Berkheimer v. Hewlett-Packard Co.
| Decision Date | 21 August 2015 |
| Docket Number | 12-cv-9023 |
| Parties | Steven E. Berkheimer, Plaintiff, v. Hewlett-Packard Company, Defendant. |
| Court | U.S. District Court — Northern District of Illinois |
The Honorable John Z. Lee
Plaintiff Steven E. Berkheimer ("Berkheimer") has sued Hewlett-Packard Company ("HP") alleging infringement of U.S. Patent No. 7,447,713 (the "'713 Patent"). Compl. ¶ 1; Am. Compl. ¶ 1. The allegedly infringing products and services are HP's enterprise document automation software and platforms, such as HP EXSTREAM. Am. Compl. ¶ 9. Following a Markman hearing, the case is now before the Court for the construction of the ten terms of the '713 Patent and the order of steps in Claim 1.
The patent-in-suit describes digital archiving of files. See '713 Patent col.1 ll.10-11, Joint Appendix ("J.A.") 11. Berkheimer's invention addresses two common problems with archiving. First, the patented system and method "eliminate redundant instances of common text or graphical elements" in archives. Id. at col.2 ll.54-55. This is accomplished by converting documents or graphic files to "a standardized representation," parsing them into "object oriented document components," and tagging these components "for subsequent identification and linking purposes." Id. at col.2 ll.55-59. The parsed graphical objects and associated relationships canthen be analyzed and compared to other documents in the archive to avoid redundancy. Id. at col.2 ll.61-65.
Second, the invention tackles the problem of editing certain elements that appear in multiple documents. Id. at col.1 ll.36-41. Instead of making repeated changes to the same element in different documents, the patented invention allows the user to edit the element once and affect multiple documents where the element appears. Id. at col.3 ll.23-35, J.A. 12. The archived documents can then be recompiled by "a reverse parsing process." Id. at col.3 ll.36-37, J.A. 12.
The following terms of the '713 Patent are in dispute: (1) "archive"; (2) "parser"; (3) "parsing [the item into a plurality of multi-part object structures]"; (4) "evaluating"; (5) "converting"; (6) "evaluating the object structures in accordance with object structures previously stored in an archive"; (7) "presenting an evaluated object structure for manual reconciliation"; (8) "object oriented"; (9) "archive exhibits minimal redundancy"; and (10) "some of the instructions, in response to a selected editing command, alter at least one element common to and linked to a selected plurality of other elements to thereby effect a one-to-many editing process." The parties also ask the Court to interpret the order of steps in Claim 1.
Claim construction is a question of law to be decided by a judge. Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996). Generally, a claim term is given its "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." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).A person of ordinary skill in the art is assumed to read the claim term in the context of the entire patent. Phillips, 415 F.3d at 1313.
In analyzing claim terms, courts begin with the intrinsic evidence — the patent itself, including claims and specification, and its prosecution history. Vitronics, 90 F.3d at 1582. The specification is usually "dispositive" as "it is the single best guide to the meaning of a disputed term." Id. However, "[w]hen consulting the specification to clarify the meaning of claim terms, courts must take care not to import limitations into the claims from the specification." Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009). Thus, courts should not read a particular embodiment described in the specification into the claim when claim language is broader than the embodiment. Superglide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). But a claim may be limited to its preferred embodiment if permitting expansive claim language would undermine the public notice requirements of 35 U.S.C. § 112. LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005).
Next, the context in which a term appears in the asserted claim is "highly instructive" and other claims are also "valuable sources of enlightenment as to the meaning of a claim term." Phillips, 415 F.3d at 1314. Thus, the doctrine of claim differentiation provides that "each claim in a patent is presumptively different in scope." RF Del., Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1263 (Fed. Cir. 2003). This "presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim." Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007). However, claim differentiation is a "rule of thumb" and not absolute — it does not trump "the clear import of the specification" or the disclaimer of the subject matter in the prosecution history. EdwardsLifesciences LLC v. Cook, Inc., 582 F.3d 1322, 1332 (Fed. Cir. 2009); Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1116 (Fed. Cir. 2002).
The prosecution history can also "inform the meaning of the claim language." Phillips, 415 F.3d at 1317 (Fed. Cir. 2005). For example, it can be used "as support for the construction already discerned from the claim language and confirmed by the written description." 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1365 (Fed. Cir. 2008). It may also serve to "exclude any interpretation that was disclaimed during prosecution." Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005). Nevertheless, a claim term should not be narrowed "simply by pointing to the preferred embodiment or other structures or steps disclosed in the specification or prosecution history." CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
Finally, extrinsic evidence, such as dictionaries and expert testimony, may be used only if the intrinsic evidence alone is insufficient to determine the meaning of the claim terms. Vitronics, 90 F.3d at 1583.
The first disputed term is "archive." It appears in Claims 1, 4, 6, 7, 10, and 17 of the '713 Patent. '713 Patent cols.47-48, J.A. 34. HP argues that no construction is necessary for this term and that "[t]hose of ordinary skill in the art at the time of invention would understand the ordinary and customary meaning . . . to be a collection of stored data." Def.'s Claim Construction Br. 5 ("Def.'s Br."). Berkheimer responds that "archive" is "a collection of materials, documents, records, data (items) which are selected based on an assessment of their value to the organization, group or individual providing the archive, which are, subsequent to theassessment, organized and managed to ensure their preservation and access according to the interests of the organization, group or individual providing the archive." Pl.'s Response Claim Construction 5 ("Pl.'s Br.").
Berkheimer's definition comes, with some modifications, from the prosecution history of the '713 Patent. In his Appeal Brief filed with the Board of Patent Appeals and Interferences (the "BPAI"), Berkheimer stated the following while arguing against an obviousness rejection:
It is obvious to one of ordinary skill in the art of archiving (an archivist), that an archive is a collection of materials, documents, records (data), which are selected based on an assessment of their value to the organization, group or individual providing the archive, which are subsequent to this assessment, organized and managed to ensure their preservation and access according to the interests of the organization, group or individual providing the archive.
J.A. 71. Berkheimer further clarified that a "Picture Archival and Communications System" listed in the prior art and defined as comprising "a plurality of computers, computer memories, memory storage disks, read only memories, random access memories, and workstations for viewing and interactions with digital medical imagery," is "not equivalent to an archive as it is known to one of ordinary skill in the art of archiving." Id.
Based upon these statements, Berkheimer now asserts that it disavowed the full scope of the term "archive" during the prosecution. But this is not so. In fact, Berkheimer himself conceded during the prosecution history that "archive" is a term that "is known to one of ordinary skill in the art" and distinguished that term from the "Picture Archival and Communications System" that was claimed in the prior art. J.A. 71.
Of course, the Court is mindful of the fact that "[a] determination that a claim term 'needs no construction' or has the 'plain and ordinary meaning' may be inadequate when a term has more than one 'ordinary' meaning or when reliance on a term's 'ordinary' meaning does notresolve the parties' dispute." O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1361 (Fed. Cir. 2008). But here, Berkheimer does not dispute the ordinary meaning of the term "archive." Rather, he argues that a narrower definition should be applied. As noted, the Court rejects this argument and adopts the plain and ordinary meaning of the term, thereby resolving this dispute. Cf. ActiveVideo Networks, Inc. v. Verizon Commc'ns, Inc., 694 F.3d 1312, 1326 (Fed. Cir. 2012) ().
Ultimately, this Court agrees with HP that substituting "archive" with Berkheimer's lengthy definition will not clarify the term's meaning. "Archive" is a...
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