Driessen v. Sony Music Entm't
| Decision Date | 10 March 2015 |
| Docket Number | Case No. 2:09-cv-0140-CW |
| Parties | JAMES L. DRIESSEN, MARGUERITE A. DRIESSEN, Plaintiffs, v. SONY MUSIC ENTERTAINMENT, et al., Defendants. |
| Court | U.S. District Court — District of Utah |
The court implemented a procedure for a focused claim construction process relating specifically to claims relevant to Defendants' previously mooted and then re-noticed Motion for Summary Judgment of Invalidity Based on Indefiniteness (Dkt. Nos. 127-29) and Motion for Summary Judgment of Invalidity Based on Written Description (Dkt. Nos. 130-32) in its Order dated January 27, 2014 (Dkt. No. 202).
On May 15, 2014, the court heard oral argument on Plaintiffs' Opening Claim Construction Brief (Dkt. No. 207), in which Plaintiffs briefed claim construction specifically of the terms relevant to Defendants' two motions for summary judgment, and Defendants' Response filed together with Defendants' Reply on their motions for summary judgment (Dkt. No. 215). After a recess in the hearing, the court presented the parties with a Proposed Order on Limited Claim Construction for Purpose of Re-Noticed Motions for Summary Judgment, allowed the parties to review it, and then heard further oral argument from the parties as to thecourt's recommended findings in that Proposed Order. As a result of this subsequent oral argument, the court found it necessary to take the matter under further advisement rather than enter the Proposed Order at that time.
Shortly after the hearing, on June 2, 2014, the United States Supreme Court issued its opinion in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (as corrected June 10, 2014). The decision in Nautilus is controlling for Defendants' Motion for Summary Judgment of Invalidity Based on Indefiniteness because it changed the previously applicable standard for determining indefiniteness pursuant to 35 U.S.C. § 112(b), as discussed below. The court now rejects its formerly presented Proposed Order and construes the terms as below.
The Factual Background and Procedural History of this case are discussed in previous orders of the court. (See Dkt. Nos. 116, 153, 172, 184, 202.) In review, Plaintiff James L. Driessen filed a provisional application1 with the United States Patent and Trademark Office ("PTO") on June 21, 2000 and then, on August 1, 2000, he filed U.S. Patent App. No. 09/630,272 (the "'272 Application"), naming himself as the sole inventor of the system for retail point of sale internet transactions described in the patent application. Plaintiff claims priority to the date of the '272 application. The PTO issued an Office Action rejecting the application in September 2003. Plaintiff amended the application in response to include the claim limitation "means for storing and retrieving a record on or in a physical medium" in claim 1 of the primary patent under review here, U.S. Patent No. 7,003,500 (the "'500 Patent"), issued on February 21, 2006. On June 17, 2005 Plaintiff again amended the application to include the terms "payment message," "selling computer," and "authorization message," in claim 10 of the '500 Patent. Plaintiff did not, however, amend the specification to specifically correspond to this or otheramended or newly added claims and limitations. The applications for the other patents at issue in this lawsuit, U.S. Patent No. 7,636,695 (the "'695 Patent"), and U.S. Patent No. 7,742,993 (the "'993 Patent"), were also filed as a continuation of and claiming priority to the date of the '272 application.
Claim 1 of the '500 Patent is a system claim that describes a system of purchasing downloadable media content or merchandise from the Internet through a retail point of sale transaction. This is illustrated generally in Figure 1 from the '500 Patent:
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The claimed invention has the benefit of potentially ensuring anonymity when later accessing the specific itemized media content for download using the password or code obtained during the retail point of sale transaction, as transmitted or previously arranged between the media content provider and the retail location. (See, e.g., '500 Patent, Figure 4 [Dkt. No. 154-1].)Thus, a media content provider makes specific media content available at a specific URL or internet address; this URL is correlated to information about this media content at a retail point of sale, and a purchaser can then buy the media content at the retail location using cash or any other payment method acceptable to the retailer. The purchaser receives some kind of proof of sale—a paper ticket, a scratch-off card, smart card, or virtually any other "physical medium"—containing a specific password or code that has been separately correlated, between the retailer and the media content provider, specifically to the itemized media content that the media content provider is making available at a specific internet location or URL, which is also communicated to the purchaser through the physical medium.
"From the computer of their choice" , the purchaser can then use the password or code to access the specific or itemized media content via the internet at the specific internet address or URL that the media content provider has made available to the retailer relating to the specific content. "The specific internet item on a retail pre-paid card is the new and inventive step that makes this invention different from the prior art." (Pls.' Opp to Defs.' Re-Noticed Mot. Summ. J. of Invalidity Based on Written Description 9-10 [Dkt. No. 206].)2
Defendants' Motion for Summary Judgment of Invalidity Based on Indefiniteness (Dkt. Nos. 127-29) focuses on the means-plus-function claim limitation in claim 1 of the '500 Patent, "means for storing and retrieving a record on or in a physical medium." The Motion for Summary Judgment of Invalidity Based on Written Description (Dkt. Nos. 130-32) puts the following terms from claim 10 of the '500 Patent atissue: "payment message" (id. at col. 12, l. 9), "selling message" (id. at col. 12, l. 11), and "authorization message" (id. at col. 12, l. 13). The court agrees with Defendants that a finding in the claim construction process that there is no associated structure for the "means for storing and retrieving a record on or in a physical medium" element of Claim 1 would invalidate seven claims of the '500 patent (claims 1 - 7) because it would require granting the Motion for Summary Judgment of Invalidity Based on Indefiniteness (Dkt. Nos. 127-29). This would be particularly required under the newly articulated standard in Nautilus, 134 S. Ct. 2120.
Construing the claim elements of Claim 10 of the '500 Patent would not result in immediate invalidity of any claims but will allow the court to consider the Motion for Summary Judgment of Invalidity Based on Written Description (Dkt. Nos. 130-32). If the Court determines that the claim elements referred to above at issue in Claim 10 of the '500 Patent lack written description,
The Supreme Court has held that "the construction of a patent, including terms of art within its claim, is exclusively within the province of the court." Markman v. Westview Instruments, 517 U.S. 370, 372 (1996). The determination of whether a limitation is a means-plus-function limitation falling within 35 U.S.C. § 112(f) is also a matter of law that the court must decide at this stage of the proceeding. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002). Thus, "[c]laim construction, including the meaning and scopeof any means-plus-function limitations, is a matter of law." J & M Corp. v. Harley-Davidson, Inc., 269 F.3d 1360, 1366 (Fed. Cir. 2001). And, in fact, "[w]hether a claim complies with the definiteness requirement of 35 U.S.C. [§ 112(b)] is a matter of claim construction," Noah Sys. Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012), which, as noted, "is a matter of law reserved for court decision," Nautilus, Inc., 134 S. Ct. at 2127 (citing Markman, 517 U.S. at 372). Claim construction of the "means for storing and retrieving a record on or in a physical medium" element of Claim 1 of the '500 Patent is therefore potentially dispositive for Defendants' Motion for Summary Judgment of Invalidity Based on Indefiniteness.
The parties agree that this element is a means-plus-function claim limitation governed by 35 U.S.C. § 112(f), which provides as follows:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
" Noah Sys. Inc., 675 F.3d at 1313 (quoting Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006)). "For claim clauses containing...
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