Collaborative Agreements, LLC v. Adobe Sys. Inc., CAUSE NO. A-14-CV-356-LY

• Decision Date: 12 May 2015
• Docket Number: CAUSE NO. A-14-CV-356-LY
• Court: U.S. District Court — Western District of Texas
• Parties: COLLABORATIVE AGREEMENTS, LLC, D/B/A OUI AGREE, PLAINTIFF, v. ADOBE SYSTEMS INC., CITRIX SYSTEMS, INC., TIME WARNER CABLE, INC. TIVO, INC., TIME WARNER CABLE ENTERPRISES, LLC, TIME WARNER CABLE TEXAS, LLC, TIME WARNER CABLE INFORMATION SYSTEMS (TEXAS), LLC, AND TIME WARNER CABLE INFORMATION SERVICES (TEXAS), LLC, DEFENDANTS.

COLLABORATIVE AGREEMENTS, LLC, D/B/A OUI AGREE, PLAINTIFF,
v.
ADOBE SYSTEMS INC., CITRIX SYSTEMS, INC., TIME WARNER CABLE,
INC. TIVO, INC., TIME WARNER CABLE ENTERPRISES, LLC, TIME WARNER CABLE TEXAS,
LLC, TIME WARNER CABLE INFORMATION SYSTEMS (TEXAS), LLC,
AND TIME WARNER CABLE INFORMATION SERVICES (TEXAS), LLC, DEFENDANTS.

CAUSE NO. A-14-CV-356-LY

UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS AUSTIN DIVISION

May 12, 2015

MEMORANDUM OPINION AND ORDER REGARDING CLAIM CONSTRUCTION

Before the court in the above-styled and numbered cause are Plaintiff Collaborative Agreements, LLC's ("Collaborative") Opening Brief on Claim Construction filed January 23, 2015 (Clerk's Doc. No. 77); Defendants¹ Adobe Systems Inc., Citrix Systems, Inc., Time Warner Cable, Inc., Tivo, Inc., Time Warner Cable Ent., LLC, Time Warner Cable Texas, LLC, Time Warner Cable Information Systems (Texas), LLC, and Time Warner Cable Information Services (Texas), LLC's Opening Claim Construction Brief filed January 23, 2015 (Clerk's Doc. No. 76); Collaborative's Reply Claim Construction Brief filed February 13, 2015 (Clerk's Doc. No. 80); Adobe's Reply Brief on Claim Construction filed February 13, 2015 (Clerk's Doc. No.

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79); the parties' Joint Claim Construction Statement filed January 12, 2015 (Clerk's Doc. No. 75); and the claim-construction presentations of both parties.

The court held a claim-construction hearing on March 20, 2015. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). After considering the patent and its prosecution history, the parties' claim-construction briefs, the applicable law regarding claim construction, and argument of counsel, the court now renders its order with regard to claim construction.

I. Introduction

The court renders this memorandum opinion and order to construe the claims of U.S. Patent No. 8,271,393 (the "'393 Patent"). Collaborative asserts claims against Adobe for infringement of the '393 Patent. The '393 Patent generally relates to a system and method for facilitating transactions between two or more parties by receiving electronic documents at a server location from a client-communication device, locking the electronic documents against future changes, and verifying the agreement of the parties to the electronic documents.

II. Legal Principles of Claim Construction

Determining infringement is a two-step process. See Markman, 52 F.3d at 976 ("[There are] two elements of a simple patent case, construing the patent and determining whether infringement occurred . . . ."). First, the meaning and scope of the relevant claims must be ascertained. Id. Second, the properly construed claims must be compared to the accused device. Id. Step one, claim construction, is the current issue before the court.

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The court construes patent claims without the aid of a jury. See Markman 52 F.3d at 979. The "words of a claim 'are generally given their ordinary and customary meaning.'" Phillips v. AWH Corp.. 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The ordinary and customary meaning of a claim term 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. Id. at 1313. The person of ordinary skill in the art is deemed to have read the claim term in the context of the entire patent. Id. Therefore, to ascertain the meaning of claims, courts must look to the claims, the specification, and the patent's prosecution history. Id. at 1314-17; Markman, 52 F.3d at 979. 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.

Claims must also be read "in view of the specification, of which they are a part." Markman, 52 F.3d at 979. The 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." Teleflex. Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313. 1325 (Fed. Cir. 2002) (internal citations omitted). In the specification, a patentee may define a term to have a meaning that differs from the meaning that the term would otherwise possess. Phillips, 415 F.3d at 1316. In such cases, the patentee's lexicography governs. Id. The specification may also reveal a patentee's intent to disclaim or disavow claim scope. Id. Such intentions are dispositive for claim construction. Id.

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Although the specification may indicate that certain embodiments are preferred, particular embodiments appearing in the specification will not be read into the claims when the claim language is broader than the embodiment. Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).

The prosecution history is another tool to supply the proper context for claim construction because it demonstrates how the inventor understood the invention. Phillips, 415 F.3d at 1317. A patentee may also serve as his own lexicographer and define a disputed term in prosecuting a patent. Home Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004). Similarly, distinguishing the claimed invention over the prior art during prosecution indicates what the claims do not cover. Spectrum Int'l v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1988). The doctrine of prosecution disclaimer precludes patentees from recapturing specific meanings that were previously disclaimed during prosecution. Omega Eng'g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). Disclaimers of claim scope must be clear and unambiguous. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002). 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

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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. Extrinsic evidence may be useful when considered in the context of the intrinsic evidence, Id. at 1319, but it cannot "alter a claim construction dictated by a proper analysis of the intrinsic evidence," On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH. 386 F.3d 1 133, 1 139 (Fed. Cir. 2004).

III. Discussion

A. New Matter Issue and Claim Construction

The '393 Patent claims priority to three provisional applications. The earliest of these was filed on April 2, 2002. Application for the '393 Patent itself was filed on November 1, 2011. Over the course of filing multiple continuations on the original provisional applications, nearly two full columns have been added to the patent specification as compared to the specification of the original application. The abstract is also entirely new to the '393 Patent. This additional material was introduced by the patentee adding the text of independent claims from the '393 Patent family's previously issued patents into the body of the specification as new embodiments of the invention.

Adobe argues that the cumulative effect has been to introduce substantial new matter not entitled to the April 2, 2002 priority date. Adobe contends that the '393 Patent claims should have a priority date no earlier than November 1, 2011. Specifically, Adobe argues that the new matter changed the scope of "identity validation." However, because the parties agreed to a construction of "identity validation" at the claim-construction hearing, the court need not address this contention.

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Adobe also argues that the new matter changed the scope of disputed claim term "electronic signature" and introduced a new ordering of steps that is inconsistent with the original disclosure. The court concludes that these remaining issues are not determinative of the proper construction of any disputed claim term. Whether the written description requirement is met by the '393 Patent claims is a factual determination that need not be determined as a part of the claim construction. See Bradford Co. v. Conteyor N. Am., Inc., 603 F.3d 1262, 1268 (Fed. Cir. 2010) ("Determination whether a priority document contains sufficient disclosure to comply with the written description aspect of 35 U.S.C. § 112, first paragraph, is a question of fact.").

B. Agreed Constructions

At the claim-construction hearing, the parties agreed to the construction of one previously disputed claim term.² The court hereby adopts the agreed construction of the claim term listed in the table below.³

Claim Term/Phrase	Adopted Agreed Construction
"identity validation"; Claims: 1, 2, 3, 12, 13,15, 25,; 26, 27, 36, 37, 38, 49, 50, 51,; 60, 61, 62	"information that affirmatively identifies a party's; identity"

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C. Disputed Terms

The parties dispute the construction of nine terms. The following table summarizes the parties' proposed constructions of the disputed terms.

Claim Term/Phrase
Collaborative's Proposed
Construction
Adobe's Proposed Construction

...