Ipxl Holdings, L.L.C. v. Amazon.Com, Inc.

• Decision Date: 25 August 2004
• Docket Number: No. CIV.A.04-70.,CIV.A.04-70.
• Citation: 333 F.Supp.2d 513
• Parties: IPXL HOLDINGS, L.L.C., Plaintiff, v. AMAZON.COM, INC., Defendant.
• Court: U.S. District Court — Eastern District of Virginia

333 F.Supp.2d 513

IPXL HOLDINGS, L.L.C., Plaintiff, v. AMAZON.COM, INC., Defendant.

No. CIV.A.04-70.

United States District Court, E.D. Virginia, Alexandria Division.

August 25, 2004.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Keith R. Styles, Robins, Kaplan, Miller & Ciresi, LLP, Washington, DC, Michael V. Ciresi, Jan M. Conlin, Richard Martinez, Robins, Kaplan, Miller & Ciresi, LLP, Minneapolis, MN, for plaintiff.

John F. Scalia, David A. Kessler, Greenberg Traurig LLP, McLean, VA, David K. Callahan, Thomas G. Pasternak, Cindy S. Ahn, David Rokach, Kirkland & Ellis, LLP, Chicago, IL, David Olson, Christine E. Duh, Kirkland & Ellis, LLP, San Francisco, CA, for defendant.

MEMORANDUM OPINION

BRINKEMA, District Judge.

Plaintiff filed this case on January 22, 2004, alleging that the defendant's "1-Click" feature infringes plaintiff's United States Patent No. 6,149,055 ("the '055 patent"). On March 25, 2004, after unsuccessfully seeking a transfer of venue pursuant to 28 U.S.C. § 1404, the defendant answered plaintiff's complaint, asserting affirmative defenses and declaratory judgment counterclaims for non-infringement and invalidity.

Pursuant to the March 24, 2004, Scheduling Order, the parties completed their briefing on claim construction by June 28, 2004. On June 23, 2004, the defendant moved for summary judgment that the '055 patent is non-infringed and invalid, and the plaintiff moved for summary judgment that the '055 patent is non-obvious. These claim construction and summary judgment issues have been extensively briefed. On July 16, 2004, the Court heard oral argument on the parties' respective claim construction and summary judgment positions.

This Memorandum Opinion resolves all claim construction issues. In light of the claim constructions, the Court will grant defendant's summary judgment motions regarding noninfringement and invalidity and deny plaintiff's summary judgment motion. These rulings render moot the defendant's claims of inequitable conduct, which will be denied. With these rulings, all issues will have been resolved, and the trial of this civil action will be unnecessary.

Background

The '055 patent is generally directed to an electronic fund transfer or electronic fund transaction system, such as an automated teller machine ("ATM") system, which stores, predicts, and presents information to the user in a convenient and efficient manner. The owner of the '055 patent, IPXL Holdings, LLC ("IPXL") is a Virginia limited liability company with its principal place of business in Arlington, Virginia. IPXL is a single member LLC, of which Mr. James Gatto, an attorney currently practicing law in Virginia, is the only member. Mr. Gatto is also the sole inventor of the subject matter of the '055 patent and the patent attorney who prosecuted the '055 patent.

Amazon is a Delaware corporation with its principal place of business in Seattle, Washington. Amazon operates a website at www.amazon.com and is a well-known retailer of goods over the Internet. As part of Amazon's business, Amazon offers a "1-Click" ordering feature, which allows on-line consumers who have previously stored information, such as credit card numbers, shipping addresses, etc., to place an order quickly, without having to reenter the stored information. Amazon's 1-Click feature gained notoriety throughout the e-commerce community when Amazon successfully enforced its 1-Click patent, United States Patent No. 5,960,411, against rival retailer Barnes and Noble. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343 (Fed.Cir.2001). It is Amazon's 1-Click ordering feature that is accused of infringing IPXL's '055 patent in this case.

Before the Court are matters of both claim construction and summary judgment of noninfringement and invalidity. The Court first addresses the construction of the claims, as a proper claim construction stands as a prerequisite to both an infringement analysis and an invalidity analysis based upon a theory of anticipation.

Legal Principles of Claim Construction

Although not all of the complex procedural and substantive nuances involved in a district court's construction of claims are completely settled, see e.g., Phillips v. AWH Corp., 376 F.3d 1382 (Fed.Cir.2004)(order granting petition for rehearing en banc and inviting further briefing on issues concerning claim construction procedure generally), the Federal Circuit has provided a framework, and express guidance, for the construction of claims.

Under the Federal Circuit's framework, to ascertain the meaning of a patent's claims, the Court must turn first to the intrinsic evidence within the patent, including the claims themselves, the written description, and the prosecution history. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002)("Claim interpretation begins with the claims themselves, the written description, and, if in evidence, the prosecution history."); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). When evaluating the intrinsic evidence, "[c]laim language generally carries the ordinary meaning of the words in their normal usage in the field of invention." Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1367 (Fed.Cir.2003). In fact, the Court applies a heavy presumption that a claim term carries its ordinary and customary meaning as it would be understood by one of ordinary skill in the relevant art at the time of the invention. Zelinski v. Brunswick Corp., 185 F.3d 1311, 1315 (Fed.Cir.1999).

Although reference to the language of the claims and the written description is paramount, Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed.Cir.1998), the prosecution history also provides a particularly helpful reference, as it "contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims." Vitronics 90 F.3d at 1582-83.

Only where the Court remains unable to ascertain meaning from such intrinsic evidence should the Court then turn to extrinsic evidence, such as expert testimony. Bell Atlantic Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1269 (Fed.Cir.2001). In most situations, resort to extrinsic evidence is unnecessary and improper, as "an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term." Vitronics 90 F.3d at 1582.

Several of the terms found in the claims of the '055 patent are expressly defined in the written description, and other terms, although not expressly defined, are illustrated through examples in the written description. Such definitions and examples have been helpful, however, the Court is aware that it must exercise particular care when interpreting claims in light of the specification, as "there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification." Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.Cir.1998). Although it is improper to read a limitation from the specification into the claims, Comark Communications at 1186 (Fed.Cir. 1998), "[c]laims must be read in view of the specification, of which they are a part," Markman, 52 F.3d at 979, see also United States v. Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966)("[C]laims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention.")

Asserted Claims

Plaintiff alleges that the defendant's 1-Click feature infringes claims 1, 2, 9, 15 and 25 of the '055 patent. Claim 1 is the only independent claim of the '055 patent. The language of the asserted claims is set forth below, with the disputed claim elements emphasized.

Claim 1

An electronic financial transaction system for executing financial transactions, the transactions being characterized by a transaction type and a plurality of transaction parameters, the system comprising:

a central controller;

a communications network;

a terminal device selectively connectable to the central controller through the communications network, the terminal device comprising:

a processor;

a display connected to the processor;

an input mechanism for providing input to the processor;

the system further comprising means for storing user defined transaction information, the transaction information comprising at least one of user defined transactions and user defined transaction parameters;

the processor causing the display to display on a single screen stored transaction information; the input mechanism enabling a user to use the displayed transaction information to execute a financial transaction or to enter selections to specify one or more transaction parameters.

Claim 2

The system of claim 1 wherein the system predicts the transaction information that a user of the terminal will desire based on stored data for that user.

Claim 9

The system of claim 1 further comprising means for identifying a user prior to enabling the user to execute a transaction.

Claim 15

The system of claim 9 wherein the system predicts transaction information that a user of the terminal will desire based on stored data for that user.

Claim 25

The system of claim 2 wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters.

Although the Court "may not invalidate the claims of a patent without construing the disputed limitations of the claims and applying them to the allegedly invalidating acts," Dana Corp. v. American Axle & Manufacturing, Inc., 279 F.3d 1372, 1376 (Fed.Cir.2002), the Court is not "obliged to construe undisputed claim terms"...