CSB–System Int'l Inc. v. SAP Am., Inc.

• Decision Date: 02 April 2012
• Docket Number: Civil Action No. 10–2156.
• Citation: 864 F.Supp.2d 335
• Parties: CSB–SYSTEM INTERNATIONAL INC., Plaintiff/Counterclaim Defendant, v. SAP AMERICA, INC., Defendant/Counterclaim Plaintiff.
• Court: U.S. District Court — Eastern District of Pennsylvania

864 F.Supp.2d 335

CSB–SYSTEM INTERNATIONAL INC., Plaintiff/Counterclaim Defendant,

v.SAP AMERICA, INC., Defendant/Counterclaim Plaintiff.

Civil Action No. 10–2156.

United States District Court, E.D. Pennsylvania.

April 2, 2012.

Anthony R. Curro, Bruce J. Koch, Thorsten Schmidt, Schmidt LLC, New York, NY, Wayne A. Graver, Philadelphia, PA, for Plaintiff.

Frank C. Cimino, Jr., Jeffrey K. Sherwood, Frank C. Cimino, Jr., Megan S. Woodworth, Dickstein Shapiro LLP, Washington, DC, Steven J. Rocci, Arshid A. Sheikh, Gary H. Levin, Henrik D. Parker, Jordan Jonas Oliver, Steven J. Rocci, Arshid A. Sheikh, Gary H. Levin, Henrik D. Parker, Jordan Jonas Oliver, Woodcock Washburn LLP, Philadelphia, PA, for Defendant.

Bruce J. Koch, Thorsten Schmidt, Schmidt LLC, New York, NY, Wayne A. Graver, Philadelphia, PA, for Counterclaim Defendant.

MEMORANDUM

BUCKWALTER, Senior District Judge.

Currently pending before the Court is a Motion by Defendant SAP America, Inc. for Summary Judgment of Invalidity of Each Claim of U.S. Patent No. 5,631,953 for Claiming Both an Apparatus and a Method. For the following reasons, the Motion is denied.

I. STATEMENT OF FACTSA. The Patent

The patent involved in this case is U.S. Patent No. 5,631,953 (“the '953 Patent”), which claims a system or apparatus. (Def.'s Mot. Summ. J., Ex. 1 (“953 Patent”); Def.'s Statement of Undisputed Facts (“DSUF”) ¶ 1; Pl.'s Statement of Undisputed Facts (“PSUF”) ¶ 1.) This Patent recites eight claims, claim 1 of which states as follows:

A circuit arrangement for integration of EDP systems in utilization of telephone systems connected to a public ISDN or Euro ISDN telephone network,

the circuit arrangement comprising a plurality of telephone extensions which are directly connectable to a telephone network selected from the group consisting of a public ISDN telephone network and Euro ISDN telephone network;

a first line;

an intelligent telephone system arranged so that said telephone extensions are connectable with said at least one telephone network through said first line and said intelligent telephone system;

a plurality of personal computers;

an integration element arranged between said intelligent telephone system and said personal computers, said integration element receiving signals via at least one connection element selected from the group consisting of an SDLC connection element and an ISDN connection element via a second line from said at least one telephone network via said intelligent telephone system and sending back signals to said at least one telephone network,

said integration element also sending a data record assigned an appropriate information via a third line, via a LAN connected to a LAN server by a fourth line and via a fifth line to said personal computers again;

a computing system; and

a software layer arranged so that conversion of the signals into a data record and vice versa is carried by said integration element, by said computing system by said software layer and by said at least one connection element with an internal software.

('953 Patent, col. 5, line 52–col., 6 line 12.)

In addition claim 2 states:

A circuit arrangement as defined in claim 1, wherein said personal computers are provided with keyboards so that a speech or data communication between a caller via said at least one telephone network and a competent party on one of said telephone extensions with a respectively assigned one of said personal computers is sent to another competent party and back after the respective competent party has sent a data record assigned the appropriate information to said integration element by operating said keyboard of the respectively assigned one of said personal computers, and a necessary signal leaving said integration element is applied at said intelligent telephone system and a connection to at least one another telephone extension is established, so that a connection to every telephone extension simultaneously provides an immediate integration of said personal computer assigned to said telephone extension in the established speech and data communication.

( Id. col. 6, lines 13–29.)

Claim 3 states:

A circuit arrangement as defined in claim 1, wherein said personal computers are provided with keyboards so that a speech or data communication between a caller via said at least one telephone network and a competent party on one of said telephone extensions with a respectively assigned one of said personal computers is sent to another competent party and back after the respective competent party has sent a data record assigned the appropriate information to said integration element by operating said keyboard of the respectively assigned one of said personal computers, and a necessary signal leaving said integration element is applied at said intelligent telephone system and a connection to all said telephone extensions is established, so that a connection to every telephone extension simultaneously provides an immediate integration of said personal computer assigned to said telephone extension in the established speech and data communication.

( Id. col. 6, lines 30–46.)

In addition, claim 4 recites:

A circuit arrangement as defined in claim 2, wherein said integration element is formed so that it is possible to hold an applied speech and data communication in conference where required together with at least one further competent party.

( Id. col. 6, lines 47–51.) Notably, claims 2–3 and 6–8 each depend directly from claim 1 and, claims 4 and 5 depend from claim 2. (DSUF ¶ 5; PSUF ¶ 5.)

Claims 5 and 6 go on to disclose:

5. A circuit arrangement as defined in claim 2, wherein said integration element is formed so that data are transferable when a speech and data communication has been established by every competent part [sic] even during a conference and by all competent parties both to and from a caller to every participating competent party and between the competent parties with and without a caller.

6. A circuit arrangement as defined in claim 1, wherein said integration element is formed so that data are transferable when a speech and data communication has been established by every competent part [sic] even during a conference and by all competent parties both to and from a caller to every participating competent party and between the competent parties with and without a caller.

( Id. col. 6, lines 52–62.)

Finally, claims 7 and 8 recite the following:

7. A circuit arrangement as defined in claim 1, wherein said integration element is formed so that in addition to the speech and data communication, a fax transmission is made simultaneously between the respective competent party and the caller using the keyboard of a respective one of said personal computers by using the connection of the respective personal computer with said at least one telephone network via said fixed line with the LAN with inclusion of the LAN server via said fourth line, via said third line with the integration element comprising said computing system, said software, said at least one connection element with the internal software, and via said second line with the intelligent telephone system.

8. A circuit arrangement as defined in claim 1, wherein said integration element is formed so that in addition to the speech and data communication, a fax transmission is made parallel between the respective competent party and the caller using the keyboard of a respective one of said personal computers by using the connection of the respective personal computer with said at least one telephone network via said fixed line with the LAN with inclusion of the LAN server via said fourth line, via said third line with the integration element comprising said computing system, said software, said at least one connection element with the internal software, and via said second line with the intelligent telephone system.

( Id. col. 6, line 63–col. 8, line 9.)

B. General Description of Technology at Issue

In the simplest of terms, the technology in this case concerns circuit arrangements of hardware and software that allow the integration of speech (telephone systems) with data systems. These systems permit agents in customer service call centers to obtain information from their personal computer about the person calling for assistance at the same time he or she takes the call. As explained by the parties' experts at the Markman hearing, when a person calls a customer service center, the technology inputs the caller's telephone number into a computer system which converts it into a computer-readable request. The server then processes the request, obtains information about the customer calling, and creates a “screen pop,” wherein the various information about that particular customer will automatically appear on the screen of the agent's personal computer at the same time the agent answers the call. (N.T. June 7, 2011, 18:21–24:25, 59:12–63:24.) The agent may then use his or her personal computer to make requests from a centrally shared server—which stores all the data about the clients—to obtain additional information, transfer the customer to another agent, or conference in another agent. (N.T. June 7, 2011, 26:5–28:8, 58:9–59:10.) Both parties have agreed that the technology runs on what is called a client/server architecture, wherein the agent's personal computer (“the client”) runs the customer service application and the database server answers requests from the client to get data. (N.T. June 7, 2011, 24:14–20.) This is distinct from the host/terminal architecture, wherein the host runs and controls the application and holds all the data, and the agent's terminal is simply an input and output device. (N.T. June 7, 2011, 21:8–23:12.)

C. Brief Patent History

The U.S. application which led to the '953 patent was filed on August 25, 1995. (PSUF ¶ 19.) The United States Patent & Trademark Office (“USPTO”) allowed the claims as set forth in the '953 Patent. (PSUF ¶ 14; Decl. of...