
`construction rulings are not dispositive. Among the Defendants contesting claim construction
`
`here are parties who were not parties to the prior actions and who are not barred by collateral
`
`estoppel or res judicata from pursuing their proposed constructions here. See Novartis Pharms.
`
`Corp. v. Abbott Labs, 375 F.3d 1328, 1333 (Fed. Cir. 2006).3 Also, Defendants here have a non-
`
`frivolous argument that the intrinsic evidence has expanded — due to reexamination proceedings
`
`with respect to four of the patents-in-suit — and that the applicable legal framework may have
`
`changed as well (since both the Sony Construction and the Canon Construction pre-date
`
`Phillips). Hence, I have undertaken my own analysis and have reached my own conclusions.
`
`Having conducted my own review, I find that I agree with Judge Farnan’s prior conclusion and,
`
`like him, I reject Defendants’ proposed limitation of a one-to-one correspondence.
`
`31 make no ruling at this time as to whether any party before the Court in the current
`actions who was also a party in a prior action is bound by a claim construction order entered in a
`
`prior case.
`
`

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`Importantly, there is no reference in the asserted claims to a “one-to-one correspondence”
`
`between a file format and a particular type of computer architecture. Indeed, as St. Clair
`
`emphasizes, the claims “don’t mention IBM, don’t mention Macintosh, don’t mention
`
`architecture.” Tr. at 67. Hence, there is no indication in the claims themselves that the claims
`
`require a one-to-one correspondence.
`
`Nor does the specification mention a “one-to-one correspondence.” To the contrary, the
`
`specification demonstrates that the inventors understood that while certain relationships were
`
`predominant between particular file formats and particular computer architectures, these
`
`predominant relationships were not the only relationships the claimed invention could
`
`accommodate.“ The specification states:
`
`The compressed digital frame is then formatted into either an IBM
`PC/Clone (such as GIFF) or Apple Macintosh (such as PICT II)
`image file format depending on the setting selected by the operator
`for a user switch 17 .
`.
`.
`.
`
`‘O10 patent, col. 4 lines 61-65 (emphasis added). In writing that an IBM PC user, for instance,
`
`would want data files in a format “such as GIFF,” the inventors recognized that while an IBM PC
`
`user might likely want data files in a GIFF format, she might also want them in a format other
`
`than GIFF.
`
`Similarly, the specification states:
`
`It should be noted that a large number of image formats for PCs
`
`4Defendants observe that in connection with claim construction in the Canon litigation,
`St. Clair stated: “in the experience of most consumers of digital photography in 1990 .
`.
`. IBM
`equal[ed] GIF and Apple equal[ed] PICT.” (D.I. 282 at Defs. Ex. E at 8) This marketplace
`reality is neither disputed nor relevant. The issue is not what a consumer thought in 1990; rather,
`it is how one having ordinary skill in the art would have read the asserted claims of the Roberts
`Patents at that time.
`
`10
`
`

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`exist. PICT and GIFF are the most common for the Apple and
`IBM PC’s and are therefore the preferred formats for the present
`invention although other formats can be easily incorporated into
`the design by changing the software format routines. These
`software image fonnats are commercially available from many
`sources most notably Apple computers for PICT and IBM for
`GIFF .
`
`‘459 patent, col. 11 lines 36-44 (emphasis added)
`
`As St. Clair explains, the Roberts Patents are addressed to resolving multiple problems in
`
`the prior art: one involving software and one involving hardware:
`
`The inventors identified two distinct shortcomings in the prior art.
`First, the inability of digital cameras to allow users a choice of
`multiple image files for immediate use in various computer
`applications. Second, hardware incompatibilities such as different
`storage or memory formats between IBM and Apple computers.
`The inventors sought and obtained different claims which
`separately address each short-coming.
`
`(D.1. 172 at 15) “[T]he asserted claims address the first shortcoming, i.e., the failure of prior art
`
`cameras[] .
`
`.
`
`. to allow users the ability to select in the camera between at least two of many
`
`common image file formats such as JPEG, GIF, TIFF, PICT, MPEG, BMP, and JFIF which are
`
`designed for use by any number of computer programs.” Id. Other - unasserted — claims relate
`
`to the second issue: hardware incompatibility.5 In this way, the specification again supports St.
`
`Clair: software and hardware problems are addressed separately by separate claims of the Roberts
`
`Patents; nowhere is the software problem addressed by requiring a one-to-one correspondence
`
`between a file format and a type of computer architecture. There is no requirement that the
`
`5See, e. g., D.l. 172 at 20 (citing ‘222 patent, claims 1-12, ensuring diskette in camera is
`compatible with “memory format” used with particular hardware brand); ‘45 9 patent, claims 7
`and 11; ‘219 patent, claims 7, 11, 14, and 15; ‘757 patent, claim 10 (all foregoing being
`dependent claims focusing on selection of particular memory, data storage, or hardware
`forrnats)).
`
`11
`
`

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`asserted claims accomplish all of the objectives of the patents-in-suit. See Phillips, 415 F.3d at
`
`1327 (“We have held that the fact that a patent asserts that an invention achieves several
`
`objectives does not require that each of the claims be construed as limited to structures that are
`
`capable of achieving all of the objectives.”) (internal quotation marks and citations omitted).
`
`On this point, too, I agree with Judge Farnan. In the Canon Construction, Judge Farnan
`
`wrote:
`
`. The specification of the ‘459 patent explains that the
`.
`.
`patent is directed to the incorporation of digital image files into
`different software applications. As the Background of the Invention
`explains:
`
`The digital diskette is removable from the electronic
`camera for direct insertion into a PC which contains
`
`the previously loaded corresponding decompression
`algorithm whereby the digital image is in a format
`compatible for immediate use with word processing,
`desk top publishing, data base, and multi-media
`applications.
`
`‘459 patent, col. 1, 11. 19-25 (emphasis added). Describing the
`problem addressed by the ‘45 9 patent and distinguishing the
`claimed invention from the prior art, the specification further
`explains that “with the current state of the art, it is expensive and
`time consuming to convert the analog image equivalent to a digital
`format for direct utilization with PC software applications.” ‘45 9
`patent, col. 1, ll. 57-60 (emphasis added). The objective of the
`patent to provide compatibility with different types of software is
`also confirmed in the Summary of the Invention, which explains
`that “[i]t is a further object of this invention to provide an
`improved electronic still camera that provides digital image files
`for immediate and direct incorporation into popular word
`processing, desktop publishing, and other software programs on
`PCs.” ‘459 patent, col. 2, 11. 15-19. The specification goes on to
`discuss the selection of software formats in the patented camera,
`further demonstrating that the patent is not limited to the computer
`architecture problem. ‘459 patent, col. 4, l. 68-col. 5, l. 9; col. 11,
`11. 32-49.
`
`12
`
`

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`2004 WL 1941340, at *3.
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`Defendants point to Figure 6 of the specification, which depicts switch 17 as enabling the
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`user to choose between “IBM” and “Apple” formats, as purported support for their construction.
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`(D.I. 259 at 16) (citing ‘459 patent, JCCC Ex. A at STCLR000006) However, Figure 6 is a
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`preferred embodiment. See ‘459 patent, col. 3 lines 23-24 (“FIG. 6 is an example of the control
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`panel logic in accordance with one aspect of the present invention”); ia’. col. 3 lines 62-63 & col.
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`6 lines 42-54 (stating, in “DESCRIPTION OF THE PREFERRED EMBODIMENT,” “The user
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`must then select the desired PC format (IBM PC/Clone or Apple Macintosh, etc.) via switch 17
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`(FIG. 6) on the control panel 2.”). It would be improper to import this feature of the preferred
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`embodiment into the claim. See Liebel-Flarsheim, 358 F.3d at 906.
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`Defendants also find support for their proposed construction in the prosecution history,
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`most particularly in the reexaminations of four of the Roberts Patents that occurred subsequent to
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`Judge Faman’s issuance of the Sony Construction and the Canon Construction. In the course of
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`these reexaminations, various PTO Examiners stated or suggested that they disagreed with this
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`Court’s construction of the “plurality of data formats” terms."’ The PTO allowed the claims to
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`"’The ‘459 and ‘2 l 9 patents proceeded through reexamination at approximately the same
`time as one another. Tr. at 89. In allowing the reexamined claims to stand, the PTO noted in its
`“Statement of Reasons for Patentability and/or Confirmationz”
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`Roberts et a1. explicitly state that switch 17 on the control logic
`panel of figure 6 is provided for allowing a user to select between
`image file formats (PICT II, GIFF, etc.) for formatting a
`compressed digital image into a selected file format, wherein the
`image file formats provided for selection (PICT II or GIFF) are in
`one-to-one correspondence with a particular type of computer
`system (Apple Macintosh or IBM PC, respectively) .
`.
`.
`. In other
`words, Roberts et al. DO NOT provide selecting between various
`sub-species on the same computer species .
`.
`.
`. Roberts et al.
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`Case 1:O8—cv—OO373—LPS Document 163 Filed 11/13/09 Page 15 of 46 Page|D #: 4147
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`emerge from reexamination without amendment based, at least in part, on the PTO’s
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`interpretation of the claims as being limited to a one-to-one correspondence.
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`I agree with Defendants that the reexamination history needs to be considered in
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`connection with construing the claims. See, e. g., Tr. at 1 1 1 (“[W]e’re not suggesting that you are
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`bound. [by what] happened in the re-exam. But we are suggesting that it’s an important part of
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`the intrinsic record.”).
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`I do not, however, agree with the conclusion Defendants would have this
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`Court draw from that history.
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`Statements by patentees and Examiners are part of a patent’s prosecution history, which is
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`intrinsic evidence a court should consider in construing patent claims. See SRAM Corp. v. AD—II
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`Eng ’g, Inc., 465 F.3d 1351, 1359 (Fed. Cir. 2006); Salazar v. Procter & Gamble Co., 414 F.3d
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`1342, 1345 (Fed. Cir. 2005). This is as true of statements made during a reexamination as it is of
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`statements made during the initial prosecution. See Laitram Corp. v. NEC Corp. , 952 F.2d 1357,
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`1361 (Fed. Cir. 1999). This is one reason courts sometimes stay patent litigation pending the
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`disclose and precisely claim selecting an image file format (PICT
`II, GIFF , etc.) from a plurality of image file formats for formatting
`a digital image into the selected image file format, wherein each of
`the image file formats provided for selection (PICT II or GIFF) are
`in one-to-one correspondence with a particular type of computer
`system (Apple Macintosh or IBM PC).
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`JCCC, Defs. Ex. 6 at 111] 3, 6.
`The ‘010 and ‘899 patents proceeded on essentially the same schedule as one another.
`See Tr. at 89, 115. They emerged from reexamination without amendment — but only after the
`PTO expressly distinguished its claim construction from that previously adopted by this Court.
`See JCCC Defs. Ex. 30 at 2-3 (“[I]n light of the disclosure a very different interpretation tha|n|
`that adopted by the court must be made. .
`.
`.
`[I]n light of the specification, the claim limitation
`‘formatting the digital image signal in one of a plurality of computer image formats’ is
`interpreted to mean formatting the image signal as one of an IBM PC/Clone, Apple Macintosh,
`or other PC Forrnat.”) (emphasis added). At no point did the patentees indicate agreement with
`the PTO’s construction.
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`resolution of a simultaneous reexamination. See, e. g., Procter & Gamble Co. v. Kraft Foods
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`Global, Inc., 549 F.3d 842, 848 (Fed. Cir. 2008). Also consistent with this conclusion is the
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`Federal Circuit’s guidance to district courts (at least in the context of preliminary injunction
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`motions) to “monitor the proceedings before the PTO to ascertain whether its construction of any
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`of the claims has been impacted by further action at the PTO or any subsequent proceedings.”
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`Kraft, 549 F.3d at 848.
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`There are important differences, however, between the legal standard applicable to claim
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`construction before the PTO and claim construction before an Article 111 Court. A PTO
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`Examiner construing claims is required apply the broadest reasonable construction consistent
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`with the specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re
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`American Academy ofScience Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004) (“The broadest
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`reasonable construction rule applies to reexamination as well as initial examinations”) (internal
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`quotation marks omitted). Courts do not apply this “broadest reasonable construction” rule.
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`Also, before the PTO, any ambiguity or excessive breadth in a patent claim may be corrected by
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`amending the claim. See Burlington Indus. Inc. v. Quigg, 822 F.2d 1581, 1583 (Fed. Cir. 1987).
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`This is not a possible outcome of judicial claim construction.
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`That the PTO is required by law to apply the broadest reasonable construction does not
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`mean, however, that the PTO’s claim construction is, per se, the broadest reasonable
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`construction. The PTO — like a court — may make mistakes. See SRAM, 465 F.3d. 1351, 1359
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`(Fed. Cir. 2006) (finding that PTO “paradoxically” failed to give disputed claim term its broadest
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`reasonable construction and construed claim in an improperly narrow manner).
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`Hence, once claim construction is before a court, the court is obligated to construe claims
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`Case 1:O8—cv—OO373—LPS Document 163 Filed 11/13/09 Page 17 of 46 Page|D #: 4149
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`de novo as a matter of law, without according any deference to the PTO’s construction. See
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`SRAM, 465 F.3d at 1359 (noting de novo standard ofjudicial review and rejecting construction
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`adopted by district court and by PTO Examiner — after three reexaminations); see also Salazar,
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`414 F.3d at 1343, 1347-48 (“[T]he examiner’s unilateral remarks did not alter the scope of the
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`claim. An examiner’s statements cannot amend a claim”); Inverness Med. Switzerland v.
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`Princeton Biomeditech Corp, 309 F.3d 1365, 1372-73 (Fed. Cir. 2002) (rejecting contention that
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`statement in examiner’s Reasons for Allowance governed construction of disputed claim term).7
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`Having reviewed the extensive prosecution history here, including especially the history
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`generated during the reexaminations, I conclude that the “plurality of data formats” terms should
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`be construed in a manner so as to n_ot require the one-to-one correspondence proposed by
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`Defendants.
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`I have considered the portions of the specification on which the PTO relied in
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`reaching its contrary conclusion and continue to believe, as this Court has previously ruled, that
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`the patent do